Teleflex Incorporated v. Leisa Idalski
Claim Number: FA1806001794131
Complainant is Teleflex Incorporated (“Complainant”), represented by Kevin M. Bovard of Baker & Hostetler LLP, Pennsylvania, USA. Respondent is Leisa Idalski (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <teleflexs.com> and <teleflexsmedical.com>, registered with GoDaddy.com, LLC.
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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on June 27, 2018; the Forum received payment on June 27, 2018.
On Jun 29, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <teleflexs.com>, and <teleflexsmedical.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 July 3, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 23, 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@teleflexs.com, and postmaster@teleflexsmedical.com. Also on July 3, 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 28, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE
Multiple Domains
Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name-holder.” Although Complainant did not address this issue it did present evidence sufficient to support a finding that both of the domain names at issue in these proceedings (the “Domain Names”) are registered by the same person or entity. The WHOIS records submitted as Exhibits A and B to the Complaint show that the Domain Names are registered to the same person, “Leisa Idalski.” The mailing address listed for Ms. Idalski on both Exhibits is the same, as is the email address listed for her in both places. Finally, both Domain Names contain exactly the same misspelling of the TELEFLEX component in both Domain Names. On this evidence the Panel finds that both Domain Names are controlled by the same person or entity and will proceed as to both of them.
A. Complainant
Complainant is a global provider of medical technology products with revenues exceeding $2 billion annually. Complainant has rights in the TELEFLEX and TELEFLEX MEDICAL marks based upon its registration of the marks with multiple trademark agencies including the United States Patent and Trademark Office (“USPTO”) (e.g., TELEFLEX - Reg. No. 3,780,186, registered April 27, 2010) and China’s State Administration for Industry and Commerce (“SAIC”) (e.g., TELEFLEX MEDICAL - Reg. No. 4887800, registered Sept. 7, 2008). Respondent’s <teleflexs.com> and<teleflexsmedical.com> domain names (the “Domain Names” are identical or confusingly similar to Complainant’s TELEFLEX and TELEFLEX MEDICAL marks, as they incorporate the marks in their entirety, altering them only by adding the letter “s” after the “x” in Complainant’s marks and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Names.
Respondent is not commonly known by the Domain Names, nor has Complainant authorized
or licensed Respondent to use the TELEFLEX or TELEFLEX MEDICAL marks. Respondent’s
use of the Domain Names does not qualify as a bona fide offering of
goods or services or a legitimate noncommercial or fair use. The Domain Names
resolve to inactive web sites, and Respondent uses them in connection with an
email account which it uses to pass itself off as Complainant and fraudulently extract
funds from Complainant’s customers.
Respondent registered and is using the Domain Names in bad faith. Respondent is using the disputed domain names in an attempt to pass itself off as Complainant in furtherance of a phishing scheme. Further, Respondent engages in typosquatting by adding the letter “s” immediately after the “x” in both of Complainant’s marks. Finally, Respondent had actual and/or constructive knowledge of Complainant’s marks prior to registering the Domain Names.
B. Respondent
Respondent did not submit a Response in this proceeding.
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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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.”).
Respondent’s Domain Names are confusingly similar to the TELEFLEX and TELEFLEX MEDICAL marks, as they contain the marks in their entirety, altering them only by adding an “s” immediately following the “x” in Complainant’s marks and a gTLD. Adding a letter and a gTLD to a complainant’s mark does not distinguish the domain name from a complainant’s mark for the purposes of Policy ¶ 4(a)(i). Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’).
For the reasons discussed above, the Panel finds that the Domain Names are identical or confusingly similar to the TELEFLEX and TELEFLEX MEDICAL marks, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) it is not commonly known by the Domain Names, (ii) it is not affiliated with or authorized by Complainant to use Complainant’s mark in the Domain Names, and (iii) it is not using the Domain Names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because using a domain name to impersonate a complainant cannot constitute a bona fide offering of goods and services. These allegations are supported by competent evidence.
The WHOIS information submitted as Complaint Exhibits A and B identifies “Leisa Idalski” as the registrant of both Domain Names. This name bears no resemblance to either Domain Name. UDRP panels have consistently held that WHOIS information showing a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. 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).
