Hologic, Inc. v. huade wang
Claim Number: FA2212002025562
Complainant is Hologic, Inc. (“Complainant”), represented by Lawrence R. Robins of FisherBroyles LLP, USA. Respondent is huade wang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hologicbenifits.com>, registered with Sav.com, 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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on December 28, 2022; Forum received payment on December 28, 2022.
On December 28, 2022, Sav.com, LLC confirmed by e-mail to Forum that the <hologicbenifits.com> domain name is registered with Sav.com, LLC and that Respondent is the current registrant of the name. Sav.com, LLC has verified that Respondent is bound by the Sav.com, 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 December 29, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 18, 2023 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@hologicbenifits.com. Also on December 29, 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 January 24, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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
Complainant made the following contentions:
Complainant submits that it has rights in the HOLOGIC mark through multiple trademark registrations, including with the USPTO (e.g., USPTO Reg. No. 3,857,248, which was registered on October 5, 2010). See Compl. Exhibit D. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Since Complainant provides evidence of registration of the HOLOGIC mark with the USPTO, the Panel finds that Complainant has demonstrated rights in the HOLOGIC mark per Policy ¶ 4(a)(i).
Complainant argues that the <hologicbenifits.com> domain name is identical or confusingly similar to its HOLOGIC mark since it includes the entire mark and simply adds a misspelled version of the generic or descriptive term “benefits,” spelled “benifits”. When a mark is wholly incorporated into a disputed domain name, any type of additional terms have been found insufficient to defeat a finding of confusing similarity. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); see also Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”). Therefore, the Panel finds that Respondent’s <hologicbenifits.com> domain name is confusingly similar to Complainant’s HOLOGIC mark under Policy ¶ 4(a)(i).
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a global leader in medical
technology.
2. Complainant has established its rights in the HOLOGIC by means of the registration of the mark with the USPTO (e.g., USPTO Reg. No. 3,857,248, which was registered on October 5, 2010).
3. Respondent registered the <hologicbenifits.com> domain name on November 21, 2021.
4. Respondent has altered the spelling of the word “benefits” in the domain name to “benifits” for the purpose of registering and using the disputed domain name which Respondent intended to be used to gain access to Complainant’s information and to offer competing goods and services to those of Complainant.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the HOLOGIC mark through its multiple trademark registrations, including with the USPTO (e.g., USPTO Reg. No. 3,857,248, which was registered on October 5, 2010). See Compl. Exhibit D. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Since Complainant provides evidence of registration of the HOLOGIC mark with the USPTO, the Panel finds that Complainant has demonstrated rights in the HOLOGIC mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s HOLOGIC mark. Complainant argues that the <hologicbenifits.com> domain name is identical or confusingly similar to its HOLOGIC mark since it includes the entire mark and simply adds a misspelled version of the generic or descriptive term “benefits,” spelled “benifits”. When a mark is wholly incorporated into a disputed domain name, any type of additional terms have been found insufficient to defeat a finding of confusing similarity. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); see also Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”). Therefore, the Panel finds that Respondent’s <hologicbenifits.com> domain name is confusingly similar to Complainant’s HOLOGIC mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
(a) Respondent has chosen to take Complainant’s HOLOGIC mark and to use it in its domain name adding a misspelled version of the generic or descriptive word “benefits,” spelled “benifits”;
(b) Respondent registered the domain name on November 21, 2021;
(c) Respondent has altered the spelling of the word “benefits” to “ benifits” for the purpose of registering and using the disputed domain name to gain access to Complainant’s information and to offer competing goods and services to those of Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <hologicbenifits.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has never licensed rights to or authorized Respondent to use the HOLOGIC mark. In the absence of a response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). In addition, where there is no evidence to indicate a complainant has authorized the use of a mark, it may act as support that a respondent is not commonly known by the disputed domain name and thus lacks any rights or legitimate interest in the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”); 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). The WHOIS information for <hologicbenifits.com> lists the registrant as “huade wang.” See Registrar Email Verification. Further, there is no evidence to suggest that Respondent was authorized, licensed rights to, or otherwise permitted to use the HOLOGIC mark. Therefore, the Panel finds Respondent is not commonly known by, and therefore lacks rights or legitimate interests in, the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <hologicbenifits.com> domain name as Respondent is hosting pay-per-click links, some of which compete with Complainant’s employee benefit services. Previous Panels have agreed, finding that use of a domain name for competing hyperlinks constitutes 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).”). See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also Persohn v. Lim, FA 874447 (Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process). Complainant provides screenshots of the resolving site, a parked page that displays links titled, for example, “EMPLOYEE BENEFITS.” See Compl. Annex F. As the Panel agrees, it finds that Respondent lacks a bona fide offering of goods or services and legitimate noncommercial or fair use of the <hologicbenifits.com> domain name under Policy ¶¶ 4(c)(i) and (iii).
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 does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <hologicbenifits.com> domain name in bad faith by misdirecting Internet traffic to Respondent’s own site, which contains pay-per-click links that compete with Complainant’s employee benefit services. A respondent’s use of a disputed domain name to divert confused Internet traffic to a website with competing hyperlinks may evince bad faith disruption of a complainant’s business pursuant to Policy ¶ 4(b)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent uses pay-per-click hyperlinks on the resolving website, which redirects users to competing websites. The use of hyperlinks to disrupt and compete with a complainant’s business is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).”). Diversion to a parked site with pay-per-click links has also been held as evidence of bad faith attraction for commercial gain pursuant to Policy ¶ 4(b)(iv). See Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical to Complainant’s PHOENIX COLLEGE mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <phoenixcollege.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). As noted, Complainant provides screenshots of the resolving site, a parked page that displays links titled, for example, “EMPLOYEE INCENTIVES.” See Compl. Annex F. As the Panel agrees, it finds bad faith under Policy ¶ 4(b)(iii) and/or Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the HOLOGIC mark when registering <hologicbenifits.com>. Actual knowledge may be sufficient to demonstrate bad faith under Policy ¶ 4(b)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). To support its submission, Complainant points to Respondent’s use of the identical HOLOGIC mark, which was in use for over two decades before Respondent registered the <hologicbenifits.com> domain name, and the domain name’s use to compete with Complainant and confuse users as to the source or affiliation of the domain name. As the Panel determines that Respondent had actual knowledge of Complainant’s rights, it finds bad faith registration and use under Policy ¶ 4(b)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name using the HOLOGIC mark and in view of the conduct that Respondent has
engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hologicbenifits.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: January 25, 2023
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