WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Verkada, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Teresa Swanzy

Case No. D2021-0484

1. The Parties

Complainant is Verkada, Inc., United States of America (“United States”), represented by Osborne Clarke LLP, United Kingdom (“UK”).

Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Teresa Swanzy, United States.

2. The Domain Name and Registrar

The disputed domain name <verkaada.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2021. On February 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 17, 2021, 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 Complainant on February 23, 2021, 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 February 24, 2021.

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 February 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 17, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 18, 2021.

The Center appointed Scott R. Austin as the sole panelist in this matter on March 30, 2021. 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 states in its Complaint and provides evidence in the respective annexes sufficient to support that Complainant is a high-end hardware and software manufacturer of security equipment operating under the trademark VERKADA (the “VERKADA Mark”).

Complainant states that it is also considered a leader in cloud-based enterprise building security, providing security systems, including video cameras and accessories for video cameras; camera hardware systems for video surveillance; downloadable mobile application for video surveillance, video analytics, as well as related technical support and consultancy services under the VERKADA Mark. Complainant also submits in the record articles from third party trade publications supporting the growing recognition of the VERKADA Mark globally and its financial strength, reported in January 2020 as USD 1.6 Billion.

Complainant has secured ownership of a number of trademark registrations for the VERKADA Mark across various jurisdictions including but not limited to, the following:

United States Trademark Registration No. 5848597, VERKADA, registered on September 3, 2019 for a range of goods and services covering classes 9, 37, 42 and 45, including cameras, hardware and software as a service for video surveillance systems, and consulting and technical support services for such security systems, and claiming a first use date of November 11, 2016.

United Kingdom Trademark Registration No UK00003406164, VERKADA, registered on August 30, 2019 for a range of goods and services covering classes 9, 37, 42 and 45, including cameras, hardware and software as a service for video surveillance systems, and consulting and technical support services for such security systems.

European Union Trademark Registration No. 018081438, VERKADA, registered on January 11, 2020 for a range of goods and services covering classes 9, 37, 42 and 45, including cameras, hardware and software as a service for video surveillance systems, and consulting and technical support services for such security systems.

Australia Trademark Registration No. 2058982, VERKADA, registered on September 8, 2020 for a range of goods and services covering classes 9, 37, 42 and 45, including cameras, hardware and software as a service for video surveillance systems, and consulting and technical support services for such security systems.

Since February 21, 2015, Complainant’s official domain name <verkada.com> has been in use from which Complainant operates its official VERKADA website at “www.verkada.com” (“Verkada Website”), offering Complainant's high-end consumer security equipment and associated services for sale to customers across the world. Website analytics submitted in the record show that as of the filing of the Complaint, the Verkada Website attracted an average of over 13,000 page views per day and had over 400,000 views in the prior 30 days.

The disputed domain name was registered on January 18, 2021. As of the date of filing of the Complaint, the disputed domain name was being used to redirect Internet users to a “holding site” parked page with pay per click links and which states in the top right hand corner “This domain was recently registered at Namecheap. Please check back later!”. The disputed domain name has been used, however, to conduct fraudulent email activity to impersonate Complainant attempting to obtain payments and information from Complainant’s customers through a phishing scheme, as shown in the record submitted by Complainant.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

To succeed, Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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.

The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2.

A. Identical or Confusingly Similar

Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has demonstrated its rights because it has shown that it is the holder of multiple valid and subsisting trademark registrations for the VERKADA Mark. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657.

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 for purposes of the Policy despite the addition of other words to such marks”. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

The disputed domain name incorporates Complainant’s VERKADA Mark and inserts an additional letter “a” to the Mark. This repeated letter does not significantly affect the appearance or pronunciation of the domain name. The disputed domain name, therefor, is essentially identical to Complainant’s official domain name <verkada.com> and encompasses its registered VERKADA Mark adding only a repeated letter “a” which could be easily overlooked or considered by consumers as a “typo”.

Prior UDRP panels have found registering a domain name that repeats a letter within a complainant’s trademark to be within the conduct commonly referred to as typosquatting, prohibited under the Policy, “which creates a virtually identical and/or confusingly similar mark to the [c]omplainant’s trade-mark.” See, Humana Inc. v. Cayman Trademark Trust, WIPO Case No. D2006-0073 (<humanna.com>, transferred).

Prior UDRP panels have also found a difference of only one letter between a disputed domain name and a complainant’s mark to be insufficient to prevent a finding of confusing similarity. See, Electronic Arts Inc. v. John Zuccarini, WIPO Case No. D2003-0141 (<simscity.com> “the domain name differs from [SIMCITY] trademark in only one letter; this small difference establishes the confusingly similarity with [the complainant’s trademark]”). Finally, the addition of the Top-Level domain (“TLD”) “.com” is irrelevant in determining whether the disputed domain name is confusingly similar. See, Research in Motion Limited v thamer Ahmed Alfarshooti, WIPO Case No. D2012-1146; WIPO Overview 3.0, section 1.11.

