WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Citrix Systems, Inc. v. Thomas Muller, Citrix Systems UK Ltd.
Case No. DEU2019-0008
1. The Parties
The Complainant is Citrix Systems, Inc., United States of America, represented by Day Pitney LLP, United States of America.
The Respondent is Thomas Muller, Citrix Systems UK Ltd., United Kingdom.
2. The Domain Name, Registry and Registrar
The Registry of the disputed domain name <citrix-systems.eu> (the “Domain Name”) is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the Domain Name is Namecheap, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2019. On May 31, 2019, the Center transmitted by email to the Registry a request for registrar verification in connection with the Domain Name. On June 3, 2019, the Registry 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. In response to a notification by the Center of June 5, 2019, that the Complaint was administratively deficient, the Complainant filed an amended Complaint on June 10, 2019.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 12, 2019. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was July 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2019.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on August 6, 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 ADR Rules, Paragraph B(5).
4. Factual Background
The Complainant has since 1989 been active as a provider of computer software systems and related system services in the nature of networking and server software, desktop virtualization systems, software-as-a-service, cloud computing technologies, and mobility solutions. The Complainant’s products and services are used by more than 400,000 organizations and over 100 million people worldwide.
The Complainant holds rights in and to the following trade marks in the European Union (the “Trade Marks”):
a. European Union Trade Mark CITRIX No. 000056093, registered on May 21, 1998;
b. European Union Trade Mark CITRIX No. 002302511, registered on November 17, 2004;
c. European Union Trade Mark CITRIX No. 004103594, registered on March 9, 2006;
d. European Union Trade Mark CITRIX No. 014944111, registered on September 1, 2016.
The Domain Name was registered on January 30, 2019. The Domain Name automatically redirects users to the Complainant’s website at “www.citrix.com” (“the Complainant’s Website”).
After registering the Domain Name, the Respondent created the email address “[...]@citrix-systems.eu”. Using this email address, the Respondent contacted one of the Complainant’s clients in Italy on May 7, 2019, pretending to be an employee of the Complainant’s accounting department, requesting that all new payments be wired to a new bank account. In the signature block of this email, the Respondent claimed to work for the Complainant’s registered office in the United Kingdom. The Complainant’s client twice attempted to wire a large amount to a bank account number provided by the Respondent, which failed as the bank account had been closed. The client then inquired by email to the Respondent, copying two email addresses of the Complainant, about the failure of the transfer. This email alerted the Complainant regarding the Domain Name.
5. Parties’ Contentions
The Complainant submits that the Domain Name is confusingly similar with the Trade Marks, since the Domain Name incorporates the Trade Marks in their entirety, along with a hyphen and the dictionary word “system”, which describes the nature of the products provided by the Complainant under the Trade Marks.
According to the Complainant, the Domain Name has been registered by the Respondent without rights or legitimate interests since, to the Complainant’s knowledge, the Respondent has not: (i) used the Domain Name or any name corresponding to the Domain Name in connection with a bona fide offering of goods or services; (ii) made any demonstrable preparations to use the Domain Name or any name corresponding to the Domain Name in connection with the offering of goods or services; (iii) been commonly known by the Domain Name; or (iii) made any legitimate and noncommercial or fair use of the Domain Name without intent to mislead consumers or harm the reputation of the Trade Marks. In addition, the Complainant submits that the use of the Domain Name to create an email address, impersonating the Complainant, and misleading a client of the Complainant into providing payment under false pretenses, cannot give rise to any rights or legitimate interests on the part of the Respondent. Furthermore, the Complainant points out that the fact that the Domain Name automatically redirects to the Complainant’s Website, falsely suggests that the Complainant authorized, endorsed, or otherwise approved of the Domain Name and the activities conducted in connection therewith, and is further proof that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant contends that these circumstances are also clear evidence of registration and use in bad faith, in particular that the Respondent has registered and used the Domain Name to fraudulently by creating an email address to impersonate the Complainant and mislead its clients into providing payments under false pretenses. According to the Complainant, registration in bad faith is also evident from the fact that the Respondent registered the Domain Name twenty years after the Complainant first established rights to the Trade Marks, being fully aware of the Trade Marks. The Complainant further submits that the bad faith use of the Domain Name lies both in the fraudulent email scam set up by the Respondent and the automatic redirection of Internet traffic to the Complainant’s Website, falsely suggesting that the Domain Name is authorized, sponsored, or approved by the Complainant. Finally, the Complainant contends that the Respondent acted in bad faith by providing false contact details when registering the Domain Name, falsely suggesting that he was employed, affiliated, or otherwise authorized by the Complainant to register the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or Community law
The Complainant has shown that it has registered rights in the Trade Marks in the European Union. The Domain Name is confusingly similar to the Trade Marks as it incorporates the term “citrix”, of which the Trade Marks consist, in its entirety. The addition of the dictionary word “system”, preceded by a hyphen, does not avoid the confusing similarity between the Domain Name and the Trade Marks (see, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).1 The country code Top-Level Domain (“ccTLD”) “.eu” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see, WIPO Overview 3.0, section 1.11). Therefore, the Panel finds that the Complainant has established that the Domain Name is confusingly similar to the Trade Marks in which the Complainant has rights in accordance with Paragraph B(11)(d)(1)(i) of the ADR Rules.
