Agilent Technologies, Inc. v. West Inc / Ebba Friesen
Claim Number: FA2107001953829
Complainant is Agilent Technologies, Inc. (“Complainant”), represented by Alexander J.A. Garcia of Perkins Coie LLP, Colorado, USA. Respondent is West Inc / Ebba Friesen (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <agilentsecret.com>, registered with NameSilo, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 2, 2021; the Forum received payment on July 2, 2021.
On July 6, 2021, NameSilo, LLC confirmed by e-mail to the Forum that the <agilentsecret.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 July 9, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 29, 2021 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@agilentsecret.com. Also on July 9, 2021, 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 August 2, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in AGILENT trademark and service mark acquired through its ownership of its portfolio of registrations described below and extensive use of the mark in its business providing goods and services to the life sciences, diagnostics, and laboratory and scientific research industries in which it employs over 16,000 people worldwide serving customers in 110 countries, and serving approximately 265,000 laboratories, including major universities, hospitals, and research institutions globally with revenues in 2019 exceeded USD $5 billion.
Complainant submits that the disputed domain name is confusingly similar to the AGILENT mark in which it has rights as it wholly incorporates the AGILENT mark and merely adds the generic word “secret” and top-level domain <.com>.
Complainant argues that the addition of the generic or descriptive term like “secret” is insufficient to distinguish the disputed domain name from Complainant’s mark with respect to confusing similarity. See Bloomberg Fin. L.P. v. Nexperian Holding Ltd., 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.”).
Furthermore, Complainant contends that top-level domain extension <.com> is also irrelevant for purposes of ascertaining confusing similarity. See Anheuser-Busch, Inc. v. FIG Vietnam c/o Domain Admin, FA 1190330 (Forum Jun. 25, 2008) (finding the “addition of a generic top-level domain such as ‘.com’ is irrelevant when determining if the disputed domain name is confusingly similar to [the complainant’s] mark”).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name, arguing that there is no evidence that Respondent was commonly known by the disputed domain name prior to the registration of the disputed domain name. See Agilent Techs., Inc. v. Muscat, FA 1791505 (Forum July 17, 2018) (“Where a response is lacking, relevant WHOIS may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”).
Complainant asserts that, as owner, it has not given Respondent, permission to use the AGILENT mark and such lack of consent supports a finding that Respondent has no legitimate interests in the disputed domain name. See 7-Eleven, Inc. v. Metodi Darzev / Tool Domains Ltd, FA 1910817 (Forum Oct. 1, 2020) (“In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name.”).
Complainant further argues that Respondent’s actions do not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. In this regard, Complainant refers to a copy of an email message, adduced in evidence in an annex to the Complaint, which shows that Respondent is using the disputed domain name as an email address from which emails are being sent to unsuspecting third parties, purporting to be Complainant.
Complainant argues that such use of AGILENT mark in the email address is an attempt to impersonate Complainant, conduct phishing schemes, and defraud Complainant’s business partners and/or customers. None such actions create rights or legitimate interests under the Policy.
Complainant also contends that previous panels have held that there can be no rights or legitimate interests under Policy ¶ 4(c)(i) when, as in this case, a respondent was on notice that a complainant possessed strong trademark rights in a mark identical or similar to the disputed domain name. See Belo Corp. v. Latimer, D2002-0329 (WIPO May 16, 2002) (finding that registration of <providencejournal.com> demonstrated that respondent had notice of complainant’s strong trademark rights in THE PROVIDENCE JOURNAL and PROVIDENCE JOURNAL).
Complainant argues that, as reflected by the first use dates in Complainant’s trademark registrations, Complainant first began using and developing rights in the AGILENT mark in the United States at least as early as 1999, over 20 years prior to Respondent’s registration of the disputed domain name.
Complainant finally contends in this regard that Respondent’s use of the disputed domain name, as shown in the email message adduced in evidence, indicates that Respondent was not only aware of Complainant’s strong trademark rights, but also illustrates Respondent’s attempts to benefit from Complainant’s goodwill associated with the AGILENT mark.
Complainant then alleges that the disputed domain name was registered and is being used in bad faith, arguing that the unique qualities of Complainant’s well-known AGILENT mark, which was adopted by Complainant over two decades prior to the registration of the disputed domain name, render it wholly implausible that Respondent created the disputed domain name, independently.
