The Complainant is F5 Networks, Inc. of Seattle, Washington, United States of America (“United States”), represented by Rosen Lewis, PLLC, United States.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Eddie Lau, F5 Works Ltd. of Hong Kong, China, self-represented. 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 14, 2017. On November 15, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 15, 2017, 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 28, 2017 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 amendment to the Complaint on November 29, 2017.
The Center verified that the Complaint together with the amendment to the 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 December 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2017. The Response was filed with the Center on December 19, 2017.
The Center appointed Luca Barbero as the sole panelist in this matter on January 9, 2018. 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 United States company which provides communication network products and services and is the owner of several trademark registrations for F5 alone or together with other words and/or design elements.
Amongst others, the Complainant owns the United States trademark registration Nos. 2427084 for F5 (word mark), registered on February 6, 2001 for goods in International class 9; 5206118 for F5 LABS (figurative mark), registered on May 16, 2017, for services in International class 42; 2094918 for F5 (figurative mark), registered on September 9, 1997 for goods in International class 9; and 2399278 for F5 NETWORKS (word mark), registered on October 31, 2000, for goods and services in International classes 9 and 42. The Complainant is also the owner of the Hong Kong, China trademark registration No. 302238291 for F5 (word mark), registered on April 30, 2012, for goods and services in International classes 9 and 42.
The disputed domain name was registered on June 12, 2016 and is pointed to a website advertising services in the field of development of web and mobile applications. 5. Parties’ Contentions A. Complainant
The Complainant asserts that its trademark registrations broadly protect the Complainant’s rights in the marks F5 and F5 LABS and that the disputed domain name and correspondent website feature the marks and other similar derivatives of the same, such that consumer confusion is likely with respect to the Complainant’s trademark.
The Complainant states that the Respondent prominently and pervasively uses the F5 marks throughout the website at the disputed domain name, through the “” and “” websites and other locations without any authorization or license from the Complainant.
The Complainant asserts that the Respondent prominently and pervasively uses the Complainant’s marks to defraud users, consumers, and viewers of the Respondent’s content, by using the marks in association with services that are confusingly similar to the following services of the Complainant, including but not limited to: software development services, mobile application services, web application services, computer and software consulting services, software deployment, application management services, and services related to servers and networks.
The Complainant asserts that the Respondent’s use of the Complainant’s marks is currently causing consumer confusion in the marketplace and will continue to do so in the future, as the Respondent offers services directly related to the services provided by Complainant under a confusingly similar mark.
The Complainant further states that the Respondent’s operations in Hong Kong, China directly infringe the Complainant’s registered trademark in Hong Kong, China and seek to defraud the Complainant’s Hong Kong, China customers. It also highlights that the Respondent’s use of the English language shows that the Respondent is also targeting businesses and consumers in the United States, European Union, and in other regions where the Complainant’s marks are registered. The Complainant asserts that, as such, consumers will be confused into mistakenly believing that the Complainant has authorized or endorsed Respondent’s services when no such authorization or endorsement has been granted.
The Complainant states that the Respondent has no right, title, interest, or authorization to use the Complainant’s marks, and that the Respondent has not been authorized by, or is otherwise known, to the Complainant.
The Complainant asserts that the Respondent’s principal business appears to trade on traffic generated as a result of interest in the Complainant’s marks and that the Respondent is attempting to generate Internet traffic based exclusively on the goodwill associated with the Complainant’s mark, leading to the dilution and tarnishment of the Complainant’s valuable trademark rights.
The Complainant contends that the Respondent appears to have registered the disputed domain name primarily for the purpose of disrupting the business of a competitor and that the Respondent intentionally attempts to attract, for commercial gain, Internet users to Respondent’s web site or other online location by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on the Respondent’s website or other location. B. Respondent
The Respondent states that i) it did not register or acquire the disputed domain name for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name; ii) it did not register the disputed domain name in order to prevent the Complainant from reflecting its mark in a corresponding domain name and, in connection therewith, the Respondent has not engaged in a pattern of such conduct; iii) the Complainant and the Respondent are not competitors and the disputed domain name was not registered by the Respondent primarily to disrupt the Complainant’s business; and iv) the disputed domain name was not registered by the Respondent in an intentional attempt to attract for commercial gain, Internet users to the Respondent’s web site 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 the Respondent’s website or location.
The Respondent also asserts that, before the Respondent received any notice of the dispute, there is evidence of Respondent’s 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; and that it is 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.
The Respondent claims that it has been operating its business under the trade name F5 Works Limited since June 2016 and provides evidence of the incorporation of the company. The Respondent therefore states to have used the disputed domain name to promote its business, not trying to pretend as having any connection with the Complainant.