B. Rights or Legitimate Interests
Under the ADR Rules, the Complainant has to prove that the Respondent lacks rights or legitimate interests in a domain name. This may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the Respondent. In order to satisfy the second element, the Complainant has to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name. If the Complainant succeeds in doing so, the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Domain Name. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element. See Lidl Stiftung & Co. KG v. Name Redacted, WIPO Case No. DEU2018-0012.
Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant’s consent to register or use the Trade Marks as part of the Domain Name, is not commonly known by the Domain Name, and has not acquired trade mark rights in the Domain Name. The Respondent has used the Domain Name to create an email address which it has used to send an email to a client of the Complainant with a false signature block, requesting payment of a large sum, creating the false impression that the request was sent or authorized by the Complainant. This clearly does not amount to a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the Domain Name.
In view of the above, the Panel concludes that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name as set out in Paragraph B(11)(d)(1) of the ADR Rules.
C. Registered or Used in Bad Faith
For completeness’ sake the Panel has also reviewed the requirement of bad faith registration or use, although under the ADR Rules it is sufficient that a complainant, as in this case, proves the first two elements.
Based on the information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain Name the Respondent was or should have been aware of the Trade Marks, since:
- the Respondent’s registration of the Domain Name occurred twenty years after the registration of the earliest of the Trade Marks;
- the use of a postal address when registering the Domain Name which falsely suggests that the Respondent is employed or authorized by the Complainant’s office in the United Kingdom;
- the mark CITRIX, which is incorporated in its entirety in the Domain Name, does not appear to be a dictionary word, nor a name of which it is likely that a registrant would spontaneously or accidentally think of;
- a simple trade mark register search, or even an Internet search, prior to registration of the Domain Name in its name would have informed the Respondent of the existence of the Trade Marks.
Under these circumstances, the Panel concludes that the Domain Name has been registered in bad faith.
With regard to bad faith use, the panel concludes on the basis of the following circumstances that the Respondent is also using the Domain Name in bad faith:
- the use of the Domain Name for a fraudulent scheme, impersonating the Complainant, in order to obtain payment from a client of the Complainant;
- the redirection of Internet users from the Domain Name to the Complainant’s Website, suggesting an affiliation with or authorization by the Complainant which is non-existent;
- the probability that the Respondent was aware or should have been aware of the Complainant’s rights in the Trade Marks;
- the non-dictionary nature of the mark CITRIX incorporated in the Domain Name, such that the Respondent cannot claim to have “accidentally” registered a domain name that happens to correspond to the Trade Marks;
- the lack of a formal Response of the Respondent.
Therefore, the Panel concludes that the Domain Name has been registered and is being used in bad faith in accordance with paragraph B(11)(d)(1) of the ADR Rules.
For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name <citrix-systems.eu> be transferred to the Complainant through Citrix Systems UK Limited. 2
Wolter Wefers Bettink
Date: September 2, 2019
1 Given the similarities between the ADR Rules and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel shall refer to concepts embodied in UDRP precedent where appropriate.
2 The Complainant requests the transfer of the Domain Name to its registered office in the United Kingdom. As this office is established and located within the European Union, it satisfies the general eligibility criteria for registration of the Domain Name set out in Article 4(2)(b) of the Regulation (EC) No 733/2002.