Agilent Technologies, Inc. v. JP Barkley
Claim Number: FA2211002019028
PARTIES
Complainant is Agilent Technologies, Inc. (“Complainant”), represented by Julie A. Kent of Holland & Hart LLP, Colorado. Respondent is JP Barkley (“Respondent”), Florida.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <agilent.ai>, registered with NameCheap, Inc..
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to Forum electronically on November 4, 2022; Forum received payment on November 4, 2022.
On Nov 4, 2022, NameCheap, Inc. confirmed by e-mail to Forum that the <agilent.ai> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 10, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 30, 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@agilent.ai. Also on November 10, 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, Forum transmitted to the parties a Notification of Respondent Default.
On December 7, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
1. Respondent’s <agilent.ai> domain name is confusingly similar to Complainant’s AGILENT mark.
2. Respondent does not have any rights or legitimate interests in the <agilent.ai> domain name.
3. Respondent registered and uses the <agilent.ai> domain name in bad faith.
B. Respondent did not file a Response.
Complainant, Agilent Technologies, Inc., operates in the life sciences, diagnostics, and applied chemical industries. Complainant holds registrations for the AGILENT mark with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,643,345, registered Oct. 29, 2002).
Respondent registered the <agilent.ai> domain name on June 23, 2020, and uses it to display pay-per-click advertisements and an offer to sell the 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”).
The Panel finds that Complainant has rights in the AGILENT mark through its registration with multiple trademark agencies, including the USPTO. See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) (“Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).”).
Respondent’s <agilent.ai> domain name uses the entire AGILENT mark and simply adds the gTLD “.ai”. Under Policy ¶ 4(a)(i), incorporating a mark in its entirety and adding a generic top-level domain name is not sufficient to distinguish a domain name from a mark. See Textron Innovations Inc. v. Textron Sistemi di Fissaggio srl, Fa 1732602 (Forum July 6, 2017) (holding that “Respondent’s <textron.net> is identical to Complainant’s TEXTRON mark.”). Therefore, the Panel finds that Respondent’s <agilent.ai> domain name is confusingly similar to Complainant’s AGILENT mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 contends that Respondent lacks rights and legitimate interests in the <agilent.ai> domain name, as Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the AGILENT mark. The WHOIS information lists Respondent as “JP Barkley.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM , FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also 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).
Complainant argues that Respondent does not use the <agilent.ai> domain name for a bona fide offering of goods or services or a legitimate non-commercial or fair use, as Respondent previously redirected users to a website hosting pay-per-click links. Using a disputed domain name for a parking page displaying sponsored links is not a bona fide offering of goods or services or a legitimate non-commercial or fair use. See TGI Friday’s of Minnesota, Inc. v. Tulip Company / Tulip Trading Company, FA 1691369 (Forum Oct. 10, 2016) (”Respondent uses the domain for a parking page displaying various links that consumers are likely to associate with Complainant, but that simply redirect to additional advertisements and links that divert traffic to third-party websites not affiliated with Complainant… The Panel here finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services.”). Complainant provides screenshots of the disputed domain name’s prior webpage featuring pay-per-click links. The Panel find that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent’s lack of rights in the disputed domain name is further demonstrated by Respondent’s offer to sell the domain name for sale for $14,000, an amount that exceeds out of pocket costs. The Panel agrees and finds that this is additional evidence that Respondent lacks rights under Policy ¶¶ 4(c)(ii) and (iv). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered the disputed domain name with intent to sell in bad faith under Policy ¶ 4(b)(i). The Panel agrees and finds bad faith under Policy ¶ 4(b)(i). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).
Complainant further argues that Respondent registered and used the <agilent.ai> domain name in bad faith to attract Internet users with a false impression of association with Complainant. Prior panels have found bad faith pursuant to Policy ¶ 4(b)(iv) when a respondent used a confusingly similar domain name to attract Internet users to a webpage that displays sponsored links. See Vivint, Inc. v. Online Management, FA1403001549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links). Accordingly, the Panel finds that Respondent registered and uses the <agilent.ai> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
The Panel finds that Complainant has satisfied 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 <agilent.ai> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 8, 2022
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