Hologic, Inc. v. Bojan Bjelac / Medical Imaging Services Inc
Claim Number: FA1809001804510
Complainant is Hologic, Inc. (“Complainant”), represented by Lawrence R. Robins of FisherBroyles LLP, Massachusetts, USA. Respondent is Bojan Bjelac / Medical Imaging Services Inc (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hologicparts.com> and <usedhologic.com>, registered with Network Solutions, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 4, 2018; the Forum received payment on September 4, 2018.
On September 4, 2018, Network Solutions, LLC confirmed by e-mail to the Forum that the <hologicparts.com> and <usedhologic.com> domain names are registered with Network Solutions, LLC and that Respondent is the current registrant of the names. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 September 4, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 24, 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@hologicparts.com, postmaster@usedhologic.com. Also on September 4, 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 September 28, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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.
A. Complainant
Complainant is a global leader in innovative medical technology, 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 trademark based upon its registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,857,248, registered Oct. 5, 2010). Respondent’s <hologicparts.com> and <usedhologic.com> domain names are confusingly similar to Complainant’s trademark because both wholly incorporate Complainant’s HOLOGIC trademark, and are only differentiated by the addition of the generic terms “parts” and “used” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the disputed domain names. Respondent is not authorized to use Complainant’s HOLOGIC trademark and is not commonly known by the disputed domain names. Additionally, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain names to redirect users to Respondent’s primary website where Respondent purports to sell Complainant’s products without Complainant’s authorization.
Respondent registered and uses the <hologicparts.com> and <usedhologic.com> domain names in bad faith. Respondent had actual and constructive knowledge of Complainant’s rights in the HOLOGIC trademark prior to registering the disputed domain names, and is using <hologicparts.com> and <usedhologic.com> to redirect users to Respondent’s primary website where Respondent purports to sell Complainant’s products without authorization from Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the U.S. trademark registrations
- No. 5,150,254 HOLOGIC (word), registered February 28, 2017, for goods and services in classes 9, 37, 41, 42 and 44
- No. 4,876,768 HOLOGIC (word), registered December 29, 2015, for goods in classes 1, 5, 9 and10
- No. 3,857,248 HOLOGIC (word), registered October 5, 2010, for goods in classes 5, 9 and 10
- No. 4,887,704 HOLOGIC THE SCIENCE OF SURE (Stylized), registered January 19, 2016, for services in classes 37, 41, 42 and 44
Respondent registered the <hologicparts.com> and <usedhologic.com> domain names on March 28, 2018
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.
Complainant has registered the HOLOGIC trademark with the USPTO (e.g., Reg. No. 3,857,248, registered on October 5, 2010). The mark is used for or in connection with innovative medical technology. The Panel finds that registration with the USPTO is sufficient to establish rights in a trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
The Panel further finds that the disputed domain names <hologicparts.com> and <usedhologic.com> are confusingly similar to Complainant’s trademark because both wholly incorporate Complainant’s HOLOGIC trademark, and are only differentiated by the incorporation of generic terms and a gTLD.
The addition of a generic term and a gTLD to Complainant’s trademark may not sufficiently mitigate any confusing similarity between the disputed domain name from the mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)).
The Panel concludes that the disputed domain names <hologicparts.com> and <usedhologic.com> are confusingly similar to the trademark HOLOGIC in which Complainant has rights (Policy ¶ 4(a)(i)).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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.”); 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”).
In view of Respondent's failure to submit a response, the Panel will 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 the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.
Complainant argues that Respondent lacks rights and legitimate interests in the <hologicparts.com> and <usedhologic.com> domain names because Respondent is not commonly known by the disputed domain names and is not authorized by Complainant to use the HOLOGIC trademark.
Where a response is lacking, WHOIS information may be used to identify a respondent per Policy ¶ 4(c)(ii). The Panel finds that the WHOIS information of record identifies Respondent as “Bojan Bjelac”, with no references to the HOLOGIC trademark. Furthermore, no information of the record indicates that Respondent was authorized to use Complainant’s HOLOGIC trademark.
Complainant further alleges Respondent fails to use the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. The Panel notes that – from what is shown by Complainant - Respondent uses the disputed domain names to redirect users to Respondent’s primary website where Respondent purports to sell Complainant’s products without authorization from Complainant.
Use of a disputed domain name to redirect internet users to a website where it attempts to sell the complainant’s goods is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is 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).”).
Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Complainant contends that Respondent uses the disputed domain names to redirect users to Respondent’s primary website where Respondent purports to sell Complainant’s products without Complainant’s authorization. A respondent’s use of a disputed domain name to redirect internet users to the respondent’s website where the respondent attempts to sell the complainant’s goods is evidence of bad faith per Policy ¶ 4(a)(iii). See Whirlpool Props., Inc. v. Ace Appliance Parts & Serv., FA 109386 (Forum May 24, 2002) (holding that the respondent’s use of the <whirlpoolparts.com> domain name to operate a website selling the complainant’s products constituted bad faith registration and use under the Policy, despite the fact that the respondent operated a storefront business for 27 years selling the complainant’s parts and appliances). The Panel notes that Complainant has provided screenshots of Respondent’s website, which purports to sell the products of Complainant and Complainant’s competitors.
Finally, Complainant argues that Respondent had actual and constructive knowledge of Complainant’s rights in the HOLOGIC trademark prior to registering the <hologicparts.com> and <usedhologic.com> domain names. While constructive notice of a complainant’s trademark is insufficient for a finding of bad faith, actual knowledge of a complainant’s trademark may be evidence of bad faith under Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”).
The fact that Respondent is using the disputed domain names to redirect users to Respondent’s primary website where Respondent purports to sell Complainant’s products without authorization from Complainant, is a clear indication that Respondent had actual knowledge of Complainant’s rights in the mark prior to registration, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
The Panel concludes that Respondent registered and uses the disputed domain names in bad faith under 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 <hologicparts.com> and <usedhologic.com> domain names be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: October 12, 2018
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