On-line ADR Center of the Czech Arbitration Court (CAC)

Panel Decision

§ 15 of the UDRP Rules (Rules), § 9 of the CAC’s Supplemental Rules (Supplemental Rules)

Case No. 103585
Time of Filing 2021-02-22 09:07:07
Disputed domain name CCLEANERSERVICES.COM
Case Administrator
Name Iveta Špiclová
Complainant
Organization Piriform Software Limited
Authorized Representative
Name Rudolf Leška
Respondent
Name Sara Parrington
Other Legal Proceedings
The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.
Identification of rights
The Complainant has submitted evidence, which the Panel accepts, showing that it is the registered owner of the following:

- the EU trademark CCLEANER (Registration n°007562002) dated January 30, 2009;

- the EU trademark CCLEANER (registration n°015100803) dated February 11, 2016;

- the UK trademark CCLEANER (registration n°UK00002486623) dated May 2, 2008;

- the US trademark CCLEANER (registration n°5099044) dated February 25, 2016;

- the US trademark CCLEANER (registration n°3820254) dated March 6, 2009.


Moreover, the Complainant is also the owner of the domain names bearing the sign “CCLEANER” such as the domain names <ccleanercloud.com>, <ccleaner.cloud>, <ccleanerformac.com>, <ccleanermac.com>.
Factual Background
The Complainant is a globally well-known company which develops software tools and provides technology services for customers. The Complainant provides to its customers one of the world’s most popular PC optimization software named “CCLEANER” which protects the privacy and makes the computers faster and more secure. This award winning optimization tool was released in 2004 and has been already downloaded more than two and a half billion times.

The Complainant holds several trademark registrations for “CCLEANER” and the Complainant also holds the domain names bearing “CCLEANER”.

On October 8, 2020, the Respondent registered the disputed domain name <ccleanerservices.com>. The domain name is currently inactive.
 
PARTIES' CONTENTIONS:

COMPLAINANT:

The Complainant is a company specialized in software producing and is a well-known company in its sector. The Complainant provides one of the world’s most popular PC optimization software named “CCLEANER” which protects the privacy and makes the computers faster and more secure.

The Complainant holds international trademark registrations for the trademark “CCLEANER” and also is the owner of the domain names bearing the sign “CCLEANER”.


1. THE DISPUTED DOMAIN NAME IS CONFUSINGLY SIMILAR

The Complainant states that CCLEANER is at the core of the Complainant’s family of marks and it has acquired a distinctive character. CCLEANER is a globally known trademark with good reputation. The Complainant has more than half a million of followers on Facebook and about 19.000 followers on Twitter. The Complainant’s website www.ccleaner.com was visited by 25.51 million users in last 6 months.

The Complainant alleges that the disputed domain name <ccleanerservices.com> is confusingly similar to the Complainant’s trademark “CCLEANER” as it bears the Complainant’s trademark as a whole.

The Complainant states that the addition of the descriptive term “SERVICES” is not sufficient to abolish the confusing similarity between the disputed domain name and the “CCLEANER” trademark.

The Complainant states that numerous prior Panel decisions have accepted the fact that the domain name which wholly incorporates a Complaint’s registered trademark is sufficient to establish the confusingly similarity despite the addition of other descriptive words. The Complainant refers to earlier Panel decisions e.g. EAuto, LLC v. EAuto Parts, WIPO Case No. D2000-0096; Caterpillar Inc. v. Off Road Equipment Parts, WIPO Case No. FA0095497).

The Complainant also states that the addition of the “.com” does not change the overall impression of the designation as being connected to the Complainant’s trademark “CCLEANER”. Such attempts have been disapproved in various decisions e.g. Magnum Piercing, Inc. V D. Mudjackers and Garwood S. Wilson, Sr. WIPO Case No. D-2000-1525; Hugo Boss A.G. v. Abilio Castro, WIPO case No. DTV2000-0001; Radale Inc. V. Cass Foster, WIPO case No. DBIZ2002-00148. Carlsberg A/S v. Brand Live television, WIPO case No. DTV-2008-0003.

The Complainant alleges that the “CCLEANER” trademark is a well-known trademark and its well-known status was established in previous decisions e.g. CAC Case No. 101759 and CAC Case No. 101760. Accordingly, the Complainant states that “CCLEANER” term has acquired a distinctive character and the ordinary consumers are likely to believe that the disputed domain name <ccleanerservices.com> belongs to the Complainant.


2. NO RIGHTS OR LEGITIMATE INTERESTS IN RESPECT OF THE DISPUTED DOMAIN NAME

The Complainant states that the Respondent has no rights on the disputed domain name as the Respondent is not known as the disputed domain name and as the Respondent does not hold any trademark for “CCLEANER”.

The Complainant also alleges that neither license nor authorization has been granted to the Respondent to use the Complainant’s trademark “CCLEANER”. The past panel decision Avast Software sro v, Victor Chernyshov, CAC Case no.101568 is precedent for the concrete case.

The Complainant argues that the Respondent is not using the disputed domain name in connection with bona fide offering of goods or services or a legitimate noncommercial or fair use.

The Complainant also argues that the Respondent did not respond to the Complainant’s cease and desist letter and it demonstrates the lack of rights or legitimate interests in the disputed domain name. The Complainant refers to the earlier panel decision SeatGeek, Inc. v. Nash Enterprises, Inc., WIPO Case No. D2019-0415.

