WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lavasoft Limited v. WebAttack Inc., Marco Gransee

Case No. D2011-2034

1. The Parties

Complainant is Lavasoft Limited of Sliema, Malta, represented by Saul Ewing LLP, United States of America (“the United States” or the “US”).

Respondent is WebAttack Inc., Marco Gransee of Florida, United States of America, self represented.

2. The Domain Name and Registrar

The disputed domain name <ad-aware.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2011. On November 18, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On the same date, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on November 22, 2011.

The Center verified that the Complaint together with the amended 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 2, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2011. The Response was filed with the Center on December 21, 2011.

The Center appointed Ross Carson as the sole panelist in this matter on January 11, 2012. 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

Complainant is Lavasoft Limited, a corporation organized and existing under the laws of Malta. In December 2010, Complainant purchased the stock of Lavasoft AB, a corporation that was formed and existed under the laws of Sweden. Complainant is operating the existing software publishing business previously owned by Lavasoft AB, including AD-AWARE Internet security software.

Complainant is the registered owner of the trademark AD-AWARE a Community trademark, registered as CTM registration No. 003094356, for “computer software recorded on CD-ROM for use in scanning computer hard drives, memory and operating system registries to detect and remove unwanted programs and edit operating system registries; downloadable computer software for use in scanning computer hard drives, memory and operating system registries to detect and remove unwanted programs and edit operating system registries; apparatus for recording, transmission and reproduction of digital data; downloadable electronic publications in the nature of brochures and manuals in the field of computers,” in International Class 009; and design and development of computer software; providing technological and consulting services related to computer software design and development; computer programming; maintenance, installation and updating of computer software; design and analysis of computer systems; analysis of computer systems; conversion and duplication of computer programs and data,” in International Class 042.

The Office of Harmonization for the Internal Market (“OHIM”) records for CTM registration No. 003094356 show that the application for the trademark AD-AWARE was filed on March 13, 2003, by “Nicolas Stark Computing, AB” a corporation located in Sweden. The application for the trademark AD-AWARE proceeded to registration on September 7, 2004. Subsequently in either 2007 or 2009 the name of the owner of the registered trademark was changed to “Lavasoft AB” of Gothenberg, Sweden. As noted above, Complainant acquired the stock of Lavasoft AB in December of 2010. As CTM registration No. 003094356 for the trademark AD-AWARE is now registered in Complainant’s name and Complainant is a company registered in Malta, the trademark registration must have been assigned either directly or indirectly from Lavasoft AB to Complainant.

Although Complainant alleges that it is the owner of United States trademark registration No. 2954155 for the trademark AD-AWARE registered in relation to goods and services in International Class 09, the records in the United States Patent and Trademark Office (“USPTO”) show the last listed owner of the US registration to be Lavasoft AB of Gothenberg, Sweden. The United States application for the trademark AD-AWARE was filed by Nickolas Stark Computing AB on January 28, 2003 and proceeded to registration on May 24, 2005. In December 2010, Complainant states that it purchased the stock of Lavasoft AB and is not affiliated in any manner with Lavasoft AB.

The disputed domain name <ad-aware.com> was created on March 24, 2001.

5. Parties’ Contentions

A. Complainant

A.1. Identical or Confusingly Similar

Complainant states that it is the owner of OHIM Trademark registration No. CTM 003094356 registered September 7, 2004 and United States Trademark Reg. No. 2954155 registered May 24, 2005 registered for the trademark AD-AWARE in relation to the goods and services Internet security software referred to in greater detail above

Complainant further submits that the trademark AD-AWARE has been in use by its predecessor Lavasoft AB since December 1999. Complainant states that Lavasoft AB and its AD-AWARE Internet security software product quickly became well-known as the standard in the industry for anti-virus and spyware software. Complainant submitted as evidence a SANS Institute report issued in 2002 on spyware, also known as adware, in which Complainant’s predecessors AD-AWARE software, used to scan and remove spyware from computers, was the only such product referred to in the SANS Institute report. Additional reports and reviews were submitted as evidence.

Complainant further states that its predecessor registered a domain name <adaware.com> on February 24, 2000 and began operating a website in association with the domain name <adaware.com> that promoted and offered its software products and related services used to scan and remove spyware from computers. Complainant further states that its predecessor and subsequently itself have operated a website promoting and offering AD-AWARE products at that location on a continuous basis since that time.

Complainant submits that the disputed domain name <ad-aware.com> is identical to Complainant’s trademark AD-AWARE.

A.2. No Rights or Legitimate Interests in respect of the Domain Name

Complainant states that Respondent does not have a legitimate interest in the domain name <ad-aware.com>. Respondent’s business was initially operated as “Web Attack.” The WhoIs record for <webattack.com> discloses that in or about 2003, the business was renamed to “Snapfiles.” Respondent’s website is currently located at “www.snapfiles.com”.

Complainant further submits that its predecessor Lavasoft AB used the AD-AWARE trademark since 1999 and operated the <adaware.com> domain name at the “www.adaware.com” website on a continuous basis since February 24, 2000. According to Complainant, Respondent obtained the disputed domain name <ad-aware.com> in April 2001. The “Archive.org” page of <ad-aware.com> on April 4, 2001 is submitted as an Annex to the Complaint.

Complainant states that both Complainant’s software and Respondent’s review and downloading services are provided free of charge to consumers. Accordingly, they both rely on advertising revenue to support their services. Because Complainant and Respondent are direct competitors for both their consumers and advertisers, Respondent’s use of Complainant’s exact trademark as a domain name diverts consumers to Respondent’s site and its advertisers. Complainant’s mark is distinctive and a competitor’s registration of it almost certainly was intentional and with full knowledge of the mark and its owner, as its subsequent use makes clear.

Complainant submits on information and belief that Respondent has never operated a website at <ad-aware.com>. Rather, it uses Complainant’s trademark to divert advertising revenues that are intended for and should be accrued by Complainant. The disputed domain name and the AD-AWARE trademark are identical, the goods and services are identical or closely related, the consumers are identical, and the channels of trade are identical.

