Teleflex Incorporated v. Brianna Crawford
Claim Number: FA1905001841552
Complainant is Teleflex Incorporated (“Complainant”), represented by Kevin M. Bovard of Baker & Hostetler LLP, Pennsylvania, United States. Respondent is Brianna Crawford (“Respondent”), Texas, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <teleflex-inc.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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 2, 2019; the Forum received payment on May 2, 2019.
On May 2, 2019, eNom, LLC confirmed by e-mail to the Forum that the <teleflex-inc.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 May 7, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 28, 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@teleflex-inc.com. Also on May 7, 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 30, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 global provider of medical technology products, including specialty devices for a range of procedures in critical care and surgery that are designed to improve the health and quality of people’s lives. Complainant has rights in the TELEFLEX through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,780,186, registered Apr. 27, 2010). Respondent’s <teleflex-inc.com> is confusingly similar to Complainant’s TELEFLEX mark as it uses the mark in its entirety and adds a hyphen with the generic term “inc” as well as the generic top-level domain (“gTLD”) “.com”.
Respondent has no rights or legitimate interests in the <teleflex-inc.com> domain name. Respondent is not authorized or licensed to use Complainant’s TELEFLEX mark and is not commonly known by the disputed domain name. Furthermore, Respondent does not make a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Instead, the disputed domain name resolves to an inactive page that states a “404” error message.
Respondent registered and is using the <teleflex-inc.com> domain name in bad faith. Respondent’s failure to use the domain for an active website is evidence of bad faith. Respondent also registered the disputed domain name under a privacy service and with false contact information. Lastly, Respondent had actual and constructive knowledge of Complainant’s rights in the TELEFLEX mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <teleflex-inc.com> domain name.
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 claims to have rights in the TELEFLEX mark through its registrations with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in a mark per Policy ¶ 4(a)(i). 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)). Here, Complainant has provided this Panel with copies of it USPTO registrations for the TELEFLEX mark (e.g. Reg. No. 3,780,186 registered Apr. 27, 2010). The Panel finds Complainant has rights in the TELEFLEX mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <teleflex-inc.com> domain name is confusingly similar to Complainant’s TELEFLEX mark as it uses the mark in its entirety and adds a hyphen with the generic term “inc” as well as the gTLD “.com”. Such changes to a complainant’s mark are insufficient to differentiate the disputed domain name from the mark under a Policy ¶ 4(a)(i) analysis. See Starbucks Corporation d/b/a Starbucks Coffee Company v. Waseem A Ali / Micron Web Services, FA 1785616 (Forum June 8, 2018) (finding the <starbucksreal.com> domain name to be confusingly similar to the STARBUCKS mark, as “the addition of the generic term ‘real’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Panel finds that Respondent’s confusingly similar domain name does not sufficiently distinguish itself from the TELEFLEX mark pursuant to Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then 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”). The Panel finds Complainant has made a prima facie case.
Complainant asserts Respondent has no rights or legitimate interests in the <teleflex-inc.com> domain name because Respondent is not commonly known by the disputed domain name, nor was Respondent authorized to use Complainant’s TELEFLEX mark. Where there is no response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed 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). Further, lack of authorization to use a complainant’s mark may support a finding that the respondent is not commonly known by the disputed 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 identifies Respondent as “Brianna Crawford” and there is nothing in the record to suggest that Respondent is authorized to use the TELEFLEX mark. The Panel finds that Respondent is not commonly known by the <teleflex-inc.com> domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not make a bona fide offering of goods or services, nor a legitimate noncommercial or fair use as the disputed domain name resolves to a page that stats a “404” error and shows an inactive webpage. Panels have previously held that a domain name that resolves to an inactive or under construction webpage is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Complainant has provided screenshots of Respondent’s <teleflex-inc.com> domain name resolving website that show the error message. The Panel finds that Respondent does not use the <teleflex-inc.com> domain name to make a bona fide offering of goods or services, nor a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant contends that Respondent registered and is using the <teleflex-inc.com> domain name in bad faith as the domain name fails to resolve to an active webpage. Panels have held that failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Here, Complainant has provided screenshots of Respondent’s <teleflex-inc.com> domain name’s resolving website that show the error message and an inactive webpage. The Panel agrees finds that Respondent’s inactive use of the disputed <teleflex-inc.com> domain name is evidence of bad faith registration and use per Policy ¶ 4(a)(iii).
Complainant argues Respondent had actual and constructive knowledge of Complainant’s rights in the TELEFLEX mark at the time Respondent registered and subsequently used the <teleflex‑inc.com> domain name. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name is adequate to find bad faith under Policy ¶ 4(a)(iii). See Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (finding the respondent had actual knowledge of the complainant and its rights in the claimed mark due to the fame of the mark, established by the complainant’s submission of numerous articles regarding the success of the complainant’s product). Complainant contends that the addition of the “inc” tends to show Respondent’s actual knowledge of Complainant’s use of the name “Teleflex Incorporated.” The Panel finds that Respondent had actual notice of Complainant’s rights in the TELEFLEX mark per Policy ¶ 4(a)(iii), and registered and uses the domain name in bad faith.
Complainant has proved this element.
DECISION
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 <teleflex-inc.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: June 3, 2019
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