Teleflex Incorporated v. Gba Gaun
Claim Number: FA2111001973590
Complainant is Teleflex Incorporated (“Complainant”), represented by Kevin M. Bovard of Baker & Hostetler LLP, Pennsylvania, USA. Respondent is Gba Gaun (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <teleflexcorp.com>, registered with NameCheap, Inc..
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 16, 2021; the Forum received payment on November 16, 2021.
On November 17, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <teleflexcorp.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. 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 November 18, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 8, 2021 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@teleflexcorp.com. Also on November 18, 2021, 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 December 15, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Teleflex Incorporated, provides specialty medical devices for a range of procedures in critical care and surgery.
Complainant has rights in the TELEFLEX mark based upon registration with the United States Patent and Trademark Office (“USPTO”).
The <teleflexcorp.com> domain name is confusingly similar to Complainant’s mark because Respondent has incorporated the entire mark and added the generic term “corp” and the “.com” generic top level domain (“gTLD”), none of which creates a sufficient distinction.
Respondent does not have rights or legitimate interests in the <teleflexcorp.com> domain because Respondent is not commonly known by the at-issue domain name and is not authorized to use Complainant’s TELEFLEX mark. Additionally, Respondent fails to use the at-issue domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because the domain name is being used in an email phishing scheme and resolves to a parked page with pay-per-click links.
Respondent registered and uses the <teleflexcorp.com> domain name in bad faith because Respondent uses the domain name to send phishing emails posing as Complainant’s CEO. Respondent also hosts pay-per-click hyperlinks on the resolving webpage for the disputed domain name. In addition, Respondent had constructive and actual knowledge of Complainant’s rights in the TELEFLEX mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the TELEFLEX trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the TELEFLEX trademark.
Respondent uses the at-issue domain name to host a parking page with links to Complainant’s competitors and others, and to pass itself off as Complainant via email in furtherance of fraud.
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 shows that it has a USPTO registration for its TELEFLEX trademark. Such registration demonstrates Complainant’s rights in the TELEFLEX mark under 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)).
Respondent’s <teleflexcorp.com> domain name contains Complainant’s TELEFLEX trademark followed by the term “corp” with all followed by the top-level domain name “.com.” The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish the <teleflexcorp.com> domain name from the TELEFLEX trademark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <teleflexcorp.com> domain name is confusingly similar to Complainant’s TELEFLEX trademark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS information for <teleflexcorp.com> identifies the domain name’s registrant as “Gba Gaun” and the record before the Panel contains no evidence showing that Respondent is commonly known by the <teleflexcorp.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <teleflexcorp.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name).
Additionally, Respondent uses <teleflexcorp.com> to pass itself off as Complainant in furtherance of an email phishing scheme. Respondent’s use the of the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). Likewise, Respondent’s use of the at-issue domain name to address a parking page is likewise neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name); see also, McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015) (“The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services 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 pursuant to Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and without any evidence of record tending to support a finding of Respondent’s rights or legitimate interests Respondent’s lack of rights or legitimate interests in the at-issue domain name is conclusive.
The at-issue domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First, Respondent uses the at-issue domain name to host a parking page linking to third party commercial services some of which compete with Complainant. Respondent’s registration and use of the at-issue domain name to host pay-per-click links shows Respondent’s bad faith per Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Next, Respondent uses the <teleflexcorp.com> domain name to further a scam whereby Respondent misappropriates Complainant’s identity to commit fraud. To wit, Respond sends email addressed by the <teleflexcorp.com> domain name and therein poses as Complainant’s CEO. The email is directed to Complainant’s business relations in an effort to usurp private information and possibly money through deception. Respondent’s registration and use of the at-issue domain name in connection with an email phishing scheme demonstrates that Respondent registered and used in bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Eastman Chemical Company v. Lukas Moris, FA 1956649 (Forum Aug. 23, 2021) (“Complainant first argues Respondent registered and uses the disputed domain name in bad faith because Respondent uses the domain name to impersonate Complainant in furtherance of a phishing scheme. A domain name that is used in connection with a phishing scheme over email may be evidence of a domain name registered and used in bad faith under Policy ¶¶ 4(b)(iii) and (iv).”); see also, SHUAA Capital psc v. Oba Junkie / shuaa capital psc, FA 1581255 (Forum Oct. 29, 2014) (“The Panel finds that Respondent’s use of the domain name’s e-mail suffix for fraudulent purposes illustrates Policy ¶ 4(a)(iii) bad faith.”).
Furthermore, Respondent had actual knowledge of Complainant’s rights in the TELEFLEX mark when it registered <teleflexcorp.com> as a domain name. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark; from Respondent’s use of the at-issue domain name to address a parking page featuring competitive links; from the inclusion of the suggestive term “corp” in the at-issue domain name; and from Respondent’s use of the <teleflexcorp.com> domain name in furtherance of identity theft and fraud as discussed elsewhere herein. Respondent’s registering and using the confusingly similar <teleflexcorp.com> domain name with knowledge of Complainant’s rights in such domain name shows Respondent’s bad faith registration and use of <teleflexcorp.com> pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <teleflexcorp.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 16, 2021
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