Agilent Technologies, Inc. v. Michael Boyles
Claim Number: FA1908001855281
Complainant is Agilent Technologies, Inc. (“Complainant”), represented by Madelon Lapidus of Holland & Hart LLP, Colorado, USA. Respondent is Michael Boyles (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aglilent.com>, registered with Google 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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on August 1, 2019; the Forum received payment on August 1, 2019.
On August 1, 2019, Google LLC confirmed by e-mail to the Forum that the <aglilent.com> domain name (the Domain Name) is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 7, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of August 27, 2019 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@aglilent.com. Also on August 7, 2019, 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 30, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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
Complainant is a world leader in life sciences, diagnostics, and applied chemical markets. Complainant has rights in the AGILENT mark based upon its trademark registrations around the world, including with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,643,345, registered Oct. 29, 2002). Respondent’s <aglilent.com> Domain Name is confusingly similar to Complainant’s mark as Respondent incorporates the entire AGILENT mark, with an intentional misspelling which adds the letter “l, and adds the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the Domain Name. Respondent is not licensed or authorized to use Complainant’s AGILENT mark and is not commonly known by the Domain Name. Additionally, Respondent is not using the Domain Name in connection with any bona fide offering of goods or services or for a legitimate noncommercial or fair use. Respondent is not using the Domain Name for an active web site but is using it for email addresses from which he sends emails to Complainant’s customers which impersonate Complainant and phish for sensitive financial information from them.
Respondent registered and uses the Domain Name in bad faith. It uses the Domain Name for emails which impersonate Complainant as part of a fraudulent email phishing scheme. Also, Respondent had actual knowledge of Complainant’s mark when it registered the Domain Name.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring the Domain Name:
(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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 4.3, 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 as follows with respect to the matters at issue in this proceeding:
The AGILENT mark was registered to Complainant with the USPTO on October 29, 2002 (Complaint Exhibit 3). A complainant’s registration of its mark with the USPTO is sufficient to establish its rights in that mark for the purposes of Policy ¶ 4(a)(i). Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
The <aglilent.com> Domain Name is confusingly similar to the AGILENT mark as it incorporates the mark in its entirety, albeit misspelling it by adding the letter “l” and adding the “.com” gTLD. These changes are not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Am. Online, Inc. v. David, FA 104980 (Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”), Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Name, and this establishes its confusing similarity to Complainant’s mark.
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the AGILENT mark, in which Complainant has substantial and demonstrated rights.
Rights or Legitimate Interests
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to respondent of the dispute, respondent has used or has made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) respondent (as an individual, business or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Respondent is not affiliated with Complainant and Complainant has not licensed or otherwise permitted Respondent to use its mark, (ii) Respondent is not commonly known by the Domain Name, and (iii) Respondent is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because the web site resolving from it is inactive and Respondent is using the Domain Name for email addresses from which he sends emails to Complainant’s customers which impersonate Complainant and phish for sensitive financial information from them. These allegations are addressed as follows:
Complainant states that it has never licensed or authorized Respondent to use its mark in any way. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”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 information furnished to the Forum by the registrar lists the registrant of the Domain Name as “Michael Boyles.” This name bears no resemblance to the Domain Name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such or similar evidence, however, UDRP panels have consistently held that a registrant name which is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. 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). The Panel is satisfied that Respondent has not been commonly known by the Domain Name for the purposes of Policy ¶ 4(c)(ii).
Complaint Exhibit 5 is a screenshot of the web site resolving from the Domain Name. The only substantive content on it reads “This site can’t be found. aglilent.com’s server IP address could not be found.” Clearly, Respondent is not using this web site in connection with a bona fide offering of goods and services or for any other purpose. Passively holding a domain name does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use within the meaning of Policy ¶¶ 4(c)(i) or (iii). Michelin North America, Inc. v. Energie Media Group, FA 451882 (Forum Aug. 7, 2012). In Michelin North, the panel found that inactive use, or “passive holding,” of the disputed domain name by a respondent “permits the inference that [the respondent] lacks rights and legitimate interests in the domain names.”
Complaint Exhibit 6 is a copy of an email purportedly sent by one Sarah Schultz from the email address sarah.schultz@aglilent.com to a person at a company whose name is redacted. The message states that Complainant’s bank account is “on hold” and Complainant will be using another bank account to receive payment from customers. It then invites the addressee to advise Complainant how to send the new bank information to the customer for Complainant’s outstanding payment. The email prominently displays Complainant’s name, spelled correctly, and an Agilent logo; it is clearly intended to cause the addressee to believe it is from Complainant. Respondent is thus using the Domain Name to impersonate Complainant as part of a fraudulent scheme. Using an email address associated with a confusingly similar domain name to pass off as a complainant in furtherance of a phishing scheme likewise does not qualify as a bona fide offering of goods and services within the meaning of Policy ¶ 4(c)(i) or as a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the at-issue domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”), Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“Passing off as a complainant through e-mails is evidence that a respondent lacks rights and legitimate interests under Policy ¶¶ 4(c)(i) & (iii).”).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product of service on your web site or location.
The evidence of Respondent’s use of the Domain Name discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use. While Respondent’s conduct may not fall neatly within any of the grounds articulated in Policy ¶ 4(b), that paragraph recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldwcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and impersonating a complainant in emails based upon a confusingly similar domain name, which emails fraudulently attempt to solicit sensitive financial information and, ultimately, defraud people of their money is manifest evidence of bad faith. Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use).
Second, Complainant did not assert the argument in connection with its bad faith allegations, but by adding the letter “l” to Complainant’s mark, Respondent is guilty of typosquatting, which is the intentional misspelling of a protected trademark to take advantage of similar appearance in an email address or typing errors made by Internet users seeking the web sites of the owners of the mark. Given the nonexclusive, open ended nature of Policy ¶ 4(b), typosquatting has, in and of itself, been held to be evidence of bad faith registration and use. Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii)”), Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant’s mark with small typographical errors introduced therein).
Finally, typosquatting necessarily implicates another factor that has also, by itself, been held by UDRP panels to constitute bad faith. It is evident from the world-wide notoriety of Complainant, from the extent to which Respondent copied Complainant’s mark in the Domain Name, and from the fact that its email phishing scheme specifically targeted Complainant and its customers, that Respondent had actual knowledge of Complainant’s mark when it registered the Domain Name in July 2019 (Complaint Exhibit 1 shows creation date). Again, considering the nonexclusive, open ended nature of Policy ¶ 4(b), actual knowledge of a complainant’s rights in a mark prior to registering an identical or confusingly similar domain name has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). 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).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
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 <aglilent.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
September 3, 2019
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