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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Cyveillance, Inc. v. Mr. Kumar Patel

Case No. D2006-0346

 

1. The Parties

The Complainant is Cyveillance, Inc., Arlington, Virginia, United States of America.

The Respondent is Mr. Kumar Patel, Cambridgeshire, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Names and Registrar

The disputed domain names <cyveilance.com>, <cyveillence.com> are registered with eNom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2006. On March 22, 2006, the Center transmitted by email to eNom, a request for registrar verification in connection with the domain names at issue. On the same date, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 31, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 20, 2006. The Respondent filed his Response on April 18, 2006, which the Center duly acknowledged.

The Center appointed Edward C. Chiasson Q.C. as the sole panelist in this matter on April 25, 2006. The panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. The Panel finds that it was properly constituted.

 

4. Factual Background

The following information derives from the Complaint and the material delivered with it:

The Complainant is the owner of the mark CYVEILLANCE for monitoring the worldwide web for copyright and trademark violations for corporate clients. The Complainant first used the CYVEILLANCE mark in the United States by December 13, 1998.

The Complainant registered the mark CYVEILLANCE in the United States, Registration No. 2,292,671, on November 16, 1999.

The Complainant transacts business under its CYVEILLANCE mark on the Internet primarily through its website at “www.cyveillance.com”, the site to which its <cyveillance.com> domain resolves and which was registered on August 17, 1998.

The Complainant identifies and promotes its internet monitoring and infrastructure protection products and services under the CYVEILLANCE registered trademark.

The Complainant and its products are well-known among companies with a substantial Internet presence and the Complainant counts over one-half of the Fortune 50 and three-quarters of the top Fortune 500 companies in the financial services, pharmaceutical, energy, and technology industries as clients.

The Complainant has used the registered trademark CYVEILLANCE continuously for more than seven years and this mark has acquired distinctiveness and secondary meaning, which has been known as the trademark and source identifier of the Complainant’s products and services since 1998.

The Respondent is not and has never been a licensee of the Complainant and is not otherwise authorized by the Complainant to use the registered trademark CYVEILLANCE.

The Respondent is not known by CYVEILLANCE or any variation thereof.

The Respondent has created websites at the sites to which the subject domain names resolve that appear confusingly similar to the Complainant’s website at which the Complainant offers its products and services, including use of the registered trademark CYVEILLANCE without misspelling.

The Respondent’s websites do not offer goods or services.

Much of the text on the pages to which the subject domain names resolve is copied verbatim from the Complainant’s website, with only occasional, cosmetic changes. For example the sites detail six “Online Risks,” the text for which is identical to the “Online Risks” display on the Complainant’s homepage. The Respondent’s sites also contain the verbatim description of the Complainant’s business entitled “About Cyveillance.” With the exception of the graphic at the top of the page, the Respondent did not change the spelling of Cyveillance to match the spelling of the subject domain names.

The Respondent has a history of registering domain names in contravention of the Policy.

The following information derives from the Response:

The Complainant’s mark is registered in England and the European Community as well as in the United States.

The Respondent does not use the Complainant’s mark for a commercial purpose.

The Complainant monitored a website of the Respondent and there was an exchange between the parties concerning this. The Respondent communicated the following to the Complainant:

“A message to Cyveillance, NameProtect, Envisional and classmates – YOU ARE BANNED FROM THIS WEBSITE. ANY FURTHER VISITS WILL BE CONSIDERED TRESPASSING! and that includes visits via your backdoor IP’s!. Your activity has not gone unnoticed, you have been monitored for many, many months now. You have no legitimate interest in visiting this website, other than your transparent spying on behalf of your clients. If your clients have a problem, use the email and say what it is, instead of playing silly little games. This website is intended for use by the general public, it is not your personal playground. CONSIDER THIS A WARNING! YOU WILL NOT BE WARNED AGAIN!. - 4th April 2005. MontrealConvention.Org.”

 

5. Parties’ Contentions

A. Complainant

The Complainant relies on its registration and use of the word “cyveillance” and asserts that the subject domain names are confusingly similar to its mark. The Respondent’s use of these marks is “typosquatting,” a practice intended to divert consumers who misspell the word “cyveillance” when attempting to access the Complainant’s website”.

The Complainant notes that the Respondent has no authority to use and is not known by the word “cyveillance” and that the Respondent is using material directly from the Complainant’s website on the sites to which the subject domain names resolve.

Bad faith is said to be evidenced by the fact that the information supports a conclusion that the Respondent knew of the Complainant’s name and mark and has used it to mislead users of the Internet. The Complainant also notes the Respondent’s history of contravening the Policy.

B. Respondent

Relying on English trademark law, the Respondent asserts that it is not using the Complainant’s mark for a commercial purpose and that the Complainant is not entitled to prevent the Respondent from using the mark. He states: “…to bring a claim of trademark infringement with no commercial element involved in the use of a trademark equates to a frivolous and groundless infringement action”.

The Respondent also contends: “The Complainant’s rights DO NOT extend so far as to prevent a third party from making use of a trademark in a non-commercial capacity and therefore the Complainant does not have the right in a trademark for the purposes of a complaint via the UDRP”.

It is the Respondent’s position that an order transferring the subject domain names to the Complainant would violate English law and the European Convention for Protection of Human Rights and Fundamental Freedoms, which guarantees freedom of expression.

The Respondent contends that the Complainant did not make a fair and accurate disclosure of the facts because it neglected to state that its trademark is registered in England and the European Community.

It also is contended that the contractual commitment to the UDRP process is unfair and unbalanced against the Respondent.

The Respondent does not dispute that the subject domain names are confusingly similar to the Complainant’s mark. He says that the websites to which the subject domain names resolve are parody sites and that the Complainant is seeking to reverse hijack the subject domain names.

The Respondent asserts that the Complainant has acted improperly relative to the Respondent’s Internet sites. It is the Respondent’s position that by withholding information concerning the course of dealings between the parties, the Complainant has abused the UDRP process and has acted in bad faith.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove that:

(i) the subject domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) the subject domain names have been registered and are being used in bad faith.

Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:

(i) circumstances that indicate that the Respondent has registered or has acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the subject domain names registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the subject domain names;

(ii) registration of the subject domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;

(iii) registration of the subject domain names primarily for the purpose of disrupting the business of a competitor;

(iv) by using the subject domain names, intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s 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 the website or location or of a product or service on the website or location.

These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.

The Complainant relies on previous domain name dispute decisions. While often these are helpful, they are neither controlling nor binding on this Administrative Panel.

A. Identical or Confusingly Similar

It is clear that the Complainant has rights to the word “cyveillance”. The subject domain names are merely misspellings of “cyveillance”. There is no doubt that they are confusingly similar to the Complainant’s mark. The Respondent does not contest this fact.

The Respondent relies on English law stating that a trademark holder cannot sustain an infringement action if a mark is not being used for a commercial purpose. He contends that because under English law the Complainant could not sustain an infringement proceeding, “…the Complainant does not have the right in a trademark for the purposes of a complaint via the UDRP”.

This proceeding is not an infringement action.

A UDRP proceeding is concerned solely with the registration and use of domain names. The inquiry is focused and the available relief is narrow. The ability or inability of a complainant to undertake other proceedings is not relevant.

In a UDRP proceeding, the first inquiry is whether a complainant has a trademark or service mark. If it were to do so and if the domain names under review were identical or confusingly similar to that mark, the first requirement of the Policy would be met.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Respondent is not authorized to use and is not known by the word “cyveillance”. It has incorporated into the websites to which the subject domain names resolve verbatim text from the Complainant’s website.

The Respondent emphasizes that he makes no commercial use of the Complainant’s mark and suggests that his use is as a parody.

There is little in the material to support the asserted use and the subject domain names do not suggest that use.

The Respondent relies on the European Convention for Protection of Human Rights and Fundamental Freedoms, which guarantees freedom of expression.

In the circumstances of this case, the Respondent’s freedom of expression would not be imperiled by a conclusion that he does not have a legitimate interest in domain names that are confusingly similar to the Complainant’s mark. The Administrative Panel questions the assertion of parody and holds that even if that were the objective of the Respondent, the subject domain names would not be appropriate for that purpose. Whether other domain names would be appropriate is not a matter for consideration in this proceeding.

While use of the mark of another in a domain name that parodies the owner of the mark is not inappropriate per se, it is usual, or at least desirable, that such domain names connote parody or criticism and do not simply use the mark without qualification.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

A finding that a respondent does not have a legitimate interest in a domain name that is confusingly similar to the mark of another does not lead automatically to a conclusion of bad faith, but the facts that support the finding may be relevant to the bad faith inquiry.

The incorporation into the websites to which the subject domain names resolve of verbatim text from the Complainant’s website is clear evidence that the Respondent was aware of the Complainant’s rights and leads to a strong inference of bad faith.

Although the Respondent states that the subject domain names are used to parody the Complainant, the fact that the Respondent misspells the Complainant’s mark is inconsistent with that use.

The Respondent asserts that the commitment to the UDRP process is unfair to him and not a proper balance of the interests of himself and the Center. This proceeding is not an appropriate forum to address that assertion.

The Respondent states that the Complainant is attempting to reverse hijack the subject domain names and that the Complainant has acted in bad faith by not disclosing fully relevant facts.

Although it might have been better had the Complainant stated fully all of its dealings with the Respondent, its failure to do so in this case does not assist the Respondent. It is apparent that the parties had some confrontation as a result of the Complainant’s monitoring of the Respondent’s websites. Even if the Complainant’s conduct was inappropriate, as to which the Administrative Panel makes no finding, the Respondent’s response appears to have been to register domain names which are confusingly similar to the Complainant’s trademark and with respect to which the Respondent does not have a legitimate interest. Doing so in order to force the Complainant to accede to the Respondent’s position is bad faith.

The Administrative Panel rejects the Respondent’s assertion of reverse hijacking.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii) of the Policy.

 

7. Decision

Based on the information provided to it and on its findings of fact, the Administrative Panel concludes that the Complainant has established its case.

The Complainant seeks transfer of the subject domain names <cyveilance.com> and <cyveillence.com> to it. The administrative Panel so orders.

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Edward C. Chiasson, Q.C.
Sole Panelist

Dated: May 5, 2006