Complainant further submits that Respondent’s use of Complainant’s mark is intended to palm off Complainant’s good will and reputation in its AD-AWARE trademark. Respondent’s use of the disputed domain name serves to divert Internet users seeking Complainant to Respondent’s website, and is thus proscribed under paragraph 4(b)(iv) of the Policy as an “intentional[] attempt[] 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 your web site or location or of a product or service on your web site or location.”

A.3. Registration in Bad Faith

Complainant submits that as a reviewer of software programs, Respondent had every opportunity and motivation to be aware of the existence of Complainant’s AD-AWARE software product and trademark rights in 1999. Respondent established an Internet-based business based on drawing consumers to its website by providing software reviews and free downloads. In order to provide those reviews and downloads, Respondent was required to determine the software then existing in the marketplace. It is incomprehensible that Respondent registered a domain name identical to Complainant’s AD-AWARE software without being aware of the existence of that software.

A.4. Use in Bad Faith

Complainant submits that Respondent’s only demonstrated use of the disputed domain name, re-direction of Internet users to a competitor’s website, is classic bad faith under paragraph 4(b)(iv) of the Policy.

Complainant states that “WIPO has repeatedly recognized that actual use of a trademark without registration confers common law rights in the same domain name”. Complainant’s use of AD-AWARE in 1999 establishes its exclusive right to the trademark well before Respondent registered the disputed domain name and well after Respondent was aware of Complainant’s use of AD-AWARE. See Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc), WIPO Case No. D2003-0320.

Complainant states that paragraph 1.4 of the first WIPO Overview of WIPO Panel Views on Selected UDRP Questions provides:

“Does the complainant have UDRP-relevant trademark rights in a mark that was registered, or in which the complainant acquired unregistered rights, after the disputed domain name was registered?

Consensus view: Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The UDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights. However it can be difficult to prove that the domain name was registered in bad faith as it is difficult to show that the domain name was registered with a future trademark in mind.”

Complainant further submits that the AD-AWARE trademark was in existence and was being used at the time the disputed domain name was registered. Accordingly, a finding of identity and confusing similarity is warranted.

Complainant states that paragraph 3.1 of the WIPO Overview 2.0 of WIPO Panel Views on Selected UDRP Questions further provides:

“Can bad faith be found if the disputed domain name was registered before the trademark was registered or before unregistered trademark rights were acquired?

Consensus view: Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date [see further paragraph 1.4 above], when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right.

However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This has been found to occur: shortly before or after a publicized merger between companies, but before any new trademark rights in the combined entity have arisen; or when the respondent (e.g., as a former employee or business partner, or other informed source) seeks to take advantage of any rights that may arise from the complainant's enterprises; or where the potential mark in question is the subject of substantial media attention (e.g., in connection with a widely anticipated product or service launch) of which the respondent is aware, and before the complainant is able to obtain registration of an applied-for trademark, the respondent registers the domain name in order to take advantage of the complainant's likely rights in that mark. (In all such cases, in order to have a chance to succeed in any filed UDRP complaint, the complainant must actually demonstrate relevant trademark rights, as these are a precondition for satisfying the standing requirement under the first element of the UDRP for rights in a mark.)”

Complainant submits that WIPO UDRP panels also recognize that paragraph 2 of the Policy provides a warranty at the time of registration that the domain name will not be used in bad faith: “By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that [...] (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.” See Jappy GmbH v. Satoshi Shimoshita, WIPO Case No. D2010-1001.

Complainant states there are many software review sites, including Respondent’s, that legitimately refer to the products they are reviewing. They also legitimately refer to the names of those products when versions are offered for download. See, e.g., Deskman, TickInvest, File Scavenger, Flip PDF, etc. The Deskman software is available from its publisher at “www.deskman.com”. The TickInvest program is similarly available from its publisher at “www.tickinvest.com”. Respondent reviews TickInvest at “www.snapfiles.com”, so consumers understand that they are going to Respondent’s site. Copies of the Google search results from November 17, 2011, are submitted as an Annex to the Complaint. But the software review sites do not use the trademarks that identify the software as domain names.

Complainant states that its AD-AWARE software is an established, well-known and well regarded spyware program. Respondent's use of the disputed domain name <ad-aware.com> is intended to draw consumers who are looking for Complainant’s AD-AWARE software to its site, purposefully creating a likelihood of confusion and unfair competition with Complainant's AD-AWARE mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's reviews and free downloads. Respondent intentionally attracts Internet users to its site for commercial gain to the detriment of Complainant. The <ad-aware.com> disputed domain name is intended to be and is a source identifier for Complainant, creating actual consumer confusion and damage to Complainant.

Complainant further submits that there is no undue delay in the commencement of these proceedings as Complainant acquired Lavasoft AB and the AD-AWARE software in December 2010, it acted expeditiously to address the existence of the disputed domain name <ad-aware.com>. The WIPO Overview 2.0., paragraph 4.10, makes clear the policy on delay:

“Panels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements. Panels have noted that the remedies under the UDRP are injunctive rather than compensatory in nature, and that a principal concern is to avoid ongoing or future confusion as to the source of communications, goods, or services.”

See Alimak Hek, Inc. v. Richard Wheat, WIPO Case No. D2011-1344.

Prior to filing this Complaint, Complainant offered to purchase the <ad-aware.com> disputed domain name from Respondent. Respondent did not respond to Complainant’s offer. A copy of the correspondence is submitted as an Annex to the Complaint.

B. Respondent

B.1. Identical or Confusingly Similar

Respondent states that there is no question that the disputed domain name <ad-aware.com> is identical to the later created trademark AD-AWARE which Complainant is using as a basis for this Complaint. United States Patent and Trademarks Office records show, the AD-AWARE trademark was filed in January 2003 and did not become registered until May 2005.

Respondent states that the disputed domain name <ad-aware.com> was registered in March 2001, more than 4 years before Complainant’s AD-AWARE trademark was registered and almost two years before Complainant even filed for the trademark. At the time of filing the US trademark application, Complainant must have been aware that the disputed domain name that matched the desired trademark had already been registered almost 2 years earlier.

