WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Avira Operations GmbH & Co. KG v. NameSilo, LLC / Mic Yeh

Case No. D2018-2731

1. The Parties

The Complainant is Avira Operations GmbH & Co. KG of Tettnang, Germany, internally represented.

The Respondent is NameSilo, LLC of Phoenix, Arizona, United States of America (“United States”) / Mic Yeh of New Taipei, Taiwan Province of China.

2. The Domain Name and Registrar

The disputed domain name <avirasafethings.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2018. On November 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 28, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 29, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 5, 2018.

The Center verified that the Complaint, together with the amendment to 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 December 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2018.

The Center appointed David Taylor as the sole panelist in this matter on January 11, 2019. 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 multinational security software company headquartered in Germany. The Complainant was founded in 1986 by Mr. Tjark Auerbach. The Complainant is specialized in the development and sale of antivirus software. Mr. Auerbach is the owner of, inter alia, the following trademarks, used in connection with the Complainant’s software business: ¹

- International Registration No. 846194, AVIRA, registered on June 9, 2004, designating jurisdictions throughout the world; and

- International Registration No. 904632, AVIRA (and design), registered on June 8, 2006, designating jurisdictions throughout the world.

As part of its security software business, the Complainant has developed specific antivirus software to address security threats to the so-called “Internet of Things”. In this regard, the Complainant operates the website “www.safethings.avira.com” and is licensed to use the following trademark:²

- International Registration No. 1435153, AVIRA SAFETHINGS (and design), registered on March 29, 2018, designating jurisdictions throughout the world. This registration is based on European Union Trade Mark Registration No. 017315052, applied for on October 10, 2017, and registered on January 29, 2018.

The disputed domain name was registered on October 10, 2017, using a privacy service. The disputed domain name redirects to a page at “www.undeveloped.com”, where the disputed domain name is offered for sale for USD 1,888.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain name is confusingly similar to its AVIRA trademark as well as its product and service offerings.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant states that there is no evidence of the Respondent’s intended use of the disputed domain name other than its listing for sale in order to take advantage of the Complainant’s reputation and its evolving business in the market characterized as the “Internet of Things”. The Complainant further submits that the disputed domain name is tarnishing the Complainant’s trademarks, that the Respondent has not been commonly known by the disputed domain name, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant submits that “Avira” is a well-known brand, having been registered as a trademark in many countries, and as such, the registered trademarks have acquired distinctiveness. The Complainant argues that the disputed domain name was registered by the Respondent to prevent the Complainant from reflecting its trademark in a corresponding domain name. The Complainant states that the disputed domain name was registered targeting the Complainant’s online product offerings, and that the only reason for the Respondent to register the disputed domain name was to sell it.

The Complainant requests transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant is required to prove, on the balance of probabilities, that:

(i) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights;

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

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

A. Identical or Confusingly Similar

The Panel notes that the Complainant itself is not the owner of the abovementioned trademarks. Nevertheless, a trademark owner’s affiliate such as a subsidiary of a parent or holding company, or an exclusive trademark licensee, is considered to have rights in a trademark under the Policy for purposes of standing to file a complaint. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.4. The Complainant has provided relevant evidence from the trademark owner of its authorization to file the Complaint. As such, the Panel finds that the Complainant has rights in the AVIRA and AVIRA SAFETHINGS (and design) trademarks, as outlined in section 4 above.

The Panel finds that the disputed domain name is identical to the textual components of the AVIRA SAFETHINGS (and design) trademark. The design element of the trademark consists of a red circle with a white face in profile wearing a helmet. As this design element is incapable of representation in the disputed domain name, it is disregarded for the purposes of assessing identity or confusing similarity under the first element. See WIPO Overview 3.0, section 1.10. The remaining textual components are reproduced in their entirety, simply omitting the space between “AVIRA” and “SAFETHINGS”.