Before filing the Complaint in this proceeding, Complainant’s counsel mailed a cease-and-desist letter to the named Respondent at the address listed for her in the WHOIS information. She responded promptly, saying that she was not associated in any way with either of the Domain Names. She further told counsel that she is not the owner of the letswinmore@hotmail.com email address listed for her in the WHOIS information for both Domain Names. See, Declaration of Gregory Smock, Esq. submitted with Complaint. On this evidence it appears that someone other than the named Respondent may have fraudulently registered the Domain Names in her name. Accordingly, all references to “Respondent” in these Findings and the Decision refer to the person who actually registered the Domain Names and not necessarily to Ms. Idalski.
Complainant states that Respondent is not affiliated with it in any way, and that it has never authorized Respondent to use its TELEFLEX or TELEFLEX MEDICAL mark in any domain name registration. See, Declaration of Gregory Smock, Esq. submitted with Complaint. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Additionally, the Domain Names resolve to web sites that have no substantive content. One contains the message, “Notice: This domain has been redirected” (See, Complaint Exhibit F), and the other states, “This web page has been parked for free” (See, Complaint Exhibit G). A respondent’s failure to make active use of a disputed domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name within the meaning of 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).”).
Further, Respondent has used the <teleflexs.com> Domain Name to create an email account from which it has sent messages to a number of Complainant’s customers announcing “new” wire transfer instructions, and directing them to make future invoice remittances for Complainant to bank accounts which are not owned by Complainant. This scheme resulted in the diversion of tens of thousands of dollars away from Complainant and its customers. See, Declaration of Gregory Smock, Esq. submitted with the Complaint. Respondent is thus using the Domain Names not in connection with an active web site but as part of a fraudulent email phishing scheme to defraud Complainant and it customers. A respondent’s use of a domain name to pass itself off as the complainant in order to defraud the complainant or third parties cannot confer rights or legitimate interests upon a respondent for the purposes of Policy ¶ 4(a)(ii). Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“Passing off as a complainant through e-mails is evidence that a respondent lacks rights and legitimate interests under Policy ¶¶ 4(c)(i) & (iii).”). Respondent is clearly engaging in this kind of fraudulent misconduct and cannot thereby acquire rights or legitimate interests in the Domain Names.
For the reasons set forth above, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product of service on your web site or location.
The evidence discussed above in connection with the rights or legitimate interests analysis to the effect that the Domain Names resolve to web sites with no substantive content is also evidence of bad faith registration and use. The Policy acknowledges that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and using a domain name for an inactive web site has often been held to be evidence of bad faith under the Policy. Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith), VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”), Wells Fargo & Co. v. WhoisGuard c/o WhoisGuard Protected, FA 1103650 (Forum December 13, 2007) (“The failure to make an active use of the disputed domain name also evidences bad faith registration and use under Policy ¶ 4(a)(iii)”).
Further, as discussed above, Respondent registered and uses the Domain Names in connection with an email phishing scheme designed fraudulently to divert invoice remittances due to Complainant to one or more bank accounts not owned by Complainant. See, Declaration of Gregory Smock, Esq. Complainant furnished a copy of a fraudulent email sent from an email address using the <teleflexs.com> Domain Name notifying the customer that Complainant was changing its banking accounts from the Bank of Ireland to Lloyds Bank Plc and instructing the customer to send all future payments to the new bank. See, Complaint Exhibit H. Respondent is using the relevant Domain Name to impersonate Complainant for fraudulent purposes and obviously created and registered the Domain Names in furtherance of this scheme. This is clear evidence of bad faith registration and use within the meaning of Policy ¶ 4(a)(iii). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use per Policy ¶ 4(b)(iv)), Emdeon Business Services, LLC v. HR Emdeon Careers, FA1507001629459 (Forum August 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).
Additionally, it is clear from Complainant’s world-wide presence in the medical technology industry and the degree to which Respondent’s Domain Names mimic Complainant’s marks that, when it registered the Domain Names (February 25, 2018 for <teleflexs.com> and March 12, 2018 for <teleflexsmedical.com>) (See, Complaint Exhibits A and B), Respondent had full knowledge of Complainants’ marks. The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Respondent clearly knew of Complainant and its marks when it registered the Domain Names, and this is compelling evidence of bad faith registration and use.
Finally, it is evident that Respondent registered the Domain Names because they contain Complainant’s marks with a carefully-camouflaged misspelling that would likely, and indeed did, escape notice among the addressees of its fraudulent emails. This practice is known as “typosquatting” and has, in and of itself been held to be evidence of bad faith registration and use. Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Names in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <teleflexs.com> and <teleflexsmedical.com> Domain Names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: July 31, 2018
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