Agilent Technologies, Inc. v. James Odonnell / admin@elliotpartners.com
Claim Number: FA2010001915907
Complainant is Agilent Technologies, Inc. (“Complainant”), represented by Jacob Dini of Perkins Coie LLP, Colorado, USA. Respondent is James Odonnell / admin@elliotpartners.com (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <agilentfoundation.com>, registered with Tucows Domains Inc.
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 October 5, 2020; the Forum received payment on October 5, 2020.
On October 6, 2020, Tucows Domains Inc. confirmed by e-mail to the Forum that the <agilentfoundation.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. 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 October 9, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 29, 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@agilentfoundation.com. Also on October 9, 2020, 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 November 3, 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 a leader in life sciences, diagnostics, and applied chemical markets.
Complainant has rights in the AGILENT mark through its registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <agilentfoundation.com> domain name is confusingly similar to Complainant’s mark. Respondent incorporates the mark in its entirety and adds the generic term foundation along with the “.com” generic top level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <agilentfoundation.com> domain name as Respondent is not commonly known by the at-issue domain name nor did Complainant authorize Respondent to use the mark in any way. Respondent fails to make a bona fide offering of goods or services. Instead, Respondent attempts to confuse internet users into thinking that Respondent is associated with Complainant and redirects to Complainant’s genuine website. Respondent further engages in a phishing scheme by attempting to gather financial information and extract money from third parties via fraud.
Respondent registered and used the <agilentfoundation.com> domain name in bad faith as Respondent engages in a phishing scheme in an attempt to gather financial information and scam third parties into delivering funds to Respondent’s account. Respondent had actual knowledge of Complainant’s rights in the ALIGENT mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in AGILENT.
Respondent is not affiliated with Complainant and is not authorized to use the AGILENT mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in AGILENT.
Respondent uses the at-issue domain name to impersonate Complainant via email and redirection to Complainant’s genuine website, and thereby attempts to defraud third parties.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the AGILENT mark with the USPTO demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See 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)).
Respondent’s <agilentfoundation.com> domain name incorporates Complainant’s entire AGILENT trademark, adds the term “foundation,” and follows all with the generic top-level domain “.com.” The additions to Complainant’s trademark fail distinguish the at-issue domain name from Complainant’s mark. Therefore, the Panel concludes that Respondent’s <agilentfoundation.com> domain name is confusingly similar to Complainant’s AGILENT trademark. See Starbucks Corporation d/b/a Starbucks Coffee Company v. Waseem A Ali / Micron Web Services, FA 1785616 (Forum June 8, 2018) (finding the <starbucksreal.com> domain name to be confusingly similar to the STARBUCKS mark, as “the addition of the generic term ‘real’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.”).
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 “James O’Donnell” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <agilentfoundation.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <agilentfoundation.com> domain name for the purposes of Policy ¶ 4(c)(ii). See 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).
Additionally, Respondent uses its <agilentfoundation.com> domain name to impersonate Complainant in furtherance of an email phishing scheme aimed at extracting private financial information and/or payments from Complainant’s business relations. Respondent sent fraudulent email hosted at the at-issue domain name to one of Complainant’s customers. The email address used the real name and title of one of Complainant’s executives and the text pretended to be from such executive. The text of one such fraudulent email instructs one of Complainant’s contractors to remit payments per Respondent’s direction to an account not associated with 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 Agilent Technologies, Inc. v. Ahmed / My Company, FA 1791549 (Forum July 12, 2018) (“Complainant provides a copy of a redacted email showing a phishing scheme wherein Respondent impersonates Complainant’s employees in an attempt to have customers transfer large sums of money into Respondent’s bank accounts. The Panel finds that this use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).”); see also, 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)”); see also, Time Warner Inc. v. Zhichao Yang, FA1610001700364 (Forum Dec. 12, 2016) (“Using a domain name for … a phishing scam does not constitute a bona fide offering or a legitimate noncommercial or fair use.”).
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).
First, as mentioned above regarding rights and interests, Respondent uses the at-issue confusingly similar domain name to host email in furtherance of an email phishing scheme aimed at defrauding third parties into giving up funds and/or private data. Respondent’s use of its <agilentfoundation.com> domain name to steal Complainant’s identity and convey fraudulent messages to third parties disrupts Complainant’s business and demonstrates bad faith registration and use under Policy ¶ 4(b)(iii) and/or (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”); see also, Chevron Intellectual Property, LLC v. Jack Brooks, FA 1635967 (Forum Oct. 6, 2015) (finding that Respondent’s use of <chevron-corps.com> to impersonate an executive of Complainant in emails is in opposition to Complainant and is therefore in bad faith under Policy ¶ 4(b)(iii)); see also Monsanto Co. v. Decepticons, FA 101536 (Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
Furthermore, browsing to the at-issue domain name directs internet visitors to Complainant’s legitimate website obviously in an attempt to make the address, <agilentfoundation.com>, appear as being sponsored by Complainant when it is not. Respondent’s use of the domain name to direct internet users to Complainant’s genuine website shows Respondent to be acting in bad faith under the Policy. See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”).
Finally, Respondent had actual knowledge of Complainant’s rights in the AGILENT mark when it registered <agilentfoundation.com> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark as well as from Respondent’s use of the <agilentfoundation.com> domain name as discussed above. Respondent’s registration and use of a confusingly similar domain name with knowledge of Complainant’s rights in such domain name further 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 <agilentfoundation.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 4, 2020
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