Agilent Technologies, Inc. v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2206002000855
Complainant is Agilent Technologies, Inc. (“Complainant”), represented by Julie A. Kent of Holland & Hart LLP, Colorado, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aglient.com>, registered with Media Elite Holdings Limited.
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 June 17, 2022; the Forum received payment on June 17, 2022.
On June 20, 2022, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <aglient.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 21, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 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@aglient.com.
Also on June 21, 2022, 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 July 13, 2002, 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 submits that it is a Fortune 500 company and world leader in the life sciences, diagnostics, and applied chemical markets and it was formed in 1999 after its predecessor company, Hewlett-Packard, Inc., announced a strategic realignment to create Complainant as an independent measurement company composed of test and measurement components, life sciences and chemical analysis, electronics, and semiconductor and communications products. That “spin-off” in 1999 received significant media attention because, at the time, the $2.1 billion raised from this initial public offering (“IPO”) was the largest IPO in Silicon Valley history.
Complainant asserts that is has now grown to employ over 17,000 people, serving customers in 110 countries, and serving approximately 265,000 laboratories, including major universities, hospitals, and research institutions globally.
Complainant claims rights in the AGILENT trademark and service mark established by its ownership of the extensive portfolio of registrations described below and its extensive use of the mark in its life sciences business including on its website and social media accounts.
Complainant alleges that the disputed domain name is confusingly similar to the AGILENT mark in which it has rights because it is an intentional misspelling of Complainant’s mark.
The disputed domain name only differs from the AGILENT mark in that it transposes the letters “i” and “l” in “AGILENT” and this minor change is insufficient to distinguish the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See, e.g., Agilent Techs., Inc. v. Ahmed, FA 1791549 (“Respondent’s <aqilant.com> domain name incorporates a misspelled version of Complainant’s AGILENT Mark and adds a gTLD. These changes do not distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i).”).
Complainant adds that the generic Top-Level Domain “gTLD” extension <.com> is 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 next alleges that Respondent has no rights or legitimate interests in the disputed domain name because there is no evidence that Respondent was commonly known by the disputed domain name prior to its acquisition of the disputed domain name from the prior registrant. 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 Respondent is not affiliated with Complainant in any way, not has Complainant given Respondent, the junior user by nearly 20 years, permission to use the AGILENT mark. This lack of consent supports a finding that respondent has no legitimate interests in the disputed domain name. See 7-Eleven, Inc. v. 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 refers to a number of screen captures, showing websites to which the disputed domain name has resolved which are exhibited in annexes to the Complaint, to support its submissions that the Respondent is not making a bona fide, legitimate, noncommercial or fair use of the disputed domain name.
In many instances, the disputed domain name has resolved to webpages that have been flagged, blocked, or otherwise reported as “unsafe” based evidence that those websites are being used for malware, phishing, and other fraudulent schemes. Complainant submits that this evidence demonstrates Respondent’s lack of legitimate rights and interests in the disputed domain name. See Brighthouse Servs., LLC v. Domain Admin, FA 1799172 (Forum Sept. 19, 2018) (no legitimate interests in domain name where complainant provided a screenshot of a warning message that appears when attempting to access the disputed domain name, indicating that the content was blocked as a “security threat”).
At other times the disputed domain name has been used to attract Internet users seeking Complainant’s products and services to a pay-per-click website hosted by Respondent and upon information and belief, in these instances, Respondent likely makes profit by diverting the Internet traffic attracted to the disputed domain name. See Walmart Inc. v. Domain Privacy / Above.com Domain Privacy, FA 1909147 (Forum Sept. 25, 2020) (“Respondent’s use of the Domain Name to host pay-per-click advertisements for goods and services both connected and unconnected to Complainant’s business is not a bona fide offering or a legitimate noncommercial or fair use.”).
Complainant submits that the exhibits show that at other times the disputed domain name has not resolved to an active website at all, or resolves simply to an error message. Complainant submits that this, too, fails to demonstrate rights or legitimate interests in the disputed domain name, as the warehousing or passive holding of a domain name does not show a legitimate use or bona fide offering of goods or services.
Finally, Complainant contends 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, nearly 20 years prior to Respondent’s acquisition of the disputed domain name and previous panels have held that there can be no rights or legitimate interests under Policy ¶ 4(c)(i) when 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, WIPO Case D2002-0329 (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 next alleges that the disputed domain name was registered and is being used in bad faith.
With regard to the registration of the disputed domain name, Complainant argues that the unique qualities of Complainant’s well-known AGILENT mark, which Complainant adopted nearly two decades before Respondent acquired and began using the disputed domain name, render it wholly implausible that Respondent selected the disputed domain name independently.