Respondent submits that Complainant has failed to prove that its predecessor had established common law rights in the trademark AD-AWARE prior to Respondent’s registration of the disputed domain name on March 24, 2001. Complainant alleges that the AD-AWARE product was widely known at the time when the disputed domain name <ad-aware.com> was registered by Respondent in 2001. However, the earliest evidence cited by Complainant is a single publication from 2002 of Sans Institute, which was not widely available at the time and published well after the domain <ad-aware.com> was registered by Respondent. See, Cho Yong Pil, YpcInternational v. Kee Dooseok, WIPO Case No. D2000-0754 in which the panel found that complainant had failed to establish the status of common law or service mark of two trademarks finding: “The complainant only submitted a few materials showing use of the two names. However, the materials do not show how long or how much the names have been used. Thus, the panel cannot conclude from the materials submitted by the complainant that the two names have obtained the status of common law marks”.

Respondent states that Complainant’s statement that its predecessor registered Complainant’s domain name <adaware.com> on February 24, 2000 and began operating a website that provided its AD-AWARE software products and related services on the “www.adaware.com” website is totally incorrect.

Respondent respectfully asks the Panel to exclude Complainant’s statement, and all arguments based on this false statement, from consideration as WhoIs records show that the domain name <adaware.com> was registered to and operated by “adasoft”, a company based in Australia in the year 2000 that was not related to Complainant’s software product or trademark. In fact, as of 2003 the owners of the domain name specifically stated this fact on their website: “Adaware is not associated with AD-AWARE software which is a product of the Lavasoft Company.” Complainant’s predecessor, a Swedish Corporation, carried on business using the trade name Lavasoft Company.

Respondent states that the <adaware.com> domain name was redirected to “www.users.bigpond.net.au/dstanbro/” and that was later transferred several times: “Johnny Wright” in 2004, “Domains by Proxy” in 2005 and not until February 2005 was the domain name finally transferred to “Nicholas Stark Computing AB” which is the original registrant of the AD-AWARE trademark.

Respondent further submits that the domain name records show that Complainant’s predecessor did not register the domain name <adaware.com> in February 2000 as falsely stated in the Complaint. The records also show that Complainant’s predecessor did not operate any website at the domain name <adaware.com> until the year 2005 – this fact also contradicts Complainants statement. Complete WhoIs records, Archive.org records and DNS records are provided as an Annex to the Response.

Respondent further states that the year 2005, when Complainant’s predecessor acquired the domain name <adaware.com>, happens to be the same year the AD-AWARE mark became active. It should be noted that Complainant’s predecessor decided to acquire the <adaware.com> domain name in 2005 instead of the disputed domain name <ad-aware.com>, although both of these domain names were registered by other parties at the time; Complainant’s predecessor chose to acquire the domain name <adaware.com> a domain name that is “confusingly similar” to their registered mark but does not represent the actual trademark AD-AWARE. Complainant’s predecessor did not contact Respondent to inquire about the disputed domain name <ad-aware.com>, nor did they file a complaint at the time.

Respondent submits that this leaves only two possible conclusions: 1. Complainant’s predecessor did not have any interest in the disputed domain name <ad-aware.com> and accepted the fact of having come years too late. The <adaware.com> domain name is a more valuable choice as it is less prone to typing mistakes by the user. 2. Complainant’s predecessor was fully aware of the fact that the disputed domain name <ad-aware.com> was in use and redirected to their AD-AWARE product page on “www.snapfiles.com”. Since this was only beneficial to Complainant’s predecessor’s business and facts would not support an official complaint. Respondent submits that in 2005 Complainant’s predecessor indicated consent and “accepted the Internet as it is” without inquiring about the disputed domain name <ad-aware.com> or filing a complaint.

B.2. No Rights or Legitimate Interests in respect of the Disputed Domain Name

Respondent states that Complainant’s submission that Complainant and its predecessors used the AD-AWARE trademark since 1999 and operated the “www.adaware.com” website on a continuous basis since 2001 is false based on the evidence and for the reasons pointed out above.

Respondent states that he personally registered the disputed domain name <ad-aware.com> in 2001. Since this is more than a decade ago he cannot recall the exact reasoning for registering the domain but “adware” and “ad awareness” were terms that are closely relevant to the software industry at the time. As a software distribution site, one of Respondent’s features was that it clearly marked programs that contained adware as such – which no other software site did at the time. Respondent states that he was looking for a domain name to further promote this feature and “ad-aware” was the one he ultimately picked. He remembers that he originally wanted the domain name <adaware.com> or <adware.com> but they were taken by companies that were completely unrelated to Complainant. The term “ad-aware” is derived of two common dictionary words, the term “ad” (short for “advertising”) and the term “aware”. The hyphenation is merely a compromise to connect the two words in order to register it as a domain name (to Respondent’s knowledge the hyphen is the only non-letter character allowed in a domain name, and therefore the only choice to connect the two words).

Respondent states that the fact that he worked as a software reviewer at the time that the disputed domain name was registered, i.e. on March 24, 2001 does not imply that he had automatic knowledge of all software products in existence. It is simply an allegation made to favor Complainant’s claim. Respondent’s website then “www.webattack.com” was primarily focused on Web Design and Internet Tools and only later expanded into other categories, at which time he states he certainly became aware of the AD-AWARE product and included it on Respondent’s site. But Respondent states that it already owned the disputed domain name <ad-aware.com> by then.

Respondent submits that the fact that it registered the disputed domain name <ad-aware.com> on March 24, 2001 is correct. However, as the provided “Archive.org” page shows, the disputed domain name was only parked at GoDaddy. If Respondent had indeed registered the disputed domain name in full knowledge of Complainant’s product, why did it not use the disputed domain name to immediately “divert the traffic” as alleged by Complainant. The first redirection on record at “Archive.org” occurred in May 2002 – a year after Respondent registered the disputed domain name.

