Agilent Technologies, Inc. v. li wei wei / dong dong ke ji shen zhen you xian gong si
Claim Number: FA2204001990953
Complainant is Agilent Technologies, Inc. (“Complainant”), represented by Julie A. Kent of Holland & Hart LLP, Colorado, USA. Respondent is li wei wei / dong dong ke ji shen zhen you xian gong si (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nonagilent.com>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 4, 2022; the Forum received payment on April 4, 2022.
On April 6, 2022, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <nonagilent.com> domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the name. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) 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 April 13, 2022, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of May 3, 2022 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@nonagilent.com. Also on April 13, 2022, the Chinese and English language 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 9, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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.
Preliminary Issue: Language of Proceeding
The Panel notes that the Complainant requests that the language of this administrative proceeding shall proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. UDRP Rule 10 (b) states that in all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. The UDRP Rule 10 (c) states that the Panel shall ensure that the administrative proceeding takes place with due expedition.
The Panel has taken into consideration that the Respondent did not file a response, and thereby also failed to argue that the language of proceeding should be in Chinese language. Although this is not enough alone to treat English as the language of proceeding, it is one indicator that Respondent accepts English.
Here, it shall also be duly noted that the Forum has, on May 9, 2022, communicated in Chinese with the Respondent, informing of the appointment of the Panelist, due date for the Administrative Hearing, and how the parities shall communicate with the Forum – still resulting in no actions or communications from the Respondent. This is a further indication that Respondent has chosen to not make any Response at all, independent of the language of the proceeding.
The Panel further notes that the disputed domain name is similar to the US-based Complainant’s company name and trademark, clearly constructed as the English word “non” added in front of the Complainant’s trademark and dominant part of the Complainant’s company name - AGILENT (referring to “agility”). These combined (English) words have no meaning in the Chinese language, indicating that the disputed domain name was registered with a more international (English spoken) audience in mind, with knowledge of Complainant’s trademark.
The Panel has weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party, together with the other referred facts and indications in the case. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
A. Complainant
The Complainant is a chemical and life sciences company. Complainant has rights in the AGILENT trademark through its registration with various trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (Reg.2,643,345, registered Oct. 29, 2002). Respondent’s <nonagilent.com> domain name is identical or confusingly similar to Complainant’s trademark as it incorporates the trademark in its entirety and adds the word “non” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <nonagilent.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its AGILENT trademark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead inactively holds the disputed domain name’s resolving website and possibly sends fraudulent emails from it.
Respondent registered and uses the <nonagilent.com> domain name in bad faith. Respondent has exhibited a pattern of bad faith registration and use. Respondent inactively holds the disputed domain name’s resolving website. Respondent possibly phishes with the disputed domain name. Respondent registered the disputed domain name with knowledge of Complainant’s rights in the AGILENT trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner the following trademark registrations, registered with the United States Patent and Trademark Office (“USPTO”):
- No. 2,643,345 AGILENT (word), registered on October 29, 2002 for goods and services in Intl Classes 1, 9, 10, 14, 16, 35, 36, 37, 41 and 42
- No. 4,085,588 AGILENT (word), registered on January 17, 2012 for goods in Intl Classes 1, 3 and 4
- No. 2,890,011 AGILENT (word), registered on September 28, 2004 for services in Intl Classes 36, 41 and 42
- No. 4,404,802 AGILENT (word), registered on September 17, 2004 for goods in Intl Class 10
- No. 4,387,736 AGILENT (word), registered on August 20, 2013 for goods in Intl Classes 9 and 10
- No. 4,368,615 AGILENT (word), registered on July 16, 2013 for goods in Intl Class 5
- No. 5,085,118 AGILENT (word), registered on November 22, 2016 for services in Intl Class 42
- No. 5,296,474 AGILENT (word), registered on September 26, 2017 for services in Intl Class 35
- No. 5,384,027 AGILENT (word), registered on January 23, 2018 for goods in Intl Class 7, and
- No. 5,310,983 AGILENT (word), registered on October 17, 2017 for goods in Intl Class 11
Further, the Complainant has stated that the Complainant owns numerous trademark registrations worldwide, and has provided some basic information on registrations valid in United Kingdom and the European Union.
