DECISION

 

Agilent Technologies, Inc. v. Yong Leng

Claim Number: FA2401002078358

 

PARTIES

Complainant is Agilent Technologies, Inc. ("Complainant"), represented by Julie A. Kent of Holland & Hart LLP, Colorado, USA. Respondent is Yong Leng ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <agilented.com>, registered with GMO Internet Group, Inc. d/b/a Onamae.com.

 

PANEL

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 9, 2024; Forum received payment on January 9, 2024.

 

On January 10, 2024, GMO Internet Group, Inc. d/b/a Onamae.com confirmed by e-mail to Forum that the <agilented.com> domain name is registered with GMO Internet Group, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet Group, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet Group, Inc. d/b/a Onamae.com 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 January 11, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 31, 2024 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@agilented.com. Also on January 11, 2024, 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 February 2, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

 

Complainant, Agilent Technologies, Inc., operates as a world leader in the life sciences, diagnostics, and applied chemical markets.

 

Complainant claims rights in the well-known AGILENT mark through its registration with multiple trademark agencies, including the United States Patent and Trademark Office ("USPTO").

 

Respondent's <agilented.com> domain name is confusingly similar to Complainant's AGILENT mark, as it wholly incorporates the mark, and merely adds the letters "ed" and the generic top-level domain ("gTLD") ".com" to form the domain name.

 

Respondent lacks rights or legitimate interests in the <agilented.com> domain name. Respondent is not commonly known by the at-issue domain name, nor has Complainant authorized or licensed any rights in the AGILENT mark to Respondent. Respondent does not use the domain name in connection with any bona fide offering of goods or services, nor a legitimate non-commercial or fair use. Rather, Respondent uses the at-issue domain name to address a website displaying pornography, pay-per-click links and banner advertising directed to commercial services or scams.

 

Respondent registered and uses the <agilented.com> domain name in bad faith. First, Respondent has demonstrated a pattern of bad faith registration. Respondent has registered numerous other domain names based on well-known brand names and has been subject to a prior UDRP dispute where it was found in bad faith.  Also, Respondent uses the at-issue domain name's resolving website to display pornography, advertisements and other links. Finally, Respondent registered <agilented.com> with actual knowledge of Complainant's rights in the AGILENT mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has trademark rights in the AGILENT mark.

 

Respondent is not affiliated with Complainant and had not been authorized to use Complainant's trademark in any capacity.

 

Respondent registered the at‑issue domain name after Complainant acquired rights in the AGILENT trademark.

 

Respondent uses the at-issue domain name to address a website displaying pornography, pay-per-click advertising and various third-party links.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainant shows that it has a USPTO registration along with multiple other national trademark registrations for its AGILENT trademark. Any of such registrations is sufficient to demonstrate Complainant's rights in the AGILENT mark under Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) ("Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world."); see also Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) ("The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.").

 

Respondent's <agilented.com> domain name consists of Complainant's trademark followed by the letters "ed" with all followed by the ".com" top-level domain name. The differences between Respondent's domain name and Complainant's trademark fail to distinguish the domain name from Complainant's trademark for the purposes of the Policy. Therefore, the Panel concludes that Respondent's <agilented.com> domain name is confusingly similar to AGILENT pursuant to Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Angelo Kioussis, FA 1784554 (Forum June 4, 2018) ("The domain name contains the mark in its entirety, with only the addition of the generic letters 'sb' and the digits '2018,' plus the generic Top Level Domain ("gTLD") '.com.' These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy."); see also Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognizable 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.").

 

Rights or Legitimate Interests

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. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant's prima facie showing acts conclusively.

 

Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant's trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.

 

The WHOIS information for the at-issue domain name identifies the domain name's registrant as "Yong Leng" and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <agilented.com> domain name. The Panel therefore concludes that Respondent is not commonly known by <agilented.com> for the purposes of Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin  ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) ("The publicly available WHOIS information identifies Respondent as 'Ilyas Aslan' and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names."); see also, Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the at-issue domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).

 

Respondent's at-issue domain name is used to address a website displaying pornography, pay-per-click advertisements and links directed to commercial services or scams. Respondent's use of the at-issue domain name shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA 1732665 (Forum July 7, 2017) (holding that "[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy."); see also, The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) ("Respondent's confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows 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).").

 

Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent's lack of rights and lack of legitimate interests in respect of the at-issue domain name under Policy ¶4(a)(ii).

 

Registration and Use in Bad Faith

As discussed below without being exhaustive, there is evidence from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).

 

First, Complainant shows that Respondent has a history of domain name abuse. Complainant claims that Respondent has registered numerous other domain names based on well-known brands. Respondent has also suffered an adverse UDRP decision that resulted in the subject domain names being transferred away from Respondent. Respondent thus exhibits a pattern of bad faith domain name registration that is indicative of Respondent's bad faith in the instant case pursuant to Policy ¶ 4(b)(ii). See Lufkin Indus., LLC v. Marco, FA 1915192 (Forum Nov. 4, 2020) (finding bad faith where a reverse WHOIS search revealed that respondent had registered numerous domain names, some of which contain famous trademarks owned by third parties; "[a] respondent may be found to have established a pattern of bad faith registrations when the respondent registers numerous domain names that incorporate other trademarks under Policy ¶ 4(b)(ii)"); see also, Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA 1464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)).

 

Next, Respondent uses the at-issue domain name to direct internet users to a website displaying pornography and various other pay-per-click links to third parties. Such use of the domain name is disruptive to Complainant's business and capitalizes on the confusion that Respondent created between the domain name and Complainant's trademark. Respondent's use of <agilented.com> in this manner shows Respondent's bad faith registration and use of <agilented.com> pursuant to Policy¶ 4(b)(iii) and Policy¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant's well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Toshiba v. ran jiangfei, FA 1797650 (Forum August 22, 2018) (holding respondent's registration and use of the domain names <toshiba-gulf.com> and <driversoftoshiba.com> for pornographic websites constitutes bad faith under UDRP 4(b)(iv)); see also, Vivint, Inc. v. Online Management, FA 1549084 (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).

 

Moreover, Respondent had actual knowledge of Complainant's rights in the AGILENT mark when it registered <agilented.com> as a domain name. Respondent's actual knowledge is evident from the notoriety and long term wide use of Complainant's trademark. Respondent's prior knowledge of Complainant's AGILENT trademark further indicates Respondent's bad faith registration and use of <agilented.com> pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <agilented.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated: February 2, 2024