The Complainant is Barracuda Networks, Inc., United States of America (“United States”), represented by Rimon, P.C., United States.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States / Mengdan Qian, China.
The disputed domain name, <connectbarracuda.com> (the “Domain Name”), is registered with Dynadot, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2020. On September 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 3, 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 the Complainant on September 7, 2020 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 September 15, 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 the Respondent of the Complaint, and the proceedings commenced on September 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2020.
The Center appointed Tony Willoughby as the sole panelist in this matter on October 15, 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.
The invitation to the Complainant to file an amendment to the Complaint stemmed from the fact that when registering the Domain Name the underlying registrant, Mengdan Qian, used the services of a privacy service, Super Privacy Service LTD c/o Dynadot. The original Complaint named the privacy service as the Respondent, that being the name appearing in response to a WhoIs search against the Domain Name. The identity of the underlying registrant only came to light in the Registrar’s response to the Center’s registrar verification request. The amended Complaint adds the name of Mengdan Qian as a Respondent. For the purposes of this decision, the Panel treats the underlying registrant, Mengdan Qian, as the Respondent.
The Complainant is a Delaware, United States corporation engaged in the field of computer security. It has traded under the “Barracuda” name since December, 2002 and is the proprietor of the following trade mark registration:
United States Trademark Registration No. 4,715,332 BARRACUDA (word) registered April 7, 2015, (application filed August 1, 2014) for a variety of computer security goods and services in classes 9, 41 and 42.
The Complainant operates a website connected to the domain name, <barracuda.com>.
The Domain Name was registered on March 12, 2020 and is currently connected to a pay-per-click parking page featuring links labeled “Online Remote Support”, “Firewall”, Bernstein and Poisson”, “Goldfish Online”, “I Tread”, “Fungus Eliminator Purehealth Research” and “Leaf Filter Estimate”. In March 2020, the links included “Connect Internet” and a direct reference to the Complainant’s product in the form of “Barracuda Firewall”.
On March 20, 2020 the Complainant’s attorney emailed the Registrar in the following terms: “I am an attorney for Barracuda Networks, Inc and write regarding trade mark infringement by a domain that you host, www.connectbarracuda.com. Please see attached correspondence regarding this matter. I look forward to your prompt response and action.” The Registrar replied on March 21, 2020 indicating that if the Complainant wished to dispute ownership of the Domain Name, the Complainant would have to file a complaint under the Policy. The Complainant’s attorney replied on March 26, 2020 requesting the Registrar to forward the correspondence to the Respondent, but heard nothing further from the Registrar and nothing from the Respondent.
The “attached correspondence” referred to in the above quote was a letter drawing the Registrar’s attention to the Complainant’s trade mark rights and seeking inter alia transfer of the Domain Name. The letter described the use of the Domain Name to which the Complainant has objection as follows:
“The owner of the domain’s bad faith intent to profit from the BARRACUDA trade mark is evident from the domain’s advertising links to products offered by Barracuda competitors .. For example, the infringing domain’s landing page includes a link labeled “Barracuda Firewall,” and while the link seems to contain a link to what appears to be a third party seller offering Barracuda products (www.firewalls.com), it also has advertisements for products offered by Barracuda competitor KnowBe4 … Other links lead to offerings by other Barracuda competitors and/or companies not affiliated with Barracuda….”
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s BARRACUDA trade mark; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name has been registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Domain Name comprises the word “barracuda”, the word “connect”, and the generic Top-Level Domain (“gTLD”) “.com”.
Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains the test for identity or confusing similarity under the first element of the Policy and includes the following passage:
“While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
The Complainant’s BARRACUDA trade mark is readily recognizable in its entirety in the Domain Name. The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
The Complainant asserts that the Respondent has not applied for permission to use the BARRACUDA trade mark and that the Complainant has given the Respondent no permission to use its trade mark. It points out that the BARRACUDA trade mark was registered long before the Respondent registered the Domain Name. It contends, on information and belief, that the Respondent is not commonly known by the Domain Name and that the Respondent is not making a bona fide or fair noncommercial use of the Domain Name.
The Complainant points to the nature of certain of the advertising links on the Respondent’s pay-per-click website, those relating to computer security, which include the Complainant’s competitors, and contends that the Respondent is clearly aware of the Complainant and is deliberately targeting the Complainant’s trade mark for commercial gain.
The Panel is satisfied that the Complainant has made out a prima facie case(i.e. a case calling for an answer from the Respondent) that the Respondent has no rights or legitimate interests in respect of the Domain Name. However, the Respondent has not sought to answer the Complainant’s contentions.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The basis for the Complainant’s contention that the Respondent registered the trade mark in bad faith and is using it in bad faith is clearly set out in the Complainant’s attorney’s letter to the Registrar of March 20, 2020 (see quoted passage in section 4 above).
The Respondent had an opportunity to respond to these allegations back in March, 2020, when the Registrar received the letter from the Complainant’s attorney. The Panel assumes that the Registrar duly informed the Respondent of the letter at that time. The Respondent did not respond. The Respondent had a further opportunity to respond following receipt of the Complaint, but again elected not to respond.
The strength of the evidence filed in support of the Complainant’s allegations leads the Panel to conclude that the Respondent cannot have an answer to those allegations.
The Panel finds that the Respondent registered the Domain Name with knowledge of the Complainant’s BARRACUDA trade mark and with intent to use the reputation of that trade mark to attract Internet users to its pay-per-click website for commercial gain. While visitors to the Respondent’s website will immediately realize that the website is not a website of or authorized by the Complainant, it is the view of the Panel that many of them will have visited the website in the erroneous belief that it is such a website. Having arrived at the website they are faced with a variety of advertising links, some to the Complainant, some to competitors of the Complainant and some to commercial organisations having no connection to the Complainant’s area of business. What all those links have in common is an opportunity for the Respondent to receive pay-per-click and/or other forms of advertising revenue.
The Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
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, <connectbarracuda.com>, be transferred to the Complainant.
Date: October 23, 2020
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