Danaher Corporation v. Zhichao
Claim Number: FA2111001973692
Complainant is Danaher Corporation (“Complainant”), represented by Adam Harber of Williams & Connolly LLP, District of Columbia, USA. Respondent is Zhichao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <danaherbenfitsinfo.com> (the “disputed domain name”), registered with Dynadot, LLC (the “Registrar”).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 17, 2021; the Forum received payment on November 17, 2021.
On November 18, 2021, the Registrar confirmed by e-mail to the Forum that the <danaherbenfitsinfo.com> disputed domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. The Registrar has verified that Respondent is bound by the Dynadot, 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 November 22, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 13, 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@danaherbenfitsinfo.com. Also on November 22, 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 December 19, 2021, pursuant to Complainant's request have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 is a worldwide conglomerate focused on designing, manufacturing and marketing professional, medical, industrial and commercial products and services. Complainant has rights in the DANAHER trademark through its registrations with the SAIC (China’s State Administration for Industry and Commerce) (e.g., Reg. No. 22,741,109, registered on Apr. 21, 2018), where Respondent allegedly resides (hereinafter referred to as the “DANAHER Mark”).
Complainant also claims to have common law rights in the DANAHER Mark, contending that the DANAHER Mark has been continuously and widely used by Complainant since 1984. Complainant asserts that the DANAHER Mark is currently used throughout the United States and multiple jurisdictions worldwide, and thus, the Respondent should have been aware of the DANAHER Mark and the Complainant when registering the disputed domain name.
Complainant further contends that Respondent’s <danaherbenfitsinfo.com> disputed domain name is identical or confusingly similar to Complainant’s DANAHER Mark as it incorporates the mark in its entirety and adds the words “benfits” and “info”, along with the “.com” generic top-level domain (“gTLD”). Moreover, Complainant claims that Respondent lacks rights and legitimate interests in the disputed domain name since Complainant has not authorized or licensed Respondent to use its DANAHER Mark. Finally, Complainant claims that Respondent registered and is using the disputed domain name in bad faith because Respondent hosts parked, pay-per-click links on the disputed domain name’s resolving website and had actual knowledge of the DANAHER Mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant has registered and common law trademark rights in the DANAHER Mark, that the disputed domain name is confusingly similar to Complainant’s DANAHER Mark, that Respondent lacks rights or legitimate interests in respect of the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith.
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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed 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 Panel finds that the disputed domain name is confusingly similar to the DANAHER Mark as set forth below.
The Panel concurs that Complainant has common law rights in the DANAHER Mark based on continuous use of the trademark in commerce since 1984. Registration of a mark is not necessary under Policy ¶ 4(a)(i) if a complainant can establish common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant must show that the mark has developed secondary meaning. See Lokai Holdings, LLC v. Domain Admin / Whois Privacy Corp., 1763598 (Forum Jan. 22, 2018). Here, Complainant has provided evidence of the use of the mark since 1984 and that the mark has developed secondary meaning. Thus, the Panel finds that Complainant has rights in the DANAHER Mark.
The Panel also finds that Respondent’s disputed domain name is confusingly similar to Complainant’s DANAHER Mark as Respondent merely adds the dictionary or generic term “info”, followed by the “.com” gTLD. Adding dictionary or generic terms and a gTLD to a complainant’s mark does not prevent a finding of confusing similarity under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018); Time Warner Inc. v. Zhichao Yang, FA 1700364 (Forum Dec. 12, 2016) (finding the domain name confusingly similar to the TIME WARNER mark even though it included the misspelled term “benfits”). In fact, the inclusion of the misspelled word “benfits” and the word “info” only underscores the confusing similarity here because Complainant, as a large corporation, offers information on employee benefits through the website, “mydanaherbenefits.com”. As a result, