WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Citrix Systems, Inc. v. Perfect Privacy, LLC, Christopher Sawicki II

Case No. D2014-2287

1. The Parties

The Complainant is Citrix Systems, Inc. of Bedford, Massachusetts, United States of America (“US” or “USA”), represented by Burns & Levinson LLP, USA.

The Respondent is Perfect Privacy, LLC of Jacksonville, Florida, USA; Christopher Sawicki II of Chicago, Illinois, USA.

2. The Domain Name and Registrar

The disputed domain name <xenconsultinggroup.com> (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 31, 2014. On January 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 9, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent Christopher Sawicki II is listed as the registrant and providing the contact details.

The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on January 14, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2015. The Respondent did not submit any formal response. Accordingly, the Center notified the parties of the commencement of the panel appointment process on February 5, 2015.

The Center received two email communications from the Respondent on December 31, 2014. These cannot be construed as a formal Response, but they are discussed in the “Factual Background” section below.

The Center appointed W. Scott Blacker as the sole panelist in this matter on February 18, 2015. 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 is a publicly traded company listed on the NASDAQ stock exchange, organized as a business corporation under the laws of the state of Delaware, USA and headquartered in Bedford, Massachusetts, USA. As recounted in the Complaint, the Complainant’s latest Annual Report, and the Complainant’s website at “www.citrix.com”, the Complainant is a leading provider of computer networking software and services, cloud computing services, and “virtualization” services that allow software applications designed for one device or operating system to be used on a wide variety of desktop and mobile devices. The Complainant offers related consulting services for organizations implementing and using its software products. The Complainant has been in business for twenty-five years and currently serves more than 330,000 organizations with more than 100 million users globally, producing 2013 revenues of USD 2.9 billion.

The Complainant offers a family of virtualization products and services branded XEN, which are widely used by enterprises. The Complainant holds registered trademarks in nearly 50 countries consisting of or including “XEN”, including the following US trademark registrations:

The Registrar’s WhoIs database indicates that the Domain Name was created on December 10, 2013. It was registered in the name of the Respondent Perfect Privacy, LLC, a domain privacy service, which has expressed no interest in this proceeding. Since this dispute arose, the Registrar has identified the Respondent Christopher Sawicki II, an individual residing in Chicago, Illinois, USA, as the registrant, and he is referred to hereafter as the sole Respondent.

The Complaint does not attach screenshots of the website associated with the Domain Name until December 2014, nor does it describe or attach all communications between the Complainant and the Respondent. The Internet Archive’s Wayback Machine does not include screenshots of the associated website from the time of the current registration until December 2014.

From the Complaint and a handful of attached emails, however, it seems that by early 2014 the Domain Name was used for a website (the “Respondent’s website”) advertising the Respondent’s company, XEN Consulting Group, apparently in connection with consulting services related to the Complainant’s XEN software products. The Complaint says that the parties entered into communications in February 2014. The Panel infers from emails attached to the Complaint that at some point the Complainant’s representative sent the Respondent a demand to transfer the Domain Name, which is not included with the Complaint, and the parties discussed a price for transferring the Domain Name to the Complaint. An email from the Respondent dated May 12, 2014 claimed that the Respondent “got about $750,000.00 in business from site inquiries” “last year” (the Panel notes that the Domain Name was not registered until December 2013) and that the Respondent had invested in web hosting, letterhead stationery, and other business expenses. The Respondent offered to settle for about USD 600,000, or for USD 400,000 if the Respondent was not required to change the name of his business.

In a September 17, 2014 email to the Complainant’s legal counsel, attached to the Complaint, the Respondent said he had changed the content of the website and suggested that unless the Complainant purchased the Domain Name he would use it for a website disparaging the Complainant:

“I have changed the site and I no longer consult on Citrix products AT ALL… Google/Motorola is my last implementation. From now on, I will be working with the VMware folks selling and consulting on their products. Just closed a 2MM VDI deal that will keep me tied up for over a year. Let me know if they want to buy the site before I change it to point out the reasons not to choose Citrix.”

On December 31, 2014, the Complainant filed the Complaint in this proceeding with the Center, emailing a copy to the Respondent. The Respondent replied with two emails to the Complainant’s counsel on the same day. In one email, the Respondent referred to his “dissolved” company and his continued interest in auctioning the Domain Name or selling it to the Complainant:

“Xen Consulting Group is administratively dissolved and no longer exists. Also, it was not an Illinois Corporation. I offered to transfer the site for $7500, as you can see your legal fees will be much greater in the end. The offer still stands for 30 and as the site is up for auction with current bidding at $5800.”

In his other email to the Complainant on that date, the Respondent suggested that the UDRP proceeding actually increased the value of the Domain Name:

“These complaint letters have helped drive the price up. People knowing that Citrix has interest and all.”

The Respondent subsequently replied to the Center on January 14, 2015 with an email stating simply,

“I am not the listed owner of that domain. You should probably contact the correct party”.

In December 2014, as evidenced by a screenshot attached to the Complaint (identical to December 2014 screenshots stored by the Internet Archive’s Wayback Machine), the Respondent’s website displayed little more than a header, “VMware Rocks!” As indicated in the Complainant and on the website at “www.vmware.com”, VMware is a US software company that offers virtualization products that compete directly with the Complainant’s XEN products.

