The Complainant is Grisoft, s.r.o., of Brno, Czech Republic, represented by Pepper Hamilton, LLP, United States of America.
The Respondent is Original Web Ventures Inc., of Kanata, Ontario, Canada, represented by ESQwire.com Law Firm, United States of America.
2. The Domain Name and Registrar
The disputed domain name <avg.com> is registered with Moniker Online Services, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on October 27, 2006, and in hard copy on November 1, 2006. The Center transmitted its standard request for registrar verification to the Registrar by email on October 31, 2006. The Registrar responded by email on November 9, 2006, confirming that it had received a copy of the Complaint, that the Domain Name was registered with it, that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied, that the disputed domain name was locked and that the registration agreement was in English and contained a submission to the jurisdiction at the location of its principal office. The Registrar also identified the registrant of the disputed domain name and provided the contact details in its Whois database.
The name and contact details of the registrant differed from that given for the Respondent in the Complaint. The Center invited the Complainant to amend the Complaint accordingly, which it did by email on November 15, 2006, and hard copy on November 20, 2006.
The Center verified that the Complaint as amended satisfied the formal requirements of 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 November 21, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 11, 2006. The Response was filed with the Center by email on December 11, 2006, and in hardcopy on December 13, 2006. The Respondent elected in its Response to have the dispute decided by a three-member panel.
The Respondent prepared a supplemental filing which it sent to the Complainant on January 31, 2007. The Complainant responded by letter of February 1, 2007 which it copied to the Center and asked to be submitted to the Panel. The Respondent subsequently submitted a supplemental filing to the Center on February 12, 2007.
The Center appointed Jonathan Turner, Ross Carson and David E. Sorkin as Panelists on February 13, 2007. Each member of 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. Having reviewed the file, the Panel is satisfied that the Complaint as amended and the Response complied with applicable formal requirements and that the dispute has been submitted to a duly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.
4. Procedural Ruling
Under the Policy and the Rules, parties have no right to submit additional arguments or evidence. However, under paragraph 10 of the Rules the Panel may, in its sole discretion, request further statements or documents from the Parties; and a party’s request may be regarded as an invitation to the Panel to exercise this discretion.
The principles which should be applied in exercising this discretion have been considered in numerous cases decided under the Policy and Rules and were summarised in The E.W. Scripps Company v. Sinologic Industries,WIPO Case No. D2003-0447as follows: “additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; … if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure; and … the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.”
Although the parties have neglected the last part of the guidance set out above, the Panel has decided to admit both supplemental filings. The first part of the Respondent’s additional submission seeks to correct the Response by withdrawing a statement which is untrue. A Respondent is required by paragraph 5(b)(viii) of the Rules to certify “that the information contained in this Response is to the best of the Respondent’s knowledge complete and accurate”. Particularly in view of this continuing representation, it is incumbent on a Respondent to seek to correct materially inaccurate information in its Response, and a Panel should be slow to prevent it from doing so.
The second part of the Respondent’s additional submission is largely based on the recent decision in Mariah Media Inc v First Place Internet Inc, WIPO Case No. D2006-1275, which was probably published after the Response was filed. The Respondent could not reasonably have known of this decision when it submitted the Response.
The Complainant’s additional submission addresses matters arising out of the correction made to the Response by the Respondent’s supplemental filing as provided in draft to the Complainant.
Although it appears that the Respondent revised its supplemental filing after the Complainant made its submission in response to the draft, the Panel considers it unnecessary to invite the Complainant to make any further submission. The Panel notes that the Complainant is professionally represented and would have sought to make a further submission if it considered that one was required. The Panel is also conscious of the fact that procedural economy is one of the primary objects of the administrative procedure provided under the Policy and the Rules.
5. Factual Background
The Complainant develops software to protect computers against viruses, spyware and other electronic intrusions which it sells under the mark “AVG” among others. The Complainant has registered this mark in the United States of America, the European Community, and the Czech and Slovak Republics.
The Complainant and its affiliated companies also own 42 domain names with SLDs consisting of “avg” alone or “avg” together with descriptive terms relating to its business such as “antimalware”. These domain names are used for websites which promote and sell the Complainant’s software.
