WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FireEye, Inc. v. Yijun Qi

Case No. D2018-1746

1. The Parties

The Complainant is FireEye, Inc. of Milpitas, United States of America ("United States"), represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Yijun Qi of Tianjin, China.

2. The Domain Name(s) and Registrar(s)

The disputed domain name <fireeye.app> is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 1, 2018. On August 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 1, 2018, 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 and contact information for the disputed domain name.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 27, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 28, 2018.

The Center appointed Daniel Peña as the sole panelist in this matter on September 7, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a cybersecurity company that provides solutions that allow organizations to prepare for, prevent, respond to, and remediate cyber-attacks.

The Complainant provides threat detection and prevention solutions, including network security products, email security solutions, and endpoint security solutions.

The Complainant was founded in 2004 and headquartered in Milpitas, CA, USA,

The Complainant provides its products and services to more than 6,600 customers in 67 countries across the United States, the Asia Pacific, Japan, Europe, the Middle East, Africa, and other regions. These include more than 45% of the Forbes Global 2000 in 2017.

The Complainant also maintains a strong global presence through their website and primary domain name <fireeye.com>.

5. Parties' Contentions

A. Complainant

The disputed domain name <fireeye.app> is identical to the FIREEYE trademarks.

The Complainant is the owner of trademark registrations across various jurisdictions among others United States of America, the European Union, China and International registrations under the Madrid System.

The trademarks registered by the Complainant that are relevant to this case are the following:

The Complainant spends substantial time, effort and money advertising and promoting its FIREEYE trademarks.

The reported total revenues of the Complainant were USD 715 million, an increase of five percent compared to 2016.

The Complainant has also been the recipient of numerous industry and peer awards for their work in the cybersecurity space. Most recently, the Complainant was named the Best Email Security Solution at the 2018 SC Awards in Europe.

The Respondent has used the FIREEYE trademarks in the disputed domain name so as to cause confusion among Internet users between the disputed domain name and the Complainant's approved websites.

The Respondent wrongfully capitalizes on the Complainant's goodwill in the FIREEYE trademarks to divert Internet traffic to a parking website.

The Respondent has no rights or legitimate interest in the disputed domain name.

The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the FIREEYE trademarks in a domain name or in any other manner.

The Respondent has never been known by the disputed domain name and has no legitimate interest in the FIREEYE trademarks.

The Respondent has registered the disputed domain name in bad faith because it was registered with the knowledge of the Complainant's rights in the FIREEYE trademarks, as it is inconceivable that the Respondent was unaware of the Complainant's rights in the FIREEYE trademarks.

Registration of a famous mark, like the FIREEYE trademarks, as a domain name by an entity that has no legitimate relationship with the mark is itself sufficient to demonstrate bad faith.

The Respondent's bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant's trademark at the time of the registration of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel holds that the disputed domain name <fireeye.app> is identical to the Complainant's trademarks. The Respondent's incorporation of the Complainant's trademark in full in the disputed domain name is evidence that the disputed domain name is likely to cause confusion among consumers about the Complainant's marks.

The confusion between the disputed domain name <fireeye.app> and the FIREEYE trademarks is reinforced as a result of the widespread reputation of the Complainant's trademark and business throughout the world, including in China, the place of domicile of the Respondent. The Panel is satisfied that the disputed domain name <fireeye.app> is identical to the Complainant's name and marks and the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

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

The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant bears the burden of proof in establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainant to establish a prima facie case which, if not rebutted by sufficient evidence from the Respondent will lead to this ground being set forth.

Refraining from submitting a Response, the Respondent has brought to the Panel's attention no circumstances from which the Panel could infer that the Respondent has rights or legitimate interests in the disputed domain name.

The Panel will now examine the Complainant's arguments regarding the absence of rights or legitimate interests of the Respondent in connection with the disputed domain name.

The Complainant has provided ample evidence of its established rights in the FIREEYE trademark including registrations issued by the US, European Union, International, and China trademark offices.

The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant's trademarks in a domain name or in any other manner.

The disputed domain name is being used to misdirect Internet traffic to the disputed domain name. In the circumstances and as further discussed below, such a use is contrary to a bona fide offering of goods or services or a legitimate interest.

The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).

The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;

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

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

The Panel considers that the disputed domain name <fireeye.app> was registered with the knowledge of the Complainant's rights in the FIREEYE trademarks, as it seemed that the Respondent was aware of the Complainant's rights in the FIREEYE trademarks. Concerning the use of the disputed domain name <fireeye.app>, in this Panel's view, the Respondent has done nothing to identify itself as being independent from the Complainant. On the contrary, the Respondent has incorporated the FIREEYE trademark in the disputed domain name, throughout the website connected to the disputed domain name and attempts to attract consumers for commercial gain by purporting to misdirect the users to a parking website.

In the Panel's view a finding of bad faith may be made where the Respondent "knew or should have known" of the registration and/or use of the trademark prior to registering the disputed domain name. In this case, the widespread commercial recognition of the trademark FIREEYE is such that the Respondent, must have had knowledge of the trademark before registering the disputed domain name.

The Complainant has demonstrated that its trademarks are widely recognized and that the disputed domain name incorporates in full its trademarks.

Finally, the Respondent sought to sell the disputed domain name to the Complainant for USD 10,000.

Accordingly in the circumstances of this case, the third element of paragraph 4(a) of the Policy has been met by the Complainant.

Based on the evidence submitted by the Complainant and having regard to all the relevant circumstances, the Panel accepts the Complainant's contentions that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <fireeye.app> be transferred to the Complainant.

Daniel Peña
Sole Panelist
Date: September 14, 2018