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llance was given until September 11, 2001 to file a Response. The Center attempted e-mail transmission of its Notice of the filing of Cyberguard’s Complaint and Commencement of this Administrative Proceeding at the e-mail addresses listed in the WhoIs contact details for the contested domain name. One e-mail transmission was unsuccessful and resulted in the Center’s receipt of a "fatal delivery error" message. There is no indication in the case file that the other e-mail transmission did not reach its destination.
Also on August 22, 2001, the Center sent by courier the printed version of Cyberguard’s Complaint, with exhibits, and the Notice of Commencement to Cyber Surveillance’s mailing address listed in the WhoIs contact details for the contested domain name. The Panel has not been advised by the Center that the courier package was returned for insufficient address. Thus, the Panel finds that Cyber Surveillance was properly notified of this administrative proceeding.
It appears that Cyber Surveillance did not submit a Response to Cyberguard’s Complaint to the Center. The Panel deems Cyber Surveillance to be in default with respect to this administrative proceeding.
In its Complaint, Cyberguard elected to have this proceeding decided by a single member panel. On September 27, 2001, the Center contacted the undersigned to solicit interest in being the sole panelist who would decide this matter. After investigating and clearing potential conflicts of interest, the undersigned notified the Center on
October 3, 2001 of the ability and availability to serve as the sole panelist for this matter. Also on October 3, 2001, the undersigned submitted to the Center a "Statement of Acceptance and Declaration of Impartiality and Independence". Thus, the panel for this administrative proceeding was properly constituted.
On October 8, 2001, the Center forwarded to the undersigned the case file for this administrative proceeding. Also on October 8, 2001, the Center notified the parties that the undersigned would be the sole panelist to decide this matter.
4. Factual Background
Cyberguard is the owner of U.S. Trademark Registration No. 2,007,636 for the mark Cyberguard for "computer network security systems, namely firewalls comprising computer software and hardware for use in protecting computer networks from data theft or damage by unauthorized users." The U. S. Patent and Trademark Office issued the Registration on October 15, 1996. In the Registration, Cyberguard claims that its first use of the CYBERGUARD mark in commerce was December 23, 1994. A copy of the registration was attached to the Complaint.
Cyberguard asserts that it is a leading provider of computer network security solutions to companies, banks, financial institutions and governmental entities worldwide under its Cyberguard name and mark. Since at least as early as 1994, Cyberguard claims to have developed and installed highly effective "firewalls" using a number of architectures to protect data and networks from unauthorized access while enabling customers to benefit from new Internet, intranet and extranet applications. Cyberguard alleges that it distributes its products throughout the world via a direct sales force, value added retailers, integrators and distributors; and that it also consults with customers on issues involving the security of their computer systems, training of personnel, product support and system management.
As a result of the alleged long term and widespread use and sales of products and services, Cyberguard claims it has become well known to the trade and public throughout the United States and in many countries worldwide, and has established extensive goodwill, public recognition and secondary meaning in and to the Cyberguard name and mark as an exclusive identification of the goods and services of Cyberguard.
Cyberguard’s products and services are promoted on its web site under the domain name <cyberguard.com>. Excerpts from Cyberguard’s web site were attached to its Complaint. While this proceeding was pending, the Panel took the liberty of reviewing Cyberguard’s web site. The information and product offerings contained in Cyberguard’s web site supports its assertions.
Cyberguard asserts that the contested domain name <cyber-guard.com> contains essentially the identical term cyberguard that is the subject of Cyberguard’s federally registered trademark, except for the inclusion of a hyphen between the formatives "cyber" and "guard."
According to the registrar’s WhoIs database information attached to the Complaint, the <cyber-guard.com> domain name was registered on August 16, 1999, subsequent to the United States federal registration of Complainant’s CYBERGUARD trademark noted above, and well after Cyberguard’s alleged first use in commerce of the mark.
The web site associated with the <cyber-guard.com> domain name is nominally "under construction." However, the site does contain a reference to "Cyber Solutions Group" beneath the depiction of a number of computer screens arranged around a globe, with the term "security," "video conferencing, and "web casting" periodically flashing onto the screen. Cyberguard asserts that the reference on the part of Cyber Surveillance in its web site to "cyber solutions" and "security" in the context of computer networks suggests the provision of computer security products and/or services. A printed copy of Cyber Surveillance’s web site was attached to Cyberguard’s Complaint. While this proceeding was pending, the Panel took the liberty of reviewing the <cyber-guard.com> web site. The graphical and textual material contained on the <cyber-guard.com> web site supports Cyberguard’s assertions.
Cyberguard asserts that Cyber Surveillance adopted the confusingly similar domain name in question long after Cyberguard’s first use and United States federal registration of the Cyberguard mark. Cyberguard contends that there is nothing on Cyber Surveillance’s web site or otherwise to suggest it has any rights or legitimate interest in respect of the <cyber-guard.com> domain name. Further, Cyber Surveillance has no authorization, license, sponsorship, endorsement or other affiliation with Cyberguard giving it any rights, title, interest or permission to use the Cyberguard name and mark.
