Hologic, Inc. v. Steven Edwards
Claim Number: FA1802001770353
Complainant is Hologic, Inc. (“Complainant”), represented by Andrea J. Mealey of FisherBroyles LLP, Massachusetts, USA. Respondent is Steven Edwards (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hologiccareers.com>, registered with eNom, 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 February 2, 2018; the Forum received payment on February 2, 2018.
On February 5, 2018, eNom, LLC confirmed by e-mail to the Forum that the <hologiccareers.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, 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 February 9, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 1, 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@hologiccareers.com. Also on February 9, 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 March 5, 2018, 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, Hologic, Inc., is a global leader in innovative medical technology with its core business units focused on diagnostics, breast health, gynecological surgical, skeletal health, and medical aesthetics. Complainant uses its HOLOGIC 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. 3,857,248, registered Oct. 5, 2010). Complainant has also established common law rights in its HOLOGIC mark.
2. Respondent’s <hologiccareers.com>[1] domain name is confusingly similar to Complainant’s mark because it merely appends the generic term “careers” and the generic top-level domain (“gTLD”) “.com” to the fully incorporated HOLOGIC mark.
3. Respondent does not have rights or legitimate interests in the <hologiccareers.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its HOLOGIC mark in any fashion. Respondent is not commonly known by the <hologiccareers.com> domain name as the WHOIS information of record lists “Steven Edwards” as the registrant.
4. Respondent is not using the <hologiccareers.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the <hologiccareers.com> domain name resolves to an inactive webpage. Further, Respondent uses the domain name in connection with a fraudulent email phishing scheme.
5. Respondent registered and uses the <hologiccareers.com> domain name in bad faith. First, Respondent registered the domain name with full knowledge of Complainant’s rights in the HOLOGIC mark. Additionally, Respondent failed to use the domain name in connection with an active website. Further, Respondent used the domain name to phish for Internet users’ personal information. Finally, Respondent registered the domain name using a privacy service.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the HOLOGIC mark. Respondent’s domain name is confusingly similar to Complainant’s HOLOGIC mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <hologiccareers.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 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 has established rights in its HOLOGIC mark through registration with the USPTO (e.g., Reg. No. 3,857,248, registered Oct. 5, 2010). Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). The Panel holds that Complainant has established rights in the mark under Policy ¶ 4(a)(i). Complainant also contends it has common law rights in its HOLOGIC mark; because Complainant has demonstrated its trademark rights in the HOLOGIC mark, it is not necessary to consider Complainant’s argument regarding common law rights.
Next, Complainant alleges that Respondent’s <hologiccareers.com> domain name is confusingly similar to Complainant’s mark because it merely appends the generic term “careers” and the gTLD “.com” to the fully incorporated HOLOGIC mark. The appendage of a generic term and gTLD to a fully incorporated mark does not negate confusing similarity between a mark and a domain name. 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). Therefore, the Panel holds that Respondent’s <hologiccareers.com> domain name is confusingly similar to Complainant’s HOLOGIC mark for the purposes of 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 <hologiccareers.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 alleges that Respondent does not have rights or legitimate interests in the <hologiccareers.com> domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its HOLOGIC 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 domain name, the respondent is presumed not to be commonly known by 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 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 <hologiccareers.com> lists “Steven Edwards” as the registrant. Therefore, the Panel concludes that Respondent is not commonly known by the <hologiccareers.com> domain name.
Complainant alleges that Respondent is not using the <hologiccareers.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use as the domain name resolves to an inactive webpage. Inactive use of a domain name which incorporates the mark of another is generally not considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Complainant provides screenshots of the domain name’s resolving website, which features an error message and no other content.
Further, Complainant claims that Respondent uses the domain name in connection with a fraudulent email phishing scheme. Use of a domain name to conduct a phishing scheme generally does not confer rights and legitimate interests in a domain name. See Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) (“Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretenses. The disputed domain name is being used to cause the recipients of these emails to mistakenly believe Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”). Complainant contends that copies of email exchanges indicate that Respondent used the domain name in connection with an email address to communicate with Internet users under the false pretense of interviewing users for prospective employment with Complainant’s company. Complainant claims that the emails encourage recipients to forward signed financial documents.
For the above reasons, the Panel finds that Respondent failed to use the <hologiccareers.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered the <hologiccareers.com> domain name in bad faith with full knowledge of Complainant’s rights in the HOLOGIC mark. Registration of a domain name with actual knowledge of a complainant’s rights in a mark may be evidence of bad faith registration and use. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant argues that Respondent had actual knowledge of Complainant’s rights in the HOLOGIC mark because Respondent used the domain name to pass off as Complainant and its employees. The Panel agrees.
Finally, Complainant alleges that Respondent used the <hologiccareers.com> domain name to phish for Internet users’ personal information. Similar conduct has been found to constitute evidence of bad faith. See Emdeon Business Services, LLC v. HR Emdeon Careers, FA1507001629459 (Forum Aug. 14, 2015) (finding that the respondent had engaged in an email phishing scheme indicating bad faith under Policy ¶ 4(a)(iii)). The Panel agrees that the copies of email communications provided by Complainant show that Respondent engaged in a fraudulent email phishing scheme. Therefore, the Panel holds that Respondent used the <hologiccareers.com> domain name in bad faith per 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 <hologiccareers.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 19, 2018
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