Teleflex Incorporated v. Anthony Testa / 311 W. 167th St LLC
Claim Number: FA1905001844928
Complainant is Teleflex Incorporated (“Complainant”), represented by Kevin M. Bovard of Baker & Hostetler LLP, Pennsylvania, USA. Respondent is Anthony Testa / 311 W. 167th St LLC (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <telefilex.com>, registered with Google 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 24, 2019; the Forum received payment on May 24, 2019.
On May 24, 2019, Google LLC confirmed by e-mail to the Forum that the <telefilex.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 June 5, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 25, 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@telefilex.com. Also on June 5, 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 June 27, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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 mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,780,186, registered April 27, 2010). Respondent’s <telefilex.com> is confusingly similar to Complainant’s TELEFLEX mark as Respondent simply adds the letter “i” in the middle of the term “Teleflex” in addition to the “.com” generic top level domain (gTLD).
Respondent has no rights or legitimate interests in the <telefilex.com> domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize or license Respondent to use the TELEFLEX mark. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain resolves to a website devoid of any content. Respondent further uses the domain name in part of a spoofing swindle, where Respondent is posing as an employee of Complainant.
Respondent registered and is using the <telefilex.com> domain name in bad faith by engaging in typosquatting. Furthermore, Respondent registered the disputed domain name under a false identity, further evincing bad faith. Lastly, Respondent had actual knowledge of Complainant’s rights in the TELEFLEX mark – bad faith per Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Teleflex Incorporated (“Complainant”), of Wayne, PA, USA. Complainant is the owner of domestic and international registrations for the mark TELEFLEX, which it has continuously used since at least as early as 1996, in connection with its provision of medical technology products and specialty devices. Complainant is the owner of numerous related marks, which taken together comprise the TELEFLEX family of marks used both in real and cyberspace. Thus, Complainant owns numerous domain name registrations for its marks, including <teleflex.com>.
Respondent is Anthony Testa / 311 W. 167th St LLC (“Respondent”), Hazel Crest, IL, USA. Respondent’s registrar’s address is listed as Mountain View, CA, USA. The Panel notes that Respondent registered the <telefilex.com> on or about May 6, 2019.
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 registration with the USPTO. Registration of a mark with the USPTO is sufficient in establishing rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided the Panel with a copy of its USPTO registration for the TELEFLEX mark (e.g. Reg. No. 3,780,186, registered April 27, 2010). The Panel here finds that Complainant has adequately established rights in the TELEFLEX mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <telefilex.com> domain name is identical or confusingly similar to Complainant’s TELEFLEX mark as Respondent simply adds the letter “i” in the middle of the term “Teleflex” in addition to the “.com” gTLD. Addition of a single letter to a fully formed mark along with the gTLD does not distinguish a disputed 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 here finds that Respondent’s domain name is confusingly similar to Complainant’s TELEFLEX mark per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that 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 here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <telefilex.com> domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize, license, or endorse Respondent’s use of the TELEFLEX mark. A respondent may lack rights or legitimate interests in a domain name if a complainant does not license or authorize a respondent to use the mark and 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). Respondent provided no evidence to suggest that Complainant has authorized or licensed Respondent to use Complainant’s TELEFLEX mark. Additionally, the WHOIS information identifies Respondent as “Anthony Testa.” The Panel here finds that Respondent has no rights or legitimate interests in the <telefilex.com> domain name per Policy ¶ 4(c)(ii).
Complainant further argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use of the <telefilex.com> domain name. Instead, Respondent’s domain name resolves to a page that is devoid of content. Use of a domain name to resolve to an inactive page is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Nutri/System IPHC, Inc. v. Usama Ayub, FA1725806 (Forum June 5, 2017) (“Respondent does not use the <nutrisystemturbo.us> domain for a bona fide offering of goods or services because the domain name resolves to a website that currently is designated as ‘under construction.’”). Here, Complainant provides a screenshot of the resolving webpage of Respondent’s disputed domain name that shows that the domain name cannot be reached. Therefore, the Panel here finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that Respondent uses the <telefilex.com> domain name to pass off as an employee of Complainant. Use of a disputed domain name to pass off as an employee of a complainant via email may not evince a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name). Here, Complainant provides an email chain sent from an email address associated with the <telefilex.com> domain name that purportedly shows Respondent trying to pass off as an employee of Complainant in hopes of confusing other employees of Complainant. The Panel here finds that Respondent failed to make a bona fide offering of goods or service or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Although Complainant has not made arguments under Policy ¶ 4(b), such arguments are not required under the Policy—so long as Complainant shows bad faith use and registration in some manner. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). The Panel here finds Complainant’s Policy ¶ 4(a)(iii) arguments are sufficient to establish bad faith.
Complainant argues that Respondent registered and is using the <telefilex.com> domain name in bad faith because Respondent engaged in typosquatting. Adding a small typographical error to a mark while registered a domain name may be evidence of bad faith per Policy ¶ 4(a)(iii). See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant’s mark with small typographical errors introduced therein). Here, Respondent added the letter “i” to Complainant’s mark. Complainant argues this is a small typographical error that demonstrates Respondent’s typosquatting. The Panel here finds that Respondent engaged in typosquatting and registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <telefilex.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: July 11, 2019
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