The Complainant is F5 Networks, Inc. of Seattle, Washington, United States of America ("United States" or "US"), represented by Rosen Lewis, PLLC, United States.
The Respondents are Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States / Qingchun Shentu, Karrenet of Shenzhen, China. 2. The Domain Name and Registrar
The disputed domain name is registered with N, Inc. (N LLC) (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 19, 2016. On April 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 April 27, 2016, 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 April 29, 2016.
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 Respondents of the Complaint, and the proceedings commenced on May 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2016. The Center received from the Second Respondent an email communication on April 26, 2016. The Center received a second email communication purportedly on behalf of the Second Respondent on May 3, 2016.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on June 1, 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 tersely worded Complaint does not provide much information about the Complainant. So far as can be gathered from its website, it appears to provide technology and services in connection with network services. From the Complaint, the Complainant is the owner of registered trademarks in the United States:
- US Trademark Registration No. 2,094,918, F5 and device, for switches and routers and associated computer software in International Class 9 which was registered on September 9, 1997;
- US Trademark Registration No. 2,399,278, F5 NETWORKS, for computer hardware and software for enhancing the performance of a plurality of servers connected together by a network in International Class 9 and computer consulting services in International Class 42 which was registered on October 31, 2000;
- US Trademark Registration No. 2,427,084, F5, for computer hardware and software in International Class 9 and computer consulting services in International Class 42 which was registered on February 6, 2001.
The Complainant also provides evidence that it owns two registered trademarks in the United States for, respectively, BIG-IP and BIG/IP. The latter, Trademark No. 2,387,058, being registered on September 19, 2000 for the same goods in International Class 9 as Trademark No. 2,399,278. The former not being registered until December 8, 2015.
The Complainant also secured registration in the United States on November 3, 2015 for POINT LOAD BALANCER, Trademark No. 4,844,245, in respect of computer software for use in managing network communications and related activities in International Class 9.
The Registrar is apparently unable to confirm when the Second Respondent became the registrant of the disputed domain name. According to the Complaint, the disputed domain name was first created on February 24, 1998. In an email from the Second Respondent dated April 26, 2016, however, the Second Respondent states that he bought the disputed domain name "three year ago" for "a lot of money".
Shortly before the Complaint was filed, the disputed domain name resolved to a website which appears to consist of pay-per-click (PPC) advertising. The links on the page included in Annex 3 to the Complaint were to "F5 Networks", "F5 Big IP", "F5 Load Balancer", "F5", "Cloud Network", "F5 Networks", "F5 Load Balancer", "Free Mobile App Software", "F5 Big IP" and "Cloud Computing Free". There is also a box to "Search Ads". 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each 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 disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the 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. No formal Response
The First Respondent has not submitted any response and, as already noted, the Second Respondent has not submitted a formal Response.1 On May 3, 2016, however, the Center received an email from one "zeng" which simply stated:
"The owner of the domain doesn't know English very well, he cann't [sic] understand the exact meanings of these files and your emails. So he let me tell you that he want you to express yourselves in Chinese. You do have the responsibility to let him understand what is happening."
As noted above, there had been an earlier informal communication to the Center from the Second Respondent dated April 26, 2016. That email was expressed clearly in English, if slightly ungrammatically. It is not clear, therefore, why the "May 3" email was forwarded by someone who identified him or herself as "zeng", rather than by the Second Respondent. Assuming for present purposes that it was in fact authorised by the Second Respondent, the Panel treats it as a request for the language of the proceeding to be Chinese, or at least to have all documents in the proceeding translated into Chinese.
The Panel's duty under paragraph 10(b) of the Rules to ensure that all parties are treated equally and each party is given a fair opportunity to present its case. This duty may mean that a Panel should accede to a request such as that made by "zeng" in some circumstances.
In the present case, however, paragraph 11(a) of the Rules provides:
"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
The Complainant has not indicated its consent to the Second Respondent's request.
The Registrar has confirmed that the language of the Registration Agreement for the disputed domain name is English.
Under the terms of paragraph 11(a) of the Rules, the Panel nonetheless has a discretion to order that a different language be adopted "having regard to the circumstances of the administrative proceeding". There is also power under paragraph 11(b) of the Rules to order translation of documents submitted in a language other than the language of the proceeding.
In addition to the two matters already referred to, however, the Panel notes that the first email from the Second Respondent, the "April 26" email, was expressed quite adequately and clearly in English. It was also sent in the Second Respondent's name, rather than from some unidentified intermediary. No explanation has been offered to explain why the Second Respondent was able to send the email dated April 26, 2016 in perfectly adequate English, but was unable either to understand the Complaint (as claimed in the email dated May 3, 2016) or to respond or needed to arrange for "zeng" to send the email dated May 3, 2016.
