Decision for dispute CAC-UDRP-103854

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

In these proceedings, the Complainant relies on the following trademarks:

- FILEHIPPO (word), EU Trade Mark Registration No. 008893745, registered as of February 18, 2010, in the name of FileHippo s.r.o. (the Complainant), duly renewed; plus equivalent registration in the UK (because of Brexit);

- FILEHIPPO (word), UK Trade Mark Registration No. UK00002514818, registered as of April 28, 2009, in the name of FileHippo s.r.o. (the Complainant), not renewed/dead since 2019, but well in force during the registration time of the disputed domain name in 2018;

- FILEHIPPO (word), US Trade Mark Registration No. 6024355, registered as of December 18, 2018, in the name of FileHippo s.r.o. (the Complainant), i.e. after the registration of the disputed domain name.


The Complainant also claims Common Law rights on the mark “FILEHIPPO”, deriving from his use in commerce of the said mark since 2004.

The Complainant is the owner of a software download site (www.filehippo.com) focused on quality freeware, created in 2004. Ever since, the site has become quite known in the market (165K followers on Facebook and 3.8 million monthly visitors) and has gained quite a few awards, especially thanks to its “FileHippo App Manager”. The claimed aim of the website is to “provide users with the simplest legal method of downloading the newest versions of the best software”.

The Complainant owns a small-sized portfolio of trademarks including the wording "FILEHIPPO", among which an EU registration dating back to 2010. It also owns notably the domain name <filehippo.com> since November 1, 2004.

The disputed domain name <filehippos.org> was registered on March 15, 2018 by the Respondent.

PARTIES' CONTENTIONS:

COMPLAINANT:

The Complainant contends that the disputed domain name is confusingly similar to its “FILEHIPPO” trademark, as it wholly incorporates this trademark. This last element is sufficient to support the finding that the disputed domain name is confusingly similar to the Complainant's trademark. Indeed, the mere addition of the letter “-s” at the end of the Complainant’s trademark does not change the overall impression of a most likely connection with the trademark “FILEHIPPO” of the Complainant. As to the gTLD “.org”, the Complainant suggests that it should be disregarded, as per usual practice.

The Complainant maintains that the Respondent lacks rights or legitimate interests in the disputed domain name because the Respondent is neither known by the disputed domain name nor has it used in connection with a bona fide offering of goods or services, the Complainant is neither affiliated with nor has it ever authorised the Respondent to register its trademark as a domain name and the Complainant has no business with the Respondent.

According to the Complainant, given the distinctiveness and reputation of the “FILEHIPPO” trademark, the Respondent registered the disputed domain name with full knowledge of the Complainant's trademark in an intentionally designed way with the aim to create a likelihood of confusion with the Complainant’s trademarks and domain names, and this is evidence of the fact that the disputed domain name was registered in bad faith.

With respect to use in bad faith, the Complainant points out that the Respondent has used the disputed domain name in order to deceive the Complainant’s customers and attract them there for commercial gain, a fact that – in combination with the incorporation of a known trademark in a domain name – proves use in bad faith.

For all these reasons, the Complainant concludes that the Respondent registered and used the disputed domain name in bad faith.


RESPONDENT:

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

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).

The disputed domain name consists of the Complainant's whole trademark (FILEHIPPO), written in a misspelled way, with an additional “-s” at the end. Such misspelling is not sufficient to escape the finding that the disputed domain name is confusingly similar to the trademark of the Complainant. This is a clear case of typosquatting.

As far as the gTLD ".org" is concerned, it is generally recognized that top level domains do not have any bearing in the assessment of identity or confusing similarity, according to paragraph 4(a)(i) of the Policy.

Hence, the Panel is satisfied that the first requirement under the Policy is met.

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).

Since proving a negative fact is almost impossible, panelists in UDRP proceedings have generally agreed that it is sufficient for the Complainant to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name to shift the burden of proof to the Respondent.

In the case at issue, the Complainant argued that it had never authorised the Respondent to register the FILEHIPPO trademark in a domain name, and that it had never licensed its trademark to the Respondent.

Furthermore, the Respondent has not demonstrated any use of the disputed domain name in connection with a bona fide offering of goods and services or a legitimate non-commercial or fair use of the disputed domain name.

Finally, there is no other evidence in the case file that could demonstrate that the Respondent has been commonly known by the disputed domain name.

In view of the foregoing, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name. In order to rebut the Complainant's arguments, the Respondent had the possibility to make his own defense. However, the Respondent has chosen not to file a Response.

Therefore, the Panel is satisfied that also the second requirement under the Policy is met.

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).

As far as registration in bad faith is concerned, given the reputation of the Complainant's trademark and the fact that the disputed domain name fully incorporates this trademark (even in a misspelled way), it is evident that, at the time of the registration – and of every renewal thereof since 2019 – of the disputed domain name, the Respondent was well aware of the Complainant's trademark. The registration as domain name of a third party's well-known trademark with full knowledge of the fact that the rights over this trademark belong to a third party amounts to registration in bad faith.

With respect to use in bad faith, the disputed domain name resolves to a website that resembles to the Complainant’s website and contains many similar characteristics to the latter. This fact is to be combined with the full incorporation of the Complainant’s known trademark in the disputed domain name. For this Panel, same as for many previous panels, such misleading behaviour clearly amounts to use in bad faith. Therefore, it is impossible to conceive any plausible active use of the disputed domain name that would be legitimate.

Therefore, the Panel finds it clear that the disputed domain name was used in bad faith.

For all circumstances mentioned above, the Panel is satisfied that also the third requirement under the Policy is satisfied.

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.

The disputed domain name wholly incorporates the Complainant's trademark, written in a misspelled way. The disputed domain name is therefore confusingly similar to the Complainant's trademark.

The Respondent was not authorised to include the Complainant's trademark in the disputed domain name, and the Complainant never licensed its trademarks to the Respondent. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate non-commercial or fair use.

The Respondent registered and renewed the disputed domain name with full knowledge of the Complainant's reputable trademark. His use of the disputed domain name is in bad faith as there is no conceivable use of the disputed domain name that could amount to a legitimate use.