The Respondent acquired the disputed domain name in September 2006. At the date of the Complaint it resolved to a web page which displayed “Avg.com – Financial and Personal Protection” in the Internet Explorer toolbar. The body of the page had a heading comprising a graphical motif consisting of four squares, followed by “Avg.com”, a byline underneath in smaller italics “What you need, when you need it”, and a search box on the right hand side.
Underneath the heading on the left of the page there was a list of links under an italicized heading “Main” with the words “Internet Filtering”, “Free Credit Report”, “Internet Content Filtering”, “Family Safe Internet”, “Free Internet Filtering” and “Identity Theft Protection”. Linked pages advertised and provided links to websites of or advertising the Complainant’s competitors in the provision of software protecting against viruses, spyware and other electronic intrusions.
In the center of the home page there was a larger version of the four squares motif. On the right hand side there were links with the words “Background Check” and “Online Credit Report” under the italicized heading “Popular”.
The Complainant states that the disputed domain name is identical to the mark AVG in which it has rights. It submits that the Respondent does not have rights or legitimate interests in the disputed domain name or any corresponding name, since it is not and never has been known by the name “AVG” or “avg.com”, and is not making legitimate, non-commercial use of the disputed domain name. On the contrary, according to the Complainant, the Respondent is using the disputed domain name to divert prospects and customers searching for the Complainant’s AVG products, and this is not a bonafide offering of goods or services.
The Complainant goes on to point out that acquisition of a domain name in bad faith is equivalent to registration in bad faith for the purposes of the third requirement of the Policy. The Complainant contends that the Respondent acquired the disputed domain name in bad faith since the Respondent must have had actual as well as constructive knowledge of the Complainant’s AVG mark and intended to use the disputed domain name to exploit its reputation.
In support of this allegation, the Complainant points out that it has used the AVG mark for more than a decade, has over 40 million customers for its “AVG” products worldwide, and has registered the mark AVG and registered and used domain names incorporating it as described in section 4 above.
The Complainant alleges that the Respondent is using the disputed domain name to promote products which compete with those sold under its AVG mark and to obtain “click-through” commissions by such promotion.
Finally, the Complainant says that the evidence of bad faith is reinforced by the Respondent’s used of a four square graphical device similar to one used and registered as a European Community trademark by the Complainant.
The Complainant requests a decision that the disputed domain name be transferred to it.
B. Respondent
The Respondent states that it acquired the disputed domain name because “avg” is the common abbreviation for “average”, and that it had no knowledge of the Complainant or its use of the mark AVG at the time. This contention is supported by a Declaration of its President annexed to the Response. The Respondent further points out that it did not have constructive knowledge of the Complainant’s AVG mark, since it resides in Canada where the mark has not been registered. According to the Respondent, the Complaint must fail in the light of these facts.
The Respondent states that he parked the disputed domain name with DomainSponsor, which creates custom landing pages containing pay-per-click advertisements. These advertisements are generated automatically by “behavioural optimization” so that they reflect the searches performed by visitors. The Respondent adds that the four squares graphic is used by DomainSponsor on all websites which it provides and was not derived from the Complainant’s device mark.
The Respondent takes no position regarding the first requirement of the Policy. However, it maintains that it has a legitimate interest in the disputed domain name since it is generic. The Respondent further contends that the Complainant has failed to prove that the disputed domain name was registered and is being used in bad faith, since there is no evidence that the Respondent knew of the Claimant and intended to profit from using the Claimant’s mark.
Finally, the Respondent submits that the Complainant has abused the Policy by bringing a Complaint wholly without merit and knew or should have known that it could not prove one or more essential elements of the Policy.
Accordingly, the Respondent requests that the Complaint be dismissed and that a finding of reverse domain name hijacking be recorded.
7. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, to succeed in this proceeding, the Complainant must prove (A) that the disputed domain name is identical or confusingly similar to a mark in which it has rights, (B) that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and (C) that the disputed domain name was registered and is being used in bad faith. These requirements will be considered in turn.
A. Identical or Confusingly Similar
The disputed domain name is identical to the mark AVG in which the Complainant has registered rights. For the purpose of this requirement, it is well-established that the generic “.com” suffix should be discounted. The Panel accordingly concludes that this requirement is satisfied.