Complainant alleges that given the notoriety of Complainant’s AGILENT mark, the selection and use of the disputed domain name that is confusingly similar to the AGILENT mark, demonstrates that Respondent had actual knowledge of Complainant’s rights in the AGILENT mark prior to registering the disputed domain name. See Dell Inc. v. Austin, FA 1877900 (Forum Feb. 3, 2020) (“In the present case, Complainant’s trademark is famous. It is difficult to envisage any use of the disputed domain name that would not violate the Policy.”).
Complainant further contends that it is implausible that Respondent acquired the disputed domain name without having prior knowledge of the AGILENT mark.
Complainant adds that Respondent has engaged in obvious typosquatting by registering the disputed domain name that is nearly identical to the AGILENT mark, differing only by switching the letters “i” and “l” in AGILENT—a pair of letters that appear almost identical, especially when the letter “L” is written in lower-case as domain names commonly appear. Panels routinely consider typosquatting to be evidence of bad faith under the Policy. See, e.g., Agilent Techs., Inc. v. Boyles, FA 1855281 (“Given the nonexclusive, open ended nature of Policy ¶ 4(b), typosquatting has, in and of itself, been held to be evidence of bad faith registration and use.”).
Complainant further contends that Respondent’s use of the disputed domain name at times to host pay-per-click websites offers further evidence of Respondent’s bad faith. See State Farm Mut. Auto. Insur. Co. v. Prot. Domain, FA 1886554 (Forum Mar. 28, 2020) (use of “domain name to host click-through links … is indicative of bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv).”).
Complainant adds that the exhibited screen captures show, at other times the disputed domain name has not resolved to any active website and Respondent’s passive holding of the disputed domain name in these circumstances constitutes “warehousing.” See Morgan Stanley v. Koornwinder, FA 1913775 (“Passive holding of a domain name containing a mark with a reputation can be bad faith registration and use.”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant provides services to the life sciences, diagnostics, and the laboratory and scientific research industries using the AGILENT mark for which it holds a large international portfolio of registrations, which it claims to exceed 1,200 in total, including the following in the United States of America for which it has provided copies of the registration certificates:
· United States 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 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 service AGILENT registration number 2,890,011 registered on the Principal Register on September 28, 2004 for services in international classes 36, 41 and 42;
· United States trademark AGILENT registration number 4,404,802 registered on the Principal Register on September 17, 2013 for goods in international classes 9 and 10;
· United States 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 trademark AGILENT registration number 4,368,614 registered on the Principal Register on July 16, 2013 for goods in international class 5;
· United States 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 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 trademark AGILENT registration number 5,384,027 registered on the Principal Register on January 23, 2018 for goods in international class 7;
· United States trademark AGILENT registration number 5,310,983 registered on the Principal Register on October 17, 2017 for goods in international class 11.
Complainant has an established web presence. It maintains its main website at <www.agilent.com> and has active social media accounts.
The disputed domain name <aglient.com> was originally registered on August 22, 2000 and the WHOIS history shows changes to the record between May 15, 2018, and August 2, 2018, with Respondent’s contact information appearing for the first time on August 2, 2018.
There is no information available about Respondent, except for that provided in the Complaint, the details on 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 for 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 uncontested evidence to prove that on the balance of probabilities it has rights in the AGILENT mark, established by its ownership of its portfolio of trademark and service mark registrations described above and extensive use of the mark in its life sciences business that employs over 17,000 people worldwide serving customers in 110 countries, and serving approximately 265,000 laboratories, including major universities, hospitals, and research institutions globally.
The disputed domain name <aglient.com> is almost identical to the AGILENT mark as it is composed of the exact same letters in the same order, with only the letter “i” being moved from immediately before the letter “l” to be placed immediately after the letter “l”.
This transposition of letter “i” is likely to go unnoticed by many Internet users and does not prevent a finding that the disputed domain name is almost identical and confusingly similar to the AGILENT mark.
The gTLD extension <.com> would be considered by Internet users as a necessary technical requirement for a domain name and therefore does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s AGILENT mark.
