Illumina, Inc. v. Robert Anderson / Jeff Hill / Rishabh Raj
Claim Number: FA1803001775419
Complainant is Illumina, Inc. (“Complainant”), represented by Christopher P. Foley of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Virginia, USA. Respondent is Robert Anderson / Jeff Hill / Rishabh Raj (“Respondent”). Respondent Jeff Hill is represented by S. Tyler Hale of Venable LLP, District of Columbia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <illuminasd.com>, registered with GoDaddy.com, LLC; <illuminasds.com>, <illuminasd.org>, <illuminasds.org>, <illuminasd.net>, <illuminasds.net>, and <illuminasdantiagingserum.com>, registered with Name.com, Inc.; and, <illuminasd.site>, registered with NameCheap, Inc.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 12, 2018; the Forum received payment on March 12, 2018.
On March 12, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <illuminasd.site> is registered with NameCheap, Inc. and that Respondent Rishbah Raj is the current registrant of the name. Also on March 12, 2018, Name.com, Inc. confirmed by e-mail to the Forum that the <illuminasds.com>, <illuminasd.org>, <illuminasds.org>, <illuminasd.net>, <illuminasds.net>, and <illuminasdantiagingserum.com> domains names are registered with Name.com, Inc. and that Respondent Robert Anderson is the current registrant of the names. On March 13, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <illuminasd.com> is registered with GoDaddy.com, LLC and that Respondent Jeff Hill is the current registrant of the name. GoDaddy.com, LLC; Name.com, Inc.; and NameCheap, Inc. have each verified that Respondent is bound by their respective registration agreements and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 21, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 30, 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@illuminasd.com, postmaster@illuminasds.com, postmaster@illuminasd.org, postmaster@illuminasds.org, postmaster@illuminasd.net, postmaster@illuminasds.net, postmaster@illuminasd.site, and postmaster@illuminasdantiagingserum.com. Also on March 21, 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.
A timely Response on behalf of Respondent Jeff Hill was received and determined to be complete on April 30, 2018. No response was received on behalf of Respondents Rishbah Raj or Robert Anderson.
On May 4, 2018, an Additional Submission by Complainant was received. Complainant’s Additional Submission was timely according to Supplemental Rule 7.
On May 9, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The publicly listed WHOIS data identifies the disputed domain names as owned by three different registrants. Paragraph 3(c) can be satisfied if there is evidence demonstrating that in all likelihood the domain names are in effect controlled by a single person or entity.
Complainant contends that all of the registrants for the disputed domain names are related because: 1) all domain names (except the <illuminasd.com> domain name) display the “ILLUMINA SD” logo identical to Respondent’s Facebook page, and 2) the Facebook page for “ILLUMINA SD” displays the “ILLUMINA SD” logo and provides a link to and shares the same phone number as the <illuminasd.com> domain name. The Panel notes that the website for the <illuminasd.site> domain name is set out differently to the websites for the other domain names and only displays the “ILLUMINA SD” logo on photos of packaging of “ILLUMINA SD” products, rather than as a heading in the manner of the websites from the other domain names.
Respondent Jeff Hill, the named registrant of the <illuminasd.com> domain name, denies being the owner of the remaining domain names the subject of the Complaint. Complaint’s Additional Submission provides further arguments that each of the Respondents are related and submits that, even if they are unrelated, the dispute should be decided with respect to all the domain names the subject of the Complaint.
The Panel finds that Complainant has not sufficiently presented evidence demonstrating that the domain names <illuminasd.com> and <illuminasd.site> are jointly controlled by the same holder as the domain names <illuminasd.com>, <illuminasds.com>, <illuminasd.org>, <illuminasds.org>, <illuminasd.net>, <illuminasds.net>, and <illuminasdantiagingserum.com> (collectively the “Anderson Domain Names”). The domain names <illuminasd.com> and <illuminasd.site> are registered to different named registrants, with different registrars, and were registered at different times to the Anderson Domain Names, five of which were registered on the same day. The domain names <illuminasd.com> and <illuminasd.site> redirected to different websites both before and after the commencement of the proceeding. While all the Domain Names have a similar structure including the words “illumina” and “SD”, that can be explained, as is set out in the Response, by the Domain Names being registered by different entities seeking to sell a product that is apparently known as Illumina SD.
The Panel does not accept the arguments made in the Additional Submission that if the Panel were to accept that the Domain Names are controlled by three different Respondents, it would be appropriate to apply Paragraph 10(e) of the Rules and resolve the matter in a single decision. The Complaint as it stands is in breach of Paragraph 3(c) of the Rules in that it is in respect of multiple domain names registered by different holders. Forum Supplemental Rule 4(c), provides that if the Panel determines that insufficient evidence is presented to link the respective domain names, the domain names held by the unrelated registrants will not be subject to further consideration by that Panel. The Panel, without prejudice to any future proceedings under the Policy, dismisses the Complaint as against the domain names <illuminasd.com> and <illuminasd.site>.
For the purposes of the remainder of the decision any reference to Respondent should be read as a reference to Richard Anderson and any reference to the disputed domain names should be read as a reference to the Anderson Domain Names.
