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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Avast Software s.r.o v. Domains By Proxy, LLC / harjan singh

Case No. DCO2020-0047

1. The Parties

The Complainant is Avast Software s.r.o, Czech Republic, represented by Staidl Leska Advokati, Czech Republic.

The Respondent is Domains By Proxy, LLC, United States of America / harjan singh, India.

2. The Domain Name and Registrar

The disputed domain name <avgcomretail.co> (the “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 August 4, 2020. On August 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 5, 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 the Complainant on August 6, 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 August 7, 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 August 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 6, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 8, 2020.

The Center appointed Mathias Lilleengen as the sole panelist in this matter on September 21, 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 provides antimalware security suite (antivirus software) since 1991. The Complainant is well known globally. The AVG antivirus surpassed 200 million users worldwide and acquired more than 20 awards from independent industry comparative tests.

The Complainant owns registrations for the trademark, such as International word mark AVG registration No. 930231, registered on February 2, 2007. The Complainant distributes its antivirus from its website at “www.avg.com” (registered on November 1, 1994). The website was visited by 12 million of Internet users the last six months. The Complainant (presenting AVG Antivirus) has approximately three million followers on Facebook and about 198,000 followers on Twitter.

The Domain Name was registered on January 27, 2018. The Complainant provided evidence that the Domain Name resolves to a website advertising antivirus protection services by “AVG Retail”. At the time of drafting the decision, the Domain Name resolved to a pay-per-click website with commercial links.

5. Parties’ Contentions

A. Complainant

The Complainant argues there is a presumption that an ordinary consumer will believe that the Domain Name registered by the Respondent is owned by the Complainant. The consumer will access the website only due to its misleading character assuming that the support is provided directly by the Complainant or alternatively by its official partners.

The Complainant argues that the Respondent has no rights or legitimate interests in the Domain Name. The Respondent is not and has never been one of the Complainant’s representatives, employees or one of its licensees or otherwise authorized to use the trademark. The Respondent does not own any rights in any trademarks, which comprise part or the entirety of the Domain Name, nor is the Respondent commonly known under this name.

Finally, the Complainant submits that the Respondent was clearly aware of its registration and use of the Complainant’s trademarks. It follows from the fact that the Respondent’s has explicitly referred to the Complainant’s official website and trademark, as well as to the Complainant’s software and its properties. The Respondent uses the Complainant’s trademark to misleadingly divert the Complainant’s consumers and to tarnish the trademark at issue by creating a likelihood of confusion with the Complainant’s trademark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established rights in the trademark AGV. The test for confusing similarity involves a comparison between the trademark and the Domain Name. In this case, the Domain Name incorporates the Complainant’s trademark, with the addition of “comretail”. The addition does not avoid confusion. For the purposes of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the country code Top-Level Domain (“ccTLD”) “.co”.

The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

There is no evidence suggesting that the Respondent has any rights or legitimate interests in the Domain Name. The Complainant has not granted any authorization to the Respondent. The Domain Name redirected to a website advertising antivirus protection services by “AVG Retail” without disclosing the Respondent’s relationship with the Complainant. The Domain Name redirects today to a pay-per-click website. These do not qualify as bona fide uses under the Policy.

The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Based on the evidence, it is likely that the Respondent knew of the Complainant’s trademark and its business when the Respondent registered the Domain Name. Without any plausible explanation as to why the Respondent registered the Domain Name, the Panel concludes that the Respondent’s intention is and has been to confuse the public and/or to cause damage to the Complainant in disrupting its business. In this context, the redirection to a website advertising competing services or a pay-per-click website further underlines the bad faith.

The Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of the paragraph 4(a)(iii) of the Policy.

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 <avgcomretail.co> be transferred to the Complainant.

Mathias Lilleengen
Sole Panelist
Date: September 28, 2020

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