ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Juniper Networks, Inc. v. FAIZA BATOO BAKHARI Case No. D2024-4749 1. The Parties The Complainant is Juniper Networks, Inc., United States of America (“United States”), represented by Hanson Bridgett LLP, United States of America The Respondent is FAIZA BATOO BAKHARI, Norway. 2. The Domain Name and Registrar The disputed domain name (the “Disputed Domain Name”) is registered with Register.com (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2024. On November 19, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 19, 2024, 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 (redacted) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 20, 2024, 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 November 21, 2024. 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 Respondent of the Complaint, and the proceedings commenced on November 26, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 17, 2024.
page 2 The Center appointed Nicholas Weston as the sole panelist in this matter on December 25, 2024. 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 incorporated company 1996, that sells computer networking hardware, software and related solutions with revenue exceeding USD 5.5 billion in 2023. The Complainant cites its registrations for the trademark JUNIPER NETWORKS and variations of it in the United States, including, for example, trademark no. 2255921 for the mark JUNIPER NETWORKS registered on June 22, 1999 in classes 9, 37, and 42 and trademark No. 4112231 for the mark JUNIPER NETWORKS registered on March 13, 2012 in classes 9, 37, 41, and 42. The Complainant owns the domain name , which hosts its main website. The Disputed Domain Name was registered on October 4, 2024 and was used to host a website that that makes available a “free eCommerce template for appointments”. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Name. Notably, the Complainant cites its trademark registrations in the United States for the mark JUNIPER NETWORKS and variations of it, as prima facie evidence of ownership. The Complainant submits that the mark JUNIPER NETWORKS is “well-known” and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name is comprised of the JUNIPER NETWORKS trademark and that the addition of the letters “llc” and the generic top-level domain (“gTLD”) “shop” are not sufficient to avoid the confusing similarity. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because “Respondent is not affiliated with Juniper and Juniper has not licensed or permitted Respondent to use the JUNIPER NETWORKS mark, any other Juniper Marks, or any domain names incorporating them.” and that none of the circumstances set out in paragraph 4(c) of the Policy apply. Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and the Rules having regard to the prior use and well-known nature of the Complainant’s trademark. The Complainant states that “[a]ccessing the Disputed Domain Name takes users to a website which says “Get started with this free eCommerce template for appointments” and provides a prop address, all displayed under the header a banner that reads “JUNIPER NETWORKS LLC” …[and]… appears to be constructing a site using Complainant’s well-know[n] trademarks in both the domain name and in a banner on the page. This is likely to cause consumer confusion and deception.” The Respondent also contends that “Respondent registered the Disputed Domain Name by providing the registrar with what appears to be fake and incomplete contact information”. The Complainant contends that each of these acts would amount to use in bad faith.
page 3 B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following: (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 has been registered and is being used in bad faith. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the Disputed Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country. WIPO Overview 3.0, section 1.2.1. The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark JUNIPER NETWORKS. Turning to whether the Disputed Domain Name is identical or confusingly similar to the JUNIPER NETWORKS trademark, the Panel observes that the Disputed Domain Name is comprised of: (a) an exact reproduction of the Complainant’s trademark JUNIPER NETWORKS; (b) followed by the type of incorporation signifier “llc”; (c) followed by the gTLD “.shop”. It is well established that the gTLD used as part of a domain name is generally disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11. The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “junipernetworksllc”. The Panel finds the entirety of the mark is reproduced within the Disputed Domain Name. Accordingly, the Disputed Domain Name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of the term “llc”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the Disputed Domain Name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.
page 4 Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 Disputed Domain Name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the Policy or otherwise. The Panel notes the evidence that the Complainant has not licensed or otherwise authorized the Respondent to use its trademarks and that there is no relationship between the Complainant and the Respondent, let alone any accurate or prominent disclosure of that relationship, or absence of such, on its website. The use of the Complainant’s trademark on the Respondent’s website suggests either that the Respondent is actually aware of the Complainant’s trademark, or that the Respondent is claiming trademark rights in the mark JUNIPER NETWORKS to make available for download its “free eCommerce template for appointments”. The Panel finds that the Respondent’s activities do not represent a bona fide offering of goods or services, or a legitimate noncommercial or fair use, given the substantial reputation and goodwill of the Complainant’s mark or capacity to otherwise mislead Internet users. Panels have held that the use of a domain name for illegal activity such as phishing, impersonation, passing off, or other types of fraud, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. The Panel finds the second element of the Policy has been established for the Disputed Domain Name. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. In the present case, the Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith. On the issue of registration, taking into account the composition of the Disputed Domain Name and the Complainant’s well-known trademark, the Panel is satisfied that the Respondent deliberately targeted the Complainant’s trademark JUNIPER NETWORKS when it registered the Disputed Domain Name. This Panel finds that there is no reason for the Respondent to have registered the Disputed Domain Name other than to trade off the reputation and goodwill of the Complainant’s well-known trademark. WIPO Overview 3.0, section 3.1.4.
page 5 Further, a gap of several years between registration of a complainant’s trademark and respondent’s registration of a disputed domain name (containing the trademark) can indicate bad faith registration. In this case, the Respondent registered the Disputed Domain Names 24 years after the Complainant established registered trademark rights in the JUNIPER NETWORKS mark. On the issue of use, the Complainant’s evidence is that the Disputed Domain Name was used to host a fake webstore that displayed the Complainant’s trademark and offered an electronic template for download. Panels have held that the use of a domain name for unlawful activity here, alleged impersonation or passing off, constitutes bad faith. WIPO Overview 3.0, section 3.4. The Complainant supplied evidence of the counterfeit webstore. Having reviewed the record, the Panel finds the Respondent’s registration and use of the Disputed Domain Name constitutes bad faith under the Policy. The Panel also notes that a false real world address has apparently been used on the Respondent’s web site in further evidence of bad faith. The Panel finds that the Complainant has established 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 Disputed Domain Name be transferred to the Complainant. /Nicholas Weston/ Nicholas Weston Sole Panelist Date: December 26, 2024
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