Agilent Technologies, Inc. v. Purple Bucquet c/o Purple
Claim Number: FA1353044
Complainant is Agilent Technologies, Inc. (“Complainant”), represented by Leanne Stendell of Haynes and Boone, LLP, Texas, USA. Respondent is Purple Bucquet c/o Purple (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <beagilent.com>, registered with POWER BRAND CENTER CORP.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 19, 2010; the National Arbitration Forum received payment on October 20, 2010.
On October 28, 2010, POWER BRAND CENTER CORP. confirmed by e-mail to the National Arbitration Forum that the <beagilent.com> domain name is registered with POWER BRAND CENTER CORP. and that Respondent is the current registrant of the name. POWER BRAND CENTER CORP. has verified that Respondent is bound by the POWER BRAND CENTER CORP. 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 15, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 6, 2010 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@beagilent.com. Also on November 15, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 8, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from the Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <beagilent.com> domain name is confusingly similar to Complainant’s AGILENT mark.
2. Respondent does not have any rights or legitimate interests in the <beagilent.com> domain name.
3. Respondent registered and used the <beagilent.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Agilent Technologies, Inc., is a world-wide provider of test and measurement products and services. Since 1999, Complainant has used its AGILENT mark in connection with its test and measurement technology. Complainant holds numerous registered trademarks for its AGILENT mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,461,406 issued June 19, 2001).
Respondent, Purple Bucquet c/o Purple, registered the <beagilent.com> domain name on September 17, 2002. Respondent’s disputed domain name resolves to a website featuring a directory of third-party links some of which are unrelated to Complainant’s business and some which directly compete with Complainant’s test and measurement technology.
Prior UDRP proceedings against Respondent have resulted in a transfer of the disputed domain name to complainant. See Vanguard Trademark Holding USA LLC v. Purple Bucquet/Purple, FA 1340439 (Nat. Arb. Forum Oct. 15, 2010); see also Morgan Stanley v. Purple Bucquet, FA 1336613 (Nat. Arb. Forum Sept. 6, 2010).
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 Complainant's undisputed representations pursuant to paragraphs 5(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant asserts that it has established rights in its AGILENT mark. In Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002), the panel found that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations. Also, in Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), the panel found that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence. Here, Complainant holds trademark registration of its AGILENT mark with the USPTO (e.g. Reg. No. 2,461,406 issued June 19, 2001). Therefore, the Panel concludes that Complainant has established rights in its AGILENT mark through its trademark registration pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <beagilent.com> domain name is confusingly similar to Complainant’s AGILENT mark. The disputed domain name incorporates Complainant’s mark in its entirety and merely adds the generic term “be” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a generic term fails to significantly differentiate the disputed domain name from Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). The Panel also finds that addition of a gTLD does not sufficiently distinguish the disputed domain name from Complainant’s mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). Thus, the Panel finds that Respondent’s <beagilent.com> domain name is confusingly similar to Complainant’s AGILENT mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant contends that Respondent lacks rights and legitimate interests in the <beagilent.com> domain name. Previous panels have found that once a complainant supports its allegations by establishing a prima facie case, the burden shifts to the respondent to prove it does have rights or legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). Here, Complainant has made a prima facie case. Given Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights and legitimate interests under Policy ¶ 4(a)(ii). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). However, the Panel will turn to the record to determine if there is evidence that Respondent does have rights or legitimate interests pursuant to Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the <beagilent.com> domain name. The WHOIS information identifies Respondent as “Purple Bucquet,” which is in no way similar to the disputed domain name. Complainant argues that it has not consented or authorized Respondent to register or use its AGILENT mark with the disputed domain name. The Panel finds no additional information that would support a finding that Respondent is commonly known by the disputed domain name. The Panel concludes that Respondent is not commonly known by the <beagilent.com> domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Respondent uses the <beagilent.com> domain name to resolve to a website featuring third-party links to various commercial sites, some of which directly compete with Complainant’s test and measurement business. These links likely provide click-through fees for Respondent. The Panel finds that Respondent’s use of a confusingly similar disputed domain name to operate a website featuring competing and non-competing links is not 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 Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does not constitute 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)); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the use of the disputed domain name to operate a website displaying links to competing goods and services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Respondent has prior UDRP proceedings which resulted in a finding of bad faith and transferred the disputed domain name to complainant. See Vanguard Trademark Holding USA LLC v. Purple Bucquet/Purple, FA 1340439 (Nat. Arb. Forum Oct. 15, 2010); see also Morgan Stanley v. Purple Bucquet, FA 1336613 (Nat. Arb. Forum Sept. 6, 2010). The Panel concludes that Respondent’s previous UDRP proceedings resulting in findings of bad faith and transfer demonstrate a pattern of bad faith use and registration under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks).
Complainant asserts that Respondent’s use of the <beagilent.com> domain name disrupts its business. Internet users searching for Complainant’s test and measurement technology may find Respondent’s website and instead purchase similar products and services from one of Complainant’s competitors. The Panel finds that Respondent’s use of the <beagilent.com> domain name does disrupt Complainant’s business and is evidence of bad faith use and registration under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
The Panel infers that Respondent likely receives click-through fees from the previously mentioned third-party links. Respondent’s <beagilent.com> domain name resolves to a website displaying links to commercial sites, some of which compete with Complainant’s test and measurement technology. Internet users searching for Complainant may be redirected to Respondent’s website as a result of Respondent’s use of the disputed domain name. The use of the confusingly similar domain name may create uncertainty among Internet users as to Complainant’s sponsorship of, or affiliation with, the disputed domain name, resolving website, and products and services offered by the third-party links. Respondent attempts to commercially gain from this confusion through the receipt of click-through fees. The Panel finds that Respondent’s use of the <beaglient.com> domain names constitutes bad faith use and registration under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds that Policy ¶ 4(a)(iii) is met.
Complaint having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <beagilent.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: December 17, 2010
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