B. Rights or Legitimate Interests
Although the Respondent’s claim is that it registered the disputed domain name because “avg” would be an abbreviation of “average”, it has not used the domain name for a website about averages. Instead the domain name has resolved to a website which displays pay-per-click advertisements for products and companies competing with the Complainant. Nor has the Respondent made any demonstrable preparations to use the domain name for a website about averages. Had it done so, evidence of such preparations should and would have been provided in the Response and in the Respondent’s declaration annexed to the Response. Nor is there any evidence of the Respondent using or preparing to use any corresponding name for any legitimate business.
In these circumstances, the Panel is satisfied that the Respondent has not used or made demonstrable preparations to use the domain name or any corresponding name in connection with a bona fide offering of goods and services.
The Respondent has not disputed the Complainant’s contention that the Respondent is not commonly known by the domain name. Nor can it be said that the Respondent is making legitimate non-commercial or fair use of the domain name.
The Panel does not accept the Respondent’s suggestion that the mere ownership of a domain name establishes a right or legitimate interest in it. On the contrary, the Panel agrees with the observation in TRW Inc. v. Autoscan Inc., WIPO Case No. D2000-0156 that “If mere registration of the domain name was sufficient to establish rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy, then all registrants would have such rights or interests, and no complainant could succeed on a claim of abusive registration”.
In all the circumstances the Panel concludes that the Respondent does not have a right or legitimate interest in respect of the disputed domain name.
C. Registered and Used in Bad Faith
It is clear from the Policy and confirmed in many decisions (e.g. Telstra Corp. Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003) that the two parts of the third requirement are cumulative conditions: the Complainant must show that the disputed domain name both was registered and is being used in bad faith. In this case it is convenient to consider first whether the domain name is being used in bad faith.
In considering this question, changes made by the Respondent following the Complaint should be ignored. The Policy would readily be frustrated if this requirement could be evaded by changes made after a Respondent is given notice of the Complainant’s objection.
At the date of the Complaint, the disputed domain name was being used for a website which displayed pay-per-click advertisements for products and companies competing with the Complainant. The Respondent was thereby likely to profit from the diversion of Internet users attracted to this website by the likelihood of confusion with the Complainant’s mark. The confusion was likely to be enhanced by the uses of “avg.com” on the web page described in section 4 above, notably in the Internet Explorer toolbar and the copyright notice, which would imply that the website was produced by a business or organization called “Avg.com” (see, to the like effect, Deutsche Telekom AG v. Mighty LLC/Domain Admin), WIPO Case No. D2005-0027
Although the web pages were automatically generated by DomainSponsor’s software on the basis of searches made by visitors, this system is inherently likely to result in the display of sponsored links in the field in which a company whose mark corresponds to the domain name is active, including that company’s competitors. It is thus a system which is likely to enable the registrant to obtain click-through commissions from the diversion of internet users who are confused where (as here) the second level domain (“SLD”) is identical to the mark of a company which has been used on a substantial scale for a number of years.
The Respondent is ultimately responsible for the content of the website generated by DomainSponsor’s technology. As the Respondent notes, the nature of DomainSponsor’s “behavioural optimization” system is explained on its website. As was observed in Sanofi-Aventis, Aventis Pharma SA and Aventis Pharma Deutchland GmbH v 1N4 Web Services, WIPO Case No. D2005-0938 (which also concerned a website generated by DomainSponsor):
“Whatever relationship the Respondent had come to with the party who created the website content is, in the Panel’s opinion, irrelevant to the finding for the purposes of this Policy that it was the Respondent which owned the domain name and which was responsible for whatever was posted there.
“The Panel is satisfied that the disputed domain names were being used to attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark. The Panel finds that the Respondent either passively condoned or had a blameworthy indifference to the material posted to its domains by another.”
