Agilent Technologies, Inc. v. John Walker
Claim Number: FA1912001876773
Complainant is Agilent Technologies, Inc. (“Complainant”), represented by LianErnette of Holland & Hart LLP, United States. Respondent is John Walker (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <agilsent.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 26, 2019; the Forum received payment on December 26, 2019.
On December 27, 2019, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <agilsent.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 December 30, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 21, 2020 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@agilsent.com. Also on December 30, 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 January 23, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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, Agilent Technologies Inc., operates an online marketplace for products in the areas of life sciences, diagnostics, and applied chemical markets. Complainant has rights in the AGILENT mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,643,345, registered Oct. 29, 2002). Respondent’s <agilsent.com> domain name is confusingly similar to Complainant’s mark since Respondent simply adds the letter “s” after the letter “l” and the “.com” generic top-level domain (“gTLD”) to the mark.
Respondent does not have rights or legitimate interests in the <agilsent.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s AGILENT mark. 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 fails to make an active use the disputed domain name. In addition, Respondent uses the disputed domain name impersonate Complainant in furtherance of an e-mail phishing scheme.
Respondent registered and uses the <agilsent.com> domain name in bad faith. Respondent has demonstrated a pattern of bad faith registration. Also, Respondent uses the disputed domain name to impersonate Complainant to engage in an e-mail phishing scheme. Additionally, Respondent’s use of typosquatting evidences bad faith. Finally, Respondent has actual knowledge of Complainant’s rights in the AGILENT mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Agilent Technologies, Inc. (“Complainant”), of Santa Clara, CA, USA. Complainant is the owner of numerous domestic and international registrations for the mark AGILENT, which it has used continuously since at least as early as 1999. Complainant has used its mark in connection with a wide variety of goods and services in the life sciences, diagnostics, laboratory, and science research industries.
Respondent is John Walker (“Respondent”), of Dallas, TX, USA. Respondent’s registrar’s address is listed as Mumbai, India. The Panel notes that the disputed domain name was registered on or about November 22, 2019.
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”).
Complainant asserts rights in the AGILENT mark based upon registration with the USPTO. Registration with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides evidence of its registration with the USPTO (e.g., Reg. No. 2,643,345, registered Oct. 29, 2002). The Panel here finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <agilsent.com> domain name is confusingly similar to Complainant’s mark because it is a misspelling of Complainant’s mark that adds a gTLD. Misspelling a complainant’s mark by adding a letter and adding a gTLD does not sufficiently differentiate a disputed domain name from a mark under Policy ¶ 4(a)(i). See Coachella Music Festival, LLC v. Domain Administrator / China Capital Investment Limited, FA 1734230 (Forum July 17, 2017) (“The addition of letters—particularly of those that create a common misspelling—fails to sufficiently distinguish a domain name from a registered mark.”) ; see also Abt Elecs., Inc. v. Ricks, FA 904239 (Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Here, Complainant notes that the only differences between the disputed domain name and the AGILENT mark are the additions of the letter “s” and the “.com” gTLD. The Panel here finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues
that Respondent does not have rights or legitimate interests in the <agilsent.com> domain name as
Respondent is not authorized to use Complainant’s AGILENT mark and is not
commonly known by the disputed domain name. Where a response is lacking, WHOIS
information can support a finding that a respondent is not commonly known by
the disputed domain name. See Chevron Intellectual Property LLC v. Fred
Wallace, FA1506001626022 (Forum
July 27, 2015) (finding that the respondent was not commonly known by the
<chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS
information named “Fred Wallace” as registrant of the disputed domain name). Additionally,
lack of evidence in the record to indicate that the respondent has been
authorized to register a domain name using a complainant’s mark supports a
finding that respondent does not have rights or legitimate interests in the
disputed domain name. See Navistar International Corporation v. N Rahmany,
FA1505001620789 (Forum June 8,
2015) (finding that the respondent was not commonly known by the disputed
domain name where the complainant had never authorized the respondent to
incorporate its NAVISTAR mark in any domain name registration). The WHOIS
information of record lists the registrant as “John Walker,” and Complainant
contends that it did not authorize Respondent’s use of the AGILENT mark.
Respondent provides no evidence supporting any right to use. The Panel here
finds that Respondent is not commonly known by the disputed domain name under Policy
¶ 4(c)(ii).
Complainant also argues that Respondent fails to use the <agilsent.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent fails to make an active use of the disputed domain name. Failure to make active use of a domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Here, Complainant provides a screenshot of the error message resolving at the disputed domain name. The Panel here finds that Respondent’s use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant also claims that Respondent attempts to impersonate Complainant as part of a phishing scheme. Use of an email address associated with a disputed domain name to pass off as a complainant in furtherance of phishing is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Here, Complainant claims Respondent uses an email address associated with the disputed domain name to impersonate Complainant in emails to Complainant’s customers in order to solicit payment information. In support of this assertion Complainant provides an email sent by Respondent to Complainant’s customer. The Panel here finds that Respondent lacks rights and legitimate interests in the disputed domain name per Policy ¶¶ 4(c)(i) and (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent registered and uses the <agilsent.com> domain name in bad faith because Respondent attempts to disrupt Complainant’s business. Specifically, Complainant argues Respondent is attempting to impersonate Complainant as part of an email phishing scheme. Use of a domain name to impersonate a complainant in furtherance of a fraudulent scheme may constitute bad faith pursuant to Policy ¶ 4(b)(iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the Respondent’s use of the disputed domain names to send fraudulent emails supported a finding of bad faith registration and use under Policy ¶ 4(b)(iii)). The Panel again notes Complainant claims that Respondent uses an email address associated with the disputed domain name to impersonate Complainant and send phishing emails to Complainant’s customers and that Complainant provided a copy of such an email as evidence in support of its claim. The Panel here finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii).
Additionally, Complainant contends that Respondent engages in typosquatting. Misspelling of a complainant’s mark in order to commercially benefit from a confusing similarity between a disputed domain name and the mark can evince bad faith under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). Complainant argues that Respondent’s addition of the letter “s” to the AGILENT mark to create <agilsent.com> constitutes typosquatting. The Panel agrees and finds that Respondent’s misspelling constitutes typosquatting, further evincing bad faith by Respondent per Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the AGILENT mark. Actual knowledge may be shown through a respondent’s use of a complainant’s marks to pass itself off as the complainant. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum January 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Complainant argues that since Respondent uses Complainant’s correctly spelled mark in the phishing emails, Respondent must have had actual knowledge of Complainant’s rights in the AGILENT mark. The Panel here finds that Respondent registered and uses the <agilsent.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <agilsent.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: February 5, 2020
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