WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Citrix Systems, Inc. v. Registration Private, Domains By Proxy, LLC / Min-Hua Lee, MileStone Information Co.,Ltd

Case No. D2021-0309

1. The Parties

The Complainant is Citrix Systems, Inc., United States of America (“United States” or “US”), represented by Day Pitney LLP, United States.

The Respondent is Registration Private, Domains By Proxy, LLC, United States / Min-Hua Lee, MileStone Information Co.,Ltd, Taiwan Province of China.

2. The Domain Name and Registrar

The disputed domain name <mycitrix.net> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2021. On February 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 2, 2021, 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 February 8, 2021, 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 February 9, 2021.

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 February 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 8, 2021. The Respondent sent two emails to the Center on February 20, 2021.

The Center appointed Nick J. Gardner as the sole panelist in this matter on March 9, 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

The Complainant was founded in 1989 and is now a leading multinational provider of computer software systems and related system services such as networking and server software, cloud computing technologies and mobility solutions. As of today, the Complainant’s products and services are used by more than 400,000 organisations and 100 million individuals worldwide. “Citrix” is a coined term with no dictionary meaning and is used in connection with the Complainant’s goods and services.

The Complainant is the proprietor of numerous trademark registrations for the CITRIX mark in various jurisdictions, including, for example US trademark Reg. No. 2614647 registered in the US on September 3, 2002. These trademarks are referred to collectively as the CITRIX trademark in this decision.

The Complainant also owns and operates various domain names that contain the CITRIX trademark, including <citrix.com>, which was registered on July 22, 1994.

The Respondent registered the Disputed Domain Name on April 22, 2002. The Disputed Domain Name resolves to a website (the “Respondent’s Website”) which on the landing page has a stylised image of globe and which contains what appears to be a login facility requiring a name and password. The language of the page can be altered via a drop down menu. At the bottom of the landing page is a link which is entitled (when English is selected) “browser video plugin download”. The landing page does not contain any corporate details or information about who is operating the Respondent’s Website or any other meaningful content.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows.

The Disputed Domain Name is confusingly similar to the CITRIX trademark.

The Respondent has no rights or legitimate interests in the term “citrix”.

In consequence the Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith. The Complainant says the link to provide a browser download actually leads to a download of a malware plugin. It provides detailed technical information about the malware program in question. It says there is no conceivable use of the Disputed Domain Name other than to refer to the Complainant and its products and to solicit login credentials as part of a phishing scheme. The Complainant says that the Disputed Domain Name has an associated MX record indicating email capabilities, which likely indicates a potential to defraud consumers by masquerading as an authorized representative of the Complainant’s products and services.

B. Respondent

The Panel will treat the Respondent’s emails of February 20, 2021 as its Response. They read as follows:

“Firstly, we are a legally registered company in Taiwan as well as GOLD Citrix Solution Advisor (CSA) & Citrix Service Provider (CSP) authorized by Citrix Systems, Inc. to resell the Complainant’s goods and services (please refer to the Complainant's website at https://www.citrix.com/buy/partnerlocator/results.html?company=Milestone%20Information.

Secondly, we have registered MYCITRIX.NET for many years and only use the domain name to market the Complainant’s goods and services in order to increase more business for both of us and the Complainant. If we benefit from the domain name "MYCITRIX.NET", the Complainant also benefits from the domain name "MYCITRIX.NET", right?

Moreover, not only the Complainant uses the word "Citrix" as trademark, but another company also uses the word "Citrix" for their product (please refer to https://replenix.com/product‐category/brand/citrix/).

Finally, all claims submitted by the Complainant are the Complainant’s suspects [this word was changed to “hypotheses “ in the second version of the email]. Please come up with any specific fact to prove the Complainant’s suspects [this word was changed to “hypotheses “in the second version of the email] are true.

Look forward to hearing from you soon. Thank a lot for your help.”

