Danaher Corporation v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2111001973683
Complainant is Danaher Corporation (“Complainant”), represented by Adam Harber of Williams & Connolly LLP, District of Columbia, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mydanaherbenefit.com>, registered with Media Elite Holdings Limited.
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 November 17, 2021; the Forum received payment on November 17, 2021.
On November 21, 2021, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <mydanaherbenefit.com> domain name is registered with Media Elite Holdings Limited, and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 22, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 13, 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@mydanaherbenefit.com. Also on November 22, 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 17, 2021, 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 is a worldwide conglomerate focused on designing, manufacturing, and marketing professional, medical, industrial, and commercial products and services. Complainant has rights in the DANAHER mark through its registrations with the SAIC (e.g. SAIC Reg. 22,741,109, registered Apr. 21, 2018). Complainant also has common law rights in the mark. Respondent’s <mydanaherbenefit.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds the words “my’ and “benefit”, along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <mydanaherbenefit.com> domain name. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its DANAHER mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair use, but instead hosts parked pay-per-click links.
Respondent registered and uses the <mydanaherbenefit.com> domain name in bad faith. Respondent disrupts Complainant’s business for commercial gain by hosting parked, pay-per-click links on the disputed domain names’ resolving websites. Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the DANAHER mark. Respondent hid its identity behind a WHOIS privacy service.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Danaher Corporation (“Complainant”), of Washington DC, USA. Complainant is the owner of domestic and international registrations for the mark DANAHER. Complainant has continuously used the mark since at least as early as 1984 in connection with its design, manufacturing, and marketing of professional goods and services in various industries including, life sciences, dental, test/measurements, and environmental technologies. Complainant also operates various websites that incorporate its mark including <danaher.com>.
Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama City, Panama. Respondent’s registrar’s address reflects the same location. The Panel notes that the <mydanaherbenefit.com> domain name was registered on or about Nov. 7, 2018.
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 claims rights in the DANAHER mark through its registration with the SAIC (e.g. SAIC Reg. 22,741,109, registered Apr. 21, 2018). Registration with the SAIC is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See FIL Limited v. Li jie, FA 1718900 (Forum Mar. 17, 2017) (“Complainant has rights in the FIDELITY mark under Policy ¶ 4(a)(i) through registration with the SAIC”). The Panel here finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <mydanaherbenefit.com> domain name is identical or confusingly similar to Complainant’s DANAHER mark. Under Policy ¶ 4(a)(i), adding the generic word “my”, along with the “.com” gTLD is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”). In the instant case the disputed domain name incorporates Complainant’s DANAHER mark and adds the words “my” and “benefit” along with the “.com” gTLD, to resemble a domain name also nearly identical to Complainant’s own <mydanaherbenefits.com>. The Panel here finds that the disputed domain name is confusingly similar to the mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
Rights or Legitimate Interests
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 is not commonly known by the <mydanaherbenefit.com> domain name, nor has Complainant authorized or licensed Respondent to use its DANAHER mark in the disputed domain names. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS Information, or lack thereof when hidden by a privacy service, may demonstrate that a Respondent is not commonly known by a disputed domain name, while a lack of information demonstrating otherwise may affirm a Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain name. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”); see also 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). Here, the WHOIS of record lists no information but a privacy service, and no evidence has been tendered to rebut Complainant’s assertion that it never authorized or licensed Respondent to use its DANAHER mark in the disputed domain name. The Panel here finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the <mydanaherbenefit.com> domain name for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to host parked, pay-per-click links is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (holding that the respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name). Here, Complainant provides screenshots of the disputed domain name’s resolving website, which features no content but parked pay-per-click links for employment benefit plans similar to Complainant’s own. The Panel here finds that Respondent does not use the disputed domain name for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair use under 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 <mydanaherbenefit.com> domain name for bad faith disruption for commercial gain. Under Policy ¶¶ 4(b)(iii) and (iv), using a disputed domain name to host parked, pay-per-click links is generally considered evidence of bad faith disruption for commercial gain. See Zynex Medical, Inc. v. New Ventures Services, Corp, FA 1788042 (Forum July 2, 2018) (“The resolving webpage [] appears to display [competing] links such as “Electrical Stimulation” and “Physical Therapy Software.” Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).”). The Panel here again notes that Complainant provides screenshots of the disputed domain name’s resolving website, which features no content but parked pay-per-click links for employment benefit plans similar to those located at Complainant’s internet page. The Panel here finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant further argues that Respondent registered the <mydanaherbenefit.com> domain name with bad faith actual knowledge of Complainant’s rights in the DANAHER mark. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient in demonstrating bad faith, and may be established through incorporation of a mark into a domain name, as well as Respondent’s use of the disputed domain name. See Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant’s field of operation). Complainant again relies upon screenshots of the disputed domain names’ resolving website, which features no content but parked pay-per-click links for employment benefit plans similar to those located at Complainant’s website. The Panel here finds that Respondent registered and uses the disputed 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.
DECISION
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 <mydanaherbenefit.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: December 30, 2021
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