DECISION

 

Agilent Technologies, Inc. v. Gelmangroup, LLC

Claim Number: FA0111000102183

 

PARTIES

Complainant is Agilent Technologies, Inc., Palo Alto, CA (“Complainant”) represented by Molly Buck Richard, of Strasburger & Price, LLP.  Respondent is Gelmangroup, LLC, Firestone, CO (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <agilentparts.com> and <agilentparts.net>, registered with Register.com.

 

PANEL

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.

 

Hon. Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 15, 2001; the Forum received a hard copy of the Complaint on November 16, 2001.

 

On November 15, 2001, Register.com confirmed by e-mail to the Forum that the domain names <agilentparts.com> and <agilentparts.net> are registered with Register.com and that Respondent is the current registrant of the names.  Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On November 19, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 10, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@agilentparts.com and postmaster@agilentparts.net by e-mail.

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

 

On December 21, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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.”  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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from the Respondent to the Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

The disputed domain names are confusingly similar to marks in which Complainant has exclusive rights.

 

Respondent has no rights or legitimate interests in respect of the disputed domain names.

 

Respondent registered and used the disputed domain names in bad faith.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

Complainant company produces medical equipment and parts, among the many other goods and services it provides. 

 

Complainant currently holds registered trademarks in AGILENT TECHNOLOGIES and AGILENT, and has several other trademark applications pending that incorporate the AGILENT mark.  The AGILENT TECHNOLOGIES mark was registered on the Principal Register of the United States Patent and Trademark Office on February 27, 2001 as Registration No. 2,431,324, with a filing date of January 5, 2000.  The AGILENT mark was registered on the Principal Register on June 19, 2001 as Registration No. 2,461,406, with an intent-to-use filing date of June 16, 1999. 

 

Complainant has continuously used the AGILENT TECHNOLOGIES mark in commerce since October 1999 and the AGILENT mark since November 1999, and asserts that the marks have become famous.  Complainant has invested over $100 million in its promotional efforts  to develop goodwill related to the AGILENT marks and to ensure that consumers throughout the world recognize the marks as identifying products that originate with Complainant.

 

Respondent registered the disputed domain names in March 2000 and used them to distribute medical and analytical products under the trade name Medibix.  At the time the Complaint was filed, however, there was no longer a website connected to either of the disputed domain names.

 

DISCUSSION

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.”

 

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

 

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

 

Identical and/or Confusingly Similar

The disputed domain names are confusingly similar to marks in which Complainant holds rights. 

 

Complainant currently holds a registered trademark in the word AGILENT.  The fact that the application was pending at the time the disputed domain names were filed does not defeat Complainant's standing to bring a claim under the Policy.  See MatchNet PLC. V. MAC Trading, D2000-0205 (WIPO May 11, 2000) (citing British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000)) (noting that the UDRP “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”). 

 

The Policy does not require Complainant to have held a registered mark at the time the disputed domain names were filed, nor that Complainant even held exclusive rights to the mark to succeed in its claim.  See Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that complainant has a bona fide basis for making the complaint in the first place). 

 

By incorporating Complainant's AGILENT mark in the disputed domain names, Respondent has created likelihood that consumers will confuse Respondent's sites with Complainant's business.  See Surface Protection Indus., Inc. v. The Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding the domain name confusingly similar “so as to likely confuse Internet users who may believe they are doing business with Complainant or with an entity whose services are endorsed by, sponsored by, or affiliated with Complainant; hence, satisfying the confusing similarity requirement”).

 

The confusing similarity is enhanced by the fact that Respondent's business appears to be very much related to Complainant's.  See Slep-Tone Entm't Corp. v. Sounds Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (stating that the “likelihood of confusion is further increased by the fact that the Respondent and [Complainant] operate within the same industry”).

 

The addition of the generic word "parts" to Complainant's mark does not defeat the domain names' confusing similarity.  See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business).

 

Finally, the inclusion of ".com" and ".net" in the disputed domain names is irrelevant to the determination of confusing similarity.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that the addition of the generic top-level domain (gTLD) name ".com" is "without legal significance since use of a gTLD is required of domain name registrants").

 

Having found the disputed domain names to be confusingly similar to Complainant's marks, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

Because Respondent failed to submit a Response in this proceeding, the Panel may conclude that Respondent has no rights or legitimate interests in the disputed domain names.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that Respondent’s failure to produce requested documentation supports a finding for Complainant).

 

Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii), nor is Respondent making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers pursuant to Policy ¶ 4(c)(iii).  See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any right or interest it may possess).

 

Further, Respondent's use of the disputed domain names to sell competing medical and analytical products cannot be construed as a bona fide offering of goods or services under Policy ¶ 4(c)(i).  See Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that Respondent does not have a legitimate interest in using the domain names <caterpillarparts.com> and <caterpillarspares.com> to suggest a connection or relationship, which does not exist, with the Complainant's mark CATERPILLAR); see also The Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding Respondent’s use of <thechipmerchant.net>, <chipmerchant.com>, and <chipmerchant.net> to sell competing goods to be an illegitimate use and not a bona fide offering of goods).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied, and that Respondent has no rights or legitimate interests in respect of the disputed domain names.

 

Registration and Use in Bad Faith

By selecting and using domain names that incorporated Complainant's well known marks, Respondent acted in bad faith within the meaning of Policy ¶ 4(b)(iv), causing confusion among Internet users in order to attract consumers to its own website.  See Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site); see also Fanuc Ltd v. Mach. Control Serv., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent violated Policy ¶ 4(b)(iv) by selling used Fanuc parts and robots on website <fanuc.com> because customers visiting the site were confused as to the relationship between the Respondent and Complainant).

 

Further, by registering multiple infringing domain names, Respondent has, in bad faith under Policy ¶ 4(b)(ii), attempted to prevent Complainant from obtaining domain names reflecting its marks.  See YAHOO! Inc. v. Syrynx, Inc. & Hamilton, D2000-1675 (WIPO Jan. 30, 2001) (finding bad faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two domain names incorporating Complainant's YAHOO! mark).

 

Respondent’s use of the domain names to sell competing goods also supports a finding of bad faith under Policy ¶ 4(b)(iii).  See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant); see also VeriSign, Inc. v. Nandini Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding bad faith where Respondent had connections with a competitor of the Complainant’s digital security business and the Respondent indicated that she intended to enter the same business).

 

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.

 

Accordingly, it is Ordered that the <agilentparts.com> and <agilentparts.net> domain names be transferred from Respondent to Complainant.

 

 

Hon. Ralph Yachnin

Justice, Supreme Court, NY (Ret.)

 

Dated: December 24, 2001