Cyberguard Corporation v. Richard Johnson, Cyber Surveillance Group

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cyberguard Corporation v. Cyber Surveillance Group

Case No. D2001-0972

1. The Parties

The Complainant in this

proceeding is Cyberguard Corporation ("Cyberguard"), a Florida corporation

having a place of business at 2000 West Commercial Boulevard, Suite 200, Fort

Lauderdale, Florida 33309 USA. Respondent is Cyber Surveillance Group ("Cyber

Surveillance"), a company having a postal address of 196 Alps Road, Suite

2-320, Athens, Georgia 30606 USA.

2. The Domain Name and

Registrar

This dispute concerns the

domain name <cyber-guard.com>. The registrar with whom the domain name

is registered is Network Solutions, Inc. ("NSI") of Herndon, Virginia,

USA.

3. Procedural History

Cyberguard’s Complaint

was filed with the World Intellectual Property Organization, Arbitration and

Mediation Center (the "Center") on July 30, 2001, pursuant to the

Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation

for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"),

the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN

on October 24, 1999 (the "Rules") and the WIPO Supplemental Rules

for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

On August 6, 2001, the

Center notified the registrar, NSI, that Cyberguard had filed its Complaint

with the Center, and requested that NSI verify certain details regarding Cyberguard’s

Complaint, and the registration and current status of the contested domain name.

On August 7, 2001, NSI notified the Center: (i) that NSI received Cyberguard’s

Complaint, (ii) that NSI is the Registrar for the contested domain name, (iii)

that Cyber Surveillance is the current registrant of the <cyber-guard.com>

domain name registration, (iv) of Cyber Surveillance’s contact details, (v)

that the Policy applies to the contested domain names through application of

NSI’s 4.0 Service Agreement in effect, and (vi) that the domain name registration

for the <cyber-guard.com> domain name is in "active" status.

It appears that Cyberguard

made proper payment of the administrative fee, but that on August 7 and 9, 2001

the Center notified Cyberguard of its failure to comply with certain formal

filing requirements. Cyberguard cured these deficiencies (i) by sending an electronic

copy of its Complaint to the Center on August 8, 2001, and (ii) by sending an

amendment to paragraph 15 of its Complaint (regarding Mutual Jurisdiction with

respect to a national court challenge to this Panel’s Decision) on August 14,

2001. Subsequent to Cyberguard’s curative actions, the Center confirmed that

Cyberguard complied with all of the formal filing requirements.

On August 22, 2001, the

Center began the process to notify Cyber Surveillance of the filing of Cyberguard’s

Complaint in accordance with paragraph 2(a) of the Rules. Cyber Surveillance

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

A. Complainant

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.

B. Respondent

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).

7. Decision

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.

Jonathan Hudis

Sole Panelist

Dated: October

25, 2001

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