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WIPO Arbitration and
Nicolas Stark Computing AB v. Leo van Opstal
Case No. D2004-0422
1. The Parties
The Complainant is Nicolas Stark Computing AB, Falkцping, Sweden, represented by Fredrik von Bothmer, Sweden.
The Respondent is Leo van Opstal, Topdownloads Networks, Tholen, Zeeland Netherlands.
2. The Domain Name and Registrar
The disputed domain name <adaware.info> is registered with Network Solutions,
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2004. On June 9, 2004, the Center transmitted by email to Network Solutions, LLC. a request for registrar verification in connection with the domain name at issue. On June 11, 2004, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 the Respondent of the Complaint, and the proceedings commenced on June 15, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was July 5, 2004. The Response was filed with the Center on June 17, 2004.
The Center appointed Jette Robsahm as the sole panelist in this matter on July 22, 2004. 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.
The language of the proceeding is English.
The Administrative Panel must issue its decision before
on August 5, 2004.
4. Factual Background
Complainant Nicolas Stark Computing AB, is a software developer and owner of the trademark AD-AWARE, which is registered in Sweden, reg. no. 360639, and Australia, reg, no. 946834, and applied for in EU, appl. no. 003094356, and USA, appl. no. 76,485,376, where it has been accepted for publication. The trademark is registered and used for computer software used to scan computers to detect and remove known datamining, aggressive advertising and tracking components.
Respondent Mr. Leo van Opstal, see item 1, is also
a software developer who apparently claims to develop software for the removal
of so-called spyware, see Annex 11 to the Complaint.
5. Parties’ Contentions
As mentioned above is the Complainant the holder of the trademark AD-AWARE. The registrations and applications are mentioned above, see item 4 A. The Complainant further states:
“The trademark “AD-AWARE” is used by the Complainant for its software product Ad-aware which is a detection and removal utility used to scan a computers memory-, registry-, hard-, removable- and optical drives for known datamining, aggressive advertising and tracking components. The software provides protection from known Datamining, aggressive advertising, Parasites, Scumware, Keyloggers, selected traditional Trojans, Dialers, Malware, Browser hijackers, and tracking components. Further information on the Ad-aware software and how the trademark is used can be found on the Complainant’s website “www.lavasoft.de” and “www.lavasoftusa.com”.
The domain name ADAWARE.INFO is in essence identical and confusingly similar to the Complainant’s trademarks. The Respondent has merely deleted the hyphen between the words “ad” and “aware” in the domain name.”
Complainant further states that:
“The Respondent has no rights or legitimate interests in respect of the domain name according to the Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2). Because
(i) The Respondent has never been commonly known under the denomination “Ad-aware”. Neither is the Respondent making a legitimate non-commercial or equitable fair use of the domain name.
(ii) The Respondent uses the domain name with the intent for commercial gain and misleadingly diverts consumers looking for the Complainant’s software “Ad-aware” to Respondent’s own web site registered under the domain name “ADAWARE.INFO”, where the Respondent offers a software, SpyCleaner, with the same functionality and market group as Complainant’s Ad-aware software, see enclosed printout from Respondent’s website Annex 11 describing the SpyCleaner product.
(iii) The Respondent does not have any rights or legitimate interests in respect of the domain name other than that it is the registered holder of the domain name. The commercial activities which the Respondent has carried out under the domain name have been made possible through the diversion of consumers.
(iv) The Respondent does not promote any products or services with the name “AD-AWARE”.
(v) The Respondent is not affiliated with Complainant, is not licensed or otherwise authorized by Complainant to use its name and mark.”
And Complainant also says that the domain name was registered and is being used in bad faith according to the Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3), because:
“(i) The Respondent has registered and uses the domain name in bad faith. The Respondent knew of the Complainant’s trademark AD-AWARE upon becoming the registered holder of the domain name. Ad-aware was awarded Best Software Product 2002 by PC World Magazine, see printout from PC World web site Annex 12, and has gained worldwide attention and recognition and is a well-known software product within the software industry in most countries of the world. The Complainant’s freeware version of the Ad-aware product is the most popular downloaded software on download.com, see enclosed printout from “www.download.com” Annex 13. A search on Google also clearly shows that the denominations “ad-aware” and “adaware” is associated with the Complainant, see printouts from Google Annexes 14 and 15. The Respondent has in bad faith attempted to exploit the inevitable risk of confusion in that Internet users would be likely to associate the domain name adaware.info with the Complainant.
(ii) The Respondent has not chosen the domain name by an accidental occurrence but has seeked to create an impression of association with the Complainant. The name AD-AWARE is an invented word which does not describe a quality or the origin of a certain product nor contain commonly used words within the software industry.
(iii) The information furnished above demonstrates that the domain name was registered in order to prevent the Complainant from reflecting its trademark in a corresponding domain name. The fact that the Respondent promotes the sale of products similar to the Complainant’s Ad-aware product under the domain name further proves that the purpose behind the registration of the domain name was to benefit from the Complainant’s trademark and to disrupt the business of the Complainant.”
