RSA Security LLC v Sparkle Jones, sparkle entertainment (light of the; Gospel)

WIPO Case No. D2024-0614

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

RSA Security LLC v. Sparkle Jones, sparkle entertainment (light of the
Gospel)

Case No. D2024-0614

1. The Parties

The Complainant is RSA Security LLC, United States of America (“United States”), represented by Husch

Blackwell LLP, United States.

The Respondent is Sparkle Jones, sparkle entertainment (light of the Gospel), United States.

2. The Domain Name and Registrar

The disputed domain name <securid.info> is registered with Dynadot Inc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2024. On February 13, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 13, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Pending Renewal or Deletion) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 15, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 16, 2024.

The Center verified that the Complaint together with the amended Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 20, 2024. In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Parties of the Respondent’s default on March 12, 2024.

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The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on March 18, 2024. 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.

4. Factual Background

The Complainant, incorporated in Delaware, provides goods and services related to online security to companies worldwide. It is the proprietor of numerous registrations internationally for the SECURID mark, including the following:

 United States Trademark No. 7026924 for SECURID (device mark), registered on April 11, 2023, for goods and services in classes 9 and 42, claiming a date of first use in 2021;

 United States Trademark No. 1778802 for SECURID (device mark), registered on June 29, 1993, for

goods in class 9, claiming a date of first use in 1986.

The Complainant has registered the domain name <securid.com>, which redirects to its primary business
website at <rsa.com>. It provides information on the SecurID products and services at the web address

“

The disputed domain name was registered on January 16, 2023. At the time of this Decision, it resolved to a

“coming soon” page with the following text:

SECURID SERVICE moments.

The record contains evidence that it previously resolved to a website featuring pay-per-click (“PPC”) links to

“Secure ID”, “RSA Security Tokens,” and “RSA Security Software.”

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that it provides identity and access management for 12,000
organizations around the world, managing 25 million enterprise identities. The Complainant’s SecurID

products protect on-premises resources with secure access, authentication, and identity management and distinctive. The Complainant has not granted the Respondent permission to use its mark in any way. The Respondent’s use of PPC links is no coincidence. Two of the three PPC links identified use the Complainant’s trade name RSA Security, in which it has trademark rights. The links redirect users to the websites of competitors of the Complainant. Further, the banner above the PPC links states that the disputed domain name has expired and may be available at auction. However, the actual expiration date is in 2025. The Respondent is attempting to trade off the goodwill in the Complainant’s mark to sell the disputed domain name to the highest bidder. There is no good faith reason for the Respondent to register a domain name using a misspelling of “secure” and combine it with the term “id” as the Complainant does in its SECURID trademark. Finally, The Respondent changed its website upon receiving notice of the filing of this Complaint, further demonstrating bad faith.
capabilities. In 2023, the Complainant received the Best Cybersecurity Company award from Cybersecurity

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B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the UDRP requires the Complainant to make out all three of the following:

(i) the disputed domain name 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 disputed domain name; and

(iii)      the Respondent has registered and is using the disputed domain name in bad faith.

Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

The entirety of the Complainant’s registered SECURID mark is reproduced within the disputed domain name.
Accordingly, the disputed domain name is identical to the mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.7.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized

that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task
of “proving a negative”, requiring information that is often primarily within the knowledge or control of the
respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or
legitimate interests, the burden of production on this element shifts to the respondent to come forward with
relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of
proof always remains on the complainant). If the respondent fails to come forward with such relevant
evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section
2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

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At the time of the initial Complaint, the disputed domain name resolved to a site featuring PPC links related
to the Complainant’s business. Under these circumstances, the Panel finds that such use does not establish
rights or legitimate interests. WIPO Overview 3.0, section 2.9. Moreover, the composition of the disputed
domain name, which is identical to the Complainant’s SECURID trademark, carries a high risk of implied
affiliation to the Complainant that cannot constitute fair use. WIPO Overview 3.0, section 2.5.1.

The Panel notes that, at the time of this Decision, the disputed domain name did not resolve to an active website, but to a site stating “coming soon,” with reference to drone sales but no substantive content. This site was established by the Respondent after receiving notice of the Complaint. On that basis, the Panel is unable to find that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. The evidence does not indicate that the Respondent is commonly known by the disputed domain name nor that the Respondent is making legitimate noncommercial or fair use of it.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. The disputed domain name was registered more than 30 years after the Complainant first registered its SECURID trademark. The disputed domain name is identical to the Complainant’s mark and therefore implies a connection to the Complainant. Under these circumstances, the Panel finds that the disputed domain name was registered in bad faith. WIPO Overview 3.0, section 3.1.

The Panel finds that the previous use of the disputed domain name to resolve to a website featuring PPC links related to the Complainant’s business, and redirecting users to the Complainant’s competitors, is an indication of bad faith use of the disputed domain name. WIPO Overview 3.0. section 3.5. The reference to

the expiration of the disputed domain name and its availability at auction indicates a high likelihood that the
Respondent has registered or acquired the disputed domain name primarily to sell it for valuable
consideration likely in excess of the Respondent’s costs related to the disputed domain name.
WIPO Overview 3.0, section 3.1.1.

Further, UDRP Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record, the Panel finds the current non-use of the disputed domain name does not prevent a finding

of bad faith in the circumstances of this proceeding. Although panelists will look at the totality of the supports a finding of bad faith.

circumstances in each case, factors that have been considered relevant in applying the passive holding
doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of
the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use,
and (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its
registration agreement). WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel
notes the distinctiveness and long use of the Complainant’s trademark, and the composition of the disputed
domain name, which is identical to the Complainant’s SECURID mark, and finds that in the circumstances of
this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the
The Panel finds that the Complainant has established the third element of the Policy.

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7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <securid.info> be transferred to the Complainant.

/Ingrīda Kariņa-Bērziņa/

Ingrīda Kariņa-Bērziņa

Sole Panelist
Date: April 1, 2024