The Complainant is F5 Networks, Inc. of Seattle, Washington, United States of America, represented by Rosen Lewis, PLLC, United States of America.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America/ Nestor Pucheta of Tandil, Buenos Aires, Argentina. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2015. On November 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 24, 2015, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on November 27, 2015 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 December 4, 2015 and an amendment thereto on December 8, 2015.
The Center verified that the Complaint together with the amended Complaint and the amendment thereto 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 December 8, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 7, 2016.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on January 13, 2016. 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 is a corporation duly organized under the laws of the State of Washington in the United States of America providing outsourced IT and data solutions.
The Complainant is the owner of the following trademark registrations:
Reg. No.
Registration Date
Trademark
Class
Country
2,094,918
September 9, 1997
9
United States of America
2,335,141
March 28, 2000
42
United States of America
2,399,278
October 31, 2000
F5 Networks
9 and 42
United States of America
2,427,084
February 6, 2001
F5
9 and 42
United States of America
The Complainant claims that it is the owner of several such trademark registrations throughout the world.
The Complainant registered the domain name on May 31, 1996.
The disputed domain name was registered on July 25, 2015. 5. Parties’ Contentions A. The Complainant 1. Identical or Confusingly Similar
The Complainant claims that:
- the Respondent is prominently and pervasively using the Complainant’s trademarks throughout the website to which the disputed domain name resolves.
- the Complainant´s registered trademarks broadly protect its rights in the mark F5.
- the disputed domain name is facially identical with the Complainant’s registered trademarks. 2. Rights or Legitimate Interests
The Complainant claims that:
- the Respondent is not authorized by, in contract with, or otherwise known to the Complainant.
- the Respondent has no right, title, interest, or authorization to use the Complainant’s trademarks.
- upon review of the content located at the website to which the disputed domain name resolves, it appears that the Respondent is trading on the traffic generated by the Complainant’s trademark. The Complainant argues that said traffic results from the interest of users/consumers in the F5 trademarks and the goodwill associated with them. 3. Registered and Used in Bad Faith
The Complainant claims that:
- the disputed domain name appears to have been registered primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant
- the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s F5 marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location, or product or service on the Respondent’s website or location. B. The Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the complainant is requested to prove that each of the three following elements is satisfied:
(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 disputed domain name has been registered and is being used in bad faith.
As the Respondent has failed to submit a Response to the Complainant’s contentions, the Panel may choose to accept as true all of the Complainant’s reasonable allegations (Encyclopædia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487). A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant’s F5 and F5 (stylized) trademarks because it wholly incorporates them.
The terms “professional” and “services” are not distinctive enough to avoid confusing similarity. These terms are likely to generate the impression (among users and consumers) that the website to which the disputed domain name resolves is an official site of the Complainant. This is why the addition of said terms does not exclude the likelihood of confusion between the disputed domain name and the Complainant’s trademarks and the Complainant’s services (see Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
As stated by this Panel (and many others in several decisions) the addition of the generic Top-Level-Domain (“gTLD”) “.com” is immaterial for purposes of assessing the confusing similarity test. Said suffix has no legal significance and does not have any importance in the confusing similarity test, which is why its presence will not avoid confusing similarity (see Diageo p.l.c. v. John Zuccarini,WIPO Case No. D2000-0541).
In light of the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s referred trademarks.
The first requirement of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets forth the following examples as circumstances where respondents may have rights or legitimate interests in the disputed domain name:
(i) Before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent (as individual, business, or other organization) has been commonly known by the disputed domain name, even if they have acquired no trademark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent did not demonstrate any rights over the F5 trademarks, nor has it provided any arguments/evidence to support its use of said term in the disputed domain name, nor did the Respondent submit any evidence showing an actual bona fide use, or preparations to use the disputed domain name with a bona fide offering of services.
The Respondent has not demonstrated that it has been commonly known by the disputed domain name.