In his response the Respondent states as follows:
“If the domainname www.adaware.info is so important for the complainant, why did the complainant not secure this name earlier? At this moment our software is getting good revues in several magazines and on several websites, is this the reason that the complainant feels like it is time to take some action? We have been using this domain for a while now.
We all know that it is not the domainname that attracts customers to a website. If you just claim a nice name and do nothing more, this will not give you a high ranking in search results. SEO is a difficult thing, all about the correct use of metatags, texts etc. That is what brings people to a website, and of course the fact that one sells a high quality product for a fair price, leading to positive ‘mouth to mouth’ promotion from excisiting customers.
We tend to believe that the complainant understands that our business is now growing and wants to try to stop our competition in this way.
Will complainant claim all names that are similar to the trademark?
Like http://www.adware.info/ , http://www.adware.com/, http://www.adware.net
<http://www.adware.net/> , http://www.ada-ware.com/, do need we to continue?
There are lots of websites on the Internet that have to do with spyware and have similar names!
We believe that in Europe it is not allowed to try and create a “one-player-market” in this way!
So, we hope for your independent judgement, but we do want to state that we
are certainly not the only company that uses a domainname similar to the compainants
trademark, and we also want to make it clear that the name of a domain is not
the most important, the SEO is!”
6. Discussion and Findings
In accordance with the Uniform Domain Name Dispute Resolution Policy (“the Policy”), paragraph 4(a), the Complainant must prove that
(i) The domain name in question is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name, and
(iii) The domain name has been registered and is being used in bad faith.
In the administrative proceeding, the Complainant must prove that each three of these elements are present.
The Complainant has provided sufficient evidence of its rights to the trademark AD-AWARE. As mentioned above, see item 4, the Complainant is the owner of the trademark AD-AWARE in several jurisdictions.
From the websites “www.lavasoft.de”, “www.lavasoftusa.com” and “www.pcworld.com”, it seems that the trademark is used for a very popular product and therefore well known in the relevant trade. It seems that it is among the most distributed software products for removing unwanted programs of a certain kind.
A. Identical or Confusingly Similar
Although the domain name in question is not identical with the trademark AD-AWARE owned by the Complainant, it is very close to be identical as the only difference is the hyphen between the letters AD and the word AWARE in the trademark. When pronounced the two words are identical. The domain.info merely reflects that one has to do with an Internet address and does not change the impression of identity between the marks.
In the relevant industry, the trademark AD-AWARE is commonly known and when the domain name <adaware.info> is seen or heard there is reason to believe that it will be taken to be owned by, or related to, the Complainant and points towards a website where one can read about or being offered the product or services related to the trademark. The result may therefore be that the disputed domain name would be associated in the minds of the consumers with the Complainant’s trademarks so that a risk of confusion is likely.
In the Panel’s view it is not necessary to cite relevant legal decisions to state the opinion that the domain name and the trademark are confusingly similar.
B. Rights or Legitimate Interests
The Respondent has obviously no connection whatsoever to the Complainant. He has no registered rights in any trademark identical or similar to AD-AWARE. In his response he has not countered any of the arguments brought forth by the Complainant, nor has he explained why he is using a domain name which is very similar to a trademark he probably has a good knowledge of. It is not proven, but for obvious reasons one can be brought to believe that his use of the domain name to divert Internet users to his website where he promote a software product which is very similar to the product for which AD-AWARE is used, was made to take advantage of the known trademark.
On several occasions such use has been deemed to demonstrate
that a Respondent has no rights or legitimate interests in the disputed domain
name. See inter alia J.D. Edwards & Company v. Nadeem Bedar,
WIPO Case No. D2002-0693.
On this background the Administrative Panel finds that the Respondent has no rights or legitimate interests in respect of the domain names.
C. Registered and Used in Bad Faith
As mentioned above, there is no evidence that the Respondent has acquired any trademark rights in the trademark ADAWARE or AD-AWARE for any goods or services. He is operating a website by the name of <spycleaner.net> to which one is directed when searching for a website belonging to the Complainant. The Respondent obviously would like to sell his own product which, as far as the Panel can see, is in competition with the Complainant. Fair competition is to use ones own domain name or trademark, not to try to take advantage of an others well established trademark.
Several UDRP decisions, (see for instance Nike, Inc. v. B. B. de Boer,
WIPO Case No. D2000-1397 and Carolina
Herrera, Ltd. v. Alberto Rincon Garcia, WIPO
Case No. D2002-0806), have recognized that when a domain name is registered,
the registrant warrants to the registrar that the registration of the domain
name will not infringe the rights of a third party. In the present case, the
Panelist finds that since the Complainant’s trademark probably is well
known within the IT industry, it is unlikely that the Respondent did not know
or was not aware that he might infringe the Complainant’s trademark.
The Panel finds that the Respondent has registered and is using the domain
name in bad faith.
For all the foregoing reasons, in accordance with
Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the
domain name, <adaware.info> be transferred to the Complainant.
Dated: August 2, 2004