Further, the materials observable on the website to which the disputed domain name resolved shortly before the Complaint was filed show that it used links in Roman letters and Arabic numerals. There was no use of Chinese characters at all on the website.
The Panel also notes that translation of the documents in the proceedings into Chinese could be an expensive and onerous exercise. The imposition of such a burden on a complainant could itself be a cause of unfairness to a complainant. Given the default rules under the Policy prescribed by paragraph 11(a) of the Rules, therefore, the Panel would not be willing to accede to a request such as that made by "zeng" on behalf of the Second Respondent in the absence of some special circumstance or circumstances that could justify imposing such a burden on the Complainant.
The record in this case does not warrant such a departure from rule prescribed in paragraph 11(a) of the Rules. So far as the record shows, the Second Respondent has been perfectly willing to enter into the registration agreement in English and to operate his or her own website in English and has not advanced any sufficient explanation why he or she has been unable to respond to the Complaint adequately in due time.
Accordingly, the Second Respondent's request (if "zeng" be authorised by him or her) is denied.
Therefore, the Respondents are in default. When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. There are no special circumstances warranting a departure from that rule here. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable. B. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant's trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademark for "F5" and also for "f5 and device" and "F5 NETWORKS in the United States identified in section 4 above.
It also claims to be the owner of those trademarks registered in many other countries throughout the world, but has not provided any evidence to support those claims.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top Level Domain (gTLD) component as a functional aspect of the domain name system: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Disregarding the ".net" gTLD, the disputed domain name is identical to the Complainant's registered trademark No. 2,427,084. The "F5" element of each of the other two registered trademarks is a prominent and striking visual and aural feature of both. Accordingly, the Panel considers that the disputed domain name is also confusingly similar to both. C. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondents] of the dispute, [the Respondents'] use 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 Respondents] (as an individual, business, or other organization) have been commonly known by the [disputed] domain name, even if [the Respondents] have acquired no trademark or service mark rights; or
(iii) [the Respondents] are 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.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of the WIPO Overview 2.0.
The Complainant states that it has not authorised the Respondents to use the disputed domain name. Nor are the Respondents affiliated with it.
The disputed domain name is plainly not derived from any of the Respondents' names.
Although it appears that the disputed domain name was first registered in 1998, the Second Respondent has admitted that he or she first acquired it about three years ago. It is therefore at that time (approximately 2013) that the Second Respondent's rights or legitimate interests, if any, fall to be assessed. That date is many years after the Complainant first registered its rights in its trademark.
The nature of the website to which the disputed domain name resolved shortly before the Complaint was filed has been described above. It makes heavy use of the Complainant's trademarks. It is not clear whether the links using those trademarks link through to the Complainant's products or competing products. Some of the links, however, would appear plainly to be unassociated with the Complainant: for example, the links through to "Free Mobile App Software" and "Cloud Computing Free". The use of the Complainant's trademarks in the disputed domain name to divert traffic in such a manner does not qualify as a bona fide offering of goods or services under the Policy.
In these circumstances, the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also. D. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The website to which the disputed domain name resolves shows a clear awareness of the Complainant and its trademarks. It would seem unlikely that someone would adopt "F5" and "BIG IP" and "LOAD BALANCER" in the same expressions in the absence of awareness that they were used by the Complainant to identify its products and services and had been so used for many years. Although "load balancer" and "big ip" may be descriptive in some contexts, it does not seem likely that they would be used in connection with "F5" except by someone who was already aware of the Complainant's trademarks and usage.
In these circumstances, the Panel infers that the Second Respondent was aware of the Complainant and its trademarks when he or she acquired the disputed domain name. It also appears from these circumstances that the Second Respondent registered the disputed domain name to put it to the use which he or she has in fact put it. See also in this regard WIPO Overview 2.0 paragraph 3.8. As already explained above in section 5C, the disputed domain name has not been used in connection with a bona fide offering of goods or services. To the contrary. The Panel notes that the Complainant has proved ownership of trademarks in the United States only. That is not a bar to success under the Policy. Moreover, the website to which the disputed domain name resolves is accessible from anywhere with Internet access around the world and is plainly directed to English language users. In these circumstances, therefore, the Panel finds that the disputed domain name has been both registered and used in bad faith under the Policy. Accordingly, the Complainant has made out this requirement under the Policy as well. 6. 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.
Warwick A. Rothnie
Sole Panelist
Date: June 14, 2016
1 Having regard to the nature of the First Respondent as a "privacy protection" service and the receipt of informal communications from, or on behalf of, the Second Respondent, it is convenient hereafter simply to refer to the "Respondent".
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