Agilent Technologies, Inc. v. pan gen dou / dou pan gen
Claim Number: FA2011001920893
Complainant is Agilent Technologies, Inc. (“Complainant”), represented by Alexander J.A. Garcia of Perkins Coie LLP, Washington, USA. Respondent is pan gen dou / dou pan gen (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <reeducate-agilent.com>, registered with Dropcatch.Com 1023 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 16, 2020; the Forum received payment on November 16, 2020.
On November 18, 2020, Dropcatch.Com 1023 Llc confirmed by e-mail to the Forum that the <reeducate-agilent.com> domain name is registered with Dropcatch.Com 1023 Llc and that Respondent is the current registrant of the name. Dropcatch.Com 1023 Llc has verified that Respondent is bound by the Dropcatch.Com 1023 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 18, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 8, 2020 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@reeducate-agilent.com. Also on November 18, 2020, 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 14, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, Agilent Technologies Inc., operates an online marketplace for products in the areas of life sciences, diagnostics, and applied chemical markets. Complainant has rights in the AGILENT mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,461,406, registered June 19, 2001).
2. Respondent’s <reeducate-agilent.com>[i] domain name is confusingly similar to Complainant’s AGILENT mark since it wholly incorporates the mark merely adding the generic term “reeducate” and the “.com” generic top-level domain (“gTLD”).
3. Respondent does not have rights or legitimate interests in the <reeducate-agilent.com> domain name because Respondent is not commonly known by the domain name and is not affiliated with Complainant or permitted to use Complainant’s AGILENT mark.
4. Additionally, Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent diverts Internet traffic to a webpage featuring advertising links and pornographic material.
5. Respondent registered and uses the <reeducate-agilent.com> domain name in bad faith. Respondent has demonstrated a pattern of bad faith registration.
6. Also, Respondent uses the domain name to commercially benefit from advertising on the resolving website.
7. Additionally, Respondent’s use of the domain name to host a pornographic website evidences bad faith.
8. Finally, Respondent had actual knowledge of Complainant’s rights in the AGILENT mark when it registered the <reeducate-agilent.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the AGILENT mark. Respondent’s domain name is confusingly similar to Complainant’s AGILENT mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <reeducate-agilent.com> domain name and that Respondent registered and uses the domain name in bad faith.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the AGILENT mark based upon registration with the USPTO. Registration with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant has provided evidence of its registration with the USPTO. (e.g., Reg. No. 2,461,406, registered June 19, 2001). Therefore, Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant claims that Respondent’s <reeducate-agilent.com> domain name is confusingly similar to Complainant’s AGILENT mark since it wholly incorporates the mark merely adding the generic term “reeducate” and the “.com” gTLD. Addition of a generic term and a gTLD to a mark is insufficient to negate confusing similarity between a domain name and the mark per Policy ¶ 4(a)(i). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Forum May 16, 2007) (finding that the addition of the descriptive term “wine” to the complainant’s BLACKSTONE mark in the <blackstonewine.com> domain name was insufficient to distinguish the mark from the domain name under Policy ¶ 4(a)(i)). Thus, the Panel holds that the <reeducate-agilent.com> domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <reeducate-agilent.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the <reeducate-agilent.com> domain name because Respondent is not commonly known by the domain name and is not affiliated with Complainant or permitted to use Complainant’s AGILENT mark. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that respondent does not have rights or legitimate interests in the domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record lists the registrant as “pan gen dou / dou pan gen,” and Complainant contends that it did not authorize Respondent’s use of the AGILENT mark. Therefore, the Panel holds that Respondent is not commonly known by the <reeducate-agilent.com> domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent fails to use the <reeducate-agilent.com> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use and instead diverts Internet traffic to a webpage featuring advertising links and pornographic material. Use of a domain name incorporating the mark of another to display advertisements and/or commercial hyperlinks is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”). Similarly, hosting adult-oriented material at the resolving website of a domain name incorporating the mark of another is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”). Complainant provides screenshots of the resolving webpage, showing advertisements and pornographic content. Therefore, the Panel holds Respondent does not use the <reeducate-agilent.com> domain name in connection with a bona fide offering of goods or services per Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent registered the <reeducate-agilent.com> domain name in bad faith based upon a demonstrated a pattern of bad faith registration. A history of registration of domain names incorporating well known marks may suggest bad faith pursuant to Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Forum Aug. 17, 2000) (finding that the respondent has registered numerous domain names that infringe upon the complainant’s marks and in addition, the respondent has registered domain names that infringe upon other entities’ marks). Complainant provides the results of a search showing Respondent’s registration of numerous domain names incorporating well known marks. Thus, the Panel agrees that Respondent registered the <reeducate-agilent.com> domain name in bad faith pursuant to Policy ¶ 4(b)(ii).
Complainant also claims that Respondent registered and uses the <reeducate-agilent.com> domain name in bad faith because Respondent uses the domain name to commercially benefit from advertising on the resolving website. Use of a domain name incorporating the mark of another to host advertisements and/or commercial hyperlinks may suggest bad faith attraction for commercial gain per Policy ¶ 4(b)(iv). See Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees.”). The <reeducate-agilent.com> domain name resolves to a webpage featuring advertisements from which it is reasonable to infer that Respondent profits. Thus, the Panel holds that Respondent registered and uses the <reeducate-agilent.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Additionally, Complainant argues that Respondent’s use of the <reeducate-agilent.com> domain name to host a pornographic website evidences bad faith. Use of a domain name incorporating the mark of another to host adult oriented material may be evidence of bad faith under Policy ¶ 4(a)(iii).See Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith). Complainant provides a screenshot of the pornographic material featured on Respondent’s webpage. Therefore, the Panel agrees with Complainant and finds bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the AGILENT mark when it registered the <reeducate-agilent.com> domain name. Actual knowledge of a complainant’s rights in a mark may suggest bad faith per Policy ¶ 4(a)(iii) and can be shown by the fame of the mark at issue. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Complainant argues that when Respondent registered the <reeducate-agilent.com> domain name, Respondent had actual knowledge of Complainant’s rights in the AGILENT mark based upon the notoriety of the mark and Complainant’s longstanding use of the mark. Because the Panel agrees, the Panel finds bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied 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 <reeducate-agilent.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 21, 2020
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