Hologic, Inc. v. Вячеслав
Claim Number: FA2011001923281
Complainant is Hologic, Inc. (“Complainant”), represented by Lawrence R. Robins of FisherBroyles LLP, Massachusetts, USA. Respondent is Вячеслав (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mammohologic.com> (“Domain Name”), 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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 30, 2020; the Forum received payment on November 30, 2020.
On December 1, 2020, Google LLC confirmed by e-mail to the Forum that the <mammohologic.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 December 4, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 24, 2020 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@mammohologic.com. Also on December 4, 2020, 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 formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 30, 2020, 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. 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 formal response from Respondent.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Hologic, Inc., operates a publicly traded medical technology company, primarily focusing on women’s health and well-being. Complainant has rights in the HOLOGIC mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 3,857,248, registered Oct. 5, 2010). Respondent’s <mammohologic.com> domain name is confusingly similar to Complainant’s HOLOGIC mark, only differing by the addition of the generic term “mammo” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <mammohologic.com> domain name as it is not authorized, licensed, or otherwise permitted to use the HOLOGIC mark. Additionally, Respondent does not use the Domain Name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent hosts a copycat website (“Respondent’s Website”) where Respondent attempts to pass itself off as Complainant.
Respondent registered and uses the <mammohologic.com> domain name in bad faith. Respondent attempts to pass itself off as Complainant to disrupt Complainant’s business. Additionally, Respondent had actual knowledge of Complainant’s rights in the HOLOGIC mark prior to registration of the Domain Name.
B. Respondent
Respondent failed to submit a formal Response in this proceeding however on December 25, 2020 sent an e-mail to the Forum, the relevant portion being extracted below. The Panel notes that the e-mail did not attach any documentation to support Respondent’s claims:
“I am sorry for the inconvenience, but there was no aim to breach any rights of yours. I made this website just as a part of educational project and deleted upon the task was made and represented to my classmates. There was no purpose to receive any profit (no any fraud), or to advertise your services or products myself, to use your brand name (breach of IP rights), and as you noticed, it was just a copy of pages, without any functional bottoms, links, etc. So, there is no any offence in my actions, moreover there are no any consequences.
I do really appreciate your goodwill and intellectual property rights. As
requested, the website and domain name were totally removed.”
Complainant holds trademark rights for the HOLOGIC mark. The 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 Domain Name and that Respondent registered and has used 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 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 has rights in the HOLOGIC mark through its registration of the mark with the USPTO (e.g. Reg. 3,857,248, registered Oct. 5, 2010). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The Panel finds that the <mammohologic.com> domain name is confusingly similar to the HOLOGIC mark as it wholly incorporates the HOLOGIC Mark and adds the term “mammo” and the “.com” gTLD. Complainant asserts the term “mammo” is a generic term but fails to indicate what this term, which is not a dictionary word, describes. However, given the nature of the Respondent’s Website, and Complainant’s business, the Panel considers that a viewer of the Domain Name would view the term “mammo” as being an abbreviation of the generic term “mammography”, which describes the products offered by Complainant (and the products purportedly offered on the Respondent’s Website). The addition of a generic term to a mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. 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 Domain Name 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 and that Respondent, which did not put on any evidence to support its contentions, has failed to show it has rights or legitimate interests.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the HOLOGIC mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. 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 “Вячеслав” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
Complainant alleges, and provides clear evidence to support its allegations, that Respondent uses the Domain Name for a website to compete with and pass off as the Complainant. The Panel notes that the Respondent’s Website purports to sell mammography devices, including those of Complainant’s competitors, under the HOLOGIC trade mark, includes information about Complainant’s technology and provides Complainant’s mailing address as part of its contact details (but contains an e-mail address that differs from Complainant’s e-mail addresses). In the absence of any supporting evidence (such as details of the course attended by the Respondent and the steps taken to develop the Respondent’s Website), the Panel is not prepared to accept Respondent’s contentions that the Respondent’s Website was for an education project. The use of a confusingly similar domain name to resolve to a webpage that competes with and passes off as a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use; indeed it provides a false impression that the Respondent is affiliated with or authorized by Complainant. See BALENCIAGA SA v. ling lin, FA 1768542 (Forum Feb. 16, 2018) (“The disputed domain names incorporate Complainant's registered mark, and are being used for websites that prominently display Complainant's mark and logo, along with apparent images of Complainant's products, offering them for sale at discounted prices. The sites do not disclaim any connection with Complainant, and in fact seem to be designed to create an appearance of such a connection. Such use does not give rise to rights or legitimate interests.”); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that, at the time of registration of the Domain Name, November 13, 2020, Respondent had actual knowledge of Complainant’s HOLOGIC mark since the Respondent’s Website passes itself off as an official website of the Complainant and makes reference the Complainant’s business address. Furthermore, there is no supported or obvious explanation for an entity to register a domain name that contains the HOLOGIC mark and use it for a website purporting to sell mammography devices in direct competition with the Complainant other than to take advantage of Complainant’s reputation in the HOLOGIC mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith to create confusion with Complainant’s HOLOGIC mark for commercial gain by using the confusingly similar Domain Name to resolve to a website mimicking Complainant’s website and offering mammography devices in direct competition with the Complainant’s products. Using a confusingly similar domain name to trade upon the goodwill of a complainant can evince bad faith under Policy ¶ 4(b)(iv). 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).”). See also See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
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 <mammohologic.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: January 4, 2021
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