WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Proton Technologies AG v. Super Privacy Service LTD c/o Dynadot
Case No. DCO2019-0008
1. The Parties
The Complainant is Proton Technologies AG of Plan-les-Ouates, Switzerland, internally represented, Switzerland.
The Respondent is Super Privacy Service LTD c/o Dynadot of San Mateo, California, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <protonmail.co> is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2019. On March 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 6, 2019, 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 7, 2019 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 March 7, 2019. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed a second amended Complaint on March 12, 2019.
The Center verified that the Complaint together with the amended Complaints 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 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2019.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on April 11, 2019. 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
According to the evidence filed by the Complainant, the Complainant is a Swiss Corporation which provides a secure email service under the trade mark PROTON MAIL. It is the owner of trade mark registrations prominently including “Proton Mail” in the United States, the European Union and Switzerland. The Complainant commenced its operation under the PROTON MAIL trade mark in May 2014.
The disputed domain name was registered on December 21, 2018; it does not currently resolve to an active website; however, according to evidence provided by the Complainant as at March 2019, it directed to other email providers and encryption services operating in competition to the Complainant.
5. Parties’ Contentions
The Complainant’s contentions may be summarised as follows:
- The Complainant’s name and trade mark PROTON MAIL have been widely known and recognized and promoted from a time four years prior to the creation of the disputed domain name;
- The disputed domain name wholly contains the Complainant’s trade mark PROTON MAIL which is the dominant particular of the Complainant’s trade mark registrations. The addition of the Top-Level Domain (“TLD”) “.co” is to be disregarded for the purposes of comparison of the disputed domain name with the Complainant’s trade mark under paragraph 4(a)(i) of the Policy;
- The Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence that the Respondent may be entitled to claim such rights or interests. The Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name and is not using the disputed domain name in a bona fide offering of goods or services. The disputed domain name and its associated website falsely suggests affiliation with the Complainant.
- The disputed domain name was registered and is being used in bad faith. At the time of registration of the disputed domain name, the Complainant had already established a reputation and goodwill in the United States and was the subject of publicity in major United States media outlets including the New York Times, Forbes, Motherboard and Computer World. It was also the subject of United States trade mark registrations dating from June, 2015. Accordingly, it appears near impossible that the Respondent would not have been aware of the Complainant’s rights at the time of registration. Internet users seeking the Complainant’s business by entering its well-known mark in a browser could find themselves at the Respondent’s website where they are diverted to service providers in competition with the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has provided evidence of extensive publicity of its name and trade mark PROTON MAIL and of registrations of trade marks in the United States, Europe and Switzerland in which the words “proton” and “mail” are the dominant particular. The disputed domain name wholly contains the word elements of the Complainant’s registered trade marks and it is well established that for the purposes of comparison under paragraph 4(a)(i) of the Policy, the addition of the TLD may be disregarded in most instances. That is the case here.
The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Apart from that provided by the WhoIs of the disputed domain name, nothing is known of the Respondent or of any business which it operates save that it is located in the United States and, from its name one might assume that it is a provider of privacy services of one kind or another.
From the evidence provided by the Complainant, it is evident that the Complainant and its trade mark had been extensively publicised in relevant media well before the adoption of the disputed domain name. Whilst not specifically pleaded by the Complainant, it is implicit in the content of the Complaint that the Complainant has not authorised the use of its trade mark by the Respondent in the disputed domain name.
The Panel therefore finds that the Complainant has established a prima face case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not attempted to rebut the case put forward by the Complainant and the Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
As noted above, prior to the registration of the disputed domain name, the Complainant and its trade mark had received substantial publicity in prominent and relevant United States publications. The primary identifying element of the disputed domain name is the word “proton” which has no obvious connotation in the fields of privacy, security or encryption otherwise than as the identifier of the Complainant and its services. As submitted by the Complainant, it is difficult, if not impossible, to believe that the Respondent would have chosen the disputed domain name if it did not have the Complainant’s trade mark in mind. The Panel therefore finds that the disputed domain name was registered in bad faith.
At the time of the Complaint, the disputed domain name resolved to a page providing links such as “Best Secure Email Service”, “Secure Email Providers”, “Hotmail Email”, “Email Encryption Service” and others of a similar nature. These links led to third parties which provided services in competition with the Complainant. It is reasonable to assume that these links were operated in order to provide financial gain to the Respondent by capitalising on the reputation of the Complainant’s trade mark. This conduct falls clearly within the example of bad faith registration and use of the domain name set out in paragraph 4(b)(iv) of the Policy.
The Panel therefore finds that the disputed domain name has been registered and has been used in bad faith.
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 <protonmail.co> be transferred to the Complainant.
Desmond J. Ryan
Date: April 25, 2019