Referring to the abovementioned copy email correspondence which is annexed to the Complaint, Complainant submits that it shows that Respondent registered and is using the disputed domain name, in bad faith to impersonate Complainant in furtherance of an illegal phishing scheme designed to extract sensitive financial information and/or payments from Complainant’s business partners and customers. Complainant argues that “[i]t is inconceivable that the confusingly similar domain name’s connection with such a foul [phishing] scheme might be anything other than a bright marker unequivocally signaling [r]espondent’s bad faith registration and use of the domain name.” Wells Fargo & Co. v. Andre Schneider/DomCollect AG, FA 1566150 (Forum July 27, 2014).
Complainant submits that panels regularly find that both elements of the test in Policy ¶ 4(a)(iii) (bad faith registration and bad faith use) are met when the domain name in question is being used in similarly fraudulent impersonation schemes.
Furthermore, Complainant submits that it appears that the address provided by Respondent in connection with the registration of the disputed domain name, is fraudulent. Complainant submits that the address provided in the registration details for the disputed domain name is false, and refers to a copy of search results from Google Maps, adduced in evidence in an annex to the Complaint which indicates that no such address exists. Complainant adds that in fact the address furnished by Respondent makes no sense at all, as the address includes multiple street addresses, references to both Virginia and Massachusetts, and a zip code from Phoenix, Arizona. Prior panels have found that furnishing false contact information to a domain name registrar is evidence of a bad faith registration. See Effectus Clothing LLC v. Abed, FA 1781155 (Forum May 10, 2018) (finding bad faith where respondent first provided an address that does not exist and then changed it to the address for a local city hall).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant provides goods and services in connection with life sciences, diagnostics, and the laboratory and scientific industries under the AGILENT marks. Complainant has provided copies of the registration certificates to prove its ownership of the following United States Federal trademark and service mark registrations: for which it owns the following international portfolio of trademark and service mark registrations:
· United States Federal trademark and service mark AGILENT registration number 2,643,345 registered on the Principal Register on October 29, 2002 for goods and services in international classes 1, 9, 10. 14, 16, 35, 36, 37, 41 and 42;
· United States Federal trademark and service mark AGILENT registration number 2,461,406 registered on the Principal Register on June 19 2001 for goods and services in international classes 21, 23, 26, 36 and 38;
· United States Federal trademark AGILENT registration number 4,085,588 registered on the Principal Register on January 17, 2012 for goods in international classes 1,3 and 4;
· United States Federal service AGILENT registration number 2,890,011 registered on the Principal Register on September 28, 2014 for services in international classes 36, 41 and 42;
· United States Federal trademark AGILENT registration number 4,387,736 registered on the Principal Register on August 20, 2013 for goods in international classes 9 and 10;
· United States Federal trademark AGILENT registration number 4,368,614 registered on the Principal Register on July 16, 2013 for goods in international class 5;
· United States Federal service mark AGILENT registration number 5,085,118 registered on the Principal Register on November 22, 2016 for services in international class 42;
· United States Federal service mark AGILENT registration number 5,296,474
· registered on the Principal Register on September 26, 2017 for services in international class 35;
· United States Federal trademark AGILENT registration number 5,384,027 registered on the Principal Register on January 23, 2018 for goods in international class 7;
· United States Federal trademark AGILENT registration number 5,310,983 registered on the Principal Register on October 17, 2017 for goods in international class 11.
Complainant furthermore claims, but provides no supporting evidence, that it owns the following registered trademarks and service marks: United Kingdom registered trade mark AGILENT registration number 2213101B registered on June 15, 2001; United Kingdom registered trade mark AGILENT registration number 3,232,149 registered on January 5, 2018; EUTM AGILENT registration number 011560802 registered on July 29, 2013.
Complainant has an established Internet presence and maintains a website to which its domain name <agilent.com> resolves.
The disputed domain name was registered on May 17, 2021 using a privacy service to conceal the identity of the registrant. It resolves to an inactive parking page maintained by the Registrar and has been used to establish an Internet account from which Respondent has sent at least one email fraudulently and misleadingly purporting to impersonate the president of Complainant’s corporation.