Respondent states that it pointed its <ad-aware.com> disputed domain name to the AD-AWARE review page on “www.webattack.com” (later “www.snapfiles.com”). However, contrary to the allegation by Complainant, there was nothing misleading about the page. The software publisher was clearly disclosed (as in all other examples provided by Complainant), the file download was linking directly to Complainant’s predecessor’s server. During the first years, Respondent barely had any advertising at all on Respondent’s pages, certainly nothing to the degree that would divert traffic away from the AD-AWARE product. The AD-AWARE product is obviously the center piece of the page and the page is no different from any of the 8000+ other products that Respondent has listed.

Respondent submits that Complainant’s allegation that Respondent’s only demonstrated use of the disputed domain name, redirection of Internet users to a competitor's website, is not supported by the facts. Respondent states that it has never redirected traffic to a competitor’s site. Complaint has not provided a single shred of evidence to support this claim. Respondent states that it only used the <ad-aware.com> disputed domain name as of 2002 to redirect to the AD-AWARE review page on “www.webattack.com” / “www.snapfiles.com” which prominently featured the AD-AWARE product.

Respondent denies Complainant’s allegation that: “Respondent uses the <ad-aware.com> domain name to draw traffic to its web site at <snapfiles.com> and away from Complainant. A copy of the Google search results for a search of <ad-aware.com> conducted on November 17, 2011, is submitted as an Annex. Respondent’s domain name, which is identical to Complainant’s registered trademark, appears as the first search result.”

Respondent submits that Complainant’s above noted evidence is misleading and does not support the statements brought forward by Complainant. A Google search for a domain name in the form of <domain.com> will usually return the matching domain name as the top result, if it exists. This has nothing to do with regular search results. Complainant is specifically searching for the disputed domain name <adaware.com> and not for the term “Ad-aware”. If Complainant had done a proper search for the term “Ad-Aware” without adding the “.com” to it, the results would not have supported the claim.

Respondent attached Google search results for the term “Ad-aware” as an Annex. Respondent submits that the results show, contrary to Complainants claim, that the disputed domain name <ad-aware.com> does not appear in the first page of the results at all. In fact, Complainant’s own website “www.lavasoft.com” is the first result.

Respondent further submits that its site “www.snapfiles.com” is part of the results further down the page, however it is not linked to the <ad-aware.com> domain name as claimed, but to Respondent’s regular product page “www.snapfiles.com/adaware.html”.

Respondent further submits that Alexa reports show that Complainant receives a majority of the traffic at their official website “www.lavasoft.com” from search terms that are variations of the word “ad-aware” with the actual AD-AWARE trademark being the least searched-for term. The disputed domain name <ad-aware.com> does not even have a search record on Alexa for any term even remotely related to “Ad-aware”.

Respondent denies Complainant’s claim that Respondent “draws traffic to its website and away from Complainant” submitting that the contention is a fictional statement unsupported by any evidence fabricated solely for the purpose of the argument. Respondent submits that there are absolutely no facts or records that can confirm that the <ad-aware.com> disputed domain name has or had any kind of negative impact on Complainant or its predecessors and their products.

Respondent states that, on the contrary, it has provided Complainant with more than 6 million (6,508,713) recorded downloads to this day, which it directly linked to the provided URL of Complainant and its predecessor’s server (currently: “www.files.lavasoft.com/public/installer/Ad-Aware95Install.msi”) and that were monetized exclusively by Complainant or its predecessor. To claim that Respondent would have a negative impact on Complainant’s or their predecessors business is preposterous at the very least. If anything, Respondent has played a significant part in getting the AD-AWARE product where it is today.

B.3. Registration in Bad Faith

Respondent states that Complainant or its predecessor had no registered trademark or common law trademark rights in the trademark AD-AWARE prior to the date of registration of the disputed domain name on March 24, 2001.

Respondent states that Complainant did not acquire or begin using its domain name <adaware.com> until 2005.

Respondent states that Complainant has failed to prove that its predecessor had established common law rights in the trademark AD-AWARE prior to Respondent’s registration of the disputed domain name on March 24, 2001. Complainant alleges that the AD-AWARE product was widely known at the time when the disputed domain name <ad-aware.com> was registered by Respondent in 2001. However, the earliest evidence cited by Complainant is a single publication from 2002 Sans Institute, which was not widely available at the time and published well after the disputed domain name <ad-aware.com> was registered by Respondent. See, Cho Yong Pil, Ypc International v. Kee Dooseok, WIPO Case No. D2000-0754 in which the panel found that Complainant had failed to establish the status of common law or service mark of two trademarks finding: “The complainant only submitted a few materials showing use of the two names. However, the materials do not show how long or how much the names have been used. Thus, the panel cannot conclude from the materials submitted by the complainant that the two names have obtained the status of common law marks”.

Respondent states that well after it registered the disputed domain name <ad-aware.com> on March 24, 2001, it had become aware of the AD-AWARE product and listed it on Respondent’s site and then pointed Respondent’s <ad-aware.com> disputed domain name to the AD-AWARE review page on “www.webattack.com” (later “www.snapfiles.com”).

Respondent states that the fact that he worked as a software reviewer at the time that the disputed domain name was registered on March 24, 2001 does not imply that he had automatic knowledge of all software products in existence. It is simply an allegation made to favor Complainant’s claim. Respondent’s website “www.webattack.com” was primarily focused on Web Design and Internet Tools and only later expanded into other categories, at which time he states he certainly became aware of the AD-AWARE product and included it on Respondent’s site. But Respondent states it already owned the disputed domain name <ad-aware.com> by then.

Respondent submits that Complainant’s predecessor and Complainant have been carrying on business with Respondent with respect to AD-AWARE products for almost 10 years, Respondent states that they have an active distribution agreement with Complainant’s predecessor since 2003 that allows Respondent to use the AD-AWARE trademark in order to promote Complainant’s predecessor and Complainant’s products. Respondent further states it is an authorized affiliate of Complainant since 2010 and, according to their affiliation agreement, it is authorized to use Complainant’s trademark to promote Complainant’s products.

