WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kudelski S.A. v. Fresh Fragile, freshfrag

Case No. D2021-4229

1. The Parties

The Complainant is Kudelski S.A., Switzerland, represented by KATZAROV S.A, Switzerland.

The Respondent is Fresh Fragile, freshfrag, Malaysia.

2. The Domain Name and Registrar

The disputed domain name <kudleskisecurity.com> is registered with GMO Internet, Inc. d/b/a

Discount-Domain.com and Onamae.com (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2021. On December 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On December 20, 2021, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. On December 22, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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 in English and Japanese of the Complaint, and the proceedings commenced on December 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 20, 2022.

The Center appointed Masato Dogauchi as the sole panelist in this matter on February 8, 2022. 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 provider of tailored cybersecurity solutions to help enterprises and public sector institutions assess risks and vulnerabilities and protect their data and systems. It has offices and labs in Switzerland, the United States of America, the United Kingdom, Germany, France, Singapore and Taiwan Province of China.

The Complainant has owned the trademark registration for the mark KUDELSKI SECURITY (International Trademark Registration No. 1308385 for the mark KUDELSKI SECURITY, registered on March 17, 2016 in classes 09, 35, 38, 41, 42, 45 and designating the United States and the European Union).

The Complainant owns the domain name <kudelskisecurity.com> since July 18, 2012.

The disputed domain name was registered on October 25, 2021. The disputed domain name is not associated with an active website.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions are divided into three parts as follows:

First, the Complainant asserts that the disputed domain name is confusingly similar to its trade mark and its domain names associated. The disputed domain name is almost identical to the Complainant’s registered trademark. It differs from the Complainant’s trademark merely by the reversal of the letter “e” and the letter “l” that does not influence the similar overall impression of the disputed domain name and the Complainant’s trademark since there are only minor differences in the appearance and pronunciation. This is a clear case of typosquatting and, as decided in previous UDRP decisions, the practice of typosquatting creates domain names that are confusingly similar to the relevant mark. Further, on the basis of well-established authority, the generic Top-Level Domain, in this case “.com”, should be disregarded in assessing confusing similarity.

Second, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to prior UDRP decisions, it is sufficient that the complainant shows prima facie that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the Respondent. The Complainant confirms that the Respondent is not affiliated with or connected to the Complainant in any way. At no time has the Complainant licensed or otherwise endorsed, sponsored or authorized the Respondent to use any of the Complainant’s marks or to register the disputed domain name. There is also no evidence that the Respondent has been commonly known by the disputed domain name or that it has any rights that might predate the Complainant’s rights with regard to the disputed domain name. The Respondent has not used the disputed domain Name in connection with the bona fide offering of goods or services. Instead, the disputed domain name is not associated with an active website.

Third, the Complainant asserts that the disputed domain name has been registered and is being used in bad faith. The trademark and company name of the Complainant “Kudelski”, since of its founding in 1951, is based on its founder’s name, Stefan Kudelski, thus being very unique. The Respondent could not ignore the existence of the Complainant and of trademarks at the time of the registration of the disputed domain name. It is well-settled that the practice of typosquatting, of itself, is evidence of the bad faith registration of a domain name. It is to be noted that in addition to the disputed domain name, the Respondent registered <kudelsksecurity.com> domain, another version of typo of the Complainant’s trade name, on the next day od the registration of the disputed domain name. It should also be noted that there are 24 different domain names, including those of the names of major companies and brands, associated with the email address of the Respondent. Lastly, according to the widely accepted view, non-use of a domain name, including a blank or “coming soon” page, does not prevent a finding of bad faith under the doctrine of passive holding.

B. Respondent

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

6. Discussion and Findings

6.1. Preliminary Issue: Language of Proceedings

In respect of the language to be used in the administrative proceeding, in accordance with the Rules, paragraph 11(a), the language of the administrative proceeding shall be, in principle, the language of the registration agreement. However, the same provision allows the panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

In the present case, the Registrar has confirmed that the language of the Registration Agreement is Japanese.