The assertions made by the Complainant (indicating that it has not authorized the Respondent to use its trademarks and that the Respondent has no rights, title or interest over the Complainant´s trademarks) were not denied by the Respondent, and thus no rights or legitimate interests over the disputed domain name have been proven (see Beyoncé Knowles v. Sonny Ahuja,WIPO Case No. D2010-1431; Six Continents Hotels, Inc. v. IQ Management Corporation,WIPO Case No. D2004-0272).
The Complainant has shown that it is the rightful owner of the trademarks F5.
The evidence found on the record shows that the Respondent is displaying the F5 wordmark and stylized marks in connection to an offering of services which are covered by the trademarks of the Complainant, which is why it is reasonable to conclude that the Respondent knew about the existence of the Complainant’s trademarks when registering the disputed domain name.
Annex 3 of the Complaint proves that the Respondent is attempting to divert traffic to a website that offers services that are similar to those covered by the Complainant’s trademarks, increasing the potential for confusion (see AltaVista Company v. O.F.E.Z. et al.,WIPO Case No. D2000-1160; Expedia, Inc. v. Dotsan,WIPO Case No. D2001-1220; CSA International v. John O. Shannon and Care Tech Industries, Inc.,WIPO Case No. D2000-0071).
The above facts are indicative of the Respondent’s intention to attract and divert Internet users for commercial gain. Given the circumstances of this case, this cannot be seen as a fair or legitimate use of the disputed domain name (see Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413).
In the Panel’s view, the Respondent in this case is not entitled to register a domain name incorporating the trademarks of the Complainant, because this conduct can cause confusion among Internet users and consumers (see The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc.,WIPO Case No. D2000-0113). In addition, the mere registration of a domain name is not sufficient to establish rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy (see SembCorp Industries Limited v. Hu Huan Xin,WIPO Case No. D2001-1092).
Since the Respondent is making a commercial use of the disputed domain name without permission or consent of the Complainant, by offering services similar to those of the Complainant, and displaying the Complainant’s trademarks in the website to which the disputed domain name resolves, it can be deducted that the Respondent is trying to generate an impression of affiliation or sponsorship with the Complainant, and to deviate Internet traffic for profit. Therefore, the Panel finds no rights or legitimate interests on the side of the Respondent.
The second requirement of the Policy has been fulfilled. C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that the complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to their website or other online 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 its website or location.
Given the use that the Respondent has made of the website associated with the disputed domain name, and taking into account the evidence comprised in Annex 3 (see evidentiary analysis above), which has not been contested by the Respondent, the Panel concludes that the Respondent knew about the Complainant’s trademarks and that by registering the disputed domain name, there could be confusion among Internet users searching for the Complainant’s websites and services. The conduct of the Respondent constitutes a risk of deception and confusion among consumers.
The website has since been modified, but as shown in the annexes filed by the Complaint, the Respondent was offering services that were similar to those marketed and provided by the Complainant.
With the above in mind, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website to which the disputed domain name resolves, creating a likelihood of confusion with the Complainant and its trademarks (see e.g., Alpine Entertainment Group, Inc. v. Walter Alvarez,WIPO Case No. D2007-1082; Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, supra; Asian World of Martial Arts Inc. v. Texas International Property Associates, supra; Owens Corning v. NA,WIPO Case No. D2007-1143).
The evidence found on the record show that, the website to which the disputed domain name resolved, indicated “We offer Professional Services and Consulting for F5 Networks products”, “Get a quote from us for this service, you can drop us an email at […]@ or use our Contact Us form”. Moreover, the referred website displayed links such as “F5 Remote Professional Services” and “F5 Professional services”.
From this Panel´s perspective the referred situations constitute an attempt to profit from the goodwill of the Complainant´s trademarks, which is why, the Respondent (by registering and using the disputed domain name) has created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the disputed domain name, with the purpose of attracting Internet users to his web site for commercial gain (seeProduits Berger v. Romana Go,WIPO Case No. DPH2005-0001).
Therefore, the Panel finds that the Respondent registered and used the disputed domain name in bad faith.
The third element of the Policy has been met. 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 be transferred to the Complainant.
Kiyoshi Tsuru
Sole Panelist
Date: January 26, 2016
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