Kaseyaus.com

The timeline behind kaseyaus.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Kaseya Limited v. Douglas Schmidt Claim Number: FA2501002135648 PARTIES Complainant is Kaseya Limited, represented by Rachel Jacques of MASCHOFF BRENNAN, Utah, USA. Respondent is Douglas Schmidt ("Respondent"), Tennessee, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <kaseyaus.com>, registered with NameCheap, Inc. 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. Debrett G. Lyons as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to Forum electronically on January 16, 2025; Forum received payment on January 16, 2025. On January 16, 2025, NameCheap, Inc. confirmed by e-mail to Forum that the <kaseyaus.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement 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 January 17, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 2025 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@kaseyaus.com. Also on January 17, 2025, 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 February 7, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Debrett G. Lyons 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 name be transferred from Respondent to Complainant. PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS The Complaint in both its original and amended form named two complainants, Kaseya US LLC and Kaseya Limited. Forum Supplemental Rule 1(e) states that UDRP proceedings may be initiated by "a single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint." The Complaint states that: "Complainant Kaseya US LLC and Kaseya Limited are related companies that operate under a single unity of control. Kaseya US LLC is based in the United States while its related company Kaseya Limited is based in Ireland. Kaseya US LLC and Kaseya Limited utilize trademarks which feature the KASEYA brand to promote a single source of KASEYA branded products and services, under agreed upon terms." The Panel notes that for the purposes of paragraph 4(a)(i) of the Policy (see below) and, in particular, the question of proof of trademark rights, the Complaint asserts that the named complainants have established considerable goodwill and consumer recognition and enjoy both common law and federal protection for the KASEYA brand. As a preliminary matter, the Panel is not able to find adequate proof of common law rights based on the material provided, still less able to attribute such rights to a particular entity. As for Federal protection, the Panel notes reliance on United States Patent & Trademark Office ("USPTO") Registration No. 6523982 for KASEYA, registered on October 19, 2021. The Certificate of Registration provided with the Complaint shows Kaseya Limited (IRELAND limited company (ltd.) to be the registered owner. The relationship between Kaseya US LLC and Kaseya Limited is not transparent. The unity of control under which they operate may be the control of another group company. It is not clear. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0") asks at #1.4: Does a trademark owner's affiliate or licensee have standing to file a UDRP complaint? The consensus of UDRP panel opinion is expressed to be that: "A trademark owner's affiliate such as a subsidiary of a parent or of a holding company, or an exclusive trademark licensee, is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint. While panels have been prepared to infer the existence of authorization to file a UDRP case based on the facts and circumstances described in the complaint, they may expect parties to provide relevant evidence of authorization to file a UDRP complaint. In this respect, absent clear authorization from the trademark owner, a non-exclusive trademark licensee would typically not have standing to file a UDRP complaint. 1.4.2 Where multiple related parties have rights in the relevant mark on which a UDRP complaint is based, a UDRP complaint may be brought by any one party, on behalf of the other interested parties; in such case, the complainant(s) may wish to specify to which of such named interested parties any transfer decision should be directed. There is nothing in the Complaint to better describe the relationship between the trademark owner and Kaseya US LLC and the reference to trademark use on "agreed upon terms" does not point to an exclusive licence. In the circumstances the Panel does not find that Forum Supplemental Rule 1(e) has been met, but to avoid recommencement of the proceedings has redacted the name of Kaseya US LLC from the Complaint, allowing it to proceed with Kaseya Limited as "Complainant". PARTIES' CONTENTIONS A. Complainant Complainant asserts trademark rights in KASEYA and submits that the disputed domain name is confusingly similar to its trademark. Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Further, Complainant alleges that Respondent registered and used the disputed domain name in bad faith. In particular, Complainant asserts that Respondent has used the domain name as part of an email address and has sent emails with a fraudulent purpose for commercial gain. B. Respondent Respondent failed to submit a Response in this proceeding. FINDINGS The factual findings pertinent to the decision in this case are that: 1. Complainant provides software support and maintenance within the field of IT and security by reference to the trademark KASEYA; 2. the disputed domain name was registered on January 11, 2025, by Respondent using a privacy service to shield its identity; and 3. the domain name does not resolve to an active website but has been used to send emails to Complainant's customers which present themselves as having originated from Complainant, asking them to amend their bank transfer details for payment of their account. 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. Identical and/or Confusingly Similar Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark. Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. A trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). The Panel has already noted a registration for the trademark and so finds Complainant has trademarks rights since the USPTO is a national trademark authority. Complainant submits that the disputed domain name is confusingly similar to the trademark since it pairs the trademark with the generic and geographic identifier, 'us'. The Panel agrees. For the purposes of comparison of the disputed domain name with the trademark, the gTLD, ".com" can be disregarded (see, for example, Am. Int'l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007)). The additional country abbreviation "us" is of no distinctive value and only amplifies the likelihood of confusion. The trademark remains the recognizable part of the name and so the Panel finds that the domain name is confusingly similar to the trademark (see, for example, Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."). The Panel therefore finds that the requirements of paragraph 4(a)(i) of the Policy are satisfied. Rights or Legitimate Interests Paragraph 4(c) of the Policy states that 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 rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are 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. Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)). The name of the domain name owner does not carry any suggestion that Respondent might be commonly known by the domain name. There is no evidence that Respondent has any trademark rights of its own. The domain name is being used in emails which impersonate Complainant and its employees to effect a fraudulent scheme to divert payments away from Complainant. Such use is clearly not a bona fide offering of goods or services or legitimate non-commercial or fair use under the Policy (see, for example, Am. Int'l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant's mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) ("The Panel finds that Respondent's attempt to "phish" for users' personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)."). A prima facie case has been made and so the onus shifts to Respondent to rebut that case by demonstrating those rights or interests. Absent a Response the onus is not met and so the Panel finds that Complainant has satisfied the second limb of the Policy. Registration and Use in Bad Faith Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith. Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established. The four specified circumstances are: (i) circumstances indicating that the respondent has 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 respondent's documented out-of-pocket costs directly related to the domain name; or (ii) the respondent 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 Respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent's website 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 respondent's website or location or of a product or service on the site or location. The Panel finds that Respondent's conduct falls under paragraph 4(b)(iv). The Panel has found that the domain name to be confusingly similar to the trademark. The use of the domain name is for commercial gain. In terms of the Policy, the Panel finds that Respondent has used the disputed domain name to attract, for commercial gain, internet users to its online location by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of that online location. The Panel finds that Complainant has satisfied the third and final element of the Policy. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <kaseyaus.com> domain name be TRANSFERRED from Respondent to Kaseya Limited. Debrett G Lyons, Panelist Dated: February 10, 2025 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.