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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Achtung Ltd v. Whoisguard Protected, Whois guard Inc / Agis Tiadi Nugraha, GPLAND

Case No. D2020-3190

1. The Parties

Complainant is Achtung Ltd, United Kingdom, represented by Adlex Solicitors, United Kingdom.

Respondent is Whoisguard Protected, Whois guard Inc, Panama / Agis Tiadi Nugraha, GPLAND, Indonesia.

2. The Domain Name and Registrar

The disputed domain name <gplvault.net> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2020. On November 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 26, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 7, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 9, 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 Respondent of the Complaint, and the proceedings commenced on December 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 20, 2021.

The Center appointed Robert A. Badgley as the sole panelist in this matter on February 4, 2021. 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

Complainant, formed in 2016, sells “software for the WordPress platform that enables customers to build websites from scratch, or change or add functionality to existing websites.” Complainant’s software may be downloaded by customers who have subscribed to Complainant’s service. Since 2016, Complainant has offered its services under the unregistered trademark GPL VAULT.

Complainant owns the domain name <gplvault.com>, and uses that domain name to host its commercial website to sell its software and related services. Complainant has annexed to the Complaint evidence of its website traffic, which includes more than 270,000 unique visitors for the four-year period from September 2016 to October 2020. Complainant has also annexed some online articles published by third parties which make reference to Complainant’s GPL VAULT services and Complainant’s website. Complainant also features its GPL VAULT services on social media sites, such as Facebook and Twitter.

The Domain Name was registered on March 28, 2020. The Domain Name resolves to a commercial website offering services in direct competition with those sold by Complainant under the GPL VAULT trademark. Respondent’s website features Complainant’s logo, and in several instances copies, verbatim or almost so, text found at Complainant’s website.

On September 17, 2020, Complainant’s counsel sent a cease-and-desist letter to Respondent, demanding both a transfer of the Domain Name and the removal of the website content that infringed Complainant’s trademark rights and copyrighted material. Respondent did not reply to this letter.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has established all three elements required under the Policy for a transfer of the Domain Name.

Complainant submitted an unsolicited Supplemental Filing on February 10, 2021. The Rules make no express provision for supplemental filings by either party, except in response to a deficiency notification or if requested by the Center or the Panel. In the circumstances, the Panel declines to accept the supplemental filing.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel concludes that Complainant has unregistered trademark rights in the trademark GPL VAULT through use demonstrated in the record. The Panel also concludes that the Domain Name is identical to that mark.

Complainant has established Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are 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.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not come forward, either in response to Complainant’s cease-and-desist letter or in this proceeding, to articulate or prove his bona fides vis-à-vis the Domain Name. On the record before the Panel, it is undisputed that Complainant has had no relationship with Respondent, and has never authorized Respondent to use its GPL VAULT trademark in a domain name or otherwise.

Respondent’s use of the Domain Name to host a fraudulent commercial website and seek to impersonate Complainant cannot be considered a legitimate reason for registering the Domain Name. As set forth in section 2.13.1 of WIPO Overview 3.0: “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”

Complainant has established Policy paragraph 4(a)(ii).

C. Registered or Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted 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 of a product or service on Respondent’s website or location.

The Panel concludes that Respondent registered and uses the Domain Name in bad faith. Respondent clearly had Complainant and its trademark in mind when registering the Domain Name. This is apparent by the use to which Respondent has put the Domain Name. Respondent used Complainant’s logo on his website, and copied swaths of text from Complainant’s website. Further, Respondent purports to offer at his website services that compete directly with Complainant’s. This conduct is clearly a bad faith use of the Domain Name under the above-quoted Policy paragraph 4(b)(iv).

Complainant has established Policy paragraph 4(a)(iii).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <gplvault.net> be transferred to Complainant.

Robert A. Badgley
Sole Panelist
Date: February 16, 2021

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