Westmore · UDRP DecisionImperva-incapsula.com
The Panel ordered transfer of <imperva-incapsula.com>. It found the domain confusingly similar because it combined the IMPERVA and INCAPSULA marks with only a hyphen between them. The Complainant established a prima facie case that the Respondent lacked rights or legitimate interests, which the defaulting Respondent did not rebut. Bad faith was established because the domain attracted users seeking the Complainant’s marks to a website offering competing cybersecurity-related services and redirected users interacting with the site to <cloudddos.com>.
The timeline behind imperva-incapsula.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind imperva-incapsula.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
This decision illustrates a strong commercial-diversion fact pattern in which a domain combines two distinctive marks associated with the complainant and is used to channel visitors toward a competing service. It also shows that a documentary gap concerning the corporate relationship to one trademark owner may not be fatal where the record otherwise establishes an association, although the Panel expressly noted that gap.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Imperva, Inc. v. Nico Zheng Case No. d2018-2040 1. The Parties The Complainant is Imperva, Inc. of Redwood City, California, United States of America (“USA” or “United States”), represented by Fenwick & West, LLP, USA. The Respondent is Nico Zheng of Guangdong, China. 2. The Domain Name and Registrar The disputed domain name <imperva-incapsula.com> is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2018. On September 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 7, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 3, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 4, 2018. The Center appointed Ugur G. Yalçiner as the sole panelist in this matter on October 15, 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, Imperva, Inc., was founded in 2002, and provides cyber security solutions that protect business-critical data and applications, with itself and its wholly owned subsidiary, Incapsula, Inc., which provides a single solution for website security, DDoS protection, load balancing and a global content delivery network. The Complainant has over 1,000 employees and it served over 5,900 end user customers with cybersecurity solutions in 2017, generating more than USD 300 million in revenue under its IMPERVA and INCAPSULA marks. The Complainant, Imperva, Inc. is the owner of the below IMPERVA trademarks and INCAPSULA trademarks through its wholly owned subsidiary, Incapsula, Inc.: - Trademark IMPERVA in the name of Imperva, Inc., United States trademark No. 3002797, registered on September 27, 2005, - Trademark IMPERVA in the name of Imperva, Inc., United States trademark No. 2997291, registered on September 20, 2005, - Trademark IMPERVA in the name of Imperva, Inc., European Union trade mark No. 004553269, registered on July 12, 2006, - Trademark INCAPSULA in the name of Incapsula, Inc., United States trademark No. 4117544, registered on March 27, 2012, - Trademark INCAPSULA in the name of Incapsula, Inc., European Union trade mark No. 009993924, registered on January 10, 2012. The Complainant owns many other trademark registrations for IMPERVA in various jurisdictions namely Australia, Brazil, Canada, China, Israel, Japan, Russian Federation, Turkey, and Singapore. According to the declaration of the Complainant, the trademark IMPERVA has being used in connection with cybersecurity solutions since 2004 by the Complainant. The Complainant has been using the trademark INCAPSULA through its wholly owned subsidiary, Incapsula, Inc in connection with cybersecurity solutions since 2010. The Complainant by itself and through its subsidiary also owns and operates a large number of domain names such as <imperva.com>, <imperva.org>, <imperva.net>, and <incapsula.com> as well as under country code extensions such as <imperva.com.hk> (Hong Kong, China), <imperva.ch> (Switzerland), <imperva.jp> (Japan), <imperva.tw> (Taiwan province of China), <incapsula.us> (United States) etc. The disputed domain name was registered on May 29, 2018. The disputed domain name resolves to an active website where the Respondent offers competitive products and services with the Complainant’s products and services for sale. 5. Parties’ Contentions A. Complainant The Complaint includes the following contentions: (i) Identical or Confusingly Similar The disputed domain name fully incorporates the trademarks IMPERVA and INCAPSULA word marks. Therefore, the disputed domain name must be found confusingly similar to the trademarks IMPERVA and INCAPSULA. The Complainant provides evidence of its registered trademark rights in support of its contentions in this regard. (ii) Rights or legitimate interests The Complainant states that the Respondent is not commonly known by the Imperva or Incapsula name and owns no trademark applications or registrations for IMPERVA or INCAPSULA. The Respondent’s WhoIs information for the disputed domain name does not mention IMPERVA or INCAPSULA as the Respondent’s name or nickname. According to the WhoIs record, the Respondent’s name is “Nico Zheng” and the website promotes a company name “CloudDDoS”, which alone shows that the Respondent lacks any rights or legitimate interests in the subject domain name. The Complainant states that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, and the Respondent is not making a legitimate noncommercial or fair-use of the disputed domain name. The disputed domain name resolves to a website selling competitive, third-party products and services. The Respondent registered and is using the disputed domain name to take unfair advantage of the recognition associated with the Complainant’s trademarks IMPERVA and INCAPSULA by selling competitive cybersecurity solutions. The Respondent copies the Complainant’s website’s look and feel by using a similar color scheme and layout on its website. The Complainant states that the Respondent has no rights or legitimate interest in the disputed domain name as it has no legitimate relationship to the Complainant giving rise to any license, permission or authorization for registration or use of the disputed domain name. (iii) Registration and Use in Bad Faith The Complainant claims the Respondent’s bad faith based on the following grounds; - The Respondent registered the disputed domain name despite its actual or constructive notice of the Complainant’s rights to the trademarks IMPERVA and INCAPSULA. As a competitor in the cybersecurity field that copied the Complainant’s trade dress and incorporated marks in the disputed domain name, the Respondent undoubtly was aware of the Complainant’s well-known trademarks. - The disputed domain name fully incorporates the Complainant’s marks without authorization. - The Respondent uses the disputed domain name to promote its own, third party competing or highly related goods, and counterfeit goods and services. This use of the disputed domain name to promote non-Imperva products allows the Respondent to benefit unduly from the goodwill the Complainant has established in the IMPERVA and INCAPSULA marks. The Respondent copies the Complainant’s website’s look and feel by using a similar color scheme and layout on its website. This increases the likelihood that consumers will be confused about its affiliation with the Complainant. - The Respondent’s registration of the disputed domain name prevents the Complainant from registering and using the IMPERVA and INCAPSULA based domain name. Customers may believe that the disputed domain name would resolve to a website owned or operated by the Complainant just like the many other IMPERVA and INCAPSULA based domain names. The Complainant states that these facts prove that the Respondent registered and is using the disputed domain name in bad faith to attact Internet users to its website for commercial gain. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. According to information received from the Registrar, the language of the registration agreement for the disputed domain name is English and the Complaint has submitted the Complaint in English. In consideration of these circumstances, the Panel agrees to hold the proceeding in English in accordance with paragraph 11(a) of the Rules. 6.2. Substantive Issues In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three elements are present: (i) 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; and (ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel is satisfied that the Complainant is the owner of the trademark IMPERVA and its subsidiary Incapsula, Inc is the owner of the trademark INCAPSULA as evidenced in the annexes to the Complaint. The Complainant has not submitted any document proving that Incapsula, Inc. which is the owner of the trademark INCAPSULA is its wholly-owned subsidiary, however the Panel determined that trademark INCAPSULA is being used along with trademark IMPERVA especially on the website “www.incapsula.com” and the domain name is registered in the name of the Complainant according to the submitted WhoIs record. Therefore, the Panel satisfied that trademark INCAPSULA is associated with the Complainant. As numerous prior UDRP panels have held, the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 : “when a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish identity or confusing similarity for the purposes of the Policy”. The disputed domain name entirely incorporates the combination of the Complainant’s and its subsidiary’s trademarks IMPERVA and INCAPSULA with a dash sign between the terms. Both the Complainant’s trademarks are easily recognizable within the disputed domain name. Combining the two trademarks in the disputed domain name by adding dash sign between the terms does not serve to distinguish the disputed domain name from the Complainant’s trademarks. Therefore, the Panel concludes that the disputed domain name is confusingly similar with the trademarks in which the Complainant has rights. See Société Air France v. Van Wijk & Mesker Holding BV , WIPO Case No. D2002-0028 ; A.P. Møller v. Web Society , WIPO Case No. D2000-0135 ; F. Hoffmann-La Roche AG v. ITWEB Domain Protection , WIPO Case No. D2008-0847 ; Vivendi S.A., The Seagram Company Ltd., Joseph E. Seagram & Sons, Inc., Universal Studios, Inc., and Universal City Studios, Inc. v. Yu Fu Zhao, (aka Tyou Star) ("Zhao") , WIPO Case No. D2000-0717 . As a conclusion, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s and its subsidiary’s registered trademarks and that the requirements in paragraph 4(a)(i) of the Policy are fulfilled. B. Rights or Legitimate Interests Once the Complainant makes