In Paule Kav. Paula Korenek, WIPO Case No. D2003-0453 the panel held that the reference to the registrant’s intention in paragraph 4(b)(iv) of the Policy should be regarded as importing an objective, rather than a subjective, test:
“…. how is the ‘intentional’ element required under paragraph 4(b)(iv) to be defined? The Panel is guided in its consideration of the issue by the fact that a subjective test of intent (thus considered more or less as a mens rea element) would be difficult if not impossible to apply given that credibility must be assessed only on the basis of documentary evidence. It is difficult to enter the minds of the parties to determine their subjective intent. The proper test in this Panel’s view is whether the objective consequence or effect of the Respondent’s conduct is to free-ride on the Complainant’s goodwill, whether or not that was the primary (subjective) intent of the Respondent.”
It is also relevant in this connection that the SLD in this case is one which could well be the distinctive mark of a company. In this respect the present case differs from some of those cited by the Respondent where the SLD was very obviously a purely descriptive term or phrase which was unlikely to be any particular company’s mark.
In addition, if the respondent had any desire to avoid confusion he would rapidly have ascertained that the name “AVG” was in use by the complainant, not least in numerous domain names. Even the most cursory check would have shown that AVG was in use as the Complainant’s mark.
Thus the Respondent made arrangements for the use of the disputed domain name, the natural and probable consequence of which was that it profited from the diversion of internet users by confusion between the domain name and the Complainant’s mark.
In these circumstances, the majority of the Panel concludes that at the time of the Complaint, the Respondent was using the disputed domain name in bad faith.
It remains to consider whether the disputed domain name was registered in bad faith. It is well established that “registration” for this purpose includes the acquisition of a domain name, but does not include the maintenance or renewal of a registration: see MC Enterprises v. Mark Segal, WIPO Case No. D2005-1270, Indeenhaus Kommunikationsagentur GmbH v. Ideenhaus GmbH, WIPO Case No. D2004-0016.
It is therefore necessary to determine whether the Respondent acquired the disputed domain name in bad faith. The Panel cannot reject the Respondent’s evidence that it acquired the domain name because its SLD is an abbreviation for “average”. Nevertheless, it seems clear that the Respondent had not prepared a specific plan for a website about averages when it acquired the domain name. If it had done so, it would presumably have given details of this in its Response and the annexed declaration. It also appears that the Respondent parked the domain name with DomainSponsor on or very soon after acquiring it.
In these circumstances, the majority of the Panel infers that the Respondent intended to place the domain name with DomainSponsor on its acquisition, at any rate until such time as it developed a plan for its use or a third party made an attractive offer. As discussed above, the natural and probable consequence of such use was that the Respondent profited from the diversion of Internet users by confusion between the domain name and the Complainant’s mark. Furthermore, the Respondent is likely to have appreciated this consequence in the light of the explanation of DomainSponsor’s optimization system on its website.
In the view of the majority of the Panel, an intention to use the domain name, even for a limited period, in a way which would enable the registrant to profit from diversion of internet users through confusion with a corresponding mark constitutes bad faith for the purposes of the Policy.
Accordingly, the majority of the Panel concludes that the disputed domain name was registered in bad faith as well as being used in bad faith, and that the third requirement of the Policy is satisfied.
D. Reverse Domain Name Hijacking
Since the majority of the Panel finds that the Complaint is justified, it follows that the allegation of reverse domain name hijacking must be rejected
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel, by a majority, orders that the domain name <avg.com> be transferred to the Complainant.
Jonathan Turner
Presiding Panelist
Ross Carson Panelist
Dated: March 5, 2007
Dissenting Opinion
I respectfully dissent.
While a domain name registrant may be liable in some circumstances for actions of a third party to whom the registrant has licensed or entrusted a domain name, it is not clear to me that any infringing use in this case continued after Respondent became aware of Complainant or its objections. I would therefore hesitate to find that Respondent used the domain name in bad faith.
As to bad faith registration, the relevant question is not what Respondent could or should have known when it acquired the domain name, but rather what Respondent’s actual knowledge and intentions were at that time. I do not believe there is sufficient evidence in the present record to support an inference that Respondent was aware of Complainant or its mark at that time, let alone that Respondent chose to acquire the domain name for reasons related thereto.
For these reasons, I would find that the Complainant has failed to sustain its burden of proving that the domain name was registered and used in bad faith, and would dismiss the Complaint on that basis.
David E. Sorkin Panelist
Dated: March 5, 2007
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