WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cylance Inc. v. John Jarvice, MarkSpace
Case No. D2020-0926
1. The Parties
The Complainant is Cylance Inc., United States of America (“United States”), represented by Davis Wright Tremaine LLP, United States.
The Respondent is John Jarvice, MarkSpace, United States.
2. The Domain Name and Registrar
The disputed domain name <cylenceprotect.com> is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2020. On April 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 17, 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 April 20, 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 on April 24, 2020.
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 April 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 19, 2020.
The Center appointed Evan D. Brown as the sole panelist in this matter on May 26, 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 was founded in 2012 and is in the business of computer security services that utilize artificial intelligence. It owns numerous trademark registrations for CYLANCE in several countries around the world, including United States Reg. No. 4,589,223, registered on August 19, 2014. The Respondent registered the disputed domain name on January 28, 2020. The Complainant asserts that the disputed domain name does not resolve to any pages as of yet but that the Respondent’s activity has been cited for being involved in malicious activity.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and, that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical 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 name; and, (iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See, Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights because it has shown ownership in the registered CYLANCE mark as noted above.
The disputed domain name does not incorporate the Complainant’s exact mark, CYLANCE, but does resemble the Complainant’s mark by including a word that is confusingly similar, differing by only one letter – “cylence”. The addition of the dictionary term “protect” does not eliminate the confusing similarity.
The Complainant has established this first element under the Policy.
B. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent.
The Complainant has established, prima facie, that the Respondent lacks rights or legitimate interests in the disputed domain name. On this point, the Complainant asserts that the Respondent’s choice in registering the disputed domain name cannot be explained but as a misappropriation of the Complainant’s trademark. Moreover, according to the Complainant, there exists no relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could legitimately use the disputed domain name. Further, the Complainant asserts that the Respondent is not commonly known by the disputed domain name, nor is it making a noncommercial or fair use of the Complainant’s trademark.
These facts establish the Complainant’s prima facie showing. The Respondent has not provided any basis on which that showing may be overcome. The Complainant has established this second element under the Policy.
C. Registered and Used in Bad Faith
The Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith use and registration. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or a product or service on [the respondent’s] website or location”.
The Complainant asserts that the Respondent’s use of the disputed domain name, which is confusingly similar to the Complainant’s well-known registered trademark, makes it likely that Internet users will hold the Complainant responsible for the website the disputed domain name is used for or, alternatively, assume that some kind of legal or economic affiliation exists between the operator of the website and the proprietor of the trademark. The Complainant also argues that the Respondent must have been “well aware” of the Complainant’s trademark at the time of registration of the disputed domain name. This fact, according to the Complainant, shows that the Respondent intended to take advantage of confusion as to the source of its website or its affiliation in order to attract, for commercial gain, Internet users to its website. The Panel also finds that the Respondent registered and is using the disputed domain name in order to disrupt the business of the Complainant.
Based on the above, in particular the Complainant’s contentions which the Respondent has not sought to disprove, the Panel finds that the Complainant has satisfied the third element under the Policy.
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 name <cylenceprotect.com> be transferred to the Complainant.
Evan D. Brown
Date: June 9, 2020