Respondent further states that Complainant’s predecessor acquired the domain name <adaware.com> in 2005, i.e. almost 4 years after Respondent registered the disputed domain name <ad-aware.com>. Respondent submits that, having regard to the continuous business relationship of almost 10 years, it appears highly unlikely that Complainant’s predecessor and Complainant would not have been aware of Respondents registration of the disputed domain name and not objected to such registration and use until 2011. See Jowissa Watch Ltd. v. Don Nicols, WIPO Case No. D2011-0086, where the panel found that complainant had failed to establish that respondent registered the disputed domain name in bad faith holding : “[...] Further, it seems unlikely that the complainant would not be aware of the Disputed Domain Name given that it was registered in 1997, and that the complainant was doing business with the respondent for many years after the Disputed Domain Name was registered.” See also, Seoul Laser Dieboard System Co., Ltd. v. SDS USA, Inc.,WIPO Case No. D2008-0306 where the panel found that complainant failed to establish that respondent, an authorized distributor, acted in bad faith in registering the confusingly similar disputed domain name holding: “[...] voicing objection to a domain name registered by an authorised distributor ten years after registration (and only after the affiliation ended) amounted to implied acquiescence to the registration of the domain name.”

Respondent further submits that Complainant had no trademark rights AD-AWARE at the date of registration of the disputed domain name on March 24, 2001, as otherwise alleged by Complainant. Official trademark documents show that the trademark was not registered until 4 years after Respondent registered the disputed domain name <ad-aware.com>. Complainant did not even register a trademark in its own country until the year 2004. Respondent states that it is impossible for the disputed domain name to have been registered in bad faith. See NetDeposit, Inc. v. NetDeposit.com, WIPO Case No. D2003-0365, where the panel found: “There are ample authorities supporting the view that a trademark that did not exist at the time the disputed domain name was registered cannot serve as the basis for a claim under the ICANN Policy, since it is impossible for the domain name to have been registered in bad faith [...]”.

Respondent states that Complainant has failed to prove that Respondent registered the disputed domain name in bad faith.

B.4. Used In Bad Faith

Complaint’s predecessor, a Swedish corporation, carried on business under the trade name Lavasoft AB. Complainant incorporated the trade name Lavasoft in its corporate name. Respondent states that it has been in an active business relationship with Complainant’s predecessor from 2003 to 2010 and an active business relationship with Complainant from 2010 to date. Respondent states that it has been a licensee of the trademark AD-AWARE since 2003. Respondent states that it has never been a competitor of Complainant or its predecessor in title.

Respondent states that as a software distribution site, it has a Submission Agreement in place with Complainant’s predecessor and Complainant that can be found at “www.snapfiles.com/submit/submissionagreement.html”, which must be accepted when software companies have their product listed on Respondent’s site. Among other things, this agreement includes the following standard clause:

“You hereby authorize WebAttack, Inc. to make limited use of your company name or product trademark for the sole purpose of maintaining or promoting your product listing on our site(s), including, but not limited to the display of screenshots, the use of company and/or product name, as well as the use of company and/or product name in Uniform Resource Locators (URLs) intended to maintain or promote your product as long as it is listed in our database.”

Respondent states that on February 18, 2003 M. Turpeinen, on behalf of Lavasoft AB, electronically accepted the Submission Agreement and officially started business relations with Respondent in order to promote the AD-AWARE product. This agreement is still active at the time of this writing. M. Turpeinen contacted Respondent again in 2005 to inquire about download statistics. Respondent further states that in 2005, Respondent was contacted by S. Ekman, on behalf of Lavasoft AB, asking it to update the download link and listing details with new information.

Respondent states that in 2010 it became part of the Lavasoft Affiliate program. A copy of email correspondence is attached as an Annex to the Response. In 2011 Respondent received the updated Affiliate Agreement which is still active to this date. This email was signed by A. Wyatt on February 15, 2011. The Lavasoft Affiliate Agreement authorizes Respondent to use Complainant’s mark and supporting materials to promote its products.

An excerpt from the Affiliate Agreement is quoted below:

1.1 “Lavasoft grants the Affiliate, during the term hereof, a non-exclusive, non-transferable, non-sublicensable and limited license, to:

(i) use the Lavasoft Marks and the Lavasoft Materials on the Affiliate Site(s) to provide links from the Affiliate Site(s) to the Lavasoft Site;

(ii) use the Lavasoft Marks and the Lavasoft Materials in Affiliate Mailers to provide links to the Lavasoft Sites;

(iii) subject to Lavasoft’s prior written approval, distribute/make available for download Trial Software Products on the Affiliate Site;

(iv) subject to Lavasoft’s prior written approval, provide download links for Trial Software Products in Affiliate Mailers; and

(v) subject to Lavasoft’s prior written approval, use the Lavasoft Marks, the Lavasoft Materials and the Lavasoft Software for any other promotional activities.”

Respondent further states that in July 2011, the Lavasoft Affiliate Program was updated to a new Platform and it was automatically transferred to the new system.

Respondent denies Complainant’s allegation that Respondent is using the disputed domain name in bad faith: “[...] by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location [...]”.

Respondent states there is no “likelihood” of confusion of the disputed domain name and Complainant’s AD-AWARE product. Complainant fails to consider the fact that Respondent is an authorized Lavasoft affiliate, and that it is also authorized to distribute Lavasoft products as part of the Submission Agreement. These two agreements grant Respondent the rights that Complainant is trying to refute. Both agreements are valid and active to this date. Respondent has been in active communications and doing business with Complainant and its predecessor for the past 8 or more years.

Respondent submits that as “Archive.org” records can verify, it has never used the <ad-aware.com> disputed domain name to mislead or confuse users or to tarnish the reputation of Complainant’s product (Annex 5 of the Response includes copies from Archive.org to confirm this allegation).

As a software review site, it lists thousands of products that Respondent makes available to users and potential buyers, and there has not been a single incident where it used the <ad-aware.com> disputed domain name in any manner that would be confusing or misleading to the visitor. The AD-WARE listing is clearly marked as published by “Lavasoft” and the download link points directly to the Lavasoft site, as requested by Lavasoft in writing.

Respondent states that all of its pages feature third party advertising, much of it is content-targeted by Google ads and out of its control - that is the norm nowadays on most websites, and the AD-AWARE product page (“www.snapfiles.com/get/adaware.html”) is no exception. The AD-AWARE product page has never received any special treatment or ads that would make it any different from the 8000+ other products that Respondent has listed on its site.