There is no information available about Respondent except for that which is provided in the Complaint, the Registrar’s WhoIs, and the information provided by the Registrar in response to the request by the Forum for verification of the registration details of the disputed domain name in the course of this proceeding, The Registrar confirmed that Respondent is the registrant of the disputed 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 has provided clear and convincing, uncontested evidence that it has rights in, as owner of the AGILENT trademark and service mark through its portfolio of registrations and extensive use of the mark in its business providing goods and services related to life sciences and laboratories across the world.
The disputed domain name: is composed of Complainant’s AGILENT mark followed by the word “secret” and the gTLD <.com> extension.
Complainant’s AGILENT mark is the only distinctive element of the disputed domain name. Because Complainant’s mark is contained in the disputed domain name in its entirety, and because the AGILENT mark is highly distinctive.
The element “secret” has the potential to have a distinguishing character, but in combination with Complainant’s distinctive mark, it does not add sufficient distinguishing character to the domain name to avoid a finding of confusing similarity.
Neither does the gTLD extension add any distinguishing character to the disputed domain name as it would, in context, be perceived by Internet users to be merely a technical requirement for a domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the AGILENT mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, arguing that
· there is no evidence that Respondent was commonly known by the disputed domain name prior to the registration of the disputed domain name;
· Respondent’s actions do not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name;
· a copy of an email message, adduced in evidence in an annex to the Complaint, shows that Respondent is using the disputed domain name as an email address to contact unsuspecting third parties, purporting to be Complainant and such use of AGILENT mark in the email address in an attempt to impersonate Complainant, conduct phishing schemes, and defraud Complainant’s business partners and/or customers cannot create rights or legitimate interests under the Policy;
· Respondent was on notice that Complainant possessed strong trademark rights in a mark identical or similar to the disputed domain name. as reflected by the date of Complainant’s first use of the mark, as claimed in Complainant’s trademark registrations;
· Complainant first began using and developing rights in the AGILENT mark in the United States at least as early as 1999, which was over 20 years prior to Respondent’s registration of the disputed domain name, and therefore Respondent was not only aware of Complainant’s strong trademark rights, but that Respondent is attempting to benefit from Complainant’s goodwill associated with the AGILENT mark.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name.
Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations and so has not discharged the burden.
In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
This Panel finds that the disputed domain name was registered in bad faith. The evidence shows that the registrant chose and registered the disputed domain name with Complainant’s AGILENT mark in mind.
This Panel accepts Complainant’s uncontested submissions that the unique qualities of Complainant’s well-known AGILENT mark, which was adopted by Complainant over two decades prior to the registration of the disputed domain name, render it wholly implausible that the disputed domain name was registered without reference to the AGILENT mark.
The AGILENT mark which is the dominant feature of the disputed domain name, is unique.
Furthermore, the uncontested evidence shows that Respondent has no rights or legitimate interests in the disputed domain name, and it is improbable that the disputed domain name was registered for any reason other than to take predatory advantage of Complainant’s name, mark and reputation in order to create confusion among Internet users by its use.
In making this finding, this Panel is supported by the fact that the registrant of the disputed domain name availed of a privacy service to conceal his/her/its identity and the address provided to the Registrar for registration of the disputed domain name, is a fiction as it is a meaningless mixture of a number of different states and localities as described above by Complainant.
Additionally, the uncontested evidence shows that the disputed domain name has been used to establish an email account from which Respondent has sent an email to a third party purporting to come from Complainant. The partially-redacted email purports to come from the president of Complainant’s corporation. It is addressed to an unidentified third party requesting the recipient to respond to the president’s private Outlook account.
This Panel accepts the uncontested submission of Complainant that the email was not sent by Complainant’s president and that by sending the email requesting a response to a different email account, this Panel finds that on the balance of probabilities, Respondent purported to engage the recipient in a phishing scheme.
Furthermore, the screen capture annexed to the Complaint shows that the disputed domain name resolves to an inactive parking page maintained by the Registrar which in context indicates that Respondent has no rights or legitimate interests in the disputed domain name and in the context of this particular disputed domain name and the evidence adduced, raises a strong inference that the disputed domain name was registered and is being used in bad faith.
On the balance of probabilities therefore the disputed domain name is being used at least to impersonate Complainant and also to perpetrate a phishing scheme.
As this Panel has found that on the balance of probabilities the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in its application for transfer of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <agilentsecret.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: August 3, 2021
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