Welch Allyn Inc. v. Jacobs Robbinson
Claim Number: FA1409001581998
Complainant is Welch Allyn Inc. (“Complainant”), represented by Stina Pilotti of CSC Digital Brand Services, Sweden. Respondent is Jacobs Robbinson (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <welchallyn.us.com>, registered with NameCheap, Inc..
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 26, 2014; the National Arbitration Forum received payment on September 26, 2014.
On October 10, 2014, NameCheap, Inc. confirmed by e-mail to the National Arbitration Forum that the <welchallyn.us.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes arising from third level domains registered in CentralNic TLD combinations brought by third parties in accordance with CentralNic’s Domain Name Dispute Resolution Policy (the “Policy”). The Complainant asserts that a mediation was attempted via CentralNic’s mediation program and was unsuccessful at resolving the dispute.
On October 15, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 4, 2014, 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@welchallyn.us.com. Also on October 15, 2014, 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 November 10, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 the CentralNic 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 CentralNic Policy, CentralNic 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
Complainant is the owner of the WELCH ALLYN mark in affiliation with its medical diagnostic device company. Complainant is a leading global manufacturer of physical examination instruments and accessories, as well as EMR-connected vital signs and cardiac monitoring solutions. Complainant owns numerous registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,115,908 registered November 25, 1997) and with international offices for the WELCH ALLYN mark. Respondent’s <welchallyn.us.com> domain name is confusingly similar to Complainant’s WELCH ALLYN mark. Respondent displays Complainant’s entire WELCH ALLYN mark with the addition of the second level domain (“SLD”) “.us” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <welchallyn.us.com> domain name. Respondent is not commonly known by the disputed domain name. There is no evidence on the record or otherwise to indicate that Respondent has a claim of right to the disputed domain name or the WELCH ALLYN mark. Additionally, Complainant has not given Respondent permission to use Complainant’s mark. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent’s disputed domain name resolves to a website that features no content and merely an empty page. Respondent’s resolving website simply features the message, “Network Error (dns_server_failure).” Respondent uses the disputed domain name to set up an e-mail address “[redacted]@welchallyn.us.com” which Respondent uses to impersonate Complainant. Respondent does this by using the confusing e-mail address and purports to sell goods and services of Complainant’s.
Respondent registered or is using the <welchallyn.us.com> domain name in bad faith. Respondent is passively holding the disputed domain name in bad faith. Respondent’s use of the disputed domain name in affiliation with the corresponding e-mail address, disrupts Complainant’s business when Internet users are confused and directed away from Complainant’s legitimate business by Respondent’s phishing scheme. Respondent uses the disputed domain name to create an e-mail address that Respondent uses for a phishing scheme aimed at unsuspecting Internet users. Respondent uses the e-mail address to attempt to appear as Complainant and pass himself off as a legitimate employee of Complainant’s business. Respondent had actual knowledge of Complainant and Complainant’s mark when Respondent registered the disputed domain name. Respondent registered the disputed domain in 2014, which was much later than Complainant’s first registration for the WELCH ALLYN mark in 1962.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Welch Allyn Inc., is the owner of the WELCH ALLYN mark in affiliation with its medical diagnostic device company. Complainant is a leading global manufacturer of physical examination instruments and accessories, as well as EMR-connected vital signs and cardiac monitoring solutions. Complainant owns numerous registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,115,908 registered November 25, 1997) and with international offices for the WELCH ALLYN mark.