Respondent states that Complainant did not request Respondent to remove or change the product page. Quite the opposite, on October 19, 2011, only a month before the Complaint was filed, D. Zouzout, on behalf of Complainant asked Respondent to “kindly” update the AD-AWARE listing with the latest information. A copy of this email is included as an Annex to the Response. Respondent submits this is clearly not the kind of action one would expect from a company that considers it to be a “direct competitor” that is “creating actual consumer confusion and damage to Complainant.”

Respondent states that only after Complainant acquired its predecessors assets relating to its AD-AWARE products in 2010 did a sudden interest in the disputed domain name <ad-aware.com> arise in 2011. At the same time Complainant continues to maintain and update its AD-AWARE product listing with Respondent and refers to Respondent as “Valued Partner”. See GRUPORPP S.A. v. RPP, WIPO Case No. D2011-0371, where the panel held: “[...] a business adopting a new mark in today’s world must take the Internet as it finds it. If someone else has already registered a domain name identical or confusingly similar to the proposed new mark, that domain name may well be unavailable to the business unless it negotiates a transfer”.

Respondent submits that a comparison to Alimak Hek, Inc. v. Richard Wheat, WIPO Case No. D2011-1344 relied on by Complainant is not justified in this case since it has never been a competitor of Complainant, but by its own words a “Valued Partner”. In addition, unlike the facts in the Alimak case, Respondent in this case is authorized by Complainant to use the AD-AWARE mark.

Respondent submits that a comparison to Kangwon Land v. BongWoo Chun (K.W.L. Inc), WIPO Case No. D2003-0320, relied on by Complainant, is also not applicable to this case. Complainant has not established that it was, at the time, “well-known” on a scale comparable to the only state-run casino in the nation. Unlike the “Korean casino industry”, the international software industry in 2001 offered tens or even hundreds of thousands of products. The mere fact of being associated with the software industry does not automatically constitute knowledge of all products available. Furthermore, Complainant and Respondent are not competitors, as it has been previously pointed out, but partners. Unlike in the present case, Respondent in the Kangwon case was not authorized to use Complainants mark. Respondent herein, on the other hand, is fully authorized to use the mark in order to promote, distribute and sell the AD-AWARE product.

Respondent further submits that it completely understands the need for exceptions (as referenced by Complainant), however, this case clearly does not represent, even remotely, any circumstances that would justify a ruling against the precedent. There has not been any prior involvement between Complainant and Respondent. Complainant was doing business from a different continent without even owning a “.com” domain name (related to the product) at the time.

Respondent further submits that Complainant did not provide any evidence to establish “wide recognition” of the non-existing mark at the time of the registration of the disputed domain name <ad-aware.com>. Any claims of Respondent’s “knowledge of the product” are pure speculations on behalf of Complainant.

Respondent further states that it has registered more than 100 domain names over the years and has never been a subject to any trademark violations or domain disputes. It is not a “domain squatting” outfit but a reputable software review site that has been online since 1997 and has had active business relations with Complainant for almost a decade.

Respondent submits that Complainant has based its case almost entirely on false statements and misleading evidence. Complainant made false claims as to the date of acquisition of the registration of the disputed domain name <adaware.com> in an attempt to establish credibility to their non-existing trademark at the time. Complainant has attempted to portray Respondent as “cybersquatters” who “divert consumers to Respondent’s site” and as “direct competitors for both their consumers and advertisers” when in fact, Respondent is a long-time business partner that is fully authorized by two different agreements to distribute, sell and promote Complainant’s products and use the AD-AWARE mark to do so.

Respondent states that Complainant’s initial inquiry on October 12, 2011 in regards to the <ad-aware.com> disputed domain name was of a threatening nature, where Complainant basically asked Respondent to hand over the disputed domain name for a “small monetary compensation” or they would get the disputed domain name “automatically transferred” to them. This is not the kind of inquiry you would expect from Complainant when Complainant and its predecessors have been doing business with Respondent for almost a decade.

D. Reverse Domain Name Hijacking

Respondent submits that considering the fact that Complainant chose to misrepresent facts that could have been easily verified by company records of ongoing agreements and public domain registration records, Respondent requests the Panel, pursuant to paragraph 15(e) of the Rules, to find that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceedings and should be considered an attempt for “Reverse Domain Name Hijacking”. See Sydney Opera House Trust v. Trilynx Pty Limited, WIPO Case No. D2000-1224, where the panel states: “To establish reverse domain name hijacking, the respondent must show knowledge on the part of the complainant of the respondent’s right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in the face of such knowledge”

Respondent submits that it has shown that there is no conceivable way that Complainant could not have had knowledge of the 8 year long business relations between Complainant’s predecessor and Complainant as documented earlier with two active agreements and several email communications spanning over numerous years.

Respondent states that this case is a classic example of Complainant taking over assets from another entity (its predecessor) and then demanding ownership of assets which they clearly have no legitimate rights to. Respondent submits that Complainant has provided irrelevant and “standard” case references that have very little relevance to the facts of this case. The documented facts in this case were obviously ignored and misrepresented by Complainant, without having any real prospect of success. If Complainant had stated the fact as they are, this case would probably not have qualified for a Complaint. See Nishan Systems, Inc. v. NishanLtd, WIPO Case No. D2003-0204, where the panel found that complainant had engaged in Reverse Domain Name Hijacking which the panel characterized as follows: “Paragraph 1 of the Rules defines Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain name-holder of a domain name” (see also Paragraph 15(e) of the Rules). To prevail on such a claim, a respondent must show that complainant knew of either the respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the complaint in bad faith: see e.g.Sydney Opera House Trust v. Trilynx Pty Limited, supra.

