Teleflex Incorporated v. Host Master / 1337 Services LLC
Claim Number: FA2305002044006
Complainant is Teleflex Incorporated (“Complainant”), represented by Kevin M. Bovard of Baker & Hostetler LLP, Pennsylvania, USA. Respondent is Host Master / 1337 Services LLC (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <teleflextfx.com> (“disputed domain name”), registered with Tucows Domains Inc. (the “Registrar”).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to Forum electronically on May 10, 2023; Forum received payment on May 10, 2023.
On May 11, 2023, the Registrar confirmed by e-mail to Forum that the <teleflextfx.com> disputed domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. The Registrar has verified that Respondent is bound by the Tucows Domains 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 May 15, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 5, 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@teleflextfx.com. Also on May 15, 2023, 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 June 8, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Lynda M. Braun 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a global provider of medical technology products, including specialty devices for a range of procedures in critical care and surgery that are designed to improve the health and quality of people’s lives. Complainant has rights in the TELEFLEX mark through its registration of its mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,780,186, registered on April 27, 2010). Complainant also owns trademarks for TELEFLEX in the European Union and United Kingdom, and owns similar trademark registrations in countries worldwide, including Canada, China, Australia, and Brazil.
The aforementioned trademark registrations will hereinafter collectively be referred to as the “TELEFLEX Mark”.
Complainant contends that Respondent’s <teleflextfx.com> disputed domain name is identical or confusingly similar to Complainant’s TELEFLEX Mark as it includes the mark while adding the letters “ftx” (abbreviation for Teleflex) and the “.com” generic top-level domain (“gTLD”).
Complainant also claims that Respondent lacks rights and legitimate interests in the disputed domain name since Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its TELEFLEX Mark in the disputed domain name. In addition, Complainant claims that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use because the disputed domain name resolves to Complainant’s website and Respondent uses the disputed domain name to perpetuate an email phishing scheme.
Finally, Complainant contends that Respondent registered and is using the disputed domain name in bad faith since Respondent passes off as Complainant via email in a phishing scheme and Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the TELEFLEX Mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant has registered trademark rights in the TELEFLEX Mark. The Panel also finds that the disputed domain name is confusingly similar to Complainant’s TELEFLEX Mark, that Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used in bad faith since Respondent registered the disputed domain name with actual knowledge of the TELEFLEX Mark and uses the disputed domain name to pass of as Complainant as part of an email phishing scheme.
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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed 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 TELEFLEX Mark through its registration of its mark with the USPTO (e.g. Reg. No. 3,780,186, registered on April 27, 2010).. Registration of a mark with the USPTO is generally sufficient in demonstrating 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) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s TELEFLEX Mark. Under Policy paragraph 4(a)(i), adding letters and a generic Top-Level Domain (“gTLD”) to the disputed domain name is insufficient in differentiating the mark. See Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”).
Here, the disputed domain name includes Complainant’s Mark while adding the letters “ftx” and the “.com” gTLD. The additional letters are an abbreviation of Complainant’s TELEFLEX Mark and is also the New York Stock Exchange stock ticker symbol for Complainant. Thus, the addition of “tfx” to TELEFLEX does not eliminate the confusing similarity with Complainant’s registered trademarks. See Amazon Technologies, Inc. v. stlan klnern, FA 1980420 (Forum Feb. 15, 2021) (finding <amztokens.net> confusingly similar to Complainant’s AMAZON mark as “an abbreviation of a trade mark is generally insufficient to negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i)”).
Finally, since addition of a gTLD is a technical requirement in domain names, the addition of the gTLD “.com” in the disputed domain name fails to distinguish a disputed domain name from a trademark per Policy paragraph 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (confusing similarity exists where a disputed domain name contains a complainant’s entire mark and differs only by the addition of a term and gTLD; the differences between the domain name and its incorporated trademark are insufficient to differentiate one from the other for purposes of the Policy).
Accordingly, the Panel finds that Policy paragraph 4(a)(i) has been established by Complainant.
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy paragraph 4(a)(ii), and then the burden shifts to Respondent to show that it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). Here, the Panel holds that Complainant has made out a prima facie case.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name as Respondent has not provided evidence nor proven that it is not commonly known by the disputed domain name, nor has Complainant authorized, licensed or otherwise permitted Respondent to use the TELEFLEX Mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Further, 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. Rather, Respondent uses the disputed domain name to pass off as Complainant, as the disputed domain name redirects to Complainant’s legitimate website. Using a disputed domain name to resolve to a complainant’s website is not a bona fide offering of goods and services or a legitimate or fair use per Policy paragraph 4(c)(i) or (iii). See Robert Half International Inc. v. asd asd, FA 2022704 (Forum Dec. 30, 2022).
Finally, the Panel finds that Respondent used the disputed domain name in an email phishing scheme by sending a confusingly similar email address purportedly sent from Complainant’s employee further demonstrates a lack of legitimate rights or use in the disputed domain name. Specifically, Respondent used the disputed domain name to unlawfully solicit price quotations from a third party, in what is presumed to be a phishing scheme. This, in combination with the fact that the disputed domain name redirects to Complainant’s genuine website, demonstrates that the sender is attempting to pass him or herself off as Complainant’s employee to obtain payment or goods from the third party. Thus, Respondent’s actions do not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through fraudulent emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name).
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) has been established by Complainant.
The Panel finds that, based on the record, Complainant has demonstrated the existence of Respondent’s bad faith registration and use pursuant to paragraph 4(b) of the Policy.
First, Respondent attracts Internet users for commercial gain by using the disputed domain name to pass itself off as Complainant and to disrupt Complainant’s business, indications of bad faith. Passing off as Complainant for commercial gain demonstrates bad faith under Policy paragraph 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy paragraph 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant or is otherwise affiliated or associated with Complainant.”).
Second, the fact that the disputed domain name redirects to Complainant’s legitimate website, plus the fraudulent email sent to a third party posing as Complainant’s employee demonstrates that Respondent had actual knowledge of Complainant’s TELEFLEX Mark and its company identity. See Bridgewater Associates, LP v. Oliver Dobbs, FA 1907865 (Forum Sept. 10, 2020) (“Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the disputed domain name redirects to Complainant’s website, thus Respondent must have known of Complainant’s mark.”).
Finally,
Respondent used the disputed domain name to email a third party posing as Complainant’s
employee to usurp information and ultimately obtain money and/or goods from the
third party. Such conduct is evidence of Respondent’s bad faith bad faith registration
and use of the disputed domain name. See The PNC Financial Services Group,
Inc. v. Daniel Lee / Danie Lee, FA1533525 (Forum
Jan. 20, 2014) (the panel considered evidence that the respondent was
attempting to pass itself off as the complainant to engage in fraudulent
activity, seeking payment from unsuspecting email recipients. The panel held
that such “imposter activities constitute clear evidence of bad
faith.”).
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <teleflextfx.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: June 19, 2023
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