The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by hardcopy on July 30, 2001, and by email on August 8, 2001. The Center has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel (the "Panel") is satisfied that this is the case.

On August 3, 2001, the Center sent an Acknowledgement of Receipt of Complaint to the Complainant. On August 6, 2001, the Center sent to the registrar a request for verification of registration data. On the next day, the registrar confirmed that it is the registrar of the domain name in dispute (the "Domain Name") and that it is registered in the Respondent's name.

Having verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Center on August 9, 2001, sent to the Respondent, with a copy to the Complainant, the Complaint and a Notification of Complaint and Commencement of Administrative Proceeding.

The Complaint and Notification were sent by federal express and email (Complaint with attachments) to Respondent and EARTHLINK, INC. at the postal addresses and email addresses provided by the Registrar and to <[email protected]>. The Panel believes that this email may not have been received by any of the email addresses, as they all returned "permanent fatal errors", with the exception of <[email protected]>, Respondent’s technical contact. The Federal Express package of the Complaint to Respondent was returned as being undeliverable due to an "incorrect address".

The formal date of the commencement of this administrative proceeding is August 9, 2001.

The Respondent did not submit a Response to the Complaint. On September 5, 2001, the Center sent Notification of Respondent Default by email to <[email protected]> ("permanent fatal error" message returned) and <[email protected]> and by Federal Express to Respondent (returned as being undeliverable due to an "incorrect address") and EARTHLINK, INC. at the postal addresses provided by the Registrar.

The Center appointed the single member administrative panel (the "Panel"). The Panel was properly constituted. The undersigned Panelist, Maxim H. Waldbaum, submitted the Statement of Acceptance and Declaration of Impartiality and Independence. The Center sent the parties the Notification of Appointment of Administrative Panel on September 20, 2001, by email.

For the purposes of clarification, the Panel notes that the case file received from the Center in connection with this dispute included references to <cyberguardianinc.com> and <cyberguarding.com>. The Panel’s decision pertains only to <cyberguardinc.com>.

No further submissions were received by the Center or the Panel, as a consequence of which the original date scheduled for the issuance of the Panel’s decision was October 4, 2001.

4. Factual Background

Complainant, Cyberguard Corporation, is a provider of computer network security solutions, namely firewalls. The mark CYBERGUARD is a federally registered trademark in the United States, U.S. Registration No. 2,007,636. The records of the United States Patent and Trademark Office indicate that this registration issued on October 15, 1996, in the name of Harris Computer Systems Corporation, and that an assignment of the registration to Cyberguard Corporation was recorded on January 21, 1997.

Complainant’s official web site is connected to the domain name <cyberguard.com>. Complainant has also registered the following domain names: <cglab.com>, <cybg.com>, <cyberguardcorp.com>, <vpnguard.net>, <vpnguard.org>, <vpnguard.com>, and <cyberguard.net>.

Respondent registered the Domain Name <cyberguardinc.com> on May 11, 1998.

According to the information available at the Domain Name, the Respondent, operating under the name CyberGuard, Inc., is a mid sized information technology consulting firm specializing in Enterprise Resource Planning, Relationship Management, Internet and Legacy Systems.

5. Parties’ Contentions
A. Complainant

Complainant contends as follows:

Complainant is a leading provider of computer network security solutions to companies, banks, financial institutions and governmental entities worldwide under its "Cyberguard" name and mark. Since at least as early as 1994, the Complainant has developed and installed highly effective "firewalls" using a number of architectures to protect data and networks from unauthorized access while enabling customers to benefit from new Internet, Intranet and extranet applications. As a result of the long term and widespread use and sales of products and services, the Complainant has become well known to the trade and public throughout the United States and in many countries worldwide, and has established extensive goodwill, public recognition and secondary meaning in and to the "Cyberguard" name and mark.

The Respondent’s domain name <cyberguardinc.com> contains the identical term "cyberguard" which is the subject of the Complainant’s federally registered trademark, with the addition of the corporate designation "inc" at the end of "cyberguard." The record for the Respondent’s domain was created on May 11, 1998, which is nearly two (2) years subsequent to the federal registration of the Complainant’s trademark noted above, and three and one-half (3-1/2) years after its first use in commerce by the Complainant.

The Respondent is engaged in a computer-related business, and offers a number of "tools" for Internet and Intranet applications to its customers. It provides consulting services, development services, systems integration and implementation and related products to customers in Internet and intranet applications, as well as other areas. Although it appears the Respondent does not specifically offer network security systems, the products and services of the Respondent are sufficiently related to those of the Complainant that they could be encountered by the same consumers under circumstances which could give rise to the mistaken belief that the products and services come from the same source, or are sponsored, licensed, approved or otherwise affiliated with the products and services of the Complainant. The same customers in the market for the Internet or Intranet "tools" and consulting services offered by the Respondent, could also be seeking the Internet or Intranet security system for their computer network sold by the Complainant. The Respondent had an affirmative duty to avoid confusion and select a term for use in its domain name which is not identical or confusingly similar to a name and mark which was in use, and is the subject of an U.S. trademark registration. A simple search of the records of the U.S. Trademark Office in 1998, when the domain name record was created by Respondent, would have uncovered the Complainant's 1996 federal registration, but it appears no such search was conducted.

