Hologic, Inc. v. MIREYA ANDRADE
Claim Number: FA1802001771716
Complainant is Hologic, Inc. (“Complainant”), represented by Andrea J. Mealey of Fisher Broyles LLP, Massachusetts, USA. Respondent is MIREYA ANDRADE (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hologiccareers.org>, registered with eNom, LLC.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 13, 2018; the Forum received payment on February 13, 2018.
On February 14, 2018, eNom, LLC confirmed by e-mail to the Forum that the <hologiccareers.org> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, LLC 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 20, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 12, 2018 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@hologiccareers.org. Also on February 20, 2018, 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 March 16, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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
Complainant states that it is a medical technology company, primarily focused on improving women’s health and well-being through early detection and treatment, with its core business units focused on diagnostics, breast health, gynecological surgical, skeletal health, and medical aesthetics. Complainant has rights in the HOLOGIC mark through its trademark registration in the United States in 2010.
Complainant alleges that the disputed domain name is virtually identical to Complainant’s HOLOGIC mark as Respondent merely adds a generic term “careers” and a “.org” generic top level domain (“gTLD”) to Complainant’s mark. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name as Respondent is not authorized or licensed to use Complainant’s HOLOGIC mark and Respondent is not commonly known by the disputed domain name. Additionally, Respondent attempts to pass off as Complainant through an email phishing scheme and this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Furthermore, Respondent has no rights or legitimate interests in the disputed domain name as Respondent is inactively holding the disputed domain name. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent attempts to mislead users through an email phishing scheme and impersonate Complainant at the disputed domain name and this demonstrates bad faith registration and use. Respondent employed a privacy service to shield its identity and this is indicative of bad faith registration and use. Additionally, Respondent is inactively holding the disputed domain name and this further indicates bad faith registration and use. Furthermore, Respondent had actual knowledge of Complainant’ rights in the HOLOGIC mark at the time Respondent registered the disputed domain name and this constitutes bad faith registration and use. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark HOLOGIC with rights dating back to 2010.
The disputed domain name was registered in 2018.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
The disputed domain name was used to send an email impersonating one of Complainant’s employees. Respondent knew of Complainant’s mark when it registered the disputed domain name.
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 disputed domain name is confusingly similar to the HOLOGIC mark as Respondent merely adds the generic term “careers” and a gTLD to the mark. Such changes to a complainant’s mark are insufficient to negate any confusing similarity between a disputed domain name and the mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s HOLOGIC mark per Policy ¶ 4(a)(i).
Respondent is not authorized or licensed to use Complainant’s HOLOGIC mark. Further, Respondent is not commonly known by the disputed domain name: in the event a respondent fails to submit a response, panels have used WHOIS information to determine whether a respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”). In the instant case, WHOIS information for the disputed domain name identifies Respondent as “MIREYA ANDRADE.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Further, Respondent is not using the disputed domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use as Respondent operates an email phishing scheme through its disputed domain name. Specifically, Respondent impersonated an employee of Complainant and sent an email to a prospective employee, concerning employment opportunities at Complainant’s business. Passing off as a complainant through emails to run a phishing scheme is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name per Policy ¶¶ 4(c)(i) and (iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”); see also Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Thus, the Panel finds that Respondent’s attempts to pass off as Complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name per Policy ¶¶ 4(c)(i) and (iii). And the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent misleads users seeking employment as it uses the disputed domain name for an email phishing scheme to pass off as Complainant. Email phishing to pass off as a complainant may be indicative of bad faith registration and use per Policy ¶ 4(a)(iii). See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum Aug. 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)). Thus, the Panel finds that Respondent’s attempts to phish for users’ information via emails demonstrates bad faith registration and use per Policy ¶ 4(a)(iii).
Furthermore, Respondent had actual knowledge of Complainant rights in the HOLOGIC mark at the time Respondent registered the disputed domain name and this also constitutes bad faith registration and use. While constructive notice is generally regarded as insufficient to support a finding of bad faith, actual notice of Complainant's mark at the time of registration is indicative of bad faith per 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); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration"). Here, Complainant’s use of the HOLOGIC mark predates Respondent’s registration of the disputed domain name and Respondent’s use of the mark in connection to an email phishing scheme demonstrates Respondent knew of Complainant’s rights in the HOLOGIC mark. Therefore, the Panel finds that Respondent had actual notice of Complainant’s rights in the HOLOGIC mark at the time of registration and this constitutes bad faith registration and use per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hologiccareers.org> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: March 17, 2018
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