Exergen Corporation v. Whois Privacy
Claim Number: FA1909001862875
Complainant is Exergen Corporation (“Complainant”), represented by Susan G.L. Glovsky of Hamilton, Brook, Smith & Reynolds, P.C., Massachusetts, USA. Respondent is Whois Privacy (“Respondent”), Singapore.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <exergensmartglowthermometer.com>, registered with DropCatch.com 925 LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Eugene I. Low as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 18, 2019; the Forum received payment on September 18, 2019.
On September 19, 2019, DropCatch.com 925 LLC confirmed by e-mail to the Forum that the <exergensmartglowthermometer.com> domain name is registered with DropCatch.com 925 LLC and that Respondent is the current registrant of the name. DropCatch.com 925 LLC has verified that Respondent is bound by the DropCatch.com 925 LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 23, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@exergensmartglowthermometer.com. Also on September 23, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 18, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eugene I. Low as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant provides infrared and radiation detection goods and services under the EXERGEN mark. Complainant has rights in the EXERGEN mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,797,315, registered Dec. 23, 2003). Respondent’s <exergensmartglowthermometer.com> domain name is confusingly similar to Complainant’s EXERGEN mark as it incorporates the mark in its entirety, along with the term "thermometer".
Respondent has no rights or legitimate interests in the <exergensmartglowthermometer.com> domain name. Respondent is not licensed or permitted to use Complainant’s EXERGEN mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to redirect users to a website captioned "Weight Loss Tips". Complainant also previously owned this disputed domain name until Respondent acquired the name.
Respondent registered and uses the <exergensmartglowthermometer.com> domain name in bad faith. Respondent registered the disputed domain name with the primary intent on selling, renting or transferring the name to Complainant or a competitor. Respondent attempts to attract, for commercial gain, users to the disputed domain name by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of Respondent's website.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, Respondent sent an email to the Forum on September 27, 2019, copying in Complainant's legal representatives. In the email, Respondent confirmed receipt of the Complainant and claimed that it has never used the "complaint trademark" in question. Respondent indicated in the email that it would cooperate with Complainant and transfer the name to Complainant. Furthermore, Respondent claimed that it had already changed the nameserver setting to default. Respondent asked the Forum to inform it of the necessary procedures for the transfer.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel notes Respondent's email to the Forum on September 27, 2019, indicating its willingness to transfer the domain name to Complainant's legal representatives. In the email, Respondent confirmed receipt of the Complainant and claimed that it has never used the "complaint trademark" in question. Respondent indicated in the email that it would cooperate with Complainant and transfer the name to Complainant. Furthermore, Respondent claimed that it had already changed the nameserver setting to default. Respondent asked the Forum to inform it of the necessary procedures for the transfer.
The Panel has taken into account Respondent's email when preparing this Decision. The Panel reminds Respondent that the Forum is not in a position to advise the parties of the procedures of the transfer of the domain name. It is up to the parties to discuss any settlement of the disputes and inform the Forum and the Panel of any settlement reached, if they think fit.
The Panel finds in favor of Complainant.
Complainant has shown rights in the EXERGEN mark based upon registration of the mark with the USPTO. Registration of a mark with the USPTO is generally sufficient to establish rights in that mark.
Complainant next argues Respondent's <exergensmartglowthermometer.com> domain name is confusingly similar to the EXERGEN mark, as the name incorporates the mark along with the term "thermometer", a product that Complainant sells. The Panel also notes that the disputed domain name consists of the terms "smart" and "glow". The Panel notes Complainant's evidence that Complainant used to sell a thermometer product under the name "Exergen Smart Glow Temporal Scanner". In light of the overall circumstances, the Panel considers that the additional string <smartglowthermometer> is not sufficient to distinguish the domain name from Complainant's EXERGEN mark.
The Panel finds in favor of Complainant. Complainant has made out a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Respondent fails to show it does have such rights or legitimate interests.
The Panel accepts Complainant's arguments that Respondent has no rights or legitimate interests in the <exergensmartglowthermometer.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the EXERGEN mark in any way. The Panel also accepts Complainant's argument that Respondent has failed to use the domain name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use.
Respondent has not filed any Response, and its email response did not address whether it has any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and what those rights or legitimate interests are, if any.
The Panel finds in favor of Complainant.
Complainant has produced evidence that Complainant previously owned the <exergensmartglowthermometer.com> domain name for promotion of its "Exergen Smart Glow Temporal Scanner" thermometer products. Complainant contends that Respondent has used the<exergensmartglowthermometer.com> domain name for resolving to a website that features the caption "Weight Loss Tips". In light of Complainant's rights in the EXERGEN mark and its previous use and ownership of the disputed domain name, the Panel accepts that Respondent's registration and use of the <exergensmartglowthermometer.com> domain name is likely to create confusion with Complainant's mark. In the absence of any explanation from Respondent as to its registration and use of the disputed domain name, the Panel accepts Complainant's arguments that Respondent's registration and use of the domain name is in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <exergensmartglowthermometer.com> domain name be TRANSFERRED from Respondent to Complainant.
Eugene I. Low, Panelist
Dated: October 22, 2019
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