Agilent Technologies, Inc. v. Hoang Phi Long / SHB / Thu Ha Thu Ha / Thu Ha Company
Claim Number: FA2010001917534
Complainant is Agilent Technologies, Inc. (“Complainant”), represented by Alexander J.A. Garcia of Perkins Coie LLP, United States. Respondent is Hoang Phi Long / SHB / Thu Ha Thu Ha / Thu Ha Company (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <agilent.click> and <gilent.cyou>, registered with NameCheap, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 19, 2020; the Forum received payment on October 19, 2020.
On October 20, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <agilent.click>, <gilent.cyou> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 October 26, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 16, 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@agilent.click, postmaster@gilent.cyou. Also on October 26, 2020, 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 November 19, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it provides a wide variety of goods and services in, inter alia, the life sciences, diagnostics, and the laboratory and scientific research industries. Complainant is a Fortune 500 company and world leader in life sciences, diagnostics, and applied chemical markets. Complainant was formed in 1999 after its predecessor company, Hewlett-Packard, Inc., announced a strategic realignment to create Complainant as an independent measurement company composed of test and measurement components, life sciences and chemical analysis, electronics, semiconductor and communications products. That “spin-off” of Hewlett-Packard in 1999 received significant media attention because, at the time, the $2.1 billion raised from this initial public offering (“IPO”) was the largest IPO in Silicon Valley history. Complainant currently provides laboratories worldwide with instruments, services, consumables, applications and expertise and employs over 16,000 people worldwide serving customers in 110 countries, and serving approximately 265,000 laboratories, including major universities, hospitals and research institutions globally. Complainant, through its website <www.agilent.com>, operates a robust online marketplace where its consumers can choose from hundreds of different products which can be shipped to countries all over the world. Complainant’s revenues in 2019 exceeded $5 billion. Complainant has rights in the AGILENT mark based upon registration in the United States in 2001.
Complainant alleges that the disputed domain names are identical or confusingly similar to its mark since the <agilent.click> domain name incorporates the mark in its entirety and the <gilent.cyou> domain name contains an intentional misspelling of the mark while both domain names append a generic top-level domain (“gTLD”) to the mark. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent does not have rights or legitimate interests in the disputed domain names because Respondent is not commonly known by the disputed domain names and is not authorized to use Complainant’s AGILENT mark. Additionally, Respondent fails to use the disputed domain names in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent misleads consumers into believing the domain names are associated with Complainant by redirecting visitors to Complainant’s official website. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith. Respondent uses the disputed domain names to redirect users to Complainant’s legitimate website. Additionally, Respondent could use the domain names to perpetrate a phishing scam. Further, Respondent’s typosquatting behavior evidences bad faith. Finally, Respondent had actual knowledge of Complainant’s rights in the AGILENT mark. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark AGILENT and uses it to market a wide variety of goods and services in, inter alia, the life sciences, diagnostics, and the laboratory and scientific research industries.
Complainant’s rights in its mark date back to 2001.
The disputed domain names were registered in 2020.
Complainant has not licensed or otherwise authorized Respondent to use its mark. The disputed domain names redirect to Complainant’s legitimate website.
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”).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Here, the disputed domain names used the same privacy protection service, were registered two days apart, contain variations of Complainant’s AGILENT mark, use the same host, and the same registrar. Moreover, the MX records for the disputed domain names show that they have the same mail server IP addresses and mail server set up. Further, the disputed domain names both redirect to Complainant’s website <https://www.agilent.com>. Finally, after Respondent was unmasked, it was revealed that both disputed domain names were registered using addresses from Hanoi, Vietnam.
The panel finds that these commonalities are sufficient to find that the domain names were registered by the same domain name holder. See The Valspar Corporation v. Zhou Zhiliang / zhouzhiliang / Zhiliang Zhou / Eric Chow / Visspa Ltd., FA100800133934 (Forum Sept. 28, 2010); see also BBY Solutions, Inc. v. White Apple / Dev Kumar, FA1805001787251 (Forum June 20, 2018).
Consequently, the Panel will rule on both disputed domain names, and both registrants are collectively referred to as “Respondent”.
The disputed domain names are identical or confusingly similar to Complainant’s mark since the <agilent.click> domain name incorporates the mark in its entirety and the <gilent.cyou> domain name contains an intentional misspelling of the mark while both domain names append a gTLD to the mark. Misspelling a mark by deleting a letter is insufficient to negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Domain Admin / Whois Privacy Corp., FA 1783121 (Forum June 1, 2018) (“Respondent’s <morganstanle.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark as it wholly incorporates the mark, but for the omission of the letter ‘y’ and spacing within the mark, and appends the ‘.com’ gTLD.”). Furthermore, the addition of a TLD to a mark is irrelevant in determining confusing similarity. See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”). Thus, the Panel finds that the <agilent.click> and <gilent.cyou> domain names are, respectively, identical and confusingly similar to Complainant’s AGILENT mark under Policy ¶ 4(a)(i).
Respondent is not authorized to use Complainant’s AGILENT mark and is not commonly known by the disputed domain names: 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). Here, the WHOIS information of record lists the registrants as “Hoang Phi Long / SHB” and “Thu Ha Thu Ha / Thu Ha Company”. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent misleads consumers into believing the disputed domain names are associated with Complainant by redirecting visitors to Complainant’s official website. Use of a disputed domain name to redirect to a complainant’s actual webpage is not considered 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). See Better Existence with HIV v. AAA, FA 1363660 (Forum Jan. 25, 2011) (finding that “even though the disputed domain name still resolves to Complainant’s own website, Respondent’s registration of the disputed domain name in its own name fails to create any rights or legitimate interests in Respondent associated with the disputed domain name under Policy ¶ 4(a)(ii)”). Thus, the Panel finds that Respondent fails to use the disputed domain names to make a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names.
Complainant states that it has reason to believe that the disputed domain names could be used to perpetrate a phishing scam because the MX records for the disputed domain names show that they are associated with the same mail server. However, Complainant does not provide any evidence of any actual emails associated with the disputed domain names. Therefore, the Panel will not discuss this allegation any further.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, as already noted, Respondent uses the disputed domain names to redirect users to Complainant’s legitimate website. Use of a disputed domain name to direct Internet traffic to a complainant’s actual webpage may evidence bad faith under Policy ¶ 4(a)(iii). See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”). The Panel therefore finds bad faith registration and use under Policy ¶ 4(a)(iii).
Further, Respondent registered the disputed domain names with actual knowledge of Complainant’s mark: the disputed domain names resolve to Complainant’s legitimate website. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
Finally, Respondent’s typosquatting behavior regarding the <gilent.cyou> domain name evidences bad faith. Misspelling 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).”). Thus, the Panel finds that Respondent’s misspelling constitutes typosquatting, further evincing bad faith by Respondent per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <agilent.click>, <gilent.cyou> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: November 19, 2020
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