Coderbag LLC is a software publisher of QuickCPU, a PC performance tuning software. The company registered the mark QUICKCPU and operates from QuickCPU.com.
The company enlisted the services of popular IP attorney, John Berryhill, in an attempt to get the domains QuickCPU.net and QuickCPU.org via the UDRP process.
Why was that important?
The Respondent copied an older version of the QuickCPU.com web site, passing off as the Complainant. The links on the navigational menu lead to a variety of destinations, with mostly a scheme to phish information or generate revenue from clicks.
The case was an easy win for the Complainant and the Forum panelist ordered both domains to be transferred to the Complainant.
DECISION
Coderbag LLC v. Sharjeel Shahid / royalestacks / Amir Sheh / handmixers
Claim Number: FA2307002052293
PARTIESComplainant is Coderbag LLC (“Complainant”), represented by John Berryhill, Pennsylvania, USA. Respondent is Sharjeel Shahid / royalestacks / Amir Sheh / handmixers (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are quickcpu.net and quickcpu.org, registered with Cosmotown, Inc. and Porkbun LLC.
PANEL
The undersigned certifies that he has acted independently and impartially, and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on July 7, 2023; Forum received payment on July 7, 2023.
On July 10, 2023 and July 11, 2023, Cosmotown, Inc. and Porkbun LLC confirmed by e-mail to Forum that the quickcpu.net and quickcpu.org domain names are registered with Cosmotown, Inc. and Porkbun LLC and that Respondent is the current registrant of the names. Cosmotown, Inc. and Porkbun LLC have verified that Respondent is bound by the Cosmotown, Inc. and Porkbun LLC registration agreements and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 17, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 7, 2023, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@quickcpu.net, postmaster@quickcpu.org. Also on July 17, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On June 15, 2023, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Darryl C. Wilson as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Complainant alleges that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which are operating jointly possibly under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant alleges that the infringing websites themselves declare and admit they are commonly owned. Both sites have identical Terms of Use and both websites claim the sites constitute a “work belonging to quick cpu”. The websites posted at quickcpu.net and quickcpu.org also share coding similarities.
Based on the prompt registration of the .org domain name after Complainant contacted the .net website operator, the claimed common ownership of quickcpu.net and quickcpu.org, coding similarities between the two websites, and the identical pattern of registering respective .net and .org domain names identical to a preexisting .com website, it appears that the registrant identities may be aliases or are, at the very least, persons acting jointly in concert in the execution of a common plan or scheme.
The Panel here finds that Complainant has presented sufficient evidence that the disputed domain names are registered by the same domain name holder or more than one person or entity acting jointly as the same domain name holder. The findings and decisions herein therefore apply to all Respondents.PARTIES’ CONTENTIONS
A. Complainant
The Complainant, Coderbag LLC is a publisher of software, including PC performance tuning software known as QuickCPU. Complainant asserts common law rights in the QUICKCPU mark and contends that Respondent’s quickcpu.net and quickcpu.org domain names are identical or confusingly similar to Complainant’s mark because they each contain Complainant’s mark in full and simply add a generic top level domain (“gTLD”). Complainant further contends that Respondent lacks rights or legitimate interests in the disputed domain names and that Respondent registered and used the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant is Coderbag LLC, (“Complainant”), of Clovis, CA, USA. Complainant claims common law rights in the mark QUICKCPU based on its continual use of the mark since at least as early as 2019 in association with its production and provision of personal computer performance tuning software products.
Respondent is Sharjeel Shahid (royalestacks) and/or Amir Sheh (handmixers) (“Respondent”), of Punjab, Pakistan. Respondent’s registrar’s address appears to be Menlo Park, CA, USA and/or Sherwood, OR, USA. The Panel notes that the quickcpu.net domain name was registered on or about January 19, 2023, and the quickcpu.org was registered on or about June 11, 2023.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical and/or Confusingly Similar
Complainant asserts common law rights in the QUICKCPU mark. The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate common law rights in the mark. See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”). Common law rights can be established through a showing of secondary meaning within the mark. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising”).
