Hologic, Inc. v. zhongjun QUAN
Claim Number: FA2008001907852
Complainant is Hologic, Inc. (“Complainant”), represented by Lawrence R. Robins of Fisher Broyles LLP, United States. Respondent is zhongjun QUAN (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <holgic.com>, registered with Jiangsu Bangning Science & technology Co. Ltd..
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.
Complainant submitted a Complaint to the Forum electronically on August 10, 2020; the Forum received payment on August 10, 2020.
On August 12, 2020, Jiangsu Bangning Science & technology Co. Ltd. confirmed by e-mail to the Forum that the <holgic.com> domain name is registered with Jiangsu Bangning Science & technology Co. Ltd. and that Respondent is the current registrant of the name. Jiangsu Bangning Science & technology Co. Ltd. has verified that Respondent is bound by the Jiangsu Bangning Science & technology Co. Ltd. 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 14, 2020, the Forum served the Complaint and all Annexes, including a Chinese Written Notice of the Complaint, setting a deadline of September 3, 2020 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@holgic.com. Also on August 14, 2020, the Chinese 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 September 8, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant is global developer and manufacturer of medical technology, specializing in women’s health.
Complainant has rights in the HOLOGIC mark through its multiple registrations with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <holgic.com> domain name is virtually identical and confusingly similar to Complainant’s HOLOGIC mark as it incorporates the mark in its entirety and only removes the letter “o” and adds the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <holgic.com> domain name, as it is not known by the at-issue domain name, and Complainant never authorized or licensed Respondent to use its HOLOGIC mark in the domain name. Respondent does not use the at-issue domain name for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair use. Instead, Respondent attempts to divert internet users seeking Complainant’s services to the domain’s website, where Respondent hosts and profits from pay-per-click ads that compete with Complainant’s business.
Respondent registered and uses the at-issue domain name in bad faith. Respondent uses the confusingly similar domain name for commercial gain by attempting to divert internet users seeking Complainant’s services to a site with competing pay-per-click ads. Additionally, Respondent had actual knowledge of Complainant’s rights in the HOLOGIC mark when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in HOLOGIC.
Respondent is not affiliated with Complainant and is not authorized to use the HOLOGIC mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in HOLOGIC.
Respondent uses the at-issue domain name offer pay-per-click links to third parties including competitors 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”).
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language ‑to wit, the Respondent’s <holgic.com> domain and website is entirely in English. See Zappos.com, Inc. v. Zufu aka Huahaotrade, D2008-1191 (WIPO October 15, 2008) (holding that proceedings could be conducted in English even though the registration agreement was in Chinese where “the disputed domain resolves to a website [that] is exclusively in English, from which can be reasonably presumed that the Respondent has the ability to communicate in English in order to conduct his business over the website in English”). Therefore, after considering the circumstance of the present case and Respondent’s failure to respond, the Panel decides that the proceeding should be in English.
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the HOLOGIC mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Further, Respondent’s <holgic.com> domain name is composed of Complainant’s entire HOLOGIC trademark with its second “o” omitted, followed by the generic top-level domain name “.com”. The differences between Complainant’s trademark and Respondent’s domain name do nothing to distinguish the at-issue domain name from Complainant’s trademark under the Policy. Therefore, the Panel concludes that Respondent’s <holgic.com> domain name is confusingly similar to Complainant’s HOLOGIC trademark pursuant to Policy ¶ 4(a)(i). See Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”).
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 ““Quan Zhongjun” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <holgic.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <holgic.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Moreover, Respondent uses the <holgic.com> domain name to address a website that presents pay-per-click links to third parties. Some of these links offer services that compete with those services offered by Complainant. Respondent’s use of the domain name in this manner indicates 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 Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, there is evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
Respondent registered and uses its confusingly similar <holgic.com> domain name to divert internet users to a website hosting pay-per-click links to third parties. Some links reference parties that compete with Complainant in the medical products and services industry. Using the at-issue domain name in this manner disrupts Complainant’s business while exploiting Complainant’s trademark for commercial gain thereby demonstrating Respondent’s bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”).
Additionally, Respondent had actual knowledge of Complainant’s rights in the HOLOGIC mark when it registered <holgic.com> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s HOLOGIC trademark and from Respondent’s overt misspelling of Complainant’s mark in the domain name. Respondent’s registration and use of a confusingly similar domain name with knowledge of Complainant’s trademark rights in such domain name shows Respondent’s bad faith 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <holgic.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 8, 2020
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