WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Veritas Technologies LLC v. Domains by Proxy, LLC / Sulayman Mbenga, VeritasCloud, Inc.
Case No. D2018-0884
1. The Parties
Complainant is Veritas Technologies LLC of Mountain View, California, United States of America ("United States"), represented by Fenwick & West, LLP, United States.
Respondent is Domains by Proxy, LLC of Scottsdale, Arizona, United States / Sulayman Mbenga of Holly Springs, Mississippi, United States, VeritasCloud, Inc. of Memphis, Tennessee, United States represented by Steven Rinehart, United States of America.
2. The Domain Name and Registrar
The disputed domain name <veritascloud.com> 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 April 20, 2018. On April 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 23, 2018, 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 Complainant on April 25, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 28, 2018. The Center received an informal communication from Respondent on May 1, 2018.
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 Respondent of the Complaint, and the proceedings commenced on May 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2018. The Response was filed with the Center on May 21, 2018.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on June 5, 2018. 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
Complainant, Veritas technologies, LLC, is a provider of technology products and services for businesses, including data storage, data management and backup, cloud storage, disaster recovery, email archival services and technical consulting and support. Complainant has used the mark VERITAS in connection with its products and services and has obtained a number of trademark registrations for the VERITAS mark, including in the United States (Registration Nos. 1,687,640, registered on May 19, 1992, 2,946,395, registered on May 3, 2005, 5,151,698, registered on February 28, 2017 and 5,151,708, registered on February 28, 2017) and the European Union (Registration No. 003321361, which issued to registration in November 30, 2004). Complainant also owns a number of registration for VERITAS formative marks, including, by way of example, VERITAS STORAGE FOUNDATION and VERITAS VELOCITY in the United States (Registration Nos. 3,080,370 and 5,261,567, which issued to registration in April 11, 2006 and August 8, 2017 respectively) and VERITAS VELOCITY in the European Union (Registration No. 014634174, which issued to registration in March 3, 2016).
Complainant also owns and uses the domain name <veritas.com> (registered in 1992), which it has used to promote its products and services.
Respondent is an individual based in the State of Mississippi in the United States who operates a company by the name of VeritasCloud, Inc. that appears to be based in Memphis, Tennessee.1 Respondent registered the disputed domain name on June 29, 2010 and has used the disputed domain name in connection with a website that promotes business and technology solutions, such as information technology solutions, technology review assessment and planning, network design and integration, document management and storage services and solutions, disaster recovery solutions and offsite backup solutions.
Complainant sent Respondent demand letters in November 2015 and January 2016 regarding Respondent's registration and use of the disputed domain name. Apparently, no response was received to either letter from Respondent. Complainant sent a further demand letter in September 2017. Similarly, no response was received from Respondent.
5. Parties' Contentions
A. Complainant
Complainant asserts that it has owned and used the VERITAS mark since 1990 in connection with its information technology products and services for businesses. Complainant maintains that its software and hardware products are used by 86% of the world's Fortune 500 companies to protect, identify, and manage data within complex data centers and cloud environments. Complainant also asserts that the VERITAS mark is well-known in relation to Complainant's products and services, which have won numerous industry awards and accolades.
Complainant contends that the disputed domain name is confusingly similar to Complainant's VERITAS mark as it incorporates the VERITAS mark in its entirety. Complainant also contends that the inclusion in the disputed domain name of the descriptive word "cloud" increases the potential risk of confusion because the term when used with the VERITAS mark suggests a relationship with Complainant and/or the very services offered by Complainant.
Complainant argues that Respondent does not have anyrights or legitimate interest in the disputed domain name because Respondent (i) has never been authorized by Complainant to register or use the disputed domain name, (ii) registered the disputed domain name many years after Complainant had adopted and used the VERITAS mark for its products and services, and (iii) has used the disputed domain name and an associated website to offer services similar to Complainant. Complainant also argues that Respondent does not appear to be providing the services advertised on its website at the disputed domain name or to be conducting any other bona fide business in connection with the disputed domain name. Complainant asserts that it hired an investigator to look into Respondent's claimed services and that the investigator found no information about the VeritasCloud, Inc. company, and received no responses from Respondent to inquiries the investigator had made about VeritasCloud Inc.
Finally, Complainant asserts that Respondent registered and has used the disputed domain name in bad faith since the disputed domain name is substantially identical to Complainant's VERITAS mark and has been used for similar or related services. Complainant further asserts that Respondent's bad faith is further established by Respondent's use of a privacy service to register the disputed domain name and by Respondent's failure to respond to multiple demand letters from Complainant regarding the disputed domain name and by Respondent's subsequent continued use of the disputed domain name to promote competing services.
B. Respondent
Respondent maintains that Complainant has engaged in reverse domain name hijacking.
Respondent argues that Complainant has made no showing that it owns registered or common law trademark rights in VERITAS that cover the very services being offered by Respondent through the disputed domain name. Respondent also argues that there is no evidence that Respondent was even aware of Complainant's claimed rights in VERITAS when Respondent registered the disputed domain name.
Respondent maintains that it registered the disputed domain name in good faith. In that regard, Respondent asserts that the word "veritas" is generic and that the word is used extensively by third parties in its generic sense. Respondent notes that there are hundreds of trademarks filed in the United States that incorporate the word "veritas". Based on the foregoing, Respondent contends that the disputed domain name is either generic or descriptive. Respondent further contends that because the disputed domain name consists of a generic of descriptive term, Respondent's registration and use of the disputed domain name for its descriptive purpose is legitimate and constitutes a bona fide use.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). Complainant has provided evidence that it owns and uses the VERITAS mark, which has been registered and used in the United States well before Respondent registered the disputed domain name. Complainant has also submitted evidence that the VERITAS mark is being used in the United States in connection with Complainant's information technology products and services for businesses.
With Complainant's rights in the VERITAS mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain ".com") is identical or confusingly similar with Complainant's mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842.
In the instant proceeding, the disputed domain name is confusingly similar to Complainant's VERITAS mark as it incorporates the VERITAS mark in its entirety at the head of the disputed domain name. The addition of the word "cloud" does not distinguish the disputed domain name from Complainant's VERITAS mark as it suggests that the disputed domain name is related to Complainant and/or Complainant's VERITAS services given that the word "cloud" has, apart from its generic meaning as a visible mass of condensed water vapor floating in the atmosphere, a popular technological connotation as a reference to accessing computer, information technology, and software applications through a network connection, such as by accessing data centers.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the VERITAS mark and in showing that the disputed domain name is identical or confusingly similar to that trademark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
The evidence submitted in this proceeding shows that Respondent has used the disputed domain name for a website that promotes business and technology solutions, such as information technology solutions, technology review assessment and planning, network design and integration, document management and storage services and solutions, disaster recovery solutions and offsite backup solutions. These services are either identical, similar or closely related to the services offered by Complainant under its VERITAS mark. Respondent does not address this similarity between the Parties' services in its Response, but instead asserts that Complainant does not own registered or common law rights in VERITAS that cover such exact services. Respondent's arguments are misplaced in that regard. A simple review of Complainant's trademark registrations in the United States and Europe that predate Respondent's registration of the disputed domain name reveal that Complainant has secured rights since at least 2005 for a wide array of products and services that are similar to or related to those purportedly offered by Respondent, including, for example, software products for enterprise information management and information technology, data storage management, archiving, backup services and other related services. Thus, from the evidence before the Panel, it is apparent that the parties are using the name and mark VERITAS in connection with at least similar or closely related services.
Respondent seeks to minimize that conclusion by arguing that there is no evidence that Respondent was even aware of Complainant or its services when it registered the disputed domain name. Respondent also argues that the word "veritas" is generic or descriptive and that Respondent has a legitimate interest in the disputed domain because Respondent registered and used the disputed domain name based on its descriptive connotation. Such arguments are likewise misplaced.
While the word "veritas" is a Latin word meaning "truth," such does not preclude its use as a trademark for goods or services that have no connection to its dictionary meaning. Indeed, it is well established as a matter of United States trademark law that a word that has a dictionary meaning can also function as a trademark when the word is used in connection with goods and services unrelated to the dictionary meaning of the word. See, e.g., United States Patent and Trademark Office Trademark Manual of Examining Procedure (TMEP)at section 1209.1(a). Some well-known examples of common words functioning as trademarks include CAMEL for cigarettes, SHELL for gas stations and WINDOWS for a computer operating system. Thus, for Respondent to claim that it registered and used the disputed domain name for its generic or descriptive meaning, it is incumbent on Respondent to provide evidence supporting that contention in light of the Complainant's arguments.
Here, however, Respondent has failed to provide any evidence showing that the word "veritas" has a dictionary meaning that relates to, or is descriptive of, information technology solutions, technology review assessment and planning, network design and integration, document management and storage services and solutions, disaster recovery solutions and offsite backup solutions. The evidence provided by Respondent only consists of dictionary definitions of the word "veritas" showing that the word means "truth" in Latin. Respondent also purports to provide examples of third party uses of "veritas" that Respondent maintains are generic uses of "veritas." These alleged third party uses do not show that "veritas" is being used in a generic manner, but that other parties have adopted and are using VERITAS as a trademark for other goods and services unrelated to the business and technology solutions and services provided by Complainant or Respondent under the VERITAS mark. These include, by way of example, <veritascapital.com> (for a venture capital company), <veritasinsurance.com> (for an insurance company), <veritasgenetics.com> (for a genetic analysis tools), and <veritasfive.com> (for a musical company). Given Respondent's lack of evidence that "veritas" describes the technology and business solutions purportedly offered by Respondent, the argument that Respondent legitimately registered and is using the disputed domain name for a descriptive purpose rings hollow. What the evidence shows here is that Respondent registered a disputed domain name that consists of the VERITAS name and mark to offer services that are identical, similar or closely related to those offered by Complainant. Such actions do not support Respondent's claim of having a legitimate interest in the disputed domain name, and/or of making a bona fide use of the disputed domain name, but instead reveal what appears to be an attempt to exploit Complainant's rights in the VERITAS mark in connection with a wide array of information technology, software, data management, data backup and other related products and services.
The legitimacy of Respondent's use of the disputed domain name is further undermined by Respondent's failure to submit any evidence showing that its claimed business in fact exists, has customers and actively provides goods and services. The lack of such evidence suggests that the website at the disputed domain name might in fact be pretextual and not legitimate as Complainant argues. Added to that is the fact that Respondent failed to respond to three demand letters sent by Complainant concerning Respondent's use and registration of the disputed domain name. This further suggests that Respondent may not, in fact, have a legitimate basis for registering and using the disputed domain name.
Based on the evidence submitted, it appears more likely than not that Respondent, who has no license or permission from Complainant to use the VERITAS mark to offer identical or related products and services, sought to trade off of the disputed domain name for Respondent's profit. It is rather incredulous that Respondent was not aware of Complainant or its VERITAS mark and VERITAS branded technology products and services when Respondent registered the disputed domain name and then started using it to purportedly offer identical or closely related services to businesses. Notably, Respondent does not maintain in its Response that it was not aware of Complainant or its VERITAS mark, but instead argues that Complainant failed to prove that Respondent was "clearly aware" of Complainant and its VERITAS mark. In that regard, the Panel notes that a simple search of the Internet would have revealed Complainant's rights in the VERITAS mark for the very services that Respondent wanted to promote under "veritascloud". Simply put, it seems more likely than not that Respondent was aware of Complainant's VERITAS name and mark when it registered the disputed domain name and then used it to offer identical or closely related competing services.
Given that Complainant has established with sufficient evidence that it owns rights in the VERITAS mark in connection with Complainant's technology and business solution products and services, and given Respondent's above noted actions, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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 website or location or of a product or service on your website or location."
In the present case, Respondent has registered the disputed domain name that fully incorporates Complainant's VERITAS mark with the word "cloud". Given that Respondent promotes technological and business solutions, such as information technology solutions, technology review assessment and planning, network design and integration, document management and storage services and solutions, disaster recovery solutions and offsite backup solutions, it appears more likely than not that Respondent is using the word "cloud" in its technological sense. Indeed, Respondent's website at the disputed domain name has several uses of the term "cloud" in its technological sense. As Complainant also provides "cloud" based services under its VERITAS mark, the disputed domain name is likely to be viewed by consumers as linked to Complainant and/or to a website that relates to Complainant's cloud based VERITAS services.
The evidence that is before the Panel shows that Respondent has used the disputed domain name to promote Respondent's competing technological and business solutions under the name "veritascloud". This can hardly be a coincidence, given that a simple search would have quickly revealed that Complainant was using the mark VERITAS for similar services. While Respondent maintains that "veritas" is a generic term for "truth," Respondent has provided no evidence showing that the word "veritas" describes or stands for the information technology, software, cloud based, data storage and other products and services Respondent is promoting. Simply put, Respondent is not using "veritascloud" in a descriptive sense but as a source identifier to offer the very same services Complainant offers under its VERITAS mark. Such actions make it more likely than not that Respondent registered and used the disputed domain name, which is based on Complainant's VERITAS mark, to intentionally and misleadingly attract Internet users to Respondent's website for Respondent's own profit. See WIPO Overview 3.0, section 3.1.4 (and cases cited therein).
Respondent's failure to respond after receiving multiple demand letters from Complainant further highlights Respondent's bad faith. Respondent's failure to respond to multiple letters to defend its alleged rights underscores that Respondent likely did not, and does not now have, a legitimate basis for registering and using the disputed domain name. Based on Respondent's actions it seems on the balance of the probabilities that Respondent's registration and use of the disputed domain name was not undertaken for a legitimate reason or purpose but was designed to create confusion with Complainant's VERITAS mark in order to entice consumers to use Respondent's services offered through Respondent's website at the disputed domain name.
Given Respondent's actions, the Panel finds that Complainant has proven by a preponderance of the evidence that Respondent registered and has been using the disputed domain name 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 <veritascloud.com> be transferred to Complainant.
Georges Nahitchevansky
Sole Panelist
Date: June 21, 2018
1 Sulayman Mbenga and VeritasCloud, Inc. are hereinafter collectively referred to as "Respondent."