Cyberguard claims that the use by Cyber Surveillance of the domain name <cyber-guard.com> in connection with a web site related to "cyber solutions" and security involving computer networks constitutes an intentional attempt, for commercial gain, to attract Internet users to such web site by creating a likelihood of confusion with the Complainant’s Cyberguard name and mark as to the source, sponsorship, affiliation or endorsement of Cyber Surveillance’s web site, of Cyber Surveillance’s business or of the products and services offered on Cyber Surveillance’s site. Cyberguard asserts that this constitutes bad faith on the part of Cyber Surveillance pursuant to the Policy.
5. Parties’ Contentions
Cyberguard asserts that the contested domain name is identical or confusingly similar to the CYBERGUARD trademark in which Cyberguard has rights; that Cyber Surveillance has no rights or legitimate interests in respect of the domain name; and that the contested domain name was registered and is being used in bad faith.
As Cyber Surveillance has failed to respond to the Complaint, the Panel does not have the benefit Cyber Surveillance’s point of view.
6. Discussion and Findings
Transfer of the contested domain name will be ordered if Cyberguard has shown that the following three elements are present:
(i) the contested domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the domain name registrant has no rights or legitimate interests in respect of the domain name; and
(iii) the contested domain name has been registered and is being used in bad faith.
In an administrative proceeding pursuant to the Policy, Rules and Supplemental Rules, the Complainant must prove that each of these three elements is present.
(Paragraph 4(a) of the Policy)
The following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the registrant registered or 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant 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 it is shown that the registrant has engaged in a pattern of such conduct; or
(iii) the registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to his 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 the registrant’s web site or location or of a product or service on his web site or location.
(Paragraph 4(b) of the Policy)
On the other hand, any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the registrant’s rights or legitimate interests to the domain name:
(i) before any notice to the registrant of the dispute, his use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the registrant (as an individual, business, or other organization) have been commonly known by the domain name, even if the registrant has acquired no trademark or service mark rights; or
(iii) the registrant is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
(Paragraph 4(c) of the Policy)
Cyber Surveillance had the opportunity to respond and present evidence that it has rights or legitimate interests in respect of the contested domain name. It chose not to do so. Cyberguard is not entitled to relief simply by reason of the default, however, the Panel can and does draw evidentiary inferences from the failure to respond. See Miles D., Ltd. d/b/a Jazz Alley v. Shosha, Case No. AF-00318 (eResolution, August 29, 2000), citing, Royal Bank of Canada v. D3M Domain Sales, Case No. AF-0147 (eResolution, May 1, 2000).
For example, Paragraph 14 of the Rules provides that:
"(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate."
Thus, Cyberguard’s rights in the mark CYBERGUARD are demonstrated by its United States federal registration for this mark, the uncontested statements of its historical and present use of this mark, and the use made of the mark on Cyberguard’s web site.
The Panel also finds that the contested domain name is nearly identical to and/or is confusingly similar to a trademark in which Cyberguard has rights. The presence or absence of hyphenation or punctuation or the top-level domain <.com> are of no consequence when establishing the identity or confusing similarity of the disputed domain name to Cyberguard’s mark. See, Barney’s Inc. v. BNY Bulletin Board, Case No. D2000-0059 (WIPO April 2, 2000); AutoNation, Inc. v. Paul Schaefer, Case No. D2001-0289 (WIPO April 24, 2001).
Respondent has not come forward with evidence or argument in an effort to show that it has any rights or legitimate interests in respect of the contested domain name. (Paragraph 4(c) of the Policy). A web page that resolves to a URL associated with the contested domain name contains nothing more than an "under construction" page. The graphical and textual material appearing on the web page does not per se demonstrate that Cyber Surveillance has rights or legitimate interests in respect of the domain name. The Panel, therefore, finds that Respondent does not have any demonstrated rights or legitimate interests in respect of the contested domain name.
The Panel now must decide whether Cyberguard has come forward with sufficient evidence that the contested domain name has been registered and is being used in bad faith. The Panel finds that such circumstances have been shown.
From a review of the limited graphics and information contained on the <cyber-guard.com> web page, and from a review of Complainant’s <cyberguard.com> web site, the Panel deems the parties to be competitors. Having done little else than provide limited information on its web site, the Panel views Cyber Surveillance as having registered the <cyber-guard.com> domain name primarily for the purpose of disrupting the business of a competitor. (Paragraph 4(b)(iii) of the Policy).
Cyber Surveillance has registered a domain name that immaterially differs from Cyberguard’s mark only by the insertion of a hyphen and the addition of the top level domain <.com>. Cyber Surveillance has placed just enough graphics and information on its web page to create the impression that it is somehow related to the business engaged in by Cyberguard. By using the <cyber-guard.com> domain name in this fashion, Cyber Surveillance has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the CYBERGUARD mark as to the source, sponsorship, affiliation, or endorsement of Cyber Surveillance’s web site or of a service related to this web site. (Paragraph 4(b)(iv) of the Policy).
Based upon the foregoing, the Panel finds in favor of Complainant, and orders that the domain name <cyber-guard.com> be transferred to Cyberguard Corporation.
Dated: October 25, 2001