This Panel finds therefore that the disputed domain name <aglient.com> 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 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 its acquisition of the disputed domain name from the prior registrant;
· Respondent is not affiliated with Complainant in any way;
· Complainant has not given Respondent permission to use the AGILENT mark;
· screen captures, showing websites to which the disputed domain name has resolved which are exhibited in annexes to the Complaint, support Complainant’s submissions that the Respondent is not making a bona fide, legitimate, noncommercial or fair use of the disputed domain name;
· the screen captures show that in many instances, the disputed domain name has resolved to webpages that have been flagged, blocked, or otherwise reported as “unsafe” based on evidence that those websites are being used for malware, phishing, and other fraudulent schemes;
· the screen captures also show that at other times the disputed domain name has been used to attract Internet users seeking Complainant’s products and services to a pay-per-click website hosted by Respondent;
· furthermore the screen captures show that at other times when the disputed domain name has not resolved to an active website at all, or resolved simply to an error message, which constitutes the warehousing or passive holding of the disputed domain name which does not constitute legitimate use or bona fide offering of goods or services;
· 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, nearly 20 years prior to Respondent’s acquisition of the disputed domain name and previous panels have held that there can be no rights or legitimate interests under Policy ¶ 4(c)(i) when a respondent was on notice that a complainant possessed strong trademark rights in a mark identical or similar to the disputed domain name.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that 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).
The disputed domain name was registered on August 22, 2000 and while Complainant alleges that it was registered by Respondent, but Complainant also makes the case that the disputed domain name changed hands on a number of occasion since it was first registered and Respondent’s contact information appeared on the record for the first time on August 2, 2018.
The uncontested evidence shows that the disputed domain name on August 22, 2000, whereas the trademark registrations relied upon by Complainant all post-date the registration of the disputed domain name.
It is not necessary to consider whether the acquisition of the disputed domain name constitutes registration for the purposes of the policy, because the record shows that the registrant was aware of Complainant’s mark and goodwill when the disputed domain name was chosen and registered.
The earliest registration relied upon by Complainant is United States registered trademark and service mark, registration number 2,643,345 registered on October 29, 2002 pursuant to an application filed on June 16 1999 claiming first use in commerce in November 1999.
This is consistent with Complainant’s submissions that it was created in a “spin-off” in 1999 that received significant media attention because, at the time, the $2.1 billion raised from this initial public offering (“IPO”) was the largest IPO in Silicon Valley history.
This Panel is satisfied that on the balance of probabilities therefore, the disputed domain name was intentionally chosen and registered as a misspelling of Complainant’s unique AGILENT mark at a time when the registrant would have been aware of the IPO to target and the registration was an act of typosquatting to take predatory advantage of Complainant’s mark and goodwill in the AGILENT mark.
The subsequent history of the ownership of the disputed domain name is unclear, but it would appear that it changed hands on a number of occasions. Importantly for the purposes of this decision and the issue of whether the disputed domain name is being used in bad faith, the Registrar has confirmed that Respondent is the current registrant.
While Complainant’s allegations that Respondent is using the disputed domain name in connection with suspected malware and phishing have not been contested by Respondent, there is nonetheless not sufficient evidence to show that there has been any such activity associated with the disputed domain name.
There is however sufficient uncontested evidence to show that the disputed domain name, which is confusingly similar to Complainant’s AGILENT mark has been used to resolve to a website with pay-per-click links and therefore on the balance of probabilities the registrant of the disputed domain name has taken predatory advantage of Complainant’s mark and goodwill to attract and divert Internet users mistakenly believing that the website to which the disputed domain name resolves is associated with Complainant with the intention of profiting from the pay-per-click revenue.
Such intentional use of the disputed domain name in an attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and the services purported to be offered by Respondent on his web site constitutes use of the disputed domain name in bad faith for the purposes of the Policy.
Furthermore, the screen captures show, at other times the disputed domain name has not resolved to any active website and Respondent’s passive holding of the disputed domain name.
It is well established that the passive holding of a well known trademark in a domain name may in certain circumstances constitute use in bad faith for the purposes of the Policy. Since the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003) panels have applied a four part test viz. that Complainant’s trademark had a strong reputation and was widely known; that Respondent had provided no evidence of any actual or contemplated good faith use by it of the domain name; that Respondent had taken active steps to conceal its true identity; and that is was not possible to conceive any plausible actual or contemplate active use of the domain name by the Respondent that would not be illegitimate, such as being a passing off, and infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.
The circumstances in this Complaint match each of those criteria. Complainant has shown that it has a substantial global reputation. The AGILENT mark is very distinctive. There is no suggestion of any good faith use of the disputed domain name by Respondent. The stated name of Respondent is Domain Administrator of Fundacion Privacy Services LTD. Furthermore because of the global reputation of the AGILENT mark, it is implausible that Respondent could use the disputed domain name for any legitimate, bona fide commercial purpose.
As this Panel has found that the disputed domain names were registered and are being used in bad faith, Complainant has succeeded in the third element of the test in 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 <aglient.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: July 14, 2022
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