The Respondent has not replied further to the Center or submitted a Response in this proceeding. At the time of this Decision, the Domain Name does not resolve to an active website operated by the Respondent, but rather to a third-party advertisement observing, “Looks Like This Domain Isn’t Connected To A Website Yet!”

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical or confusingly similar to its XEN marks and that the Respondent has no rights or legitimate interests in using the Domain Name, without permission, to mislead Internet users as to source or affiliation and advertise competing products and services.

The Complainant argues that the Respondent acted in bad faith, with actual or constructive notice of the Complainant’s XEN marks, holding the Domain Name “hostage” to extort an exorbitant purchase price from the Complainant.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:

(i) the disputed domain name is 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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

A. Identical or Confusingly Similar

The Complainant holds numerous trademark registrations consisting of or including the XEN mark. The Domain Name incorporates this mark in its entirety and adds the generic words “consulting group”. This addition does not eliminate the confusing similarity but rather heightens it, as the Complainant itself offers consulting services related to its XEN products.

UDRP panels customarily treat the first element of the Policy as a standing requirement, which simply requires “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2. The Panel finds that this test is satisfied in the present case and concludes that the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the disputed domain name shifts to the respondent. See WIPO Overview 2.0, paragraph 2.1. The Respondent has not done so here, and it is undisputed that the Complainant gave the Respondent no permission to use its well-known XEN mark in a domain name and associated website.

It appears that the Respondent was formerly involved with a company using a name corresponding to the Domain Name, but an email from the Respondent states that the company was dissolved. The record also does not establish that the dissolved company actually furnished XEN-related consulting services. It is conceivable that the Respondent could have made a defensible use of the Domain Name in connection with a legitimate business exclusively concerned with consulting services related to the Complainant’s XEN products, similar to a reseller’s or distributor’s right to make nominative use of a manufacturer’s brand name under certain conditions (see WIPO Overview 2.0, paragraph 2.3). But the record does not demonstrate such use by the Respondent, either individually or under the name of “XEN Consulting Group”. Rather, it appears from the Respondent’s website and emails that the Respondent offered services in connection with different or competing products offered by VMware, Google, and Motorola. It is not evident how this could be deemed a legitimate interest in a third-party’s trademark under the Policy (or US trademark law for that matter).

The Panel concludes that the second element of the Complaint has been established.

C. Registered and Used in Bad Faith

The Policy furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”. These include the following examples that are relevant to the facts in this case:

(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 . . .

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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.

The Respondent does not deny prior knowledge of the Complainant’s well-established XEN marks, and his correspondence with the Complainant indicates a familiarity with the virtualization market and the Complainant’s products in that market. The Respondent’s website expressly referred to the Complainant’s products, before the Respondent changed it to refer only to a direct competitor in the virtualization market. (Thus, the Complainant has no need to rely on the US trademark concept of constructive notice, which can be problematic in the Policy context; see WIPO Overview 2.0, paragraph 3.4.) The Panel finds on the available record that the Respondent had actual knowledge of the Complainant’s XEN marks and selected the Domain Name (and presumably the corresponding former company name) precisely to take advantage of the reputation of the XEN marks. Since the Respondent cannot claim a legitimate, nominative interest in the Domain Name, as discussed above in connection with the second element of the Complaint, the most plausible inference is that the Respondent selected and used the Domain Name for commercial gain by attracting Internet users familiar with the XEN marks. Indeed, one of the Respondent’s emails claimed that he earned hundreds of thousands of dollars of business through “site inquiries”.

While earning revenue from the associated website, the Respondent also sought to sell the Domain Name. The record does not indicate which party initiated communications (which may suggest that the Complainant did so), but within two months after registering the Domain Name the Respondent was trying to sell it to the Complainant, clearly for an amount exceeding by many times the Respondent’s “documented out-of-pocket costs directly related to the Domain Name”. The Respondent furnished no documentation to the Complainant but claimed in his May 2014 email a suspiciously large revenue flow, along with a variety of business start-up costs. The Respondent asked for USD 600,000 (or USD 400,000 if the Respondent were allowed to keep the name for his business). More recently, the Respondent dropped his demand to USD 7,500, while continuing to offer the Domain Name publicly for auction. In terms of direct costs for the Domain Name, the Panel notes that the Registrar currently advertises “.com” domain names for an annual charge of USD 4.95. Thus, the record supports a reasonable inference that the Respondent obtained the Domain Name in the hope of attracting the Complainant’s attention and selling the Domain Name to the Complainant for a price greatly exceeding the Respondent’s direct, out-of-pocket costs. The Respondent’s website and correspondence also evince a bad-faith attempt to pressure the Complainant into purchasing the Domain Name by (a) using the website to promote a direct competitor, (b) placing the Domain Name for auction, and (c) threatening to post disparaging content on the website if the Complainant did not purchase the Domain Name.

There are other indicia of bad faith. The Respondent has failed to submit a Response to the Complaint and has denied being “the listed owner” of the Domain Name. This statement is disingenuous, since the Registrar has identified the Respondent as the registrant and the Respondent has engaged in communications with the Complainant for nearly a year concerning the Domain Name and associated website. During that time, the Respondent, by his own account, exercised control over the website content and listed the Domain Name for sale by auction.

In light of all these facts, the Panel finds that the Respondent registered and used the Domain Name in bad faith and concludes that the third element of the Complaint has been established.

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, <xenconsultinggroup.com>, be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Date: March 6, 2015