The disputed domain name <nonagilent.com> was registered on March 7, 2022.
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”).
The Complainant claims rights in the AGILENT trademark through its registration with various trademark agencies, including the USPTO (Reg.2,643,345, registered Oct. 29, 2002). The Panel notes that Complainant has not provided any evidence (such as cioopies if Certificates of Registration) from other countries/regions than the US trademark registrtations. However, registration with the USPTO is generally sufficient in demonstrating rights in a trademark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel find that Complainant has rights in the trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <nonagilent.com> domain name is identical or confusingly similar to Complainant’s AGILENT trademark as it incorporates the trademark in its entirety and adds the term “non”, which stands for a piece of technology in Complainant’s business. Under Policy ¶ 4(a)(i), adding a generic or descriptive word is generally insufficient in differentiating a disputed domain name from the trademark it incorporates. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Forum May 16, 2007) (finding that the addition of the descriptive term “wine” to the complainant’s BLACKSTONE mark in the <blackstonewine.com> domain name was insufficient to distinguish the mark from the domain name under Policy ¶ 4(a)(i)). Therefore, the Panel find that Respondent’s domain name is at least confusingly similar to Complainant’s trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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”).
Complainant argues that Respondent is not commonly known by the <nonagilent.com> domain name, nor has Complainant authorized or licensed Respondent to use its AGILENT trademark in the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS Information may demonstrate that a Respondent is not commonly known by a disputed domain name, while a lack of evidence demonstrating otherwise may affirm a Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain name. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). In the current case, the WHOIS of record identifies Respondent “Li Wei Wei” and nothing in the record rebuts the Complainant’s assertion that it never authorized or licensed Respondent to use its AGILENT trademark in the disputed domain name. Therefore, the Panel find that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the <nonagilent.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to send fraudulent emails while inactively holding its resolving website is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Here, Complainant provides screenshots of the disputed domain name’s resolving website, which contains no content but an error message, and a screenshot showing an MX record for the disputed domain name, which demonstrates that <nonagilent.com> may be used for sending fraudulent emails. The Panel notes that the Respondent has chosen not to comment on the Complainant’s arguments, nor to provide any evidence of legitimate rights. Therefore, the Panel agree with the Complainant, and find that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent has exhibited a pattern of bad faith registration and use. Numerous adverse UDRP holdings against a Respondent may be evidence of a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). Complainant refers to numerous UDRP proceedings, where the Respondent has been identified as the respondent / holder. Therefore, the Panel find that Respondent has exhibited a pattern of bad faith registration and use under Policy ¶ 4(b)(ii).
Complainant argues that Respondent registered and uses the <nonagilent.com> domain name in bad faith. Inactively holding a disputed domain name’s resolving website is generally considered evidence of bad faith registration and use under 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).”). As noted above, the Complainant has provided screenshots of the disputed domain name’s resolving website, which features no content but an error message. Therefore, the Panel find that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
The Complainant further argues that Respondent registered and uses the <nonagilent.com> domain name in bad faith by possibly phishing for user information with the disputed domain name. Under Policy ¶ 4(a)(iii), phishing for user information via emails is generally considered evidence of bad faith. See Airbnb, Inc. v. JAMES GRANT, FA1760182 (Forum Dec. 28, 2017) (“Using a misleading email address to defraud unwary customers certainly constitutes bad faith.”). Complainant provides screenshots of an MX record for the disputed domain name, meaning that an email address has been set up that could and may be used for fraudulent emails. Therefore, the Panel find that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent registered the <nonagilent.com> domain name with bad faith actual knowledge of Complainant’s rights in the AGILENT trademark. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient in demonstrating bad faith, and may be established through incorporation of a well-known/registered trademark into a domain name. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). As concluded above, Complainant’s registered AGILENT trademark is incorporated into the disputed domain name, with only additions of a descriptive term in the front of the trademark. Therefore, the Panel agrees with Complainant’s conclusion, and find that Respondent had actual knowledge of Complainant’s rights in the trademark under 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 <nonagilent.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: May 23, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page