The Complainant is PGP Corporation, Palo Alto, California, United States of America, represented by Cooley Godward Kronish LLP, United States of America.
The Respondent is SafeLogic, Paris, France.
2. The Domain Name and Registrar
The disputed domain name, <pgeep.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 March 14, 2007. On March 16, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 19, 2007, 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.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (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 on March 28, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2007.
At the request of the parties the Center then suspended the proceedings until May 17, 2007, to enable the parties to settle the dispute amicably. Extensions of the suspensions then followed until, at the request of the Complainant, the Center re-instituted the proceedings on September 24, 2007 nominating the due date for Response as September 25, 2007.
The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 26, 2007.
The Center appointed Tony Willoughby as the sole panelist in this matter on October 8, 2007. 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 engaged in the provision of branded email and data encryption software. The brand in question is PGP.
The Complainant’s trading website is at “www.pgp.com”.
The Complainant is the proprietor of a large number of trademark registrations of PGP in classes 9 and 42 for computer programs and related goods and services, the earliest of which dates back to 1995.
The Domain Name was registered on July 7, 2005. As at the date of the Complaint, the Domain Name was connected to the Respondent’s website. At that time, the Respondent was using its website to offer free provision of ‘pGeep’ software to allow “you to encrypt your documents and folders”.
On September 26, 2007, the Respondent emailed the Center to state: “we don’t use the domain <pgeep.com> anymore”.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s PGP trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith within the meaning of Paragraph 4(b)(iv) of the Policy.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:
(i) The 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 Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
B. Identical or Confusingly Similar
Absent the generic domain suffix, the Domain Name comprises the Complainant’s trademark with ‘ee’ interspersed between the second and third letters. The result is a phonetic equivalent to the Complainant’s trademark.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s PGP trademark.
C. Rights or Legitimate Interests
That the Respondent was aware of the Complainant and its trademark at time of registration of the Domain Name is not in doubt. The Respondent’s website was offering software in precisely the same product area as the Complainant’s PGP software and indeed included references to the Complainant’s product.
Knowingly using a domain name in that way cannot constitute a bona fide offering of goods and services for the purposes of paragraph 4(c)(i) of the Policy and neither of the other examples of rights and legitimate interests set out in paragraph 4(c) of the Policy appears to be applicable.
In a letter written to the Complainant’s representative by the Respondent on April 10, 2007, the Respondent acknowledged that it was well aware of the Complainant’s “long established rights in PGP trademark”, but did not think that pGeep was too close to constitute an infringement of those rights. The Respondent went on to say that its intentions were bona fide.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered the Domain Name with the intention of misleading Internet users into believing that the Respondent and/or its goods and services are in some way associated with the Complainant.
The Respondent in its April 10, 2007 letter referred to in section C above denies any bad faith intent and claims that the French and Community trademark offices accepted the Respondent’s trademark applications without adverse comment. The Respondent has not put before the Panel any supported evidence of any kind, so the Panel does not know what the applications, if there were any, covered.
If there is a good faith explanation for what the Respondent has done, it would have been very easy for the Respondent to have responded properly to the Complaint. Moreover, the stated purpose of the above-mentioned letter was to seek a suspension of this administrative proceeding to enable the Respondent to transfer its business and clientele to a new URL before transferring the Domain Name to the Complainant. Evidently, and despite several extensions of the suspension, the transfer of the Domain Name never took place with the result that this administrative proceeding has had to be re-instated and the Complainant has lost the chance of a rebate of part of the fee.
While the Respondent may have thought that what it was doing by registering and using the Domain Name in the way that it did, did not constitute trademark infringement, it must nonetheless have hoped and anticipated that by selecting a confusingly similar domain name to the Complainant’s trademark, it would derive a commercial benefit.
The Panel is in no doubt that the registration and use for commercial gain of a domain name, which is known and intended to be phonetically identical to a competitor’s domain name and trademark, constitutes bad faith registration and use under Paragraph 4(b)(iv) of the Policy.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <pgeep.com>, be transferred to the Complainant.
Tony Willoughby Sole Panelist
Dated: October 22, 2007
Stay updated! Get new cases and decisions by daily email.
