Hologic, Inc. v. Ian Armstrong
Claim Number: FA1811001816625
Complainant is Hologic, Inc., (“Complainant”), represented by Lawrence R. Robins of FisherBroyles LLP, Massachusetts, USA. Respondent is Ian Armstrong (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cynosurehologic.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 November 15, 2018; the Forum received payment on November 15, 2018.
On November 15, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <cynosurehologic.com> domain name (the “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 November 16, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of December 6, 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@cynosurehologic.com. Also on November 16, 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 December 10, 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 Name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a provider of innovative medical technology, primarily focused on women’s health through early detection and treatment. It acquired Cynosure, Inc. in 2017 and that company is now a wholly-owned subsidiary of Complainant. Cynosure, Inc. (“Cynosure”) is a creator of energy-based aesthetic and medical treatment systems. Complainant has rights in the HOLOGIC and CYNOSURE marks based upon the registration of those marks with the United States Patent and Trademark Office (“USPTO”) as follows: HOLOGIC—Reg. No. 3,857,248, registered Oct. 5, 2010; and CYNOSURE—Reg. No. 2,030,348, registered Jan. 14, 1997. Respondent’s Domain Name is confusingly similar to Complainant’s marks in that it incorporates both of Complainant’s marks verbatim, merely adding the generic top-level domain (“gTLD”) “.com.”
Respondent lacks rights and legitimate interests in the Domain Name. He is not commonly known by that name and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent is not using the Domain Name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Instead he uses it to pose as Complainant in furtherance of a fraudulent scheme.
Respondent registered and uses the Domain Name in bad faith. He uses it to defraud third parties both on the resolving webpage and also through an email address based upon the Domain Name. Further, Respondent had actual knowledge of Complainant’s rights in the HOLOGIC and CYNOSURE marks prior to registering the Domain Name.
B. Respondent
The 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 provides that in order to obtain an order cancelling or transferring a domain name, Complainant must prove each of the following three elements:
(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.”).
Complainant’s HOLOGIC and CYNOSURE marks have been registered with the USPTO. The HOLOGIC mark (Registration No. 3,857,248) was registered October 5, 2010, and the CYNOSURE mark (Registration No. 2,030,348) was registered January 14, 1997. See, TESS Reports submitted December 11, 2018 in response to Panel request for documentation. [i] Registration of a mark with the USPTO is sufficient to establish a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant states that it acquired Cynosure in 2017 and that Cynosure is now a wholly-owned subsidiary of Complainant. Complainant submitted no evidence in support of that allegation but it is not disputed, and the body of evidence submitted in this proceeding supports Complainant’s contention. Accordingly, the Panel finds that the legal and economic interests of Complainant and Cynosure are identical and will treat Complainant and Cynosure as a single entity for the purposes of this proceeding. Except where specifically indicated otherwise, the term “Complainant” as used in this Decision refers to both Hologic and Cynosure, collectively.
Respondent’s Domain Name is confusingly similar to Complainant’s marks in that it incorporates both of them verbatim, merely adding the gTLD “.com.” These changes are not sufficient to distinguish the Domain Name from Complainant’s marks for the purposes of Policy ¶ 4(a)(i). The Toronto-Dominion Bank v. DAVID BRAXTON / D Braxton Enterprise, FA 1734245 (Forum June 28, 2017) (finding that the <tdcanada-trustgroups.com> domain name was a combination of complainant’s TD and CANADA TRUST marks, and was therefore confusingly similar), Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the HOLOGIC and CYNOSURE marks, in which Complainant has substantial and demonstrated rights.
Rights or Legitimate Interests
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. 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”). 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 a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to respondent of the dispute, respondent has used or has made 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;
(ii) respondent (as an individual, business or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for 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 Name because (i) he is not commonly known by the Domain Name, (ii) Respondent is not using the Domain Names in connection with a bona fide offering of goods and services or as a legitimate noncommercial or other fair use because he is using it to defraud Complainant and its customers, and (iii) Complainant has not authorized or licensed him to use either of its marks. These allegations are supported by competent evidence.
