Complainant is F5 Networks, Inc., United States of America (“United States” or “U.S.”), represented by Azora Law, United States.
Respondent is Brett Helm, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2020. On July 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 30, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 4, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on August 5, 2020. 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 Respondent of the Complaint, and the proceedings commenced on August 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 8, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 23, 2020. The Center appointed Christopher S. Gibson as the sole panelist in this matter on September 30, 2020. 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 Complainant is an American company that specializes in the online delivery, security, performance, and availability of web applications, including the availability of computing, storage and network resources. Complainant states that it has registered its trademarks in countries around the world and has submitted evidence of the following United States trademark registrations: Mark Registration F5 U.S. Reg. No. 2427084, issued February 6, 2001 F5 U.S. Reg. No. 3718219, issued December 1, 2009 F5 (and design) U.S. Reg. No. 2094918, issued September 9, 1997 F5 (and design) U.S. Reg. No. 2335141, issued March 28, 2000 F5 (and design) U.S. Reg. No. 5673091, issued February 12, 2019 F5 NETWORKS U.S. Reg. No. 2399278, issued October 31, 2000 F5 NETWORKS U.S. Reg. No. 3763191, issued March 23, 2010 The Domain Name was registered on July 14, 2020. 5. Parties’ Contentions A. Complainant (i) Identical or confusingly similar Complainant asserts that its F5 registered trademarks protect its rights in the marks F5, F5 (and design) and F5 NETWORKS, as well as extending to protect against the confusingly similar marks, such as F5 PROTECT or F5-PROTECT. Complainant contends that Respondent’s Domain Name and the related content on the website linked to the Domain Name feature use of the trademarks F5, F5 (and design), F5 NETWORKS, F5 PROTECT, F5-PROTECT, and other similar derivatives of the F5 marks, such that consumer confusion is likely. Complainant asserts Respondent’s use of the F5 marks is currently causing a likelihood of consumer confusion in the marketplace and will continue to do so in the future. Complainant asserts that Respondent offers services under a confusingly similar mark that are directly related to the services provided by Complainant. In particular, Respondent is using the F5 marks in association with services that are confusingly similar to the following services offered by Complainant: downloadable software goods, non-downloadable software services, computer and software consulting services, software monitoring services, software security services, application management services, and services related to servers and networks. Because of Respondent’s use of the F5 marks in connection with these services, it has created a high likelihood that consumers will be confused and mistakenly believe that Complainant is associated with or endorses Respondent. Complainant further asserts that Respondent uses the F5 marks in association with software goods and services that interact directly with the goods and services offered by Complainant. Given the close connection of the services and Respondent’s use of marks identical to Complainant’s F5 marks, Respondent has created a high likelihood that consumers will be confused and mistakenly believe that Respondent is identical to Complainant, or that Respondent’s activities are licensed or approved by Complainant, when no such authorization or approval has been granted. (ii) Rights or legitimate interests Complainant states that Respondent is not authorized by or otherwise known to Complainant. Further, Respondent has no right, title, interest, or authorization to use Complainant’s F5 trademarks. Complainant alleges that Respondent prominently and pervasively uses the F5 marks throughout the website linked to the Domain Name without any authorization or license from Complainant and in a manner that is likely to cause confusion, for the purpose of defrauding users, consumers, and viewers of Respondent’s content. In addition, Complainant alleges that Respondent is not making any bona fide offering of goods or services under the Domain Name. Respondent is only making an infringing and damaging offering of goods or services under the Domain Name. Respondent is not and was not commonly known by the Domain Name, and has no common-law rights or other trademark or service mark rights in the Domain Name. Moreover, Respondent is not making any legitimate noncommercial or fair use of the Domain Name. Instead, Respondent is using the Domain Name with intent for commercial gain to misleadingly divert consumers and tarnish Complainant’s F5 trademarks. (iii) Registered and used in bad faith Complainant contends that the Domain Name appears to have been registered primarily for the purpose of disrupting the business of a competitor. Respondent intentionally attempts to attract, for commercial gain, Internet users to Respondent’s website or other online location by creating a likelihood of confusion with Complainant’s F5 trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent or of a product or service on Respondent’s website. Complainant further contends that, on review of the content located at Domain Name, Respondent is using the Domain Name for services that are confusingly similar to the services provided by Complainant. As presented, Respondent’s principal business appears to trade on traffic generated because of interest in Complainant’s F5 marks. Further, Respondent is attempting to generate Internet traffic based exclusively on the goodwill associated with those F5 marks. This continued, prominent, pervasive, and unauthorized use of the F5 marks will lead to the dilution and tarnishment of Complainant’s valuable trademark rights. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that: (i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and (iii) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar The Panel finds that Complainant has established rights in its F5 trademarks, based on trademark registrations in the United States. Further, the Panel determines that the Domain Name is confusingly similar the F5 and F5 NETWORKS marks. Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), states that the test of confusing similarity “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 domain name”. Here, the Panel determines that the Domain Name, which is comprised of the term “F5-protect”, is confusingly similar to Complainant’s F5 and F5 NETWORKS trademarks. Further, WIPO Overview 3.0, section 1.15, states that while the “content of the website associated with the domain name is usually disregarded…when assessing confusing similarity under the first element”, “[i]n some instances, panels have…taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name”. Here, the Panel finds that Respondent use of the Domain Name in connection with Respondent’s website confirms that Respondent is seeking to target Complainant’s F5 and F5 NETWORKS marks. Accordingly, the Panel finds that that the Domain Name is confusingly similar to a trademark in which Complainant has rights, in accordance with paragraph 4(a)(i) of the Policy. Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “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”. Here, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to reply to Complainant’s contentions. The Panel finds that Complainant has not authorized Respondent to use its F5 and F5 NETWORKS trademarks in the Domain Name or otherwise; that Respondent is not commonly known by the Domain Name; that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services. Instead, the Domain Name is linked to a website that appears to offering services in competition with Complainant, while using a confusingly similar F5 mark. The Domain Name was registered more than 20 years after Complainant first registered its F5 trademark. Respondent’s website, as viewed by the Panel, is an imitation of Complainant’s site. All of this evidence suggests that the website is fraudulent and thus poses a risk to Complainant and Complainant’s customers or to those whom might be looking for Complainant’s genuine website. Respondent’s use of the Domain Name in this manner does not give rise to any right or legitimate interest in it. Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii). C. Registered and Used in Bad Faith The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”. Here, the Panel determines that the Domain Name was registered and is being used in bad faith. Based on the evidence, there is little doubt that Respondent was aware of Complainant and its F5 and F5 NETWORKS trademarks, and intentionally targeted those marks, when registering the Domain Name. The Panel observes that Respondent registered the Domain Name, which incorporates Complainant’s F5 mark in its entirety, while adding the term protection, while supposedly offering services very similar to those offered by Complainant. The Panel considers that the only logical conclusion is that Respondent targeted Complainant and its F5 and F5 NETWORKS marks when registering the Domain Name. See Accenture Global Services Limited v. ICS Inc. / PrivacyProtect.org,WIPO Case No. D2013-2098 (finding that it was unlikely that the respondent was unaware of complainant and its ACCENTURE mark at the time the disputed domain name was registered). This point is further confirmed by Respondent’s use of the Domain Name in connection with a website impersonating a company purporting to offer services competitive with those of Complainant, as discussed above. In these circumstances, it is clear that the Domain Name has been registered in bad faith and that Respondent is using it in bad faith by purposefully creating a likelihood of confusion with Complainant’s F5 and F5 NETWORKS marks as to the source, sponsorship, affiliation, or endorsement. Respondent had an opportunity to submit a Response in this case in which it could deny these contentions and explain itself; instead, it failed to provide a Response. In conclusion, in this case, where Respondent failed to submit a reply to Complainant’s contentions, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied the third element of the Policy. 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 Domain Name, Christopher S. Gibson
Sole Panelist
Date: October 23, 2020
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