Danaher Corporation v. Anonymize, Inc.
Claim Number: FA2111001973695
Complainant is Danaher Corporation (“Complainant”), represented by Adam Harber of Williams & Connolly LLP, District of Columbia, USA. Respondent is Anonymize, Inc. (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <danaherbenefit.com> and <danaherbenfits.com>, registered with Epik Inc..
PANEL
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 17, 2021. The Forum received payment on November 17, 2021.
On November 18, 2021, Epik Inc. confirmed by e-mail to the Forum that the <danaherbenefit.com> and <danaherbenfits.com> domain names are registered with Epik Inc. and that Respondent is the current registrant of the names. Epik Inc. has verified that Respondent is bound by the Epik 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 November 19, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 9, 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@danaherbenefit.com, postmaster@danaherbenfits.com. Also on November 19, 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 December 15, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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 large, global conglomerate focused on designing, manufacturing, and marketing professional, medical, industrial and commercial products and services in the sectors of life sciences, dental, industrial, test and measurement and environmental technologies. It provides its employees with benefits through an online website at <mydanaherbenefits.com>. Complainant has rights in the DANAHER mark at common law and through its registrations with the SAIC. Respondent’s <danaherbenefit.com> and <danaherbenfits.com> domain names are identical or confusingly similar to Complainant’s mark.
Respondent lacks rights and legitimate interests in the <danaherbenefit.com> and <danaherbenfits.com> domain names. Respondent is not commonly known by the domain names, nor has Complainant authorized or licensed Respondent to use its DANAHER mark in the domain names. Respondent does not use the domain names for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair use, but instead hosts parked pay-per-click advertising links aimed at making money by intentionally creating confusion through the unauthorized use of the DANAHER mark.
Respondent registered the <danaherbenefit.com> and <danaherbenfits.com> domain names in bad faith with actual knowledge of Complainant’s rights in the DANAHER mark and uses them to disrupt Complainant’s business for commercial gain by hosting parked, pay-per-click links on the domain names’ resolving websites. Respondent hid its identity behind a WHOIS privacy service.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 shown that it has rights in the DANAHER mark through registrations in China with the SAIC (e.g. Reg. 22,741,109, registered Apr. 21, 2018). The Panel finds Respondent’s <danaherbenefit.com> and <danaherbenfits.com> domain names to be confusingly similar to Complainant’s mark as they incorporate the mark in its entirety and add the words “benefit” or “benfits”, neither of which suffice to distinguish the domain names from the mark, along with the inconsequential “.com” generic top-level domain (“gTLD”), which may be ignored.
Complainant has established this element.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <danaherbenefit.com> and <danaherbenfits.com> domain names were registered on Nov. 5, 2020, many years after Complainant has shown that its DANAHER mark had become very well-known worldwide. Both domain names resolve to a web page with generic links to pages purporting to offer employee benefits. When users click those links, they are presented with advertisements for third party websites that provide benefit services which compete with Complainant’s own employee benefits.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <danaherbenefit.com> and <danaherbenfits.com> domain names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain names.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s well-known DANAHER mark and of the benefits offered to Complainant’s employees through its website at “www.mydanaherbenefits.com” when Respondent registered the <danaherbenefit.com> and <danaherbenfits.com> domain names and did so primarily to disrupt Complainant’s business. Further, by using the domain names to display advertisements for competing services Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites, by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s websites and of the services promoted on those websites. This demonstrates registration and use in bad faith gain under Policy ¶ 4(b)(iii) and (iv).
Complainant has established 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 <danaherbenefit.com> and <danaherbenfits.com> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: December 17, 2021
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