The Panel determines that the language of this proceeding shall be English rather than Japanese on the following grounds:

- The Complainant requested to that effect;

- The Respondent surely has become aware of this case filed by the Complainant, even if he/she just understand Japanese language, on the ground that he/she did not reply to the notification in both English and Japanese by the Center that the Respondent was invited to indicate its objection, if any, to the Complainant’s request for the language by the specified due date; and

- The use of Japanese language would produce undue burden on the Complainant in consideration of the absence of a Response from the Respondent.

6.2. Substantive Matters

In accordance with the Rules, paragraph 15(a), a panel shall decide a case on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Since the Respondent has not made any substantive arguments in this case, the following decision is rendered on the basis of the Complainant’s contentions and other evidence submitted by the Complainant.

In accordance with the Policy, paragraph 4(a), in order to qualify for a remedy, the Complainant must prove each of the following:

(i) The disputed domain name is identical or confusingly similar to a trade mark 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.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has the right in the KUDELSKI SECURITY trade mark.

The disputed domain name can be divided into two parts: “kudleskisecurity” and “.com”. The last part represents one of the generic Top-Level Domains, which is irrelevant in the determination of the confusing similarity between the disputed domain name and the KUDELSKI SECURITY trade mark. The word “security” is found in the first part of the disputed domain name, which is same as the second part of the Complainant’s trade mark. Then the remaining spelling is “kudleski”. This word is different from the former part of the Complainant’s trade mark in that the sequential order of the letters “e” and “l” is reversed. The inversion of letters is a typical example of typosquatting. As well-established in prior UDRP decisions, and found in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9, “[a] domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark.”

Therefore, the Panel finds that the disputed domain name, being a typosquatted version of the Complainant’s KUDELSKI SECURITY trade mark, is confusingly similar to the trade mark in which the Complainant has rights. The above requirement provided for in paragraph 4(a)(i) of the Policy is accordingly satisfied.

B. Rights or Legitimate Interests

There is no evidence at all that shows the Respondent is commonly known by the name “kudleskisecurity” or that the Respondent is affiliated with the Complainant or authorized or licensed to use the Complainant’s trade mark.

The disputed domain name resolves to an inactive page. This suggests that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or for any legitimate noncommercial or fair use. Moreover, as found above, the typosquatting nature of the dispute domain name is suggestive of Respondent’s intent to confuse Internet users expecting to find the Complainant, which does not confer rights or legitimate interests upon the Respondent.

Since the Respondent did not reply to the Complainant’s contentions in this proceeding, the Panel finds on the available record that the Complainant has established an unrebutted prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The above requirement provided for in paragraph 4(a)(ii) of the Policy is accordingly satisfied.

C. Registered and Used in Bad Faith

The Complainant is a provider of tailored cybersecurity solutions to help enterprises and public sector institutions assess risks and vulnerabilities and protect their data and systems. It has offices and labs in several countries. ln consideration of the Complainant’s international business using the KUDELSKI SECURITY trade mark, it is highly unlikely that the Respondent would not have known of the Complainant’s rights in the trade mark at the time of the disputed domain name’s registration. ln addition, in light of the fact that nothing in the disputed domain name bears a reasonable relevance to the name of the Respondent and number of letters in the Complainant’s KUDELSKI SECURITY trade mark, which is sixteen letters, there can be found no reasonable possibility of fortuity in the Respondent’s innocent registration of the disputed domain name. Moreover, considering the Respondent’s near simultaneous registration of the <kudelsksecurity.com> domain, the pattern of typosquatting registrations targeting the Complainant further supports a finding of bad faith. Furthermore, under the circumstances of this proceeding, the non-use of the disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding.

Since the Respondent did not reply to the Complaint in this proceeding and based on the available case file, it is possible for the Panel to find that the disputed domain name has been registered in bad faith and is being used in bad faith. The above requirement provided for in paragraph 4(a)(iii) of the Policy is accordingly satisfied.

ln conclusion, all three cumulative requirements as provided for in paragraph 4(a) of the Policy are determined to be satisfied.

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 <kudleskisecurity.com> be transferred to the Complainant.

Masato Dogauchi
Sole Panelist
Date: February 21, 2022