Illumina, Inc. v. EBI / EBI STEELS PLC
Claim Number: FA1705001730490
Complainant is Illumina, Inc. (“Complainant”), represented by Christopher P. Foley of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., District of Columbia, U.S.A. Respondent is EBI / EBI STEELS PLC (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <illuminaa.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 5, 2017; the Forum received payment on May 5, 2017.
On May 8, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <illuminaa.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 May 8, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 2017 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@illuminaa.com. Also on May 8, 2017, 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 June 5, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 domain name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant uses the ILLUMINA marks in connection with the creation and sale of genomic technology. Complainant registered the ILLUMINA marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,471,539, registered Jul. 24, 2001), which demonstrates its rights in the marks. Respondent’s <illuminaa.com> is confusingly similar to Complainant’s marks because it incorporates the ILLUMINA marks in their entirety, adding only the letter “a” and the generic top-level domain (“gTLD”) “.com,” which does not meaningfully distinguish the domain name from Complainant’s registered marks.
ii) Respondent has no rights or legitimate interests in <illuminaa.com>. Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the ILLUMINA marks for any purpose. Respondent also fails to use the disputed domain name in connection with any bona fide offering of goods or services because it currently resolves to an inactive website. Further, Respondent does not engage in any legitimate noncommercial or fair use of the resolving site. Instead, Respondent has engaged in typosquatting designed to facilitate impersonation of the Complainant, in order to financially profit by way of a phishing scheme.
iii) Respondent registered and continues to use <illuminaa.com> in bad faith. Respondent’s use of the disputed domain involves attracting Internet users to its site using Complainant’s notoriety, so that it may impersonate Complainant through emails to engage in phishing, allowing Respondent to financially profit. Further Respondent uses typosquatting in order to capitalize on Internet users misspellings and accidental keystrokes. Finally, Respondent should have had constructive notice of Complainant’s rights in the ILLUMINA marks because of their USPTO registration, and must have had actual or constructive notice of these rights because of the widespread notoriety of the ILLUMINA marks and Respondent’s carefully designed phishing scheme.
B. Respondent
Respondent did not submit a response in this proceeding. The Panel notes that Respondent registered the <illuminaa.com> on April 12, 2017.
Complainant established that it had rights in the mark contained in the disputed domain name. The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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(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 prong of Policy ¶ 4(a)(i) requires that a complainant demonstrate its rights in a trademark. Complainant claims to have registered the ILLUMINA marks—used in the creation and sale of genomic technology—with the USPTO as early as 2001 (e.g., Reg. No. 2,471,539, registered July 24, 2001), which it contends demonstrates its longstanding rights in the marks. Registration of a mark with the USPTO sufficiently establishes the required rights in a mark for purposes of the Policy. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Accordingly, the Panel concludes that Complainant has established its rights in or to the ILLUMINA marks under Policy ¶ 4(a)(i).
The second component of Policy ¶ 4(a)(i) requires that complainants demonstrate that the disputed domain name is identical or confusingly similar to the mark or marks at issue. Here, Complainant argues that the disputed domain name is confusingly similar to its ILLUMINA marks because it is composed entirely of the marks, with two minor additions: a second letter “a,” and a “.com” gTLD. Neither of these, Complainant contends, sufficiently distinguishes the disputed domain name from its ILLUMINA marks. The addition of single letters fails to sufficiently distinguish domain names from registered marks. See Google, Inc. v. DktBot.org, FA 286993 (Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”). Further, the addition of the “.com” gTLD is insufficient to preclude a finding of confusing similarity. See, e.g., AOL Inc. v. Morgan, FA 1349260 (Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark). Therefore, this Panel finds that the additions made to Complainant’s ILLUMINA marks in the disputed domain name do not serve to differentiate the two for the purposes of 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 (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.”).
Complainant argues that Respondent has no rights or legitimate interests in the <illuminaa.com> domain name as required by Policy ¶ 4(a)(ii). In addition to asserting that it has neither authorized nor licensed Respondent use of the ILLUMINA marks, Complainant contends that Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii). When a respondent fails to submit a response, Panels may look to the WHOIS records to establish this lack of affiliation between a registrant and a domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Here, the Panel sees that the WHOIS information concerning <illuminaa.com> identifies “EBI / EBI STEELS PLC” as the registrant, which Complainant argues provides no evidence that Respondent is commonly known by the domain name. As such, the Panel concludes that Respondent is not commonly known by, and thus lacks rights and legitimate interest in, the <illuminaa.com> domain name pursuant to Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent fails to make either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name through its inactive holding of the resolving site. Inactively holding a confusingly similar domain name can evince a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. 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).”). Complainant provides a screenshot of the landing page for the disputed domain name, which displays the message “This site can’t be reached.” Further, Complainant asserts, Respondent uses the inactive domain name to send emails designed to impersonate Complainant. Passing off as a complainant by using a confusingly similar domain name constitutes neither a bona fide offering nor noncommercial use of any kind. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). Therefore, this Panel agrees that Complainant sufficiently made its prima facie showing against Respondent under Policy ¶ 4(c)(i) and (iii).
