WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Malwarebytes Inc v. Vietnam Domain Privacy Services / Pham Dinh Nhut

Case No. D2015-1361

1. The Parties

The Complainant is Malwarebytes Inc, of San Jose, California, United States of America, internally represented.

The Respondent is Vietnam Domain Privacy Services of Ho Chi Minh City, Viet Nam / Pham Dinh Nhut of Ho Chi Minh City, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <malwarebyes.org> is registered with April Sea Information Technology Corporation (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2015. On August 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 12, 2015, 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 August 12, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On August 14, 2015, the Complainant confirmed to the Center that it wished to amend the Complaint with the proper Respondent.

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 and 4, the Center formally notified the Respondent of the Complaint in both Vietnamese and English, and the proceedings commenced on September 16, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 7, 2015.

The Center appointed Assen Alexiev as the sole panelist in this matter on October 21, 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.

In respect of the language of the proceedings, the Panel notes the following. According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Vietnamese. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or otherwise specified in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The Center has sent all its messages to the Respondent in both English and Vietnamese. The Complainant has submitted its Complaint in the English language, and the Respondent has not requested that the proceedings be held in the Vietnamese language. The content of the website at the disputed domain name is only in English, from which it could be reasonably presumed that the Respondent has the ability to communicate and to conduct its business in English. The Panel also takes into account that the carrying out of the proceedings in English will avoid unnecessary costs and delay.

In these circumstances, it appears to the Panel that using the English language in this proceeding will be fair and efficient and will not put either of the parties at a disadvantage. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding be English.

4. Factual Background

The Complainant is in the business of creating and distributing security software since 2005. It has extensively used and is commonly referred to by consumers and trade by the name Malwarebytes.

The Complainant is the registrant of the word trademark MALWAREBYTES with registration No. 3725149, registered in the United States of America on December 15, 2009 for goods in International Class 09, including anti-spyware software; computer software for use in the safeguarding of digital files, including audio, video, text, binary, still images, graphics and multimedia files; downloadable computer software for identifying and removing malware; downloadable software for identifying and removing malware; software for ensuring the security of electronic mail, with first use in commerce on January 21, 2008 (the “MALWAREBYTES trademark”).

The primary website of the Complainant, used since 2004, is located at “www.malwarebytes.org” and “www.malwarebytes.com”.

The disputed domain name was registered on December 29, 2008.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s name and to the MALWAREBYTES trademark, as it incorporates them in their entirety. The deletion of the letter “t” from “malwarebytes” does not distinguish the disputed domain name from the Complainant’s MALWAREBYTES trademark. Given the widespread use of the Complainant’s name and notoriety in security software with over 500 million downloads, it is probable that a majority of Internet users who search for or see the disputed domain name will recognize the Complainant’s name and reputation, and assume that the disputed domain name is owned, controlled or endorsed by the Complainant.

According to the Complainant, the Respondent has no rights and legitimate interests in the disputed domain name. The Complainant has not authorized the Respondent to register or use the disputed domain name and the Respondent is not commonly known by the disputed domain name.

The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent is using the goodwill and reputation of the Complainant’s name and of the MALWAREBYTES trademark to improperly extract financial benefit in violation of the applicable trademark and unfair competition laws. The website at the disputed domain name redirects users to another website which sells an unauthorized product wholly incorporating the Complainant’s name. In the Complainant’s submission, the only reason that the Respondent could have sought to register and use the disputed domain name is that it knew of the Complainant and wanted to refer to it in the disputed domain name for the purpose of selling an unauthorized product and profiting from the confusion of the consumers who mistakenly believe that the products offered for sale are authorized by the Complainant.

B. Respondent

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

6. Discussion and Findings

In order to obtain the transfer of the disputed domain name, the Complainant must prove each of the following:

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

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

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

By 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…”

The Respondent did not file a Response in this proceeding. Under paragraph 14(b) of the Rules, if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

As set out in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), the consensus view of UDRP panelists is that a respondent’s default does not automatically result in a decision in favor of the complainant. The Panel may draw appropriate inferences from a respondent’s default, but the complainant is nevertheless required to support its assertions with actual evidence in order to succeed in a proceeding under the Policy.

