Illumina, Inc. v. Melanie Taylor
Claim Number: FA1609001693464
Complainant is Illumina, Inc. (“Complainant”), represented by Julia Anne Matheson of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington D.C., United States. Respondent is Melanie Taylor (“Respondent”), California, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <illunima.com>, registered with 1&1 Internet SE.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 12, 2016; the Forum received payment on September 12, 2016.
On September 14, 2016, 1&1 Internet SE confirmed by e-mail to the Forum that the <illunima.com> domain name is registered with 1&1 Internet SE and that Respondent is the current registrant of the name. 1&1 Internet SE has verified that Respondent is bound by the 1&1 Internet SE 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 15, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 5, 2016 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@illunima.com. Also on September 15, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On October 11, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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" 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 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant is the global leader in genomics – an industry at the intersection of biology and technology. Complainant has registered the ILLUMINA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,471,539, registered July 24, 2001), which demonstrates Complainant’s rights in its mark. See Compl., at Attached Ex. 8. The <illunima.com> domain name is confusingly similar to Complainant’s mark as it merely transposes the letters “m” and “n” of Complainant’s mark and affixes the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the domain name, and Complainant has not authorized Respondent to use the ILLUMINA mark. Additionally, Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent’s domain resolves to an inactive website. Further, Respondent uses the domain name to send e-mails that impersonate Complainant in order to defraud Complainant and Complainant’s customers. See Compl., at Attached Ex. 9.
Respondent registered and is using the domain name in bad faith. First, Respondent’s use of the domain name to send e-mails that impersonate Complainant, and to phish for Complainant or Complainant’s customers’ personal or financial information, is evidence of bad faith registration and use. Second, Respondent has engaged in the tactic of typosquatting. Finally, given Complainant’s federal registrations of its ILLUMINA mark, the fame of the mark, and Complainant’s long-standing use of the mark, it is clear that Respondent had at least constructive knowledge of Complainant’s mark and rights therein when it registered the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is the global leader in genomics – an industry at the intersection of biology and technology.
2. Complainant has registered the ILLUMINA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,471,539, registered July 24, 2001).
3. Respondent registered the disputed domain name on August 10, 2016.
4. The domain resolves to an inactive website and Respondent uses it to send e-mails that impersonate Complainant in order to defraud Complainant and Complainant’s customers.
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(f), 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 (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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant is the global leader in genomics – an industry at the intersection of biology and technology. Complainant has registered the ILLUMINA mark with the USPTO (e.g., Reg. No. 2,471,539, registered July 24, 2001), which Complainant contends demonstrates its rights in the mark. See Compl., at Attached Ex. 8. The Panel finds that trademark registrations with the USPTO suffice to demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has demonstrated its rights in its mark pursuant to Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed <illunima.com>domain name is identical or confusingly similar to Complainant’s ILLUMINA mark. Complainant argues that the <illunima.com> domain name is confusingly similar to Complainant’s mark as it merely transposes the letters “m” and “n” of Complainant’s mark and affixes the gTLD “.com.” Panels have decided that these changes do not adequately distinguish a respondent’s domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Wyndham IP Corp. v. LaPorte Holdings, Inc., FA 373545 (Forum Jan. 17, 2005) (finding the <wynhdam.com> and <wyandham.com> domain names to be confusingly similar to the complainant’s WYNDHAM mark because the domain names merely transposed letters in the mark); see also Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). As such, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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 (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 (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ILLUMINA mark and to use it in its domain name, merely transposing the letters “m” and “n” of Complainant’s mark which does not detract from the confusing similarity that is clearly present;
(b) Respondent registered the disputed domain name on August 10, 2016;
(c) Respondent has caused the domain name to resolve to an inactive website and has used it to send e-mails that impersonate Complainant in order to defraud Complainant and Complainant’s customers;
(d) Complainant submits that Respondent engaged in the aforementioned activities without the permission or authority of Complainant and has adduced evidence to that effect which the Panel accepts;
(e) Complainant argues that Respondent has no rights or legitimate interests in the domain name. According to Complainant, Respondent is not commonly known by the domain name, and Complainant has not authorized Respondent to use the ILLUMINA mark. The Panel notes that the WHOIS information merely lists “Melanie Taylor” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration. The Panel notes Attached Exhibit 2 for additional WHOIS information. As such, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name);
(f) Complainant maintains that Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Complainant submits that Respondent’s domain resolves to an inactive website. The Panel notes that Complainant does not provide evidence to support this contention, although Complainant has verified the information in the Complaint. Panels have concluded that a respondent’s failure to make any active use of a domain name does not constitute 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). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (“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).”). As the Panel accepts Complainant’s verified contention, it finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii);
(g) Complainant submits that Respondent uses the domain name to send e-mails that impersonate Complainant in order to defraud Complainant and Complainant’s customers. See Compl., at Attached Ex. 9. Panels have held that a respondent lacks rights and legitimate interests in a domain name where the respondent uses an e-mail address associated with the domain name to impersonate a complainant. See Church Mutual Insurance Company v. Paul Looney, FA 1668317 (Forum May 17, 2016) (“Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the <churchrnutual.com> domain name. Respondent registered and uses the disputed domain name and an associated email account to impersonate Complainant and acquire personal or financial information from Complainant or Complainant’s customers.”). As such, the Panel finds that Respondent lacks rights and legitimate interests in the domain name.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, while Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances as it has done in the present case. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
Secondly, Complainant argues that Respondent’s use of the domain name to send e-mails that impersonate Complainant, and to phish for Complainant or Complainant’s customers’ personal or financial information, is evidence of bad faith registration and use. Panels have determined that a respondent’s use of a domain name to impersonate a complainant, and a respondent’s use of a domain name to phish for Internet users’ personal and/or financial information, can constitute bad faith registration and use under Policy ¶ 4(a)(iii). See Church Mutual Insurance Company v. Paul Looney, FA 1668317 (Forum May 17, 2016) (“Respondent is using the <churchrnutual.com> domain name in bad faith. Respondent registered and uses the disputed domain name and an associated email account to impersonate Complainant and acquire personal or financial information from Complainant or Complainant’s customers.”). Thus, the Panel concludes that Respondent registered and is using the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Thirdly, Complainant contends that Respondent has engaged in the tactic of typosquatting by transposing the letters “m” and “n” of its ILLUMINA mark. Panels have held that where a respondent’s domain name is merely a typosquatted version of a complainant’s mark, the respondent has acted in bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). As the Panel agrees with Complainant, it finds that Respondent has engaged in bad faith registration and use per Policy ¶ 4(a)(iii).
Fourthly, Complainant submits that, given Complainant’s federal registrations of its ILLUMINA mark, the fame of the mark, and Complainant’s long-standing use of the mark, it is clear that Respondent had at least constructive knowledge of Complainant’s mark and rights therein when it registered the domain name. While panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Fifthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <illunima.com> domain name using the ILLUMINA mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <illunima.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 12, 2016
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