The Complainant indicates that it has made a prima facie case that the Respondent lacks legitimate rights or interests in the disputed domain name and the burden of proof has shifted to the Respondent.


3. THE DISPUTED DOMAIN NAME WAS REGISTERED AND IS USED IN BAD FAITH

The Complainant states that the “CCLEANER” is a well-known trademark and its notoriety has been accepted within the earlier decisions. The Complainant asserts that considering the well-known status of the Complainant’s trademark, the Respondent knew about the Complainant and its rights before the registration of the disputed domain name. Accordingly, the disputed domain name was registered and is being used in bad faith.

The Complainant also states that the disputed domain name is not being used for any bona fide offering and this fact, not being used of the disputed domain name, alone is sufficient to prove the bad faith of the Respondent according to many WIPO UDRP decisions.

The Complainant asserts that the Respondent intends to abuse good reputation of the Complainant and its trademark in order to attract internet users to its website in order to increase traffic on the websites resulting in the higher domain value.


RESPONDENT:

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.
Rights
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).
No rights or legitimate interests
The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).
Bad faith
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).
Procedural Factors
The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

Under the information provided by the Complainant, the Registration agreement was in English. The Complainant submitted the Complainant in English as well.

Pursuant to the paragraph 11(a) of Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement and the Panel has the authority to determine otherwise. The Panel determines in accordance with the Rules, paragraph 11(a), that the language of the present administrative proceeding shall be English as the language of the Registration Agreement is English.
Principal Reasons for the Decision
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In this context, the Panel also notes that the burden of proof is on the Complainant to make out its case and past UDRP panels have consistently said that a Complainant must show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.


For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:

A. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

B. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

C. the disputed domain name has been registered and is being used in bad faith.

The Panel will therefore deal with each of these requirements in turn.


A. IDENTICAL OR CONFUSINGLY SIMILAR

The Policy simply requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of registration of the “CCLEANER” trademarks.

The Panel finds that the disputed domain name contains the Complainant’s trademark “CCLEANER” as a whole and the addition of the descriptive term “SERVICES” is not enough to abolish the similarity.

Moreover, the addition of the gTLD “.COM” is not enough to abolish the similarity.

The Panel is of the opinion that the Internet users will easily fall into false impression that the disputed domain name is an official domain name of the Complainant. The Panel recognizes the Complainant's rights and concludes that the disputed domain name is confusingly similar with the Complainant's trademark. Therefore, the Panel concludes that the requirements of paragraph 4(a)(i) of the Policy is provided.


B. NO RIGHTS OR LEGITIMATE INTERESTS

Under paragraph 4(a)(ii) of the Policy, the complainant has the burden of establishing that the respondent has no rights or legitimate interests in respect of the domain name.

It is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to the respondent of the dispute, the use or making 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 respondent of the dispute (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent of the dispute is making a legitimate non-commercial or fair use of the domain name, without an intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Thus, if the respondent proves any of these elements or indeed anything else that shows that it has a right or legitimate interest in the domain name, the complainant will have failed to discharge its burden of proof and the complaint will fail. The burden is on the complainant to demonstrate a prima facie case that the respondent does not have rights or legitimate interests in the domain name. Once the complainant has made out a prima facie case, then the respondent may, inter alia, by showing one of the above circumstances, demonstrate rights or legitimate interests in the domain name.

The Complainant contends that the Respondent has nothing to do with the Complainant and any use of the trademark “CCLEANER” has to be authorized by the Complainant and there is no such authorization. Moreover, the disputed domain name has no relation with the Respondent and the Respondent is not commonly known as the disputed domain name.

In the absence of a response, the Panel accepts the Complainant’s allegations as true that the Respondent has no authorization to use the Complainant’s trademarks in the disputed domain name. Hence, as the Complainant has made out their prima facie case, and as the Respondent has not demonstrated any rights or legitimate interests as illustrated under paragraph 4(c) of the Policy, nor has the Panel found any other basis for finding any rights or legitimate interests of the Respondent in the disputed domain dame, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.


C. BAD FAITH

The Panel concludes that the Complainant's CCLEANER trademark has a significant reputation and is of distinctive character. Therefore, the Panel is of the opinion that due to the earlier rights of the Complainant in the CCLEANER trademarks and the associated domain names, the Respondent, was aware of the Complainant and its trademarks at the time of registration of the disputed domain name (see e.g., Ebay Inc. v. Wangming, WIPO Case No. D2006-1107). Referring to Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226, the Panel believes that the awareness of the Complainant’s trademark at the time of the registration of the disputed domain name is to be considered an inference of bad faith registration.

Moreover, the link <ccleanerservices.com> is currently inactive.

Therefore, in light of the above-mentioned circumstances in the present case, the Panel finds that the disputed domain name has been registered and is being used in bad faith and that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy.
Decision
For all the reasons stated above, the Complaint is Accepted
and the disputed domain name(s) is (are) to be
CCLEANERSERVICES.COM Transferred to the Complainant
Panellists
Name Mrs Selma Ünlü
Date of Panel Decision 2021-03-31
Publication of the Decision
Publish the Decision