Agilent Technologies, Inc. v. Ryan Kral / Horse Back LLC
Claim Number: FA2208002007011
Complainant is Agilent Technologies, Inc. (“Complainant”), represented by Julie A. Kent of Holland & Hart LLP, Colorado, USA. Respondent is Ryan Kral / Horse Back LLC (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <agilentusa.com>, registered with Porkbun 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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 3, 2022; the Forum received payment on August 3, 2022.
On August 3, 2022, Porkbun LLC confirmed by e-mail to the Forum that the <agilentusa.com> domain name is registered with Porkbun LLC and that Respondent is the current registrant of the name. Porkbun LLC has verified that Respondent is bound by the Porkbun 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 August 4, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 24, 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@agilentusa.com. Also on August 4, 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 August 29, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho-Hyun Nahm, Esq. 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
i) Complainant, Agilent Technologies, Inc., provides goods and services in the life sciences, diagnostics, and applied chemical markets. Complainant has rights in the AGILENT mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., 2,643,345, registered October 29, 2002). The disputed domain name is confusingly similar to Complainant’s mark because the disputed domain name incorporates the entire mark and added the geographic term “usa” and the “.com” generic top-level domain (“gTLD”).
ii) Respondent does not have rights or legitimate interests in the disputed domain because Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant’s AGILENT mark. In addition, Respondent lacks rights and legitimate interests in the disputed domain because it was previously redirected to Complainant’s webpage. Lastly, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because the disputed domain resolves to an inactive webpage.
iii) Respondent registered and uses the disputed domain name in bad faith because Respondent uses the disputed domain name to host an inactive webpage. In addition, Respondent previously used the domain to redirect Internet users to Complainant’s webpage. Lastly, Respondent had actual knowledge of Complainant’s rights in the AGILENT mark prior to registering the disputed domain name.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on July 19, 2022.
2. Complainant has established rights in the AGILENT mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., 2,643,345, registered October 29, 2002).
3. The disputed domain name was previously redirected to Complainant’s own website.
4. The disputed domain name’s resolving webpage currently displays an error message.
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 asserts rights in the AGILENT mark based on registration with the United States Patent and Trademark Office. Registration with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). Complainant provides evidence of registration with the USPTO for the AGILENT mark (e.g., 2,643,345, registered October 29, 2002). Therefore, the Panel finds that Complainant has established rights in the AGILENT mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name <agilentusa.com> is confusingly similar to Complainant’s mark because it incorporates Complainant’s mark in its entirety and adds the geographic indicator “usa” and the “.com” gTLD. Domain names which incorporate the entire mark are usually considered confusingly similar, while adding a gTLD generally creates no distinction between a complainant’s mark and a disputed domain name under Policy ¶ 4(a)(i). See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Further, adding a geographic term does not create a sufficient distinction. See Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. 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 claims that Respondent does not have rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name and is not associated with Complainant or authorized to use Complainant’s AGILENT mark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the guardair.com domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). There is no evidence available in the WHOIS information to suggest that Respondent is known by the disputed domain name and no information suggests Complainant authorized Respondent to use the AGILENT mark. The WHOIS information lists the registrant of the disputed domain name as “Ryan Kral/Horse Back LLC.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name.
Complainant also argues that Respondent does not use the disputed domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), past panels have found no bona fide offering of goods or services, nor any legitimate noncommercial or fair use where the domain name resolves to an inactive webpage. See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”). Complainant has provided a screenshot of the disputed domain’s resolving webpage on or around August 1, 2022. The webpage displays an error message stating “This site can’t be reached.” Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
Lastly, Complainant claims that Respondent does not have rights or legitimate interests in the disputed domain name because the name redirects to Complainant’s own webpage. Such use is not indicative of legitimate rights and interests under Policy ¶ 4(a)(ii). See Altavista Co. v. Brunosousa, D2002-0109 (WIPO Apr. 3, 2002) (“[A]n unconnected party has no right or legitimate interest to use an otherwise deceptive trademark . . . even if it is directed to the legitimate owner of the trademark . . . .”). Complainant has provided a screenshot of both the disputed domain’s resolving webpage as well as Complainant’s legitimate webpage on or around July 26, 2022. The webpages appear to be identical and Complainant contends that previously the disputed domain name’s resolving webpage merely redirected Internet users to Complainant’s own legitimate webpage. Therefore, the Panel finds that Respondent lacks legitimate rights and interests in the disputed domain name under Policy ¶ 4(a)(ii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent registered and uses the disputed domain in bad faith because the disputed domain name redirected Internet users to Complainant’s webpage which is evidence of bad faith per Policy ¶ 4(a)(iii). See Ameriquest Mortgage Co. v. Banks, D2003-0293 (WIPO June 6, 2003) (concluding that respondent acted in bad faith by using the disputed domain name to redirect Internet traffic to Complainant’s own website because it “interferes with Complainant’s ability to control the use of its own trademarks on the Internet” . . . [and] creates a risk that Respondent could collect and use data about Internet users intending to access Complainant’s website”). Complainant has provided evidence that Respondent previously used the disputed domain name to redirect Internet users to Complainant’s own webpage. Therefore, the Panel finds that Respondent registered and uses the disputed domain in bad faith under Policy ¶ 4(a)(iii).
Complainant further contends that Respondent registered the disputed domain name in bad faith because Respondent had actual knowledge of Complainant’s rights in the AGILENT mark prior to registering the disputed domain name. The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name that Respondent had actual knowledge of Complainant’s rights in the AGILENT mark at the time of registering the disputed domain name, which supports a finding of bad faith registration.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <agilentusa.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: August 30, 2022
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