Respondent also made the following submissions and referred to the following cases in which UDRP panels found that Complainants were involved in Reverse Domain Name Hijacking:

Respondent submits that Complainant did not provide any evidence to establish “wide recognition” of the non-existing mark at the time of the registration of <ad-aware.com> disputed domain name on March 24, 2001. Any claims of Respondent’s knowledge of the AD-AWARE product are pure speculations on behalf of Complainant. See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, WIPO Case No. D2001-0916, where the panel found: “[...] lack of bona fide use on its own is insufficient to establish bad faith. Here, Respondent has not attempted to sell the Domain Name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of Complainant seeking to disrupt its business, and is not using the Domain Name to divert Internet users for commercial gain. In short, none of the circumstances listed in the Policy are present here, and we find no additional circumstances to justify a finding of bad faith [...]”.

Respondent also relies on the findings of the panel in Deutsche Welle v. DiamondWare Ltd., WIPO Case No. D2000-1202, where the panel found: “[...] The Policy is clear. To succeed in the Complaint, the Complainant has to prove, at the very least, that the Domain Name was registered in bad faith. When the Complainant conducted its Whois search and found that the Domain Name registration dated back nearly 6 years, it was alerted to the fact that registration of the Domain Name was most unlikely to have been undertaken “primarily” for any bad faith purpose directed at the Complainant. The Complainant has not produced one shred of evidence to suggest why the Respondent, a company in the United States, should have been aware of the existence of the Complainant, a German broadcasting service, back in 1994 when it registered the Domain Name.”

Respondent also cites the findings of the panel in Windsor Fashions, Inc. v. Windsor Software Corporation, WIPO Case No. D2002-0839, where the panel held: “[...] Complainant's waiting to file this Complaint until after it had obtained a United States service mark registration a few months ago (though it claims to have used the name “Windsor” since 1939), with full knowledge that Respondent had registered the disputed domain name in 1995, some seven years earlier, smacks of deception and an attempt to manipulate the Policy.”

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

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

(ii) 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

Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and, secondly, that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.

Complainant is the registered owner of Community Trademark Registration No. 003094356 for the trademark AD-AWARE registered in relation to goods and services in International Classes 9 and 42 which was acquired by total transfer published on March 4, 2011. The trademark AD-AWARE was applied for on March 13, 2003 and registered on September 27, 2004 in the name of Nicolas Stark Computing, AB, a Swedish corporation. Further information relating to CTM 003094356 are provided above.

The disputed domain name is <ad-aware.com>. The inclusion of the top level domain descriptor “.com” in the disputed domain name does not affect a finding of confusing similarity. UDRP panels have repeatedly held that the specific top level of the domain name such as “.org”, “.net” or “.com” does generally not affect the domain name for the purpose of determining whether it is identical or confusingly similar. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name); and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

The Panel finds that Complainant has established that the disputed domain name <ad-aware.com> is confusingly similar to Complainant’s registered trademark AD-AWARE.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.

Complainant contends that its predecessor Lavasoft AB used the AD-AWARE trademark since 1999 and operated the <adaware.com> website at “www.adaware.com” on a continuous basis since February 24, 2000. The disputed domain name <ad-aware.com> was created on March 24, 2001. The “Archive.org” page of <ad-aware.com> on April 4, 2001 is submitted as an Annex to the Complaint.

Complainant contends that both its software and Respondent’s review and downloading services are provided free of charge to consumers. Accordingly, they both rely on advertising revenue to support their services. Because Complainant and Respondent are direct competitors for both their consumers and advertisers, Respondent’s use of Complainant’s exact trademark as a domain name diverts consumers to Respondent’s site and its advertisers. Complainant further contends that Respondent's use of Complainant’s mark is intended to palm off Complainant’s good will and reputation in its AD-AWARE trademark. Complainant further contends that Respondent’s use of the disputed domain name serves to divert Internet users seeking Complainant to Respondent’s website, and is thus proscribed under paragraph 4(b)(iv) of the Policy.

The Panel finds that Complainant has made a prima facie case that Respondent has no rights to and legitimate interests in the disputed domain name.

It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a disputed domain name. Previous panels under the Policy have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once this showing is made, the burden of production shifts to respondent to demonstrate its rights or legitimate interests in the disputed domain name.

Respondent has operated a software review and download site since 1997. Respondent’s website at “www.snapfiles.com” is a software review and distribution site which includes links to thousands of different types of branded software. One of the links is dedicated to Complainant’s AD-AWARE software. Respondent states that as a software distribution site, it has had a Submission Agreement in place with Complainant’s predecessor and Complainant since 2003. A sample of the Submission Agreement which must be accepted when software companies have their product listed on Respondent’s site can be found at “www.snapfiles.com/submit/submissionagreement.html”. Among other things, this agreement includes the following standard clause:

“You hereby authorize WebAttack, Inc. to make limited use of your company name or product trademark for the sole purpose of maintaining or promoting your product listing on our site(s), including, but not limited to the display of screenshots, the use of company and/or product name, as well as the use of company and/or product name in Uniform Resource Locators (URLs) intended to maintain or promote your product as long as it is listed in our database.”

Complainant’s predecessor has provided updates of its AD-AWARE software to Respondent since 2003.

In 2010 Respondent entered into an agreement with Complainant to became part of the Lavasoft Affiliate program. The Lavasoft Affiliate Agreement authorizes Respondent to use Complainant’s mark and supporting materials to promote Complainant’s products. In 2011 Respondent received the updated Affiliate Agreement from Complainant which is still active to this date. This email was signed by A. Wyatt on February 15, 2011. In July 2011, the Lavasoft Affiliate Program was updated to a new Platform and Respondent was automatically transferred to the new system.

