Agilent Technologies, Inc. v. NET4INDIA NET4INDIA / Net4India
Claim Number: FA1301001482933
Complainant is Agilent Technologies, Inc. (“Complainant”), represented by Janet Shih Hajek of Holland & Hart LLP, Colorado, USA. Respondent is NET4INDIA NET4INDIA / Net4India (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <agilentlogic.com>, registered with Net 4 India 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 National Arbitration Forum electronically on January 30, 2013; the National Arbitration Forum received payment on January 30, 2013.
On Febuary 4, 2013, Net 4 India Limited confirmed by e-mail to the National Arbitration Forum that the <agilentlogic.com> domain name is registered with Net 4 India Limited and that Respondent is the current registrant of the name. Net 4 India Limited has verified that Respondent is bound by the Net 4 India 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 February 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 2013 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@agilentlogic.com. Also on February 4, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 6, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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 Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i): Complainant’s rights in the mark and the confusing similarity of the domain name.
Policy ¶ 4(a)(ii): Respondent lacks rights and legitimate interests in the domain name.
Policy ¶ 4(a)(iii): Respondent has registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Agilent Technologies, Inc. who list its address as Santa Clara, CA USA. Complainant owns numerous domestic and international registrations for goods and services under AGILENT as well as related marks in the AGILENT family of marks. Complainant first began use of the AGILENT mark in 1999 for technology services and has consistently used the mark for those services and related offerings ever since that time. Complainant also maintains a web presence at <agilent.com>.
Respondent is NET4INDIA NET4INDIA/Net4India who list its address as Noida, Utter Pradesh, India. Respondent’s registrar list its address as Safdarjung Enclave, India. Respondent registered the <agilentlogic.com> domain name on March 3, 2012.
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(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.”).
Complainant contends that it owns numerous trademark registrations for the famous AGILENT mark, including registrations with the USPTO (e.g., Reg. No. 2,461,406 registered Jun. 19, 2001) and registrations with the ITMR (e.g., Reg. No. 1,240,704 registered Sept. 30, 2003). Complainant asserts that it uses the mark for its logic analysis systems and computer software. The Panel agrees that evidence of registration in Respondent’s country of operations is sufficient to establish Complainant’s rights in the AGILENT mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Complainant further argues that Respondent’s <agilentlogic.com> domain name is confusingly similar to Complainant’s mark. Complainant asserts that Respondent has merely added the term “logic,” a term Complainant uses to market and describe its computer hardware products. Complainant claims that the addition of the gTLD “.com” is irrelevant. The Panel agrees that the addition of a gTLD is meaningless in a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel also agrees that the term “logic” enhances the confusing similarity of the domain name because that term is descriptive of a variety of products sold by Complainant under the AGILENT mark. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Therefore the Panel finds that the <agilentlogic.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has met this burden.
Complainant avers that Respondent is not commonly known by the <agilentlogic.com> domain name. Complainant’s legal counsel alleges to have discovered that the disputed domain name was registered by an individual named “Rakes Wadekar” of the “Opis Corporation” in India. Upon further investigation, Complainant believes that one “Rajesh Patil,” an individual who has e-mailed Complainant regarding this dispute, is involved with Respondent. Complainant notes that Rajesh Patil was a contractor for Complainant during the time period in which this domain name was registered. Complainant contends that the domain name’s WHOIS information as it now reads has been masked, but nonetheless it still does not show that Respondent is commonly known by the name. The Panel notes that the WHOIS information currently lists “NET4INDIA NET4INDIA / Net4India” as the registrant of the domain name. The Panel finds that there is nothing to show that Respondent is commonly known by the <agilentlogic.com> domain name under Policy ¶ 4(c)(i). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant contends that Respondent has made neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the <agilentlogic.com> domain name. Complainant argues that Respondent has, since contact with Complainant’s attorney, turned the domain name’s resolving website into an inactive website. The Panel notes that the evidence provided indicates that prior to Respondent making the website inactive, the disputed domain name resolved to a website under the “Agilent Logic” masthead which purported to provided similar, if not identical, products and services as Complainant. See Complainant’s Exs. M–N. Previous panels have concluded that there is no bona fide offering in a respondent’s decision to use a confusingly similar domain name to solicit products or services that mimic those solicited by the complainant in its business. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel finds that Respondent’s use of the <agilentlogic.com> domain name in hosting a website dedicated to soliciting computer products and services that compete with Complainant and its AGILENT mark constitutes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant also argues that the <agilentlogic.com> domain names current use—resolving to an undeveloped, blank website, cannot be a bona fide offering of goods and services either. The Panel notes that there is correspondence between the parties dated October 22, 2012 in which an agent of Respondent claims that the website is inactive. The Panel finds that Respondent’s decision to maintain absolutely no content on the disputed domain name cannot constitute a Policy ¶ 4(c)(i) bona fide offering of goods of services, nor is an inactive use a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark 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 of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant contends that Respondent was diverting Internet users by confusion in bad faith. Complainant believes that Respondent used the domain name in part to impersonate Complainant in order to profit by sending Internet users to a commercial website that competes with Complainant. The Panel again notes that the <agilentlogic.com> domain name appears to have been used to promote its own software and computer hardware business. See Complainant’s Exs. M–N. Previous panels have concluded that bad faith use and registration is apparent when a respondent registers a domain name encompassing a complainant’s mark, and proceeds to use the domain name to host a website that mimics the services provided by complainant under its mark. See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness). The Panel finds that Respondent’s <agilentlogic.com> domain name was registered and used in bad faith under Policy ¶ 4(b)(iv).
Complainant also argues that Respondent’s decision to remove the content of the disputed domain name’s resolving content following e-mail correspondence between the parties illustrates Respondent’s bad faith use and registration. The Panel again notes that e-mail correspondence between the parties seems to verify that Respondent knew it had made the website inactive. See Complainant’s Ex. Q. The Panel finds that Respondent’s Policy ¶ 4(a)(iii) bad faith use and registration may be inferred from Respondent’s decision to use the domain name to host an inactive website. See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because 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 <agilentlogic.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: March 20, 2013
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