WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Splunk Inc. v. WhoisGuard Protected / Abdourahmane THIAW
Case No. D2020-0620
1. The Parties
The Complainant is Splunk Inc., United States of America (“United States”), represented by Chestek Legal, United States.
The Respondent is WhoisGuard Protected, Panama / Abdourahmane THIAW, France.
2. The Domain Names and Registrar
The disputed domain names <splunkdumps.com> and <splunktutorial.com> (individually each a “Disputed Domain Name” and together the “Disputed Domain Names”) are registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2020. On March 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name <splunkdumps.com>. On March 12, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 16, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint and added the Disputed Domain Name <splunktutorial.com> on March 18, 2020. On March 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the added Disputed Domain Name. On March 20, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 15, 2020. The Center received communications from the Respondent by email on March 26, 2020 and on March 31, 2020.
The Center appointed Nick J. Gardner as the sole panelist in this matter on May 1, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant’s business comprises the supply of software that analyses different types of data for a variety of commercial purposes. It trades as SPLUNK. The first trademark it registered was United States Trademark and Service Mark No. 3,269,249 for SPLUNK, in classes 9, 16, 35, 38, and 42, registered on July 24, 2007. Since then the Complainant has registered its SPLUNK trademark in numerous countries around the world. These trademarks are referred to in this Decision as the SPLUNK trademark. It also operates a website at “www.splunk.com”, which provides information about its software products and services.
The Disputed Domain Names were registered as follows: <splunkdumps.com> was registered on December 21, 2019; <splunktutorial.com> was registered on December 7, 2019. The Disputed Domain Name <splunkdumps.com> resolves to a website offering copies of certification exams for the Complainant’s SPLUNK products and the Disputed Domain Name <splunktutorial.com> resolves to a website offering tutorials on the Complainant’s products.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows.
The Complainant says that each Disputed Domain Name is confusingly similar to its SPLUNK trademark or service mark in which it has rights. It says that SPLUNK is an invented, fanciful mark with no meaning in any language. The Disputed Domain Name <splunkdumps.com> combines the Complainant’s SPLUNK mark with the term “dumps” which is a common reference to sets of copies of certification exams. The Disputed Domain Name <splunktutorial.com> combines the Complainant’s SPLUNK mark with the dictionary word “tutorial”.
The Complainant says that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Respondent is unknown to the Complainant, has no relationship with it, and is not authorised by it to use the Complainant’s trademarks or to offer the Complainant’s products or services..
In addition, the Respondent is not commonly known by the Disputed Domain Names. The SPLUNK trademark was invented by the Complainant and it is unaware of any other entity which has a business name which includes “Splunk” or which has any trademark rights in the name “Splunk”. Furthermore, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademarks. In fact, the Disputed Domain Names are being used by the Respondent to misleadingly divert consumers away from the Complainant’s authentic services by claiming to be those of the Complainant, when they are not.
The Complainant says that the Disputed Domain Names were registered and are being used in bad faith. The Disputed Domain Names were registered in December 2019, long after the Complainant’s rights first accrued in 2007 with the registration of its first United States mark. The Respondent’s websites intentionally create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites. Further, the Complainant says its exam results are confidential and the Respondent is not entitled to make them available in this manner, which is further evidence of bad faith.
To further illustrate the Respondent’s bad faith, the Complainant also relies upon the fact that the Respondent has demanded sums in excess of his out-of-pocket costs to transfer the Disputed Domain Names.
No formal Response has been filed. By its email communication of March 26, 2020, the Respondent stated “As I explained, I bought these domains and I can transfer them to you, so the litigation is closed. But in return you have to pay me back what I spent, and that’s USD 5,000”.
6. Discussion and Findings
The Panel notes that no formal Response has been filed. The Panel notes however that an informal reaction was sent to the Center by the Respondent. Moreover, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, then the Panel considers that this comprehensively satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file a formal Response. While the Respondent’s failure to file such formal Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909). In any event the email communication received shows the Respondent has received the Complaint.
The Panel also notes this is a case where one of the Respondents (“WhoisGuard Protected”) appears to be a privacy or proxy service.
The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”
In the present case the Panel considers the substantive Respondent to be Abdourahmane THIAW and references to the Respondent hereafter are to that person.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Names are identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names;
(iii) the Disputed Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has rights in the SPLUNK trademark. The Panel finds that each Disputed Domain Name is confusingly similar to this trademark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000‑0662). It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).
It is also established that the addition of a descriptive term (such as here “tutorial” and “dumps” – the Panel accepts the Complainant’s evidence that this is a colloquial term for downloaded sets of exams) to a disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not prevent a finding of confusing similarity under the first element (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar to a trademark. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly the Panel finds that the Disputed Domain Names are each confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
The Panel finds the SPLUNK trademark is, on the evidence before the Panel, a term in which the Complainant has developed a significant reputation. It is according to the Complainant a coined word with no other meaning apart from in reference to the Complainant.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Names or to use the SPLUNK trademark. The Complainant has prior rights in the SPLUNK trademark which precede the Respondent’s acquisition of the Disputed Domain Names. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Names and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Names (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the Disputed Domain Names. Accordingly, the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Names and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances the evidence as to the extent of the reputation the Complainant enjoys in the SPLUNK trademark, and the fact that the Disputed Domain Names were linked to websites selling material related to the Complainant’s software lead the Panel to conclude the registration and use were in bad faith.
Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
In the present circumstances, the Panel agrees with the Complainant that factor (iv) applies as the Respondent was seeking to achieve commercial gain using the Disputed Domain Names which gave the impression they were those of or were connected with the Complainant. The Panel also notes that the Respondent has not filed a formal Response and hence has not availed himself of the opportunity to present any case of good faith that he might have. The Panel infers that none exists.
Accordingly, the Panel finds that the Disputed Domain Names have been registered and are being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names <splunkdumps.com> and <splunktutorial.com> be transferred to the Complainant.
Nick J. Gardner
Date: May 12, 2020