The Respondent also alleges that the element “f5” encompassed in the Respondent’s trade name and in the disputed domain name is representing the “refresh” button on a keyboard, and that the expression “F5 Works” included in the trade name stands for “Refresh Works”, which would be a common phrase in software developer community: ‘Keep pressing the refresh button until it works’.
The Respondent also argues that the Complainant’s core business of the Complainant is networking appliance related solutions, which is totally different from the Respondent’s core business, consisting in building custom web and mobile software solution. As such, visitors of the Respondent’s website can easily tell that the Complainant and the Respondent are different companies providing different services or goods. 6. Discussion and Findings
According to 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”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established rights in F5 based on its registrations for the trademark F5 in the United States and Hong Kong, China cited above.
The Panel notes that the disputed domain name entirely reproduces the Complainant’s trademark F5 with the mere addition of the generic Top-Level Domain “.works”, that does not eliminate the identity between the Complainant’s registered trademark and the disputed domain name. See section 1.11 of the the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”):
“The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test".
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is identical to the trademark F5 in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant is required to make a prima facie case that the Respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the Respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; Banco Itau S.A. v. Laercio Teixeira,WIPO Case No. D2007-0912; Wal-Mart Stores, Inc. v. WalMart Careers, Inc.,WIPO Case No. D2012-0285.
According to the records, there is no evidence of an authorization granted by the Complainant to the Respondent to use the trademark F5 and/or to register and use the disputed domain name. In addition, the Complainant asserted that it never had any relationship with the Respondent.
The Respondent indicated to have used the disputed domain name in connection with a bona fide offering of goods or services since it used the disputed domain name to promote its business in the field of development of web and mobile applications and registered its business under the company name F5 Works Limited on June 28, 2016.
The Panel notes that the core of the Respondent’s company name “F5 Works” is entirely reproduced in the disputed domain name, considering also the Top-Level domain .works. Moreover, the Respondent’s company was incorporated well before the filing of the Complaint and, on the basis of the documents and statements provided, there is no evidence that the Complainant might have put on notice the Respondent before the commencement of the proceeding, for example by sending a cease-and-desist letter to the Respondent to notify its prior trademark rights on the trademark F5.
Furthermore, according to the elements before the Panel, the Respondent is promoting its business using the business identifier “F5 works” on the website at the disputed domain name, as well as on other social media websites, using a logo which is completely different from the one encompassed in the figurative mark registered by the Complainant.
In addition to the above, as also indicated in the paragraphs below, the Complainant, beyond mere allegations, has not provided any evidence of use of its trademarks and has thus not demonstrated how the Respondent could have targeted the Complainant’s trademark by intentionally attempting to confuse and defraud – as the Complainant asserts – Internet users visiting its website.
In view of the above, the Panel finds that the Complainant has failed to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that the Complainant has also failed to demonstrate that the disputed domain name was registered and is being used in bad faith according to paragraph 4(a)(iii) of the Policy.
As highlighted above, the filing date of the trademarks on which the Complainant relies in this case, including a registered trademark in Hong Kong, China predates by several years the registration date of the disputed domain name, which occurred on June 12, 2016.
However, the Complainant has not submitted any evidence to demonstrate the actual use of its trademarks in connection with the products and services for which they have been registered. Therefore, the Complainant has not submitted sufficient elements that could demonstrate the Respondent’s possible or actual knowledge of the Complainant’s trademarks.
Moreover, as mentioned above, the Respondent has provided evidence of its establishment of a company in Hong Kong, China whose company name, F5 Works Limited, substantially corresponds to the disputed domain name. Notably, said company was established before the Respondent received notice of this dispute, since it was incorporated months before the commencement of this proceeding and no prior contact was made by the Complainant with the Respondent before the filing of the Complaint.
In view of the above and based on the evidence before it, the Panel finds that the Complainant has, on balance, failed to demonstrate that the Respondent registered and is using the disputed domain name in bad faith.
The Panel notes that this is not a clear case of cybersquatting and shares the views expressed in Petrofac Services Limited v. Petrofac Qatar WLL,WIPO Case No. D2016-0388, stating that “the scope of the Policy extends to abusive registration and use of a domain name, not to legitimate business or trademark disputes about which reasonable minds could differ (and which would in any event require the development of a much richer factual record than is generally possible within the streamlined procedures employed under the Policy)”. 7. Decision
For the foregoing reasons, the Complaint is denied.
Luca Barbero
Sole Panelist
Date: January 30, 2018
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