WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Balena, Inc., Balena Ltd. v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / Bony Nakhale

Case No. D2021-3357

1. The Parties

The Complainants are Balena, Inc., United States of America (“United States”), and Balena Ltd., United Kingdom, represented by Fenwick & West, LLP, United States.

The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Bony Nakhale, India.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2021. On October 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 12, 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 Complainants on October 12, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on October 16, 2021.

The Center verified that the Complaint together with the amendment to the 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 October 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2021.

The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on December 2, 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 Complainants are Balena Ltd, a United Kingdom Private Limited Company, and its United States of America’s subsidiary Balena, Inc., the well-known software and hardware company that has provided software, hardware, infrastructure, and other Internet of Things solutions to customers all over the world since 2013.

The Complainants own several trademark registrations for ETCHER and ETCHER-formative marks around the world, including the following ETCHER word marks:

-European Union Trade Mark registration No. 016520868, registered on August 1, 2017;

-United States trademark registration No. 5331610, registered on November 7, 2017;

-United Kingdom trademark registration No. 00916520868, registered on August 1, 2017.

The Complainants also own the domain name <etcher.io> registered on January 11, 2016 and uses ETCHER in the URL of their official website at the domain name <balena.io>, as “www.balena.io/etcher/”.

The disputed domain name was registered on July 30, 2020 and resolves to a website impersonating the Complainants’ official page.

5. Parties’ Contentions

A. Complainant

The Complainants argue that since at least 2016 they have used the mark ETCHER to identify the innovative and popular software for flashing operating system (OS) images to secure digital (SD) cards and USB drives and that the disputed domain name comprises the Complainants’ registered trademark ETCHER in its entirety.

The Complainants allege that the Respondent registered the disputed domain name without authorization, is not commonly known by the disputed domain name, and that it has no rights or legitimate interest in respect to the disputed domain name.

Also, since the disputed domain name was registered under a privacy shield, the Complainants tried to solve this case amicably by sending notices via the Registrar, the Hosting Provider, and the contact email address of the disputed domain name, which were returned undeliverable, ignored, or the response was that the disputed domain name was not hosted by the source.

In addition, the Complainants say that the Respondent’s use of the disputed domain name or preparation to use the disputed domain name demonstrates no intent to use it with a bona fide offering of goods or services. Instead, the disputed domain name resolves to a website that falsely suggests affiliation with the Complainants.

According to the Complainants, the disputed domain name resolves to a page that impersonates their official website by using similar colors, their trademark, as well as images and graphics from the Complainants’ website, and Internet users sent complaints informing that the software downloaded from the Respondent’s website includes malware.

The Complainants also mention that it is not possible that the Respondent was unaware of the Complainants’ mark ETCHER and that its unauthorized use and registration of the disputed domain name constitute bad faith with the purpose to attract, for commercial gain, Internet users to its website that contains several advertisements, including one that requires the user to click through to access the entire website and offers links to download the Complainants’ ETCHER software.

Finally, the Complainants request the transfer of the disputed domain name to the Complainant, Balena Ltd.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

As per paragraph 4(a) of the Policy, the Complainants must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have 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

The evidence presented demonstrates that the Complainants own several trademark registrations for ETCHER in several jurisdictions, including the European Union and the United States.

The disputed domain name incorporates the Complainants’ trademark ETCHER in its entirety.

As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety or a dominant feature of a trademark is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s mark. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainants, i.e., the disputed domain name is identical to the Complainants’ trademark.

B. Rights or Legitimate Interests

The Respondent has not submitted a response to the Complaint.

There is no evidence that the Respondent has any authorization to use the Complainants’ trademark or to register domain names containing the trademark ETCHER.

There is no evidence that the Respondent is commonly known by the disputed domain name.

There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Instead, there is evidence in the Complaint that the disputed domain name was being used to impersonate the Complainants for commercial gain and distribute malware to unsuspecting Internet users.

The Panel finds that the use of the disputed domain name, which incorporates the Complainants’ trademark, does not correspond to a bona fide use of the disputed domain name under the Policy.

Furthermore, the nature of the disputed domain name, being identical to the Complainant’s ETCHER mark, carries a high risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The trademark ETCHER is registered by the Complainants in several jurisdictions. The disputed domain name incorporates the Complainants’ trademark ETCHER in its entirety and the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainants’ trademarks and domain name predate the disputed domain name.

The Complainants’ ETCHER mark is distinctive and is widely known. Thus, a domain name that comprises such a mark is suggestive of the registrant’s bad faith.

The Complainants showed evidence that the disputed domain name was used by the Respondent to mislead users into believing that the corresponding website was related to the Complainants, by reproducing the Complainants’ trademarks and images, including a screenshot copying an animation and using the same colors blue, lime green, and grey.

Therefore, the Respondent obviously knew of the Complainants’ marks when it registered the disputed domain name. There seems to be no other reason why the Respondent would choose the term “etcher”, but to take undue advantage of the Complainants’ trademarks.

Moreover, the Respondent has chosen not to respond to the Complainants’ allegations. In these circumstances, and as found in the UDRP panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”.

Therefore, this Panel finds that the Respondent has intentionally attempted to obtain undue commercial gain with the registration and use of the disputed domain name.

This Panel finds that the Respondent’s attempt of taking undue advantage of the trademark ETCHER as described in paragraph 4(b)(iv) of the Policy has been demonstrated.

Furthermore, the Complainants claim to have received reports, and the Respondent has not denied, that the disputed domain name has been used in connection with the dissemination of malware, which further supports an inference of bad faith.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been registered and is being used in bad faith.

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 <etcher.net> be transferred to the Complainant, Balena Ltd.

Mario Soerensen Garcia
Sole Panelist
Date: December 14, 2021