Respondent, Jacobs Robbinson, registered the <welchallyn.us.com> domain name on July 15, 2014. Respondent uses the disputed domain name to create an e-mail address that Respondent uses for a phishing scheme aimed at unsuspecting Internet users. Respondent uses the e-mail address to attempt to appear as Complainant and pass himself off as a legitimate employee of Complainant’s business.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the CDRP Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 has rights in the WELCH ALLYN mark under Policy ¶ 4(a)(i) through numerous registrations with the USPTO and with international offices. See United Way of America v. Alex Zingaus, FA 1036202 (NAF Aug. 30, 2007) (“Panels have long recognized Complainant’s registration of a mark with a trademark authority is sufficient to confer rights in the mark pursuant to [UDRP] Policy ¶ 4(a)(i)”). It is irrelevant whether complainant has registered a given mark in the country of respondent’s residence. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
CentralNic sells third level domains in its “.us.com” TLD combination. Respondent’s <welchallyn.us.com> domain name is confusingly similar to Complainant’s WELCH ALLYN mark under Policy ¶ 4(a)(i). Respondent registered Complainant’s entire WELCH ALLYN mark with a combination second-level domain (“SLD”) “.us” and the generic top-level domain (“gTLD”) “.com.” Respondent’s addition of “.us.com” and the elimination of the space between the words are insufficient variations to distinguish a domain name from a given mark under 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 CDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Respondent has no rights or legitimate interests in the <welchallyn.us.com> domain name under Policy ¶ 4(c)(ii). Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). There is no evidence to indicate that Respondent has a claim of right to the disputed domain name or the WELCH ALLYN mark. Additionally, Complainant has not given Respondent permission to use Complainant’s mark. The WHOIS information for the disputed domain name lists “Jacobs Robbinson” as registrant. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (the respondent was not commonly known by the disputed domain names where the WHOIS information and all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <welchallyn.us.com> domain name. Respondent’s disputed domain name resolves to a website that features no content and merely an empty page. Respondent’s resolving website simply features the message, “Network Error (dns_server_failure).” Respondent’s failure to make and active use of the disputed domain name does not amount to rights or legitimate interests in the <welchallyn.us.com> domain name under Policy ¶¶ 4(c)(i) or (iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant claims that Respondent uses the disputed domain name to set up an e-mail address “[redacted]@welchallyn.us.com” which Respondent uses to impersonate Complainant. Respondent does this by using the confusing e-mail address and purports to sell goods and services of Complainant’s. Evidence of a phishing scheme is strong evidence that respondent has no rights or legitimate interests in the disputed domain name. See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (defining “phishing” as “the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit card numbers, passwords, social security numbers and other personal information that may be used for fraudulent purposes”); see also Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds 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).”). Respondent’s use of the <welchallyn.us.com> domain name to generate fraudulent e-mail for the purpose of attaining personal information is phishing and thus does not establish rights or a legitimate interest in the disputed domain name under Policy ¶ 4(a)(ii).
Respondent’s use of the <welchallyn.us.com> domain name in affiliation with the corresponding e-mail address, disrupts Complainant’s business when Internet users are confused and directed away from Complainant’s legitimate business by Respondent’s phishing scheme. Therefore, Respondent registered the inactive <welchallyn.us.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Respondent registered or is using the <welchallyn.us.com> domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent is not making an active use of the domain name. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (merely holding an infringing domain name without active use can constitute use in bad faith).
Respondent uses the disputed domain name to create an e-mail address that Respondent uses for a phishing scheme. Respondent created the “[redacted]@welchallyn.us.com” e-mail address which Respondent uses to impersonate Complainant for the purpose of collecting personal information such as addresses, phone numbers, e-mail addresses, and Net 10 terms. Phishing schemes are characterized by e-mails, pop-ups or advertisements used to trick Internet users into disclosing their personal information. See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (defining “phishing” as “a practice that is intended to defraud consumers into revealing personal and proprietary information”). Here, Respondent uses the disputed domain name to facilitate its phishing scheme through fraudulent e-mails constitutes bad faith 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).
Respondent had actual knowledge of Complainant’s rights in the WELCH ALLYN mark when Respondent registered the <welchallyn.us.com> domain name. Respondent’s disputed domain name contains Complainant’s mark in its entirety and is being used in an e-mail address to attempt to pass itself of as Complainant. As Respondent registered the <welchallyn.us.com> domain name with actual knowledge of Complainant’s rights, Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii). See Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant's rights in the mark, and therefore registered the disputed domain name in bad faith, since Complainant's magazine covers an industry towards which Respondent's services are marketed).
Complainant having established all three elements required under the CentralNic Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <welchallyn.us.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 24, 2014
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