The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s AVIRA trademark. The disputed domain name comprises the Complainant’s AVIRA trademark in its entirety as its leading element, followed by the terms “safe” and “things”. The addition of these terms would not prevent a finding of confusing similarity under the first element, noting that the Complainant’s AVIRA trademark is clearly recognizable in the disputed domain name. See WIPO Overview 3.0, section 1.8.

The generic Top-Level Domain (“gTLD”) “.com” is disregarded for the purposes of the first element confusing similarity test, being a standard requirement of registration. See WIPO Overview 3.0, section 1.11.

The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.

The Complainant has provided evidence that the only use to which the disputed domain name has been put since its registration has been to redirect Internet users to a page at “www.undeveloped.com”, where the disputed domain name is offered for sale for USD 1,888. For reasons set out in more detail under the bad faith section below, the Panel does not consider this to amount to a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.

There is no evidence that the Respondent “Mic Yeh” has become commonly known by the disputed domain name, nor is there any evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.

The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Thus, the burden of production shifts to the Respondent, who has not come forward with any arguments or evidence to rebut the Complainant’s prima facie case.

In light of the above, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant is a multinational software company that provides its software services throughout the world, including in China, where the Respondent is apparently located. According to information on the Complainant’s website, its Avira software has been installed well over 500 million times. The Panel considers that the Complainant, its trademarks, and its products are widely known.

The Panel notes that the disputed domain name includes the Complainant’s trademark in its entirety, together with the terms “safe” and “things”. These terms are evocative of the security software products that the Complainant provides. Moreover, the Complainant offers one of its security software products used in connection with the “Internet of Things” from the website “www.safethings.avira.com”, which leads to a strong inference that the Respondent had the Complainant’s trademark and products in mind when registering the disputed domain name.

The Panel further notes that the disputed domain name is an exact match of the textual components of the Complainant’s AVIRA SAFETHINGS (and design) trademark, and that it was registered on the same day that the Complainant applied to register its European Union Trade Mark. The Panel is highly doubtful that this was a coincidence, but rather infers that the Respondent viewed the Complainant’s trademark application on the European Union Intellectual Property Office (“EUIPO”) register, and proceeded to register the disputed domain name with a view to prevent the Complainant from registering a domain name reflecting its trademark under the “.com” gTLD. This context, combined with the Respondent’s redirection of the disputed domain name to a page at “www.undeveloped.com” where the disputed domain name is offered for sale for USD 1,888, evidences the Respondent’s bad faith registration and use of the disputed domain name within the meaning of paragraph 4(b)(i) of the Policy, i.e.:

“(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.”

See Ipsen Pharma S.A.S. v. Admin - This Domain is for sale on Godaddy.com Escrow.com, Trnames Premium Name Services, WIPO Case No. D2018-0089:

“The Respondent registered the disputed domain names on the same days that the Complainant applied to register the trademarks with EUIPO, and each of the disputed domain names is identical to one of the Complainant’s marks. The Respondent has used the disputed domain names with parking pages advertising the disputed domain names for sale on GoDaddy Auctions.

[…]

The timing of the Respondent’s registration of the disputed domain names makes manifest the Respondent’s awareness of the Complainant’s trademark applications, and the Respondent’s subsequent use of the disputed domain name unequivocally evinces the Respondent’s attempt to exploit or otherwise capitalize on the Complainant’s nascent trademark rights.”

The Panel further finds that the Respondent’s use of a privacy service to mask its identity further evidences the Respondent’s bad faith.

For the foregoing reasons, the Panel finds that the Complainant has satisfied the requirements 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 <avirasafethings.com> be transferred to the Complainant.

David Taylor
Sole Panelist
Date: January 30, 2019

¹ The Panel notes that Mr. Auerbach has provided, as an annex to the Complaint, a signed power of attorney, authorizing the Complainant to act in Mr. Auerbach’s name, including the power to file claims necessary for the recuperation of domain names under the Policy. See in this regard WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.4.

² The AVIRA SAFETHINGS (and design) trademark is owned by ALV GmbH & Co. KG, which is a company owned by Mr. Auerbach.