The Respondent adopted the confusingly similar domain name in question long after the first use and federal registration of the "Cyberguard" mark by Respondent. There is nothing on Respondent’s web site or otherwise to suggest it has any rights or legitimate interest in respect of the <cyberguardinc.com> domain name superior to those of the Complainant, and the Respondent has no authorization, license, sponsorship, endorsement or other affiliation with Complainant giving it any rights, title, interest or permission to use the "Cyberguard" name and mark.

The use by Respondent of the domain name <cyberguardinc.com> in connection with a web site related to computer-related products and services, including those intended for use on the Internet and intranet, constitutes an intentional attempt, for commercial gain, to attract customers to such web site by creating a likelihood of confusion with the Complainant’s "Cyberguard" name and mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s web site, of the Respondent’s business or of the products and services offered on the Respondent’s site. This constitutes bad faith on the part of Respondent pursuant to Paragraphs 4(a) and (b) of the Policy.

B. Respondent

Respondent failed to submit a Response to the Complaint.

6. Discussion and Findings
A. General

According to Paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The 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 Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

B. Identical or Confusingly Similar

The mark CYBERGUARD is a federally registered trademark in the United States. The records of the United States Patent and Trademark Office indicate that Complainant is the assignee of this registration. Complainant has failed to set forth evidence that its CYBERGUARD mark has been in continuous use since registration, has established goodwill, or has acquired secondary meaning. Complainant has merely stated, in conclusory form only, that it "has established extensive goodwill, public recognition and secondary meaning in and to the "Cyberguard" name and mark". Based on the evidence submitted, the Complainant has failed to show that it has substantial rights from use of the mark CYBERGUARD. However, it appears that Complainant does have some, possibly limited, rights to the mark CYBERGUARD.

The Panel next looks to whether the Domain Name is identical or confusingly similar to Complainant’s mark. The Panel finds that the Domain Name <cyberguardinc.com>, which includes the corporate designation "inc" at the end of "cyberguard", is substantially similar to Complainant’s mark CYBERGUARD and thus may be considered confusingly similar to Complainant’s mark.

Therefore, the requirement of Paragraph 4(a)(i) is met.

C. Rights or Legitimate Interests of the Respondent

Complainant alleges that the Respondent has no rights or legitimate interests in the Domain Name. Particularly, Complainant alleges that there is nothing on Respondent’s web site or otherwise to suggest it has any rights or legitimate interests in respect of the <cyberguardinc.com> domain name superior to those of the Complainant, and the Respondent has no authorization, license, sponsorship, endorsement or other affiliation with Complainant giving it any rights, title, interest or permission to the "Cyberguard" name and mark.

While Respondent has not responded to the Complaint, according to the information available at the Domain Name, the Respondent appears to be operating a software business under the business name "CyberGuard, Inc.". The name is displayed prominently on the web site. Based upon this evidence, the Panel finds that the Respondent appears to have a legitimate interest in the name "CyberGuard, Inc."

Therefore, the requirement of Paragraph 4(a)(ii) is not met.

D. Bad Faith

For the purposes of Paragraph 4(a)(iii), 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 respondent 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 your documented out-of-pocket costs directly related to the domain name; or

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

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

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

Complainant alleges that the use by Respondent of the domain name <cyberguardinc.com> in connection with a web site related to computer-related products and services, including those intended for use on the Internet and intranet, constitutes an intentional attempt, for commercial gain, to attract customers to such web site by creating a likelihood of confusion with the Complainant’s "Cyberguard" name and mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s web site. Complainant further alleges that such conduct constitutes bad faith on the part of Respondent pursuant to Paragraphs 4(a) and (b) of the Policy.

The Panel is not persuaded that the Domain Name was registered and is being used in bad faith. The evidence is consistent with the possibility that the Respondent registered the Domain Name for its own use as a descriptive name.

Respondent appears to be operating a computer related business under the name. There is nothing on the web site or in the record before the Panel which indicates that Respondent had knowledge of Complainant’s mark or has intentionally attempted to attract, for commercial gain, customers to such web site by creating a likelihood of confusion with the Complainant’s "Cyberguard" name and mark.

On the available evidence, the Panel finds that Respondent’s registration and use of the Domain Name was not in bad faith and thus, the requirement of Paragraph 4(a)(iii) is not met.

7. Decision

The Panel, having found that the Domain Name is confusingly similar to Complainant’s mark, that Respondent appears to have rights or legitimate interests in the Domain Name, and that there is no evidence to support the conclusion that the Domain Name has been registered and/or is being used in bad faith, finds in favor of Respondent.

The Panel directs that the Complaint be dismissed.

Maxim H. Waldbaum
Sole Panelist

Dated: October 4, 2001