The WHOIS report submitted as Complaint Annex C shows that the Domain Name is registered to “Ian Armstrong.” This name bears no resemblance to the Domain Name. UDRP panels have consistently held that evidence of 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). The Panel is satisfied that Respondent has not been commonly known by the Domain Name within the meaning of Policy ¶ 4(c)(ii).
Complaint Annex E is a copy of a string of emails between Complainant and Financial Pacific Leasing (“Financial Pacific”) in which Financial Pacific expresses confusion about the wiring instructions it should use to pay a Complainant invoice. Complainant verifies that the wiring instructions Financial Pacific has are fraudulent and sends the correct instructions back. Complaint Annex F is a copy of what appears to be an invoice from Cynosure in the amount of $79,350.00 for certain equipment, which invoice indicates that it originated at Cynosure. It bears the name Jason Kalso, and an email address for him at jason.kalso@cynosurehologic.com. The final page of this document contains wiring instructions for the customer to use to pay the invoice. Complainant states that Jason Kalso is in fact an employee of Cynosure/Hologic, but this email address is obviously based upon the Domain Name, and Complainant states that both the invoice and the wiring instructions attached to it are fraudulent. It thus appears that Respondent is using emails based upon the Domain Name to defraud Complainant and its customers by posing as Complainant and directing Complainant’s customers and their lenders to wire money to Respondent.
Complaint Annex G consists of a screenshot of the web site of Cynosure, and a screenshot of the web site resolving from the Domain Name. They are virtually identical, displaying the same photo of a woman and the same printed material. From this it appears that Respondent is using the Domain Name also to host a web site that impersonates and passes off as that of Cynosure. Using a confusingly similar domain name in connection with a fraudulent scheme 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 disputed domain name within the meaning of Policy ¶ 4(c)(iii). Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the at-issue domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant states that it has never licensed or authorized Respondent to use its marks in any way. 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), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) respondent has registered or 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 respondent’s documented out-of-pocket costs directly related to the domain name;
(ii) respondent has 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 respondent has engaged in a pattern of such conduct;
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s 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 respondent’s web site or location or of a product of service on respondent’s web site or location.
The evidence of Respondent’s uses of the Domain Name discussed above in connection with the rights or legitimate interests analysis also supports a finding of bad faith registration and use upon the foregoing grounds set forth in the Policy and upon additional grounds adopted by UDRP panels over the years. First, it is evident that Respondent registered and is using the Domain Name intentionally to attract, for commercial gain, Internet users to its website at <cynosurehologic.com> by creating a likelihood of confusion with Complainant and its HOLOGIC and CYNOSURE marks as to the source, sponsorship, affiliation, and endorsement of that web site. This fits clearly within the circumstances articulated by Policy ¶ 4(b)(iv). Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”) and registration.
Secondly, Respondent registered and is using the Domain Name to pass off as Cynosure for the purpose of defrauding Complainant and its customers. The Policy recognizes 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 to pose as a complainant to promote a fraudulent scheme has often been held to constitute bad faith. SHUAA Capital psc v. Oba Junkie / shuaa capital psc, FA14009001581255 (Forum Oct. 29, 2014) (“The Panel finds that Respondent’s use of the domain name’s e-mail suffix for fraudulent purposes illustrates Policy ¶ 4(a)(iii) bad faith.”), Monsanto Co. v. Decepticons, FA 101536 (Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
Finally, it is evident from the close similarity between Complainant’s marks and Cynosure’s web site on the one hand and Respondent’s Domain Name and web site on the other that Respondent had actual knowledge of Complainant’s marks in August 2018, when he registered the Domain Name. See, Complaint Annex C for registration date. In light of the open ended, non-exclusive nature of Policy ¶ 4(b), actual knowledge of a complainant’s rights in a mark prior to registering an identical or confusingly similar domain name has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). 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).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name 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 <cynosurehologic.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
December 12, 2018
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