Here, Complainant asserts that Google search engine results indicate the distinctiveness of the mark as the first 50 results refer to Complainant’s QUICKCPU mark and company when a search is entered. Complainant also indicates YouTube reviews of its products by hundreds of thousands viewers and subscribers since 2019. Complainant’s principal indicated that its website at coderbag.com/product/quickcpu received approximately 100,000 visitors per month prior to the registration of the disputed domain names and their attendant websites.
The Panel here finds that the Complainant has shown that it has used the mark for several years since at least as early 2019, that it has obtained substantial secondary meaning associated with the Complainant in Google search results, third party review and recognition, wide distribution in the relevant marketplace, and many tens of thousands of customers, for its “QUICKCPU” software.
Complainant argues Respondent’s quickcpu.net and quickcpu.org domain names are identical or confusingly similar to Complainant’s QUICKCPU mark as they contain the mark in its entirety and merely add generic top level domains. The addition of a TLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The Panel finds the disputed domain names are identical or confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
Rights or Legitimate Interests
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant asserts that Respondent has intentionally adopted the disputed domain names to specifically identify its website as “QUICKCPU” in order to pass itself off as the Complainant. The quickcpu.net domain name was registered on January 19, 2023, several years after the Complainant had gained substantial recognition. The quickcpu.org domain name was only recently registered in June 2023, when Respondent knew or should have known of Complainant’s QUICKCPU mark due to its longstanding use and wide recognition as well as additional direct contact Complainant had with Respondent regarding the domain names and its mark. Complainant also provided evidence the domain name quickcpu.net website copied Complainant’s logo, graphics, and text as well as made false claims regarding its association with Complainant’s products.
Complainant further states that in attempting to access quickcpu.net Complainant was subject to malware which further supports a conclusion that Respondent lacks legitimate rights or interests in the disputed domain names. See Optibet SIA v. Forrest Bailey, WIPO June 28. 2023, Case No. D2023-1840 (“The fact that the disputed domain name has been blocked being categorized as malware rather shows the non-legitimate character of registration and use of the disputed domain name by the Respondent.”). Additionally, Complainant filed a DMCA action against Respondent which resulted in the quickcpu.net being disabled by its host and removed from Google search results for some period of time. At or around that time Respondent registered quickcpu.org. The Panel here finds Respondent lacks rights or legitimate interests in the disputed domain names per Policy ¶ 4(a)(ii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Registration and Use in Bad Faith
Complainant argues that Respondent registered and uses the quickcpu.net and quickcpu.org domain names in bad faith because Respondent intentionally sought to disrupt Complainant’s business. As previously noted Complainant provided evidence that Respondent had copied Complainant’s logo, graphics and text as well as made misleading statements claiming an association with Complainant’s products. Respondent intended to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s QUICKCPU mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites, which is evidence of bad faith under Policy ¶ 4(b)(iv). See Nestlé Waters North America, Inc. v. Domain Administrator / Fundacion Privacy Services LTD, FA 1792308 (Forum July 22, 2018) (Finding Respondent uses the domain names to point to a site which offers links relating to Complainant’s business. “Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant.”). Here, Complainant provides evidence of the use of its mark and proprietary subject matter on Respondent’s website which supports a finding of Respondent’s bad faith registration and use of the domains.
Further, in Complainant’s DMCA action and resulting interchanges Respondent characterized Complainant as its competitor and stated that it was providing information about QuickCPU. Respondent’s communication and the timing of its registrations support the conclusion that Respondent knew of Complainant’s mark’s prior existence. The Panel here agrees with Complainant, that Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain names and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm’cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent’s contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant’s rights in the UNIVISION mark when registering the disputed domain name). Here, Complainant provided evidence of the notoriety of its mark and Respondent’s use of the mark to impersonate Complainant which together strongly indicate that Respondent had actual knowledge of Complainant’s rights in the mark. The Panel here finds Respondent’s registration and use was in bad faith per Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the quickcpu.net and quickcpu.org domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: August 15, 2023