Even further, argues that Respondent’s attempted ‘passing off’ is part of a deliberately crafted phishing scheme intended to defraud Complainant’s customers and generate financial profits for Respondent. Complainant alleges that this scheme allows Respondent to fraudulently obtain sensitive information from Complainant and its customers, which can evince a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See generally Juno Online Servs., Inc. v. Nelson, FA 241972 (Forum Mar. 29, 2004) (“‘Phishing’ involves the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit cards, passwords, social security numbers and other personal information to the ‘phishers’ who intend to use such information for fraudulent purposes.”). Panels have indicated that complainants can use phishing as additional evidence of a respondent’s lack of interest in a disputed domain name. Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretenses. The disputed domain name is being used to cause the recipients of these emails to mistakenly believe Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”). Complainant provides screenshots of email chains between Respondent and other Internet users to evince this assertion. As such, this Panel concludes that Respondent’s use of <illuminaa.com> is illegitimate and unfair for purposes of Policy ¶ 4(a)(ii).
Finally, Complainant contends that Respondent’s simple addition of the letter “a” to the ILLUMINA marks constitutes typosquatting. Typosquatting can indicate a lack of rights and legitimate interests in a domain name on the part of a respondent. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Complainant also argues that this alleged typosquatting was committed in furtherance of Respondent’s phishing scheme, confirming Respondent’s lack of rights or legitimate interest in <illuminaa.com>. Therefore, this Panel determines that Complainant has met its burden of proof under Policy ¶ 4(a)(ii).
Complainant makes one prominent assertion that falls within the articulated provisions of Policy ¶ 4(b): that Respondent registered and uses the disputed domain name to attract Internet users for commercial gain of the kind articulated in Policy ¶ 4(b)(iv). Complainant alleges that this opportunistic use—made possible by the widespread notoriety of the ILLUMINA marks—is clear evidence of bad faith on the part of Respondent. Respondent, Complainant contends, uses <illuminaa.com> to impersonate Complainant in order to commercially benefit from the goodwill associated with the ILLUMINA marks. Such assertions can evince bad faith use and registration under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). As noted previously, Complainant provides screenshots to demonstrate Respondent’s apparent phishing scheme for commercial benefit. Therefore, the Panel agrees with Complainant and finds that Respondent used Complainant’s marks in order to commercially benefit in bad faith.
In analyzing bad faith, the Panel may also look beyond the enumerated parameters of Policy ¶ 4(b) to the totality of the circumstances surrounding a particular dispute. 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”). In this proceeding, Complainant argues that Respondent engages in a phishing scheme designed to defraud complainant’s customers. Using a confusingly similar domain name to phish for personal or financial information can provide evidence of bad faith registration and use within the meaning of Policy ¶ 4(a)(iii). See Emdeon Business Services, LLC v. HR Emdeon Careers, FA1507001629459 (Forum Aug. 14, 2015) (finding that the respondent had engaged in an email phishing scheme indicating bad faith under Policy ¶ 4(a)(iii), where respondent was coordinating the disputed domain name to send emails to Internet users and advising them that they had been selected for a job interview with the complainant and was persuading the users to disclose personal information in the process). Respondent presumably intends to—or actually does—profit from this phishing scheme, as shown by a chain of emails provided by Complainant. Thus, the Panel concludes that Complainant sufficiently alleged Respondent’s bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant further asserts that Respondent’s typosquatting—designed to further the aforementioned phishing scheme—provides additional confirmation of Respondent’s bad faith within the meaning of Policy ¶ 4(a)(iii). Typosquatting of this variety can constitute bad faith registration and use. See Homer TLC, Inc. v. Artem Ponomarev, FA1506001623825 (Forum July 20, 2015) (“Finally, under this head of the Policy, it is evident that the <homededpot.com> domain name is an instance of typosquatting, which is the deliberate misspelling of the mark of another in a domain name, done to take advantage of common typing errors made by Internet users in entering into a web browser the name of an enterprise with which they would like to do business online. Typosquatting is independent evidence of bad faith in the registration and use of a domain name.”). Accordingly, this Panel agrees and finds that Respondent’s alleged typosquatting qualifies as bad faith as defined in Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent registered the disputed domain name despite both actual and constructive notice of Complainant’s rights in the ILLUMINA marks, which provides clear evidence of bad faith. Although Panels have held that constructive notice alone is insufficient for a finding of bad faith, this Panel finds that Complainant’s evidence of actual notice sufficiently constitutes bad faith registration and use of the <illuminaa.com> domain name pursuant to Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith). Complainant argues that the ILLUMINA marks’ widespread notoriety—and, more, Respondent’s specific intent to make Complainant’s customers the target of a phishing scheme—evidences actual notice to Respondent of Complainant’s rights in the marks, as well as that Complainant’s extensive registration of the marks with the USPTO constitutes constructive notice of its rights therein. Therefore, the Panel infers that Respondent had actual knowledge of Complainant’s rights in the ILLUMINA marks and registered <illuminaa.com> in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <illuminaa.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: June 8, 2017
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