The WIPO Overview 2.0 distills panelist’s views on the question of whether a reseller of trademarked goods and services has rights or legitimate interests in a domain name which contains such trademark. The consensus view: “normally a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use meets certain requirements. These requirements normally include the actual offering of the goods and services at issue, the use of the site to sell only the trademarked goods, and the sites accurately and prominently disclosing the Registrant’s relationship with the trademark holder. Respondent must also not try to “corner the market” in domain names that reflect the trademark.” This Panel’s review of Respondent’s site at “www.snapfiles.com” shows that Respondent’s link to the AD-AWARE product in most essential respects meets the four site requirements recited above. With respect to the issue of “cornering the market”, no evidence was filed by Complainant. With respect to the use of the site to sell certain other trademarked software goods, it may be debated whether in the circumstances this would suffice to take the Respondent outside the ambit of the above mentioned second requirement to sell only the trademarked goods. However, against this the Panel notes (as some previous panels have done, see e.g.Shaw Industries Group, Inc. and Columbia Insurance Company v. DomainsByProxy, Inc. and Patti Casey, WIPO Case No. D2007-0555) that there is also no evidence that Respondent is using the Complainant’s trademark for bait-and-switch purposes, given the apparent manner in which the goods are being offered on the site to which the disputed domain name resolves. Respondent states that Respondent (WebAttack, Inc) have registered more than 100 domain names over the years and have never been a subject to any trademark violations or domain disputes. We are not a “domain squatting” outfit but a reputable software review site that has been online since 1997 and has had active business relations with Complainant for almost a decade. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

The Panel finds that Respondent has established that it has been an authorized reseller of Complainant’s predecessor since 2003 and an licensed Affiliate of Complainant since 2010 and as such was entitled to use Complainant’s AD-AWARE trademark in the manner in which occurred as described above.

Ultimately, however, the Panel finds it unnecessary to record a finding on whether Respondent has no rights or legitimate interests in respect of the disputed domain name, as (for reasons discussed further below) the Complaint fails on other grounds.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name has been registered and used in bad faith.

C. 1. Registered in Bad Faith

Complainant contends that Respondent was in the software business and must have known of Complainant’s predecessors AD-AWARE software and trademark rights when it registered the disputed domain name <ad-aware.com> on March 24, 2001.

Complainant’s predecessor applied for a Community Trademark for AD-AWARE on March 13, 2003. The application proceeded to registration and issued as CTM 003094356 on September 7, 2004, i.e. more than three years after Respondent registered the disputed domain name.

Complainant also contends that its predecessor registered and used the domain name <adaware.com> in association with its AD-AWARE product commencing February 24, 2000. Complainant’s contention is wrong. WhoIs records show that the domain name <adaware.com> was registered to and operated by “adasoft” a company based in Australia in the year 2000 that was not related to Complainant’s software product or trademark. In fact, as of 2003 the owners of the domain name specifically stated this fact on their website: “Adaware is not associated with Ad-aware software which is a product of the Lavasoft Company.” Complainant’s predecessor, a Swedish Corporation, carried on business using the trade name Lavasoft Company. The <adaware.com> domain name was redirected to ”www.users.bigpond.net.au/dstanbro/”. The <adaware.com> domain name was later transferred several times: “Johnny Wright” in 2004, “Domains by Proxy” in 2005 and not until February 2005 was the domain name finally transferred to “Nicholas Stark Computing AB” which was the original registrant of the AD-AWARE trademark. The Panel can only infer from the registration of the domain name <adaware.com> on February 24, 2000 that it was the property of an Australian Company.

Complainant also contends that the trademark AD-AWARE has been in use by its predecessor Lavasoft AB since December 1999. Complainant states that Lavasoft AB and its AD-AWARE Internet security software product quickly became well-known as the standard in the industry for anti-virus and spyware software. Complainant submitted as evidence a SANS Institute report issued in 2002 on spyware, also known as adware in which Complainant’s predecessors AD-AWARE software used to scan and remove spyware from computers was the only such product referred to in the SANS Institute report. Additional reports and reviews were submitted as evidence but none of such additional reports or reviews included reviews of Complainant’s predecessors sales and or goodwill associated with the trademark AD-AWARE products prior to the year 2003.

The consensus view of the proof that a complainant must advance to establish common law or unregistered trademark rights is summarized in paragraph 1.7 of the WIPO Overview 2.0 as follows: “The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition.” The content of the SANS Institute report and the additional reports filed by Complainant fail to establish the amount of sales under the trademark, the nature and extent of advertising, media recognition, and other relevant facts enabling the Panel to conclude that the trademark AD-AWARE had become a distinctive identifier associated with Complainant’s predecessor or its goods or services prior to registration of the disputed domain name by Respondent.

Respondent Marco Gransee states that he personally registered the disputed domain name <ad-aware.com> in 2001. Since this is more than a decade ago he cannot recall the exact reasoning for registering the disputed domain name, but “adware” and “ad awareness” were terms that are closely relevant to the software industry at the time. As a software distribution site, one of Respondent’s features was that it clearly marked programs that contained adware as such – which no other software site did at the time. Respondent Marco Gransee states that he was looking for a domain name to further promote this feature and “ad-aware” was the one he ultimately picked. He remembers that he originally wanted the domain name <adaware.com> or <adware.com> but they were taken by companies that were completely unrelated to Complainant. The term “ad-aware” is derived of two common dictionary words, the term “ad” (short for “advertising”) and the term “aware”. The hyphenation is merely a compromise to connect the two words in order to register it as a domain name (to Gransee’s knowledge the hyphen is the only non-letter character allowed in a domain name, and therefore the only choice to connect the two words).

The Panel finds that Complainant has not proven that Respondent registered the disputed domain name in bad faith.

C.2. Domain Name Used in Bad Faith

Based on the findings in Sections 6.B and 6.C.1 above the Panel finds that the disputed domain name is not being used in bad faith.

D. Reverse Domain Name Hijacking

Paragraph 1 of the Rules defines Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. To succeed on an allegation of Reverse Domain Name Hijacking a respondent must show that complainant knew of respondent’s unassailable rights or legitimate interests in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the complaint in bad faith. See Sydney Opera House Trust v. Trilynx Pty. Limited, WIPO Case No. D2000-1224 and Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151.

Complainant filed a Complaint in this case against Respondent, with whom Complainant’s predecessor and Complainant itself have had a business relationship for the last 9 years and a half, without reference to the different agreements between the parties. Further, Complainant alleges that its predecessor registered and used the domain name <adaware.com> since 2000, when Complainant’s predecessor did not purchase the domain name until 2005. The Panel finds that Complainant used the Policy in bad faith to deprive Respondent of the disputed domain name.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Ross Carson
Sole Panelist
Date: January 29, 2012