A. Complainant
Complainant is one of the leading manufacturers of DNA sequencing machines which are used in the scientific and medical sectors for genetic analysis. It is also involved in broader genomics research and development of related products. Complainant has rights in the ILLUMINA mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,471,539, registered Jul. 24, 2001). Respondent’s <illuminasds.com>, <illuminasd.org>, <illuminasds.org>, <illuminasd.net>, <illuminasds.net>, and <illuminasdantiagingserum.com> domain names are confusingly similar to Complainant’s ILLUMINA mark because Respondent incorporates that ILLUMINA mark in its entirety and merely adds generic terms “anti,” “aging,” and “serum”, the letters “sd” or “sds”, and a generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <illuminasds.com>, <illuminasd.org>, <illuminasds.org>, <illuminasd.net>, <illuminasds.net>, and <illuminasdantiagingserum.com> domain names because Respondent is not authorized to use Complainant’s ILLUMINA mark and is not commonly known by the disputed domain names. Additionally, Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to redirect users to a website that offers services that consumers have associated with Complainant’s genomics research business—specifically the design and development of skin care products and services.
Respondent registered and is using the <illuminasds.com>, <illuminasd.org>, <illuminasds.org>, <illuminasd.net>, <illuminasds.net>, and <illuminasdantiagingserum.com> domain names in bad faith. First, Respondent engages in a pattern of bad faith registration and use by registering multiple domain names incorporating Complainant’s ILLUMINA mark. Second, Respondent disrupts Complainant’s business and diverts users to the disputed domain names which offer services that consumers associate with Complainant. Third, Respondent used a privacy service to conceal its identity. Finally, Respondent must have had actual knowledge of Complainant’s rights in the ILLUMINA mark at the time of registration given Complainant’s continuous long-term use of the ILLUMINA mark and Respondent’s use of the domain names to offer goods and services associated with Complainant.
B. Respondent
Noting that the only remaining respondent in this proceeding is Robert Anderson, Respondent failed to submit a response in this proceeding.
Complainant holds trademark rights for the ILLUMINA mark. Each of the disputed domain names is confusingly similar to Complainant’s ILLUMINA mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <illuminasds.com>, <illuminasd.org>, <illuminasds.org>, <illuminasd.net>, <illuminasds.net>, and <illuminasdantiagingserum.com> domain names and that Respondent registered and uses those domain names 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.
Complainant has rights in the ILLUMINA mark based upon registration with the USPTO (e.g., Reg. No. 2,471,539, registered Jul. 24, 2001). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).
Complainant contends that the domain names <illuminasds.com>, <illuminasd.org>, <illuminasds.org>, <illuminasd.net>, <illuminasds.net>, and <illuminasdantiagingserum.com> are identical or confusingly similar to the ILLUMINA mark as each of them contains the mark in its entirety and merely adds generic terms, additional letters, and gTLDs to the ILLUMINA mark. The Panel accepts Complainant’s contentions and finds that each of the disputed domain names are confusingly similar to the ILLUMINA mark; See OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum Aug. 10, 2015 (“Respondent’s <oipentable.com> domain name is confusingly similar to the OPENTABLE mark under Policy ¶ 4(a)(i) because the disputed domain merely adds the letter ‘i’ . . . ”); see also 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 finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and 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.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain names as Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent to use the ILLUMINA mark. Respondent has no relationship, affiliation, connection, endorsement or association with the Complaint. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. 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)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Robert Anderson” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the disputed domain names in accordance with Policy ¶ 4(c)(ii).
Each of the disputed domain names is presently inactive but prior to the commencement of the proceeding resolved to a website that used the ILLUMINA mark and purported to offer a skin care product known as Illumina SD. While Complainant does not directly offer skin care products, in 2017, shortly before each of the disputed domain names were registered, it was publicized that Complainant was working with Imagene Labs to develop personalized skincare solutions by using its genetic testing services. As such the Panel finds that the websites to which the disputed domain names resolved to offered products that consumers may associate with those offered by Complainant.
The use of a confusingly similar domain name to divert users to a competing website is generally not considered to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). In the absence of any evidence or submissions from Respondent, the Panel finds that Complainant has made out a prima facie case that Respondent’ s use of the disputed domain names is not in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds, on the balance of probabilities, that Respondent had actual knowledge of Complainant’s ILLUMINA mark at the time of registration since Complainant had used the ILLUMINA mark for almost 20 years and had developed a considerable reputation in its mark. Furthermore the disputed domain names were registered between June and October 2017, shortly after it was publicized that Complainant would be using its genetic testing services to develop and provide skin care solutions. The disputed domain names subsequently resolved to websites that advertised for sale skin care products using Complainant’s ILLUMINA mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered and uses the disputed domain names in bad faith by attracting internet users to its websites for commercial gain by engendering confusion and mistake with Complainant and ILLUMINA Mark. While the Panel notes that Complainant does not directly offer skin care products (and indeed offers genomic products and services), Complainant has been involved in the development of skin care products and services since prior to the date the disputed domain names were registered. Furthermore Complainant puts on evidence of the receipt of 18 customer service calls a week in respect of the Illumina SD products offered by Respondent from the disputed domain names,. This illustrates that Complainant has sufficient reputation in the skin-care market that Respondent would receive a benefit from any association or confusion with Complainant and its ILLUMINA Mark.
Complainant has provided evidence that Respondent uses the confusingly similar disputed domain names to direct Internet users to commercial websites selling products consumers may associate with those offered by Complainant. The Panel agrees with Complainant’s evidence and finds that Respondent acted in bad faith when registering and using the Domain Name. See 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).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy with respect to the <illuminasds.com>, <illuminasd.org>, <illuminasds.org>, <illuminasd.net>, <illuminasds.net>, and <illuminasdantiagingserum.com> domain names, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the<illuminasds.com>, <illuminasd.org>, <illuminasds.org>, <illuminasd.net>, <illuminasds.net>, and <illuminasdantiagingserum.com> domain names be TRANSFERRED from Respondent to Complainant and the <illuminasd.com> and <illuminasd.site> domain names REMAIN WITH Respondent.
Nicholas J.T. Smith, Panelist
Dated: May 14, 2018
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