Complainant’s VERKADA Mark is readily recognizable as incorporated in its entirety into the disputed domain name and for that reason the Panel finds the disputed domain name confusingly similar to the VERKADA Mark in which Complainant has rights.

Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under the second element of the Policy, a complainant is first required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If a complainant makes that showing, the burden of production on this element shifts to the respondent to come forward with relevant evidence of such rights or legitimate interests in the domain name. If the respondent fails to come forward with such evidence, a complainant is generally, deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Respondent is in default and thus has not attempted to come forward to show any rights or legitimate interests in the disputed domain name under the Policy at paragraph 4(c).

Complainant has established, prima facie, that Respondent lacks rights or legitimate interests in the disputed domain name. First, Complainant asserts Respondent is not a licensee of or affiliated with Complainant, nor has Complainant consented to or granted any authorization for Respondent to make use of Complainant’s VERKADA Mark in a domain name or otherwise. Complainant also shows Respondent is not commonly known by the disputed domain name because Respondent is listed in the WhoIs record submitted with the Complaint as WhoIsGuard Protected, WhoIsGuard, Inc. and/or Teresa Swanzy, neither of which bears any resemblance to the disputed domain name whatsoever. Complainant also states that to the best of its knowledge, Respondent has no genuine actual or legitimate business which uses the name or mark “VERKAADA”, “VERKADA”, or any similar name and has not used the VERKADA/VERKAADA name or mark (or any similar name) in connection with the bona fide offering of goods or services such that it benefits from any goodwill in that as such terms are reflected in the disputed domain name.

It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to a complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that a complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See, Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857.

Respondent’s use of the disputed domain name to resolve to a parking page displaying pay per click advertising does not represent a bona fide use of the disputed domain name. See WIPO Overview 3.0, section 2.9.

Complainant has also provided detailed explicit evidence showing Respondent’s use of the disputed domain name in connection with fraudulent email activity to impersonate Complainant as part of a phishing scheme to extract payment and financial information from Complainant’s customers. Prior UDRP panels have held that the use of a domain name for illegal activity (e.g., phishing, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. See, WIPO Overview 3.0, section 2.13. See also, Springer Nature Limited v. Registration Private, Domains By Proxy, LLC / Collections Springer Nature, WIPO Case No. D2020-0955.

Furthermore, prior UDRP panels have held that domain names that are identical to a complainant’s trademark carry a high risk of implied affiliation, and that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. See WIPO Overview 3.0 , section 2.5.1 . In this case, the Panel finds that the disputed domain name is almost identical to Complainant’s VERKADA Mark.

In view of the above, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any argument or evidence to rebut Complainant’s prima facie case. The Panel determines, therefore, that Respondent does not have rights or legitimate interests in the disputed domain name and that Complainant has successfully met its burden under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant contends that because Respondent has created a domain name that is confusingly similar to Complainant’s VERKADA Mark, as well as its <verkada.com> domain, as found in section 6.A. above it is implausible to believe that Respondent did not have actual knowledge of Complainant’s mark when it registered its confusingly similar domain name. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4.

The Panel also notes here additional factors under section 3.1.4 and its cases from which the Panel may infer bad faith registration: (i) Respondent’s incorporation of the repeated letter “a” in the disputed domain as a “typo” inserted into both Complainant’s VERKADA Mark and official <verkada.com> domain name to confuse consumers, (ii) Complainant’s official website for Complainant’s financial loan and insurance services is accessed at “www.verkada.com”, a strikingly similar string, which suggests Respondent targeted Complainant’s mark when it picked the disputed domain name inserting only a single repeated letter’s difference in the disputed domain name <verkaada.com>, (iii) the lack of Respondent’s rights to or legitimate interests in the disputed domain name registered to engage in per se illegitimate activity for commercial gain. Given the circumstances of this case, such a showing is sufficient to establish bad faith registration. See WIPO Overview 3.0, section 3.2.1.

Bad faith use is also clear from Respondent’s illegal conduct as discussed in detail in section 6.B. above, sending fraudulent emails under the name of Complainant’s authorized accounts receivable officers suggesting an affiliation with Complainant to solicit sensitive, financial information for payment of fraudulent invoices from unsuspecting customers for Respondent’s commercial gain. See WIPO Overview 3.0, section 3.1.4; see also, Accenture Global Services Limited v. Yankee, Yankees, WIPO Case No. D2018-0217 and BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC / Douglass Johnson, WIPO Case No. D2016-0364.

For these reasons, the Panel finds bad faith registration and use, and Complainant has met its burden under paragraph 4(a)(iii) 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, <verkaada.com> be transferred to Complainant.

Scott R. Austin
Sole Panelist
Date: April 10, 2021