Agilent Technologies, Inc. v. Billy Milholland
Claim Number: FA1308001517433
Complainant is Agilent Technologies, Inc. (“Complainant”), represented by Janet Shih Hajek of Holland & Hart LLP, Colorado, USA. Respondent is Billy Milholland (“Respondent”), Arkansas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <agilents.com>, registered with eNom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 30, 2013; the National Arbitration Forum received payment on August 30, 2013.
On September 5, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <agilents.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 September 11, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 1, 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@agilents.com. Also on September 11, 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 October 2, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
i. There is no evidence that Respondent was commonly known by the disputed domain name or as “AGILENTS” prior to registration of the disputed domain name.
ii. The evidence shows that <agilents.com>, when typed into an Internet browser, does not resolve to an active website.
i. Respondent is using the disputed domain name in e-mail addresses, including but potentially not limited to “www@agilents.com,” “hr@agilents.com,” and “contactus@agilents.com,” to impersonate Complainant and Complainant’s top executive to carry out a phishing and advance fee fraud scam.
ii. Respondent is not using the disputed domain name for an active website with any content.
iii. Respondent also clearly had actual and constructive notice of Complainant’s prior trademark rights in the AGILENT marks due to Complainant’s prior and incontestable trademark registrations, worldwide use, and favorable media coverage.
B. Respondent has not submitted a Response to this case.
1. Respondent’s <agilents.com> domain name is confusingly similar to Complainant’s AGILENT mark.
2. Respondent does not have any rights or legitimate interests in the < <agilents.com> domain name.
3. Respondent registered or used the <agilents.com> domain name in bad faith.
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 argues that it uses its AGILENT trademark for technology services, measurement instruments and solutions, and for research and development products in the areas of chemical analysis, life sciences, diagnostics and genomics, and electronic measurement. Complainant contends that it is the owner of trademark registrations with the USPTO for the AGILENT mark (e.g., Reg. No. 2,461,406, registered June 19, 2001). See Exhibit 2. The Panel notes that Respondent appears to reside within the United States. Therefore, the Panel determines that Complainant’s registration of the AGILENT mark with the USPTO sufficiently proves its rights in the mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant asserts that the <agilents.com> domain name is confusingly similar to Complainant’s trademark because it fully incorporates Complainant’s AGILENT mark and merely appends the letter “s” at the end of “AGILENT” with the addition of the gTLD “.com.” The Panel finds that Respondent’s addition of the letter “s” to Complainant’s mark does not differentiate the disputed domain name from the mark under Policy ¶ 4(a)(i). See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel also finds that Respondent’s inclusion of a gTLD to Complainant’s mark is inconsequential to a Policy ¶ 4(a)(i) analysis. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Accordingly, the Panel concludes that Respondent’s <agilents.com> domain name is confusingly similar to Complainant’s AGILENT mark pursuant to Policy ¶ 4(a)(i).
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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that there is no evidence that Respondent was commonly known by the <agilents.com> domain name or as “AGILENTS” prior to registration of the disputed domain name. Complainant contends that based on the WHOIS registration information, Respondent is not known as “Agilents.” The Panel observes that the WHOIS information lists “Billy Milholland” as the registrant of the <agilents.com> domain name. See Exhibit 1. Complainant further argues that Respondent’s use of AGILENT or “AGILENTS” is not authorized or approved by Complainant. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel found 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. Thus, based on the WHOIS information and other evidence in the record, the Panel determines that Respondent is not commonly known by the <agilents.com> domain name under Policy ¶ 4(c)(ii).
Complainant claims that the evidence shows that <agilents.com>, when typed into an Internet browser, does not resolve to an active website. The Panel notes that Respondent’s disputed domain name resolves to a website stating “404. That’s an error. The requested URL / was not found on this server. That’s all we know.” See Exhibit 20. Prior panels have held that a respondent’s failure to make an active use of a disputed domain name does not constitute a bona fide offering of goods or services or a 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).”). Therefore, the Panel holds that Respondent’s failure to make an active use of the <agilents.com> domain name is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant asserts that Respondent is using the <agilents.com> domain name in e-mail addresses, including but potentially not limited to “www@agilents.com,” “hr@agilents.com,” and “contactus@agilents.com,” to carry out a phishing scam. The Panel observes that Respondent, through its e-mail addresses, has attempted to obtain personal information from potential job applicants such as their first and last names, address, gender, and mobile phone number. Id. In Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010), the panel found “that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” Accordingly, the Panel finds that Respondent’s use of the disputed domain name to phish for personal information proves that Respondent is not using the <agilents.com> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate or noncommercial fair use.
Registration and Use in Bad Faith
Complainant argues that Respondent is using the disputed domain name in e-mail addresses, including but potentially not limited to “www@agilents.com,” “hr@agilents.com,” and “contactus@agilents.com,” to impersonate Complainant. See Exhibits 21-25. The Panel notes that Respondent uses its email address to respond to job applicants, claiming to be the Chief Executive Officer of Complainant. Id. Complainant claims that it has produced replies to the said e-mails obtained from various third-party recipients which indicate that such recipients believed that they were communicating with Complainant when they were not. Id. The Panel notes that Respondent may be causing consumer confusion through its attempt to pass itself off as Complainant and may profit through consumer confusion. Therefore, the Panel determines that Respondent’s use of the <agilents.com> domain name to pass itself off as Complainant evidences that Respondent is using the domain name in bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Complainant argues that Respondent is using the disputed domain name in e-mail addresses, including but potentially not limited to “www@agilents.com,” “hr@agilents.com,” and “contactus@agilents.com,” to carry out a phishing and advance fee fraud scam. The Panel notes that Respondent, through its e-mail addresses, has attempted to obtain personal information from potential job applicants such as their first and last names, address, gender, and mobile phone number. Id. The Panel determines that Respondent’s use of the <agilents.com> domain name to phish information from Internet users evidences bad faith use and registration under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers).
Complainant contends that Respondent is not using the disputed domain name for an active website with any content. The Panel notes that Respondent’s <agilents.com> domain name resolves to a website stating “404. That’s an error. The requested URL / was not found on this server. That’s all we know.” See Exhibit 20. In Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007), the panel concluded that respondent’s failure to make active use of its domain name in the three months after its registration indicated that respondent registered the disputed domain name in bad faith. Therefore, the Panel holds that Respondent’s failure to make an active use of the disputed domain name evidences bad faith use and registration pursuant to Policy ¶ 4(a)(iii).
Complainant contends that Respondent also clearly had actual and constructive notice of Complainant’s prior trademark rights in the AGILENT marks due to Complainant’s prior and incontestable trademark registrations, worldwide use, and favorable media coverage. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to Complainant’s worldwide use of the AGILENT mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <agilents.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: October 11, 2013
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