The Panel finds that in this case the failure of the Respondent to file a response to the Complaint permits an inference that the Complainant’s reasonable allegations are true and that the Respondent doesn’t deny the contentions of the Complainant.

A. Identical or Confusingly Similar

The Complainant has submitted evidence and has thus established its rights in the MALWAREBYTES trademark.

It is a common practice under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) such as the “.com” for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the disputed domain name is its “malwarebyes” element. This element appears as a misspelling of the MALWAREBYTES trademark, and the omission of the letter “t” in this element of the disputed domain name does not sufficiently distinguish it from the trademark.

In these circumstances, the Panel finds that the disputed domain name is confusingly similar to the MALWAREBYTES trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Policy requires the Complainant to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview 2.0.

The Complainant alleges that it has not authorized the Respondent to register or use the disputed domain name and that the Respondent is not commonly known by the disputed domain name. The Complainant also contends that the Respondent uses the disputed domain name to attract Internet users to its website where the Respondent offers for sale an unauthorized product wholly incorporating the Complainant’s name. The Complainant has supported its contentions with printouts from the website to which the disputed domain name refers.

The Respondent has not submitted any evidence or arguments that it has rights or legitimate interests in the disputed domain name and has not denied the contentions of the Complainant despite the burden under the Rules, paragraph 5(b)(i) and 5(b)(ix) or the consequences that the Panel may extract from the fact of a default (Rules, paragraph 14). If the Respondent had any justification for registering or using the disputed domain name, it could have provided it. In particular, the Respondent has not contended that any of the circumstances described in Policy, paragraph 4(c) — or any other circumstance — is present in its favor.

The only information available about the Respondent is the WhoIs information, provided by the Registrar.

The WhoIs information contains no evidence of rights or legitimate interests of the Respondent in the disputed domain name, which, as found above, is confusingly similar to the MALWAREBYTES trademark of the Complainant and represents a misspelling of the same. The evidence submitted by the Complainant shows that the website at the disputed domain name offers products of the same categories and with similar names to those offered by the Complainant, and this may lead to confusion of Internet users, as the disputed domain name represents a misspelling of the Complainant’s trademark.

In these circumstances, and in the absence of any rebuttal by the Respondent of the contentions of the Complainant or allegation to the contrary, the Panel is prepared to accept that the Respondent was aware of the Complainant and of its MALWAREBYTES trademark at the time of registration of the disputed domain name, and that this registration was made in view of the popularity of the Complainant and its products. In the Panel’s view, such actions of the Respondent cannot be regarded as giving rise to rights or legitimate interests in the disputed domain name.

Therefore, the Panel finds that the evidence confirms the Complainant’s prima facie case, and the Respondent has no rights or legitimate interests in the disputed domain name within the meaning of the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the holder has registered or has 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 the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’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 your website or location or of a product or service on the holder’s website or location.

The Panel finds that the circumstances of the present case support a finding of bad faith of the Respondent. The Complainant has asserted that the Respondent is using the goodwill and reputation of the Complainant’s name and of the MALWAREBYTES trademark to improperly extract financial benefit, and has referred to the content of the website at the disputed domain name in support of this assertion. As discussed under the issue of rights and legitimate interests above, the website at the disputed domain name offers products of the same categories and with similar names to those offered by the Complainant, and this may lead to confusion of Internet users, as the disputed domain name represents a misspelling of the Complainant’s trademark. Taking this into account, and in the lack of any denial by the Respondent, the Panel is prepared to accept the Complainant’s contention that the Respondent must have sought to register and use the disputed domain name with knowledge of the Complainant and in an attempt to sell unauthorized alternative products by causing consumers to mistakenly believe that the products offered for sale are authorized by the Complainant.

In view of the above, the Panel is satisfied that at the time of the registration of the disputed domain name, the Respondent was aware of the Complainant and of its products, and that its registration and use was made with the Complainant and its products’ popularity in mind, in an attempt to attract, for commercial gain, Internet users to the Respondent’s website or other online locations, by creating a likelihood of confusion with the Complainant’s MALWAREBYTES trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the products offered there.

For these reasons, the Panel finds that the Respondent has registered and used 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 <malwarebyes.org> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: November 11, 2015