Teleflex Incorporated v. Suspended Domain
Claim Number: FA1904001840385
Complainant is Teleflex Incorporated (“Complainant”), represented by Kevin Bovard of Baker & Hostetler LLP, Pennsylvania, USA. Respondent is Suspended Domain (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <telefllex.co>, registered with NameCheap, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 24, 2019; the Forum received payment on April 24, 2019.
On April 25, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <telefllex.co> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 April 29, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 20, 2019 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@telefllex.co. Also on April 29, 2019, 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 May 24, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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. Respondent’s <telefllex.co domain name is confusingly similar to Complainant’s TELEFLEX mark.
2. Respondent does not have any rights or legitimate interests in the <telefllex.co domain name.
3. Respondent registered and uses the <telefllex.co domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Teleflex Incorporated, is in the business of providing medical technology products. Complainant holds a registration for the TELEFLEX mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,780,186, registered Apr. 27, 2010) and with the European Union’s Intellectual Property Office (“EUIPO”) (Reg. No. 006440879, registered Nov. 13, 2008).
Respondent registered the <telefllex.co> domain name on April 9, 2019, and uses it to redirect Internet users to pay-per-click links.
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”).
The Panel finds that Complainant’s registration of TELEFLEX mark with the USPTO and the EUIPO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i). See Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“Registering a mark with multiple trademark agencies around the world is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <telefllex.co> domain name uses the TELEFLEX mark and simply adds an extra “l” and the Colombia country code top-level domain (ccTLD) “.co.” The addition of an extra letter and a gTLD does not distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’). The Panel finds that Respondent’s <telefllex.co> domain name is confusingly similar to Complainant’s TELEFLEX mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); 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”).
Complainant argues that Respondent has no rights or legitimate interests in the <telefllex.co> domain name, as Respondent is not commonly known by the disputed domain name. Respondent is not authorized to use Complainant’s mark. Complainant avers that it does not know the true identity of Respondent as it registered the domain name using a privacy shield. When a response is lacking and the WHOIS information lists a privacy service, there is no evidence that can support a finding that a respondent is commonly known by a disputed domain name. See Tenza Trading Ltd. v. WhoisProtectService.net / PROTECTSERVICE, LTD., FA1506001624077 (Forum July 31, 2015) (“The WHOIS information lists ‘WhoisProtectService.net’ as the registrant of record for the disputed domain names. Accordingly, in the absence of a Response, there is no evidence to indicate that Respondent might be known by any of the domain names.”). The WHOIS information for the disputed domain name initially listed “WhoisGuard, Inc.” After the commencement of this proceeding, the privacy shield was lifted and the WHOIS information now reflects “Suspended Domain / Suspended Domain” as the registrant. The Panel thus finds that Respondent is not commonly known by the <telefllex.co> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent has no rights or legitimate interests in the <telefllex.co> domain name due to Respondent’s failure to use the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant contends that the disputed domain name resolves to a website with pay-per-click hyperlinks directing Internet users to sponsored advertisements for dentists, insurance, flights, and online colleges. Using a confusingly similar domain name to resolve to a site containing pay-per-click hyperlinks and advertisements is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. 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.”). Respondent’s disputed domain name resolves to a website with hyperlink advertisements offering various services such as “Car Insurance” and “Credit Cards.” Therefore, the Panel finds that the Respondent is not using the <telefllex.co> domain name for a bona fide offering of goods or service, or a legitimate noncommercial or fair use.
Complainant further argues that Respondent has no rights or legitimate interests in the <telefllex.co> domain name, as Respondent is using the disputed domain name as part of a phishing scam. Complainant demonstrates that Respondent uses the disputed domain name to send emails to Complainant’s employees, seeking information. The Panel finds that this use is also not a bona fide offering of goods or service, or a legitimate noncommercial or fair use. See Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. 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 further argues that Respondent has no rights or legitimate interests in the <telefllex.co> domain name, as Respondent is typosquatting on Complainant’s TELEFLEX mark. When the disputed domain name is a misspelling of the complainant’s mark to take advantage of Internet users’ typographical errors, prior panels have found this demonstrates a lack of rights or legitimate interests under Policy ¶ 4(a)(ii). See Microsoft Corporation v. michal restl c/o Dynadot Privacy, FA1409001582219 (Forum Nov. 4, 2014) (finding that the respondent’s addition of a single-character to the complainant’s mark illustrated typosquatting and provided further evidence that the respondent’s lacked rights or legitimate interests in the disputed domain name). The Panel finds that Respondent adds an extra letter “l” to Complainant’s mark, demonstrating typosquatting and a lack of rights and legitimate interests under the Policy.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s <telefllex.co> domain name is used in bad faith to display pay-per-click hyperlinks to third-party advertisements. The Panel agrees and finds bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Complainant argues that Respondent’s <telefllex.co> domain name is being used in bad faith to fraudulently scam Complainant’s employees. Bad faith can be found when respondent is using a domain name and email to fraudulently acquire personal or financial information from associates of the complainant, per Policy ¶ 4(a)(iii). 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), where respondent was coordinating the disputed domain name to send emails to Internet users and advising them that they had been selected for a job interview with the complainant and was persuading the users to disclose personal information in the process). Complainant provides screenshots of emails from Respondent’s email address <liam.kelly@telefllex.co>, impersonating Complainant’s President and CEO Liam Kelly, requesting information from Complainant’s employees. The Panel finds that this is further evidence of bad faith under Policy ¶ 4(a)(iii).
The Panel also finds that Respondent’s typosquatting is evidence of bad faith under Policy ¶ 4(a)(iii). See Homer TLC, Inc. v. Artem Ponomarev, FA1506001623825 (Forum July 20, 2015) (“Finally, under this head of the Policy, it is evident that the <homededpot.com> domain name is an instance of typosquatting, which is the deliberate misspelling of the mark of another in a domain name, done to take advantage of common typing errors made by Internet users in entering into a web browser the name of an enterprise with which they would like to do business online. Typosquatting is independent evidence of bad faith in the registration and use of a domain name.”).
Complainant argues that Respondent had knowledge of Complainant’s TELEFLEX mark at the time of registering the <telefllex.co> domain name, which is demonstrated by Respondent’s impersonation of Complainant. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s mark, and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”).
The Panel finds that 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 <telefllex.co> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 25, 2019
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