Agilent Technologies, Inc. v. Vincent Muscat
Claim Number: FA1806001791505
Complainant is Agilent Technologies, Inc. (“Complainant”), represented by Jeffrey Larson of Holland & Hart LLP, Colorado, USA. Respondent is Vincent Muscat (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <agiilentt.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 June 13, 2018; the Forum received payment on June 13, 2018.
On June 18, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <agiilentt.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. 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 June 21, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 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@agiilentt.com. Also on June 21, 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 July 13, 2018, 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 is a world leader in life sciences, diagnostics and applied chemical markets. Complainant has rights in the AGILENT mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,461,406, registered Jun. 19, 2001). See Compl. Ex. 2. Respondent’s <agiilentt.com> domain name is confusingly similar to Complainant’s AGILENT mark as Respondent intentionally misspells the mark (adding the letters “i” and “t”), while adding a “.com” generic top-level domain (“gTLD”) to the mark.
ii) Respondent has no rights or legitimate interests in the <agiilentt.com> domain name. Respondent is not licensed or authorized to use Complainant’s AGILENT mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent attempts to impersonate Complainant in furtherance of a phishing scheme.
iii) Respondent registered and uses the <agiilentt.com> domain name in bad faith. Respondent demonstrates a pattern of bad faith registration by registering domain names incorporating third party marks. Additionally, Respondent attempts to pass off as Complainant in furtherance of a phishing scheme intended to defraud Complainant’s customers. Finally, Respondent registered the disputed domain name with false or misleading WHOIS information.
B. Respondent
Respondent did not submit a response.
1. Respondent registered the <agiilentt.com> domain name on March 6, 2018.
2. Complainant has established its rights in the AGILENT mark through the USPTO registration (e.g., Reg. No. 2,461,406, registered Jun. 19, 2001).
3. There exist emails sent from an email address associated with the disputed domain name.
4. A reverse WHOIS search identifies Respondent as the registration for more than eight hundred (800) domain names.
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.”).
Complainant claims to have rights in the AGILENT mark through its USPTO registrations. Registering a mark with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Complainant provides a copy of its USPTO registration for the AGILENT mark (e.g., Reg. No. 2,461,406, registered Jun. 19, 2001). See Compl. Ex. 2. Therefore, the Panel finds Complainant sufficiently established rights in the AGILENT mark per Policy ¶ 4(a)(i).
Next, Complainant contends Respondent’s <agiilentt.com> domain name is confusingly similar to Complainant’s AGILENT mark. Specifically, Complainant argues Respondent intentionally misspells the mark and adds a gTLD. Adding letters and/or a gTLD to a complainant’s mark does not mitigate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum Aug. 4, 2015) (finding, “The relevant comparison then resolves to the trademark, TWITCH, with the term, ‘titch,’ which, as can be readily seen, merely removes the letter ‘w’ from the trademark. In spite of that omission the compared integers remain visually and aurally very similar and so Panel finds them to be confusingly similar for the purposes of the Policy.”); see also Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“[O]f course it is well established in prior UDRP cases that the addition of a ‘.com’ suffix is irrelevant when determining if a disputed domain name is identical or confusingly similar to a trademark.”). Complainant argues Respondent adds the letters “i” and “t” and a “.com” gTLD to the AGILENT mark. Therefore, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s AGILENT mark per 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant asserts Respondent has no rights or legitimate interests in the <agiilentt.com> domain name. Specifically, Complainant claims Respondent is not authorized or licensed to use Complainant’s AGILENT mark and is not commonly known by the disputed domain name. Where a response is lacking, relevant WHOIS may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (concluding that the respondent was not commonly known by the <amazondevice.org>, <amazondevices.org> and <buyamazondevices.com> domain names under Policy ¶ 4(c)(ii), as the pertinent WHOIS information identified “Timothy Mays,” “Linda Haley,” and “Edith Barberdi” as registrants of the disputed domain names). Complainant provides a copy of the WHOIS information which identifies Respondent as “Vincent Muscat.” See Compl. Ex. 1. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant contends Respondent is not using the <agiilentt.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Complainant argues Respondent uses the disputed domain name to pass off as Complainant in furtherance of a phishing scheme. Using a disputed domain name to pass off and phish for users’ personal information is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under 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.”). Complainant provides copies of emails sent from an email address associated with the disputed domain name. See Compl. Ex. 6. Complainant argues these email exchanges demonstrate Respondent’s attempt to impersonate Complainant in order to procure customers’ sensitive information. Id. Therefore, the Panel agrees with Complainant and finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
Complainant claims Respondent registered and uses the <agiilentt.com> domain name in bad faith. Initially, Complainant argues Respondent has engaged in a pattern of bad faith registration when it registered domain names incorporating third party marks. Registration of domain names which incorporate famous, third party marks may indicate bad faith under Policy ¶ 4(b)(ii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)). Complainant provides a reverse WHOIS search which identifies Respondent as the registration for more than eight hundred (800) domain names including: <dyysoon.com>, <exxxxxonmobil.com>, and <rollz-royce.com>. See Compl. Ex. 7. Therefore, the Panel finds Respondent engages in a pattern of bad faith registration per Policy ¶ 4(b)(ii).
Finally, Complainant claims Respondent’s use of the <agiilentt.com> domain name to pass off via a phishing email scheme is evidence of bad faith. Use of a disputed domain name to pass off in furtherance of a phishing scheme may indicate bad faith under Policy ¶ 4(a)(iii). See Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (Forum July 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”). Complainant provides a copy of an email exchange with an email address associated with the disputed domain name. See Compl. Ex. 6. Therefore, the Panel finds Respondent did engage in phishing and finds bad faith pursuant to 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 <agiilentt.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: July 17, 2018
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