ADMINISTRATIVE PANEL DECISION
Citrix Systems, Inc. v. WhoisGuard, Inc. / Sanford Steinberg
Case No. D2020-3014
1. The Parties
The Complainant is Citrix Systems, Inc., United States of America (“US”), represented by Day Pitney LLP, US.
The Respondent is WhoisGuard, Inc., Panama / Sanford Steinberg, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <citrix-la.com> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2020. On November 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 12, 2020, 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 13, 2020, 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 amended Complaint on November 13, 2020.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2020.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on January 4, 2021. 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 was founded in 1989 and is now a leading multinational provider of computer software systems and related system services such as networking and server software, cloud computing technologies and mobility solutions. As of today, the Complainant’s products and services are used by more than 400,000 organisations and 100 million individuals worldwide. “Citrix” is a coined term with no dictionary meaning and is used in connection with the Complainant’s goods and services.
The Complainant owns exclusive rights over the CITRIX trade mark. In particular, the Complainant is the proprietor of numerous trade mark registrations for the CITRIX mark in various jurisdictions, including, inter alia, the CITRIX trade mark (Reg. No. 5803584) registered in the US on July 16, 2019, the CITRIX trade mark (Reg. No. 5645864) registered in the US on January 8, 2019, the CITRIX trade mark (Reg. No. 2614647) registered in the US on September 3, 2002, and the CITRIX trade mark (Reg. No. 3674455) registered in the US on August 25, 2009.
The Complainant also owns and operates various domain names that contains the CITRIX trade mark, including <citrix.com>, which was registered on July 21, 1994.
The Respondent registered the Disputed Domain Name on August 17, 2020. The Disputed Domain Name redirected to the Complainant’s website at “www.citrix.com/es-es”.
5. Parties’ Contentions
A. Complainant
The Complainant’s primary contentions can be summarised as follows:
(a) The Disputed Domain Name is confusingly similar to the Complainant’s CITRIX trade mark. The Disputed Domain Name incorporates the Complainant’s CITRIX trade mark in its entirety and the addition of the term “la” does not distinguish the Disputed Domain Name from the Complainant’s CITRIX trade mark. The addition of “la” in fact increases the likelihood of confusion as it presumably refers to Latin America, a region in which the Complainant offers its products;
(b) The Respondent has not made any demonstrable preparations to use the Disputed Domain Name in relation to a bona fide offering of goods or services as the Disputed Domain Name has been used to redirect visitors to the Complainant’s website “www.citrix.com/es-es”, in an attempt to masquerade as the Complainant, potentially phishing for sensitive personal data from visitors. The Respondent is not commonly known by or has rights in the Disputed Domain Name and the Complainant has never authorized or given permission to the Respondent, who is not associated with the Complainant in any way, to use its CITRIX trade mark. The Disputed Domain Name was registered long after the Complainant had established rights in the CITRIX trade mark. The fact that the Disputed Domain Name falsely implies an affiliation with the Complainant and the CITRIX trade mark suggests that the Respondent’s registration and use of the Disputed Domain Name cannot be considered “fair use”; and
(c) The Disputed Domain Name redirects Internet users to the Complainant’s website “www.citrix.com/es-es” and there are reasonable grounds to believe that the Respondent is trying to impersonate the Complainant and engage in phishing activities, which constitutes trading on the goodwill of the Complainant’s CITRIX trade mark to attract Internet users presumably for the Respondent’s own commercial gain. Applying the passive holding doctrine, it should be held that the Disputed Domain Name was registered and has been used in bad faith. The Respondent’s use of the Disputed Domain Name may cause harm to the Complainant by, for example, tarnishing the CITRIX trade mark and disrupting the Complainant’s business. As such, the Respondent has registered and is using the Disputed Domain Name in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favour of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complainant as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,
WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM,
WIPO Case No. D2000-0403).
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the CITRIX trade mark, based on its various trade mark registrations.
It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the Top-Level Domain extension (“.com” in this case) is generally disregarded. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Disputed Domain Name incorporates the Complainant’s CITRIX trade mark in its entirety with the addition of the word “la”. UDRP panels have consistently found that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) to a mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question. See section 1.8 of the WIPO Overview 3.0.
The mere addition of the term “la” does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s CITRIX trade mark.
As such, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s CITRIX trade mark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.
The Panel accepts that the Complainant has not authorised the Respondent to use the CITRIX trade mark, and there is no relationship between the Complainant and the Respondent, which would otherwise entitle the Respondent to use the CITRIX trade mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to him of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services;
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if he has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence to suggest that the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services, since the Disputed Domain Name resolved to the Complainant’s website “www.citrix.com/es-es”. The Panel agrees with the Complainant that such use of the Disputed Domain Name gives a misleading impression that the Disputed Domain Name is associated with and/or endorsed by the Complainant.
There is also no evidence to prove that the Respondent has trade mark rights corresponding to the Disputed Domain Name, or that he has become known by the Disputed Domain Name. Further, no evidence has been provided to suggest that the Disputed Domain Name has been used in connection with any legitimate noncommercial or fair use within the meaning of paragraph 4(c)(iii) of the Policy.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar to a widely-known trade mark by an unaffiliated entity (particularly domain names which incorporate a mark plus a descriptive term) can already by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.
The Complainant’s CITRIX trade mark appears to be fairly well-known. A quick Internet search shows that the top search results returned for “citrix” are the Complainant’s official website and several third party websites making references to the Complainant’s products and services. Therefore, the Panel accepts the Complainant’s argument that the Respondent must have been aware of the Complainant and their rights in the CITRIX trade mark when registering the Disputed Domain Name. The fact that the Disputed Domain Name incorporates the Complainant’s CITRIX trade mark in its entirety also creates a presumption of bad faith.
In addition, the Panel finds that the following factors further support a finding that the Disputed Domain Name has been registered and is being used by the Respondent in bad faith:
(i) the Respondent failed to respond to the Complainant’s contentions and has provided no evidence of any actual or contemplated good faith use by it of the Disputed Domain Name;
(ii) the Respondent registered the Disputed Domain Name using a privacy shield to conceal its identity (see Primonial v. Domain Administrator, PrivacyGuardian.org / Parla Turkmenoglu,
WIPO Case No. D2019-0193); and
(iii) it is difficult to conceive of any plausible use of the Disputed Domain Name that would amount to good faith use, given that the Disputed Domain Name is confusing similar to the Complainant’s CITRIX trade mark and domain name <citrix.com>, and redirects to the Complainant’s website “www.citrix.com/es-es“. Any use of the Disputed Domain Name would likely mislead Internet users into believing the Disputed Domain Name is associated with and/or endorsed by the Complainant.
In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.
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, <citrix-la.com>, be transferred to the Complainant.
Gabriela Kennedy
Sole Panelist
Date: January 22, 2021