6. Discussion and Findings

To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:

(i) the Disputed Domain Name is 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 Name;

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has rights in the CITRIX trademark. The Panel finds the 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 “my”) 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 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 “.net”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

Accordingly the Panel finds that the Disputed Domain Name is 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 CITRIX trademark is, on the evidence before the Panel, a term in which the Complainant has developed a significant reputation.

The Complainant has in its Complaint established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (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).

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.

The Respondent in effect says that paragraph 4(c)(i) applies as it says it is an authorised reseller of the Complainant’s products and uses the Disputed Domain Name in that capacity. If that were correct consideration would be needed as to a range of further factors. However the difficulty with this argument is that the Respondent’s evidence is entirely unsatisfactory. As a matter of observation the Respondent’s Website (see description above) does not look like a website one would expect a bona fide reseller to use – for example it contains no corporate details or other information about the Respondent. The Respondent has said nothing about the link to a malware download and the Complainant’s evidence on that issue is simply ignored. The Respondent has not produced any documentary evidence to support its claimed status. The link the Respondent provides to the Complainant’s own website to support its claimed status returns a result when the Panel visited it which read “No Citrix partners match your current search values and filter selection(s)”. Furthermore, the Panel notes that the Complainant contends that it has no relationship with the Respondent and that the Respondent does not have license, permission, or authorization from the Complainant to use the Complainant’s trademarks. Based on the available record, the Panel concludes that the Respondent has failed to produce credible evidence that it is an authorised reseller of the Complainant’s products and has failed to discharge the burden of showing it has a legitimate interest. Additionally, the Panel finds that the Disputed Domain Name carries a risk of implied affiliation (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.5.1).

The Panel does not consider the fact that the Respondent has identified one other entity that uses the term “citrix” in an unrelated field (cosmetics) alters this analysis. The term is in the Panel’s view in general distinctive of the Complainant and its products and the Respondent does not dispute that it uses it for that reason.

Accordingly the Panel finds the Respondent has no rights nor any legitimate interests in the Disputed Domain Name 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 CITRIX trademark, and the manner in which the Respondent’s Website appears to seek the entry of usernames and passwords lead the Panel to conclude the registration and use of the Disputed Domain Name was in bad faith.

The Panel concludes that the Respondent chose to register a name comprising the Complainant’s trademark combined with the descriptive word “my” in order to facilitate some form of phishing scheme. The Complainant made that allegation very clearly in the Complaint. The Respondent has been given an opportunity to provide any legitimate explanation it may have to counter this assertion and evidence. Again the burden of production in this respect is shifted to the Respondent. The Panel finds that the Respondent has failed to produce any evidence to explain the nature of the Respondent’s Website. No evidence has been provided as to why the Respondent’s Website simply provides an entry page seeking username and login details. Accordingly the Panel accepts the Complainant’s evidence that the Disputed Domain Name has been used in connection with activity which is intended to illicitly obtain customer data. See Australia and New Zealand Banking Group Limited v. Bashar Ltd., WIPO Case No. D2007-0031, and the cases therein referred to, for further analysis of why “phishing” activities amount to use in bad faith. See also Grupo Financiero Inbursa S.A. de C.V. v inbuirsa, WIPO Case No. D2006-0614 to similar effect. The fact the evidence also shows that the Respondent’s Website contains a link to a malware download, and the Respondent has ignored that evidence, further supports a finding of bad faith.

Under the Policy evidence of registration and use in bad faith is established by, amongst other factors, circumstances which indicate that “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location” (Policy paragraph 4(b)(iv)). In the present case the Panel concludes that the deliberate use of the Complainant’s CITRIX trademark as part of the Disputed Domain Name, in combination with the term “my” is intended to attract customers of the Complainant who may then be misled into providing confidential information. The Panel infers this is done for commercial gain of some sort. That falls squarely within the type of circumstances to which the Policy refers.

Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled.

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 Disputed Domain Name <mycitrix.net> be transferred to the Complainant.

Nick J. Gardner
Sole Panelist
Date: March 23, 2021