out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“ WIPO Overview 3.0 ”), section 2.1 .) In the present case the Complainant alleges that the Respondent is not commonly known by the Imperva or Incapsula name and owns no trademark applications or registrations for IMPERVA or INCAPSULA, the Respondent’s WhoIs information for the disputed domain name does not mention IMPERVA or INCAPSULA as Respondent’s name or nickname, the Respondent’s name is “Nico Zheng” and the website promotes a company name “CloudDDoS”, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, the disputed domain name resolves to a website selling competitive, third-party products and services, the Respondent has no rights or legitimate interest in the disputed domain name as it has no legitimate relationship to the Complainant giving rise to any license, permission or authorization for registration or use of the disputed domain name. As the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent has failed to rebut this case, the Panel concluded that the Complainant has established the second element of paragraph 4(a) of the Policy. See Croatia Airlines d.d. v. Modern Empire Internet Ltd. , WIPO Case No. D2003-0455 ; Spenco Medical Corporation v. Transure Enterprise Ltd , WIPO Case No. D2009-1765 ; Swarovski Aktiengesellschaft v. blue crystal , WIPO Case No. D2012-0630 ; Pomellato S.p.A v. Richard Tonetti , WIPO Case No. D2000-0493 . As a result, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled by the Complainant. C. Registered and Used in Bad Faith The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the disputed domain name, it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other online locations to which the disputed domain name is resolved to, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the disputed domain name resolved to. The Panel visited the website associated with the disputed domain name and noticed that when the visitors click on any buttons or links on the website “www.imperva-incapsula.com”, the disputed domain name changes into “www.cloudddos.com”, while the content of the website remains the same. The Respondent obviously diverted the disputed domain name to its other domain name incorporating its company name. The Panel has the opinion that the Respondent aims to attract the Internet users, who are looking for the Complainant’s IMPERVA and INCAPSULA marks, to its website offering the similar goods and services to those offered by the Complainant, for commercial gain. There is a clear intention by the Respondent to benefit from the Complainant’s reputation and products, by creating confusion with the Complainant’s trademarks and products as to the source, sponsorship, affiliation or endorsement of the Respondent’s website (See Natura Cosméticos S/A, Indústria e Comércio de Cosméticos Natura Ltda.v. Hector Soto , WIPO Case No. D2012‑0002). To this end, prior UDRP panels have established that attracting Internet traffic for commercial gain by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP. A finding of bad faith may be made whether the Respondent knew or should have known of the registration and use of the trademark prior to registering the disputed domain name: see Nutricia International BV v. Eric Starling , WIPO Case No. D2015-0773 , Maori Television Service v. Damien Sampat , WIPO Case No. D2005‑0524. The Panel reviewed the content of the website associated with the disputed domain name and determined that the Respondent provides dedicated server rental, server hosting, customized industry solutions, LAN set up, load balancing, and CDN Internet solutions, which reveals that the Respondent operates in the field of cyber security solutions, in which the Complainant operates, and sells competitive products and services on its website. It is clear that the Respondent has an actual and constructive knowledge of the Complainant and its trademarks, considering the use of the disputed domain name, which incorporates the combination of the Complainant’s registered trademarks, in connection with a website offering goods and services that is similar to those offered by the Complainant. The Panel also considered that the Complainant’s and its subsidiary’s trademarks IMPERVA and INCAPSULA are quite distinctive terms and it is not likely to choose and combine these marks within a domain name by coincidence. In accordance with previous decisions issued under the Policy, the Panel is of the opinion that actual knowledge of the Complainant’s trademark at the time of registration of the disputed domain name is to be considered as an inference of bad faith, Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net , WIPO Case No. D2000-0226 . The Complainant asserts that the Respondent copies the Complainant’s website’s look and feel by using a similar color shame and layout on its website; however the Panel does not necessarily find this argument compelling. However, this argument is not necessary to the Panel’s conclusion under this element. Having considered all the facts in this case, the Panel holds that the Respondent registered and is using the disputed domain name in bad faith. 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 <imperva-incapsula.com> be transferred to the Complainant. Ugur G. Yalçiner Sole Panelist Date: October 26, 2018
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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