Teleflex Incorporated v. Michael Schneide / Wesley Clover Solutions
Claim Number: FA1807001798155
Complainant is Teleflex Incorporated (“Complainant”), represented by Kevin Bovard of Baker & Hostetler LLP, Pennsylvania, USA. Respondent is Michael Schneide / Wesley Clover Solutions (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <teletlex.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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 23, 2018; the Forum received payment on July 23, 2018.
On July 25, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <teletlex.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 31, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 20, 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@teletlex.com. Also on July 31, 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 August 24, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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, Teleflex Incorporated, is a global provider of medical technology products, including specialty devices for a range of procedures in critical care and surgery that are designed to improve the health and quality of people’s lives. Complainant uses its TELEFLEX mark to promote its products and services and established rights in the mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,780,186, registered Apr. 27, 2010). See Amend. Compl. Ex. C. Respondent’s <teletlex.com> domain name is confusingly similar to Complainant’s mark because it merely replaces the letter “F” with the letter “T” and adds the generic top-level domain (“gTLD”) “.com.”
ii) Respondent does not have rights or legitimate interests in the <teletlex.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its TELEFLEX mark in any fashion. Respondent is also not commonly known by the disputed domain name as the WHOIS information of record lists “Michael Schneide / Wesley Clover Solutions” as the registrant. See Amend. Compl. Ex. A. Respondent is not using the <teletlex.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to resolve to an inactive website. Further, Respondent uses the domain name to pass off as Complainant and conduct a fraudulent email phishing scheme.
iii) Respondent registered and is using the <teletlex.com> domain name in bad faith. Respondent attempts to create confusion with Complainant’s TELEFLEX mark for commercial gain by passing off as Complainant and conducting a phishing scheme. Further, Respondent registered the domain name with full knowledge of Complainant’s rights in the TELEFLEX mark. Respondent’s use of the domain name to phish for Internet users’ information is further evidence of bad faith. Additionally, Respondent engaged in typosquatting by registering the confusingly similar domain name. Finally, Respondent used a proxy service to conceal its true identity.
B. Respondent
Respondent did not submit a Response.
1. Respondent registered the <teletlex.com> domain name on July 10, 2018.
2. Complainant established its rights in its TELEFLEX mark through registration with the USPTO (e.g., Reg. No. 3,780,186, registered Apr. 27, 2010).
3. The <teletlex.com> website remains inactive.
4. A copy of an email sent by Respondent to Complainant’s customer indicates that Respondent attempted to extract funds from the customer by posing as Complainant’s employee and threatening legal action if the customer did not send payment.
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 contends it has rights in its TELEFLEX mark through registration with the USPTO (e.g., Reg. No. 3,780,186, registered Apr. 27, 2010). See Amend. Compl. Ex. C. Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). As such, the Panel holds that Complainant established rights in the TELEFLEX mark under Policy ¶ 4(a)(i).
Next, Complainant alleges that Respondent’s <teletlex.com> domain name is confusingly similar to Complainant’s mark because it merely replaces the letter “F” with the letter “T” and adds the gTLD “.com.” Replacing a letter and adding a gTLD may not sufficiently distinguish a domain name from a mark under a Policy ¶ 4(a)(i) analysis. See Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015) (“The domain name differs from the mark only in that the domain name substitutes the letter ‘a’ in the word ‘steak’ with the letter ‘c’ and adds the generic Top Level Domain (‘gTLD’) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”). Accordingly, the Panel concludes that Respondent’s <teletlex.com> domain name is confusingly similar to Complainant’s mark.
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 alleges that Respondent does not have rights or legitimate interests in the disputed domain name, as Respondent is not commonly known by the domain name and Complainant has not licensed or otherwise authorized Respondent to use its TELEFLEX mark in any fashion. Absent contradicting evidence in the record that a respondent was 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. See 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). Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for the <teletlex.com> domain name lists “Michael Schneide / Wesley Clover Solutions” as the registrant. Therefore, the Panel concludes that Respondent is not commonly known by the <teletlex.com> domain name.
Further, Complainant argues that Respondent uses the domain name to resolve to an inactive website. Under Policy ¶¶ 4(c)(i) and (iii), use of a domain name to resolve to an inactive website may not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use. See Nutri/System IPHC, Inc. v. Usama Ayub, FA 1725806 (Forum June 5, 2017) (“Respondent does not use the <nutrisystemturbo.us> domain for a bona fide offering of goods or services because the domain name resolves to a website that currently is designated as ‘under construction.’”). Complainant provided a screenshot of the <teletlex.com> website, which indicates that the site is inactive. See Amend. Compl. Ex. E. Therefore, the Panel holds that Respondent failed to use the domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use.
Moreover, Complainant alleges that Respondent uses the <teletlex.com> domain name to pass off as Complainant in furtherance of a fraudulent email phishing scheme. Use of a domain name to conduct a phishing scheme may not be considered a bona fide offering or fair use under the Policy. 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.”). Here, Complainant alleges that Respondent attempted to pass off as one of Complainant’s employees by using the email address, Siobhan.Crosse@teletlex.com, which contains the infringing <teletlex.com> domain name and the name of an actual employee, Siobhan Crosse. See Amend. Compl. Ex. F. Complainant provided a copy of an email sent by Respondent to Complainant’s customer, which indicates that Respondent attempted to extract funds from the customer by posing as Complainant’s employee and threatening legal action if the customer did not send payment. Id. Accordingly, the Panel concludes that Respondent used the domain name in connection with an email phishing scheme and holds that Respondent failed to use the domain name in accordance with Policy ¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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.
Respondent attempts to create confusion with Complainant’s TELEFLEX mark for commercial gain by passing off as Complainant and conducting a phishing scheme. Per Policy ¶ 4(b)(iv), use of a domain name to attract Internet users and create confusion as to the source, sponsorship, affiliation or endorsement of the content therein for commercial gain may evidence bad faith. 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). Complainant provided a copy of an email sent by Respondent using an email address containing the <teletlex.com> domain name. See Amend. Compl. Ex. F. As previously mentioned, Complainant argues that Respondent used the email address to pass off as Complainant’s employee and extract funds from Complainant’s customers. Id. Accordingly, the Panel finds that Respondent engaged in bad faith registration and use under Policy ¶ 4(b)(iv).
Next, Complainant argues that Respondent’s use of the domain name to phish for Internet users’ information is further evidence of bad faith. Under Policy ¶ 4(a)(iii), use of a domain name to phish for users’ information may evidence bad faith. 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 provided a copy of an email sent by Respondent, which indicates that Respondent attempted to impersonate Complainant’s employee to extort funds from the recipient. See Amend. Compl. Ex. F. Therefore, the Panel holds that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Additionally, Complainant alleges that Respondent engaged in typosquatting by registering a domain name that differs from Complainant’s mark by one letter. Typosquatting, itself, is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). As such, the Panel holds that Respondent has acted in bad faith under Policy ¶ 4(a)(iii).
Further, Complainant alleges that Respondent registered the domain name with full knowledge of Complainant’s rights in the TELEFLEX mark. Actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name is adequate 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). Complainant contends that Respondent had actual knowledge of Complainant’s rights in the TELEFLEX mark because Respondent used the disputed domain name to pass off as a specific employee of Complainant’s. See Amend. Compl. Ex. F. Therefore, due to the fame of Complainant’s mark and the manner of use of the disputed domain name, the Panel infers that Respondent had actual knowledge of Complainant’s rights when the <teletlex.com> domain name was registered and subsequently used.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <teletlex.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: September 4, 2018
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