The Complainant is F5 Networks, Inc., United States of America (“United States” or “US”), represented by Rosen Lewis, PLLC, United States.
The Respondent is John Terry, Adserve Limited, Saint Kitts and Nevis. 2. The Domain Name and Registrar
The disputed domain name is registered with A, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2019. On July 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 26, 2019, 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 July 26, 2019, 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 July 27, 2019.
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 July 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 22, 2019.
The Center appointed Mihaela Maravela as the sole panelist in this matter on August 27, 2019. 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 organized under the laws of the United States. The Complainant has registered a number of F5 trademarks throughout the world, including the following:
- the US trademark for F5 with registration number 2427084, registered on February 6, 2001;
- the US trademark for F5 (with design) with registration number 2094918, registered on September 9, 1997;
- the US trademark for F5 (with design) with registration number 2335141, registered on March 28, 2000.
The disputed domain name was registered on December 4, 2015, and has been used for a parking page including sponsored links relating to the Complainant’s competitors. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name is confusingly similar to its F5 trademarks.
Further, the Complainant argues that the Respondent is not authorized by or otherwise known to the Complainant and that the Respondent has no right, title, interest, or authorization to use the Complainant’s F5 trademarks. The Complainant contends that the Respondent prominently uses the F5 trademarks throughout the website at which the disputed domain name redirects without any authorization or license from the Complainant. The external links on the Respondent’s website connect to third-party web pages displaying search results and links to the websites of the Complainant’s competitors. The Complainant argues that the Respondent’s use of F5 trademarks of the Complainant is in association with services that are confusingly similar to services of the Complainant, such as software development services, web application services, computer and software consulting services, and that such use is likely to cause consumer confusion.
The Complainant further shows that the disputed domain name appears to have been registered primarily for the purpose of disrupting the business of a competitor, to intentionally attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s F5 trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent or of a product or service on the Respondent’s website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Notwithstanding the fact that no Response has been filed, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant, see e.g. paragraph 15(a) of the Rules, which states that “…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 elements:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.
Given the evidence put forward by the Complainant, the Panel is satisfied that the Complainant has proved its rights over the F5 trademark.
As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name with the trademarks in which the Complainant holds rights. According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “this test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”.
Numerous UDRP panel decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. See, Aldermore Bank Plc v. Hildegard Gruener,WIPO Case No. D2016-1617.
Here the disputed domain name incorporates the Complainant’s trademark F5 in addition to the dictionary term “learn”. This Panel considers that the fact that a domain name wholly incorporates a complainant’s trademark is sufficient to establish confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. See, Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
It is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.com”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark.
This Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:
(i) before any notice to it of the dispute, the 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; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has 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 consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
In the present case the Complainant has established a prima facie case that it holds rights over the trademark F5 and claims that the Respondent has no legitimate reason to register the disputed domain name.
There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Rather, according to the unrebutted evidence put forward by the Complainant, the Respondent is using the disputed domain name to host a parked page comprising pay-per-click (“PPC”) links to Complainant’s competitors. According to section 2.9 of the WIPO Overview 3.0, when “[a]pplying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising pay-per-click (“PPC”) links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”. In this case, the PPC links are related to the Complainant’s trademark F5 and generate search results with competing goods or services to those offered by the Complainant. In this Panel’s view, such use does not confer rights or legitimate interests to the Respondent. For a similar finding see F5 Networks, Inc. v. Domain Administrator, c/o Whois Watchdog,WIPO Case No. D2016-0043.
Also, there is no evidence indicating that the Respondent is commonly known by the disputed domain name, or the name “F5”. See for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei,WIPO Case No. D2014-0957.
By not replying to the Complainant’s contentions, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. Accordingly, the Panel gives prevalence to the Complainant’s affirmation that no license or authorization was ever given for the use of the trademark F5 in the disputed domain name.
With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
The case file contains evidence showing that the disputed domain name resolves to a website that contains links to the Complainant’s competitors, which shows in the Panels’ view that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark F5 as to the source, sponsorship, affiliation or endorsement of the website. See for a similar finding F5 Networks, Inc. v. Domain Administrator, c/o Whois Watchdog, supra.
For the above reasons and given that the disputed domain name was registered long after the registration of the Complainant’s trademarks, the Panel concludes that the Respondent must have been aware of the Complainant’s trademarks at the time he registered the disputed domain name.
Moreover, the evidence in the case file shows that the disputed domain name may be for sale, which implies an intention on the part of the Respondent to sell the disputed domain name. The Respondent provided no explanation for this.
In the Panel’s view, these circumstances represent evidence of registration and use in bad faith of the disputed domain name. The Respondents failed to bring evidence as to the contrary. Consequently, the Panel concludes that the condition of paragraph 4(a)(iii) of the Policy is fulfilled. 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.
Mihaela Maravela
Sole Panelist
Date: September 10, 2019
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