Agilent Technologies, Inc. v. Jack Tommasson
Claim Number: FA2102001932878
Complainant is Agilent Technologies, Inc. (“Complainant”), represented by Alexander J.A. Garcia of Perkins Coie LLP, Colorado, USA. Respondent is Jack Tommasson (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aligentjobs.com>, registered with Wild West Domains, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 19, 2021; the Forum received payment on February 19, 2021.
On February 22, 2021, Wild West Domains, LLC confirmed by e-mail to the Forum that the <aligentjobs.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 February 25, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 17, 2021 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@aligentjobs.com. Also on February 25, 2021, 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 March 23, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the AGILENT trademark and service mark established through its ownership of the portfolio of registrations described below and the goodwill that has accrued to the mark by international, extensive use since Complainant was formed in 1999.
Complainant asserts that it currently provides laboratories worldwide with instruments, services, consumables, applications, and expertise and employs over 16,000 people worldwide serving customers in 110 countries, and serving approximately 265,000 laboratories, including major universities, hospitals, and research institutions globally.
Complainant submits that through its domain name <agilent.com> and the website to which it resolves, it operates a robust online marketplace where its consumers can choose from hundreds of different products which can be shipped to countries all over the world. Complainant’s revenues in 2019 exceeded $5 billion.
Complainant explains that given its extensive online sales, Complainant’s domain name and online presence consisting of the term AGILENT are vital to its business.
Complainant alleges that the disputed domain name is confusingly similar to its AGILENT mark as it is an intentional misspelling which only differs by switching the letters “g” and “l” in AGILENT. Complainant submits that this amendment is insufficient to distinguish the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). Citing Agilent Techs., Inc., FA 1791549 (“Respondent’s <aqilant.com> domain name incorporates a misspelled version of Complainant’s AGILENT Mark and adds a gTLD. These changes do not distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i).”).
Complainant adds that the Top-Level Domain (“gTLD”) <.com> extension is irrelevant for purposes of ascertaining confusing similarity. See Anheuser-Busch, Inc. v. FIG Vietnam c/o Domain Admin, FA 1190330 (Forum Jun. 25, 2008) (finding the “addition of a generic top-level domain such as ‘.com’ is irrelevant when determining if the disputed domain name is confusingly similar to [the complainant’s] mark”).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name submitting that there is no evidence that Respondent was commonly known by the disputed domain name prior to the registration of the disputed domain name. See Agilent Techs., Inc., FA 1791505 (“Where a response is lacking, relevant WHOIS may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”)
Complainant further asserts that Respondent is not affiliated with Complainant in any way and Complainant has not given Respondent permission to use the AGILENT mark. 7-Eleven, Inc. v. Metodi Darzev / Tool Domains Ltd, FA 1910817 (Forum Oct. 1, 2020) (“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.”),
Complainant refers to a screen capture of the inactive web page to which the disputed domain name resolves that has been furnished in an annex to the Complaint, which states “This site can’t be reached” and submits that this constitutes warehousing or passive use of the disputed domain name which is based on Complainant’s AGILENT mark. Complainant submits that such passive holding of the disputed domain name does not show a legitimate use or bona fide offering of goods or services. Morgan Stanley v. Koornwinder, FA 1913775 (Forum Oct. 22, 2020); TMP Int’l, Inc. v. Baker Enters., FA 204112 (Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
Additionally, Complainant refers to a copy of redacted email correspondence, which has been provided in an annex to the Complaint and submits that it proves that Respondent uses the disputed domain name and AGILENT mark to impersonate Complainant, conduct phishing schemes, and defraud unsuspecting job seekers. Complainant contends that none of these actions create rights or legitimate interests under the Policy. See Agilent Techs., Inc., FA 1791549 (“Complainant provide[d] 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).”).
Finally, Complainant contends that previous panels have held that there can be no rights or legitimate interests under Policy ¶ 4(c)(i) when a respondent was on notice that a complainant possessed strong trademark rights in a mark identical or similar to the disputed domain name. See Belo Corp. v. Latimer, D2002-0329 (WIPO May 16, 2002) (finding that registration of <providencejournal.com> demonstrated that respondent had notice of complainant’s strong trademark rights in THE PROVIDENCE JOURNAL and PROVIDENCE JOURNAL). As reflected by the first use dates in Complainant’s trademark registrations, Complainant first began using and developing rights in the AGILENT mark in the United States at least as early as 1999, over 20 years prior to Respondent’s registration of the disputed domain name.
Complainant further alleges that the disputed domain name was registered and is being used in bad faith arguing that given the notoriety and unique qualities of Complainant’s well-known AGILENT mark, which was adopted by Complainant over two decades prior to the registration of the disputed domain name, it is wholly implausible that Respondent created the disputed domain name independently.
Furthermore, Complainant contends that Respondent engaged in obvious typosquatting by switching the letters “g” and “l” in the AGILENT mark to create and register the disputed domain name. Complainant submits that panels established under the Policy routinely consider typosquatting to be evidence of bad faith under the Policy. See, e.g., Agilent Techs., Inc. v. Boyles, FA 1855281 (Forum Sept. 3, 2019) (“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.”).
Referring to the aforementioned redacted email correspondence, Complainant submits that Respondent registered and is using the disputed domain name in bad faith to impersonate Complainant in furtherance of an illegal phishing scheme designed to extract sensitive personal and/or financial information. Citing Wells Fargo & Co. v. Andre Schneider/DomCollect AG, FA 1566150 (Forum July 27, 2014) (“inconceivable that the confusingly similar domain name’s connection with such a foul [phishing] scheme might be anything other than a bright marker unequivocally signaling [r]espondent’s bad faith registration and use of the domain name”).
Noting that Respondent is not making an active use of the disputed domain name, Complainant submits that bad faith use and registration have been found where a respondent passively holds a domain name, otherwise known as warehousing.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the registered owner of a portfolio of registered trademarks including the following for which it has provided copies of the certificates of registration:
· United States registered trademark AGILENT, registration number 2,461,406, registered on the Principal Register on June 19, 2001 for goods in international class 9;
· United States registered trademark and service mark AGILENT, registration number 22,643,345 registered on the Principal Register on October 29, 2002 for goods and services in international classes 1, 9, 10, 14. 16, 35, 36, 37, 41 and 42;
· United States registered trademark AGILENT, registration number 4,085,588 registered on the Principal Register on January 17, 2012 for goods in international classes 1, 3 and 4;
· United States registered service mark AGILENT, registration number 2,890,011 registered on the Principal Register on September 28, 2004 for services in international classes 36, 41 and 42;
· United States registered trademark AGILENT, registration number 4,404,802 registered on the Principal Register on September 17, 2013 for goods in international class 10;
· United States registered trademark AGILENT registration number 4,387,736 registered on the Principal Register on August 20, 2013 for goods in international classes 9 and 10;
· United States registered trademark AGILENT registration number 4,368,614 registered on the Principal Register on July 16, 2013 for goods in international class 5;
· United States registered service mark AGILENT registration number 5, 058,118 registered on the Principal Register on November 22, 2016 for services in in international class 42;
· United States registered service mark AGILENT registration number 5,296, 474, registered on the Principal Register on September 26, 2017 for services in international class 35;
· United States registered trademark AGILENT registration number 5, 301, 983, registered on the Principal Register on October 17, 2017 for goods in international class 1;
· United States registered trademark AGILENT registration number 5, 384, 027, registered on the Principal Register on January 23, 2018 for goods in international class 7;
Complainant has an established Internet presence with its website at <www.agilent.com>.
The disputed domain name was registered on January 25, 2021. It resolves to an inactive web page and has been used to establish an email account from which Respondent is sending deceptive emails to third parties impersonating Complainant and offering work opportunities.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the Forum’s request for verification of the registration details of the disputed domain name in the course of this proceeding. The Registrar confirmed that Respondent, who availed of a privacy service to conceal his identity on the published WhoIs, is the registrant of the disputed domain name.
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”).
Complainant has provided clear, convincing and uncontested evidence that it has rights in the AGILENT trademark and service mark established through its ownership of the portfolio of registrations described below. Additionally, Complainant has rights in the AGILENT mark at common law established by the goodwill that it has accrued to the mark by extensive use in its business employing over 16,000 people worldwide serving customers in 110 countries, and serving approximately 265,000 laboratories worldwide.
The disputed domain name <aligentjobs.com> consists of the words “aligent” and “jobs” in combination with the gTLD <.com> extension.
The word “aligent” is the initial, dominant and only distinctive element in the disputed domain name. It has no meaning or significance other than as an intentional misspelling of Complainant’s AGILENT mark, switching the letters “g” and “l”. On the balance of probabilities Internet users would be confused by the similarity of the disputed domain name and Complainant’s mark.
Neither the generic word “jobs” nor the gTLD <.com> extension contribute any distinguishing characteristic to the disputed domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the AGILENT mark in which Complainant has rights and the first element of the test in Policy ¶ 4(a)(i) has been satisfied.
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name submitting that
· there is also no evidence that Respondent was commonly known by the disputed domain name prior to the registration of the disputed domain name;
· Respondent is not affiliated with Complainant in any way and Complainant has not given Respondent permission to use the AGILENT mark;
· the screen capture of the inactive web page to which the disputed domain name resolves that has been furnished in an annex to the Complaint illustrates that Respondent is warehousing or engaged in passive use of the disputed domain name;
· the redacted email correspondence, which has been provided in an annex to the Complaint, evidences Respondent’s use of Complainant’s mark in the disputed domain name to impersonate Complainant, conduct phishing schemes, and defraud unsuspecting job seekers;
· Respondent was on notice that Complainant possessed strong trademark rights in a mark identical or similar to the disputed domain name.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in a disputed domain name, the burden of production shifts to the respondent to provide evidence of such rights. Respondent has not provided any Response in this proceeding and has therefore failed to discharge the burden of production.
This Panel must therefore find that the Complainant has proven on the balance of probabilities that Respondent has no rights or legitimate interests in the disputed domain name and the second element of the test in Policy ¶ 4(a)(ii) has therefore been satisfied.
Given the similarity of the disputed domain name and Complainant’s mark, the preexisting rights of Complainant in the AGILENT mark, and the distinctive character of Complainant’s mark this Panel finds that it is improbable that the registrant of the disputed domain name was unaware of Complainant and its mark when the disputed domain name was chosen and registered.
This Panel finds on the balance of probabilities the disputed domain name was registered in an act of typosquatting with the intention of confusing Internet users.
This finding is supported by the manner in which the disputed domain name was subsequently used to resolve to an inactive website and to establish an email account which has been used to impersonate Complainant, by sending information about job opportunities to unsuspecting third parties as evidenced in the screen capture and the copy redacted email adduced in uncontested evidence in the annexes to the Complaint.
Furthermore, this Panel finds that such use of the disputed domain name to impersonate Complainant and to deceive unsuspecting third parties constitutes unfair use of the disputed domain name.
As this Panel finds that the disputed domain name was both registered and is being used in bad faith, Complainant has satisfied the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the relief requested in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aligentjobs.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: March 24, 2021
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