WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Defenders, Inc. v. Domain Administrator, See PrivacyGuardian.org / Zhichao Yang

Case No. D2018-2670

1. The Parties

The Complainant is Defenders, Inc. of Indianapolis, Indiana, United States of America (the “United States”), represented by Ice Miller LLP, United States.

The Respondent is Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States / Zhichao Yang of Hefei, Anhui, China.

2. The Domain Name and Registrar

The disputed domain name <protectyorhome.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2018. On November 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 22, 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 the Complainant on November 23, 2018 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 November 28, 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 the Respondent of the Complaint, and the proceedings commenced on December 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 26, 2018.

The Center appointed Assen Alexiev as the sole panelist in this matter on January 7, 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

The Complainant was established in 1998 and operates under the business name Protect Your Home. It is one of the largest home security companies in the world and the only ADT Authorized Premier Provider. The Complainant has more than a hundred installation branches throughout the United States, and has served more than 2 million customers since its inception, including more than 250,000 new customers per year in each of the last 2 years. The Complainant’s official website has been located at the domain name <protectyourhome.com> since its activation in 2007.

The Complainant submits that is has unregistered trademark rights in the sign PROTECT YOUR HOME (the “PROTECT YOUR HOME trademark”).

The disputed domain name was registered on August 31, 2018. It does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant submits that is has unregistered trademark rights in the PROTECT YOUR HOME trademark, which rights have arisen as a result of its continuous use for more than 10 years and its extensive promotion and advertising. According to the Complainant, the PROTECT YOUR HOME trademark has come to be associated by members of the relevant consuming public with home security, and the associated goodwill belongs exclusively to the Complainant.

In support of this, the Complainant states that since 2007 it has continuously maintained an active Internet presence through its Internet website at “www.protectyourhome.com”, which incorporates the PROTECT YOUR HOME trademark and is used as a primary marketing tool for the Complainant and the primary point of communication between the Complainant and its customers, who rely on this website to obtain key information and access to the Complainant’s services and products. Through its online presence, direct mail, shared mail, and other mass media marketing channels, the Complainant has produced billions of marketing impressions annually under the PROTECT YOUR HOME trademark. According to the Complainant, the success of its home security business and related products and services is due in large part to the extensive promotion and advertising of the PROTECT YOUR HOME trademark, for which the Complainant claims to be spending millions of dollars annually. The Complainant submits that it is recognized as an industry leader in home security by its customers, which is evident from online testimonials from satisfied customers, video reviews, and positive online ratings on third-party websites.

According to the Complainant, the disputed domain name is confusingly similar to the PROTECT YOUR HOME trademark, and represents a deliberate misspelling of it, which does not distinguish it from the trademark.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, stating that the Respondent is not affiliated with the Complainant and is not commonly known by the disputed domain name, does not have rights that might predate those of the Complainant, and the latter has not authorized the Respondent to use the Complainant’s PROTECT YOUR HOME trademark and name. The Complainant further submits that there is no evidence of any legitimate use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services or of any legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. Rather, the Respondent has registered the disputed domain name to conduct phishing attacks against the Complainant by leading customers to wrongly believe they are communicating with the Complainant.

The Complainant contends that the disputed domain name was registered and is being used in bad faith, because the Respondent knew of the Complainant’s rights in the PROTECT YOUR HOME trademark prior to the registration of the disputed domain name. According to the Complainant, the Respondent engaged in typosquatting when it registered and used the disputed domain name for commercial gain by intentionally creating a likelihood of confusion with the Complainant’s trademark as to the affiliation of the Respondent’s services with the intent to capitalize on the Complainant’s fame and reputation. The Complainant submits that in September 2018, the Respondent started carrying out phishing attacks against Internet users to cause them to disclose confidential financial information and to learn their login credentials, and to have payments redirected to the Respondent. The Complainant also submits that the Respondent regularly registers and uses in bad faith domain names that are confusingly similar to the trademarks of others, and further alleges that the Respondent has been the respondent in twenty-eight UDRP proceedings before the Center since 2013.

B. Respondent

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

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …”

In this proceeding, the Respondent has not used the opportunity provided to it under the Rules and has not submitted a substantive Response addressing the contentions of the Complainant and the evidence submitted by it.

A. Identical or Confusingly Similar

As summarised in section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), to establish unregistered trademark rights for the purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. Relevant evidence demonstrating such acquired distinctiveness includes a range of factors such as the duration and nature of use of the mark, the amount of sales under the mark, the nature and extent of advertising using the mark, the degree of actual public recognition, and consumer surveys. The fact that a respondent is shown to have been targeting the complainant’s mark may support the complainant’s assertion that its mark has achieved significance as a source identifier.

The Complainant bases its Complaint on the contention that it has unregistered trademark rights in the designation PROTECT YOUR HOME. To support this contention, the Complainant has submitted printouts of its official website at “www.protectyourhome.com” which has been active since 2007, copies of marketing materials, and printouts of user testimonials and reviews published on a third-party website. These documents feature the sign PROTECT YOUR HOME as a trademark. The Respondent has not disputed this evidence, and the Panel is not aware of any reason to question their authenticity. The documents show that in a period of more than 10 years the Complainant has used in its business the brand PROTECT YOUR HOME for the domain name linked to its official website, for its marketing materials, and for its communications to the public.

The Complainant also describes itself as being one of the largest home security companies in the world and the only ADT Authorized Premier Provider, having more than a hundred installation branches throughout the United States, and having had more than 2 million customers since its inception, including more than 250,000 new customers per year in each of the last 2 years. The Complainant submits that it promotes and advertises the PROTECT YOUR HOME trademark extensively and spends millions of dollars annually for this purpose. The Respondent has not disputed these contentions of the Complainant.

As discussed below, the disputed domain name is a misspelled version of the words “protect your home” and is confusingly similar to the PROTECT YOUR HOME trademark. The Complainant points out that the Respondent has used the disputed domain name for phishing attacks, impersonating the Complainant, which has not been disputed by the Respondent.

In view of all the above, the Panel is prepared to accept on the balance that as a result of the duration and nature of use of the PROTECT YOUR HOME trademark, the amount of sales under it, and the extent of its advertising, the PROTECT YOUR HOME trademark has achieved a level of significance as a source identifier that would support a finding that the Complainant has certain unregistered trademark rights in the PROTECT YOUR HOME trademark for the limited purposes of the test under the Policy.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.

The relevant part of the disputed domain name is therefore the sequence “protectyorhome”. One can easily distinguish in it the elements “protect” and “home”, joined together by “yor”, which sounds like “your” and has very similar appearance to it. For this reason, the Panel accepts that the “yor” element should be regarded as a misspelling of “your”. In the light of this analysis and in the lack of any other explanation by the Respondent, the Panel’s conclusion is that the combination of the three elements is likely to appear to Internet users as referring to the Complainant’s PROTECT YOUR HOME trademark.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the PROTECT YOUR HOME trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name 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. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, 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 section 2.1 of the WIPO Overview 3.0.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name since the Respondent is not affiliated with the Complainant and is not commonly known by the disputed domain name, and the Complainant has not authorized the Respondent to use the PROTECT YOUR HOME trademark. According to the Complainant, the Respondent is not making any legitimate use of the disputed domain name, but is using it to conduct phishing attacks against customers by making them wrongly believe they are communicating with the Complainant. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not submitted a Response. It has not alleged that is has rights and legitimate interests in the disputed domain name and has not disputed the Complainant’s allegations in this proceeding.

The disputed domain name appears as a misspelling of the PROTECT YOUR HOME trademark. Only one letter distinguishes it from the Complainant’s domain name <protectyourhome.com>, which resolves to the Complainant’s official website. This makes it likely that Internet users may mistake the disputed domain name with the official domain name of the Complainant. This likelihood of confusion is further increased by the Respondent’s use of the disputed domain name for conducting phishing attacks against the customers of the Complainant, which practice has not been disputed by the Respondent.

On the basis of the above and in the lack of any contrary statement by the Respondent, the Panel is satisfied that the Respondent, being well aware of the goodwill of the PROTECT YOUR HOME trademark, is more likely than not to have engaged in typosquatting in an attempt to exploit the trademark’s goodwill to mislead Internet users that the disputed domain name belongs to the Complainant and to conduct phishing attacks against them. In the Panel’s view, such conduct is not legitimate and does not give rise to rights and legitimate interests of the Respondent in the disputed domain name.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, 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 website or other online 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.”

The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.

As discussed above, the disputed domain name appears as a misspelled version of the PROTECT YOUR HOME trademark. The Respondent does not deny the Complainant’s contention that it has used the disputed domain name to carry out phishing attacks against Internet users with a phishing email scheme to cause them to disclose confidential financial information and to learn their login credentials, and to have payments redirected to the Respondent. The Complainant also points out that the Respondent has been found to have registered and used other domain names in bad faith in twenty-eight UDRP proceedings before the Center since 2013.

Considering the above, the Panel is satisfied that on the balance the Respondent is likely to have registered and used the disputed domain name with knowledge of the Complainant and targeting the PROTECT YOUR HOME trademark in an attempt to confuse Internet users that the disputed domain name is an official online location of the Complainant and to collect confidential information from them. Such conduct represents bad faith registration and use of the disputed domain name under paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that the disputed domain name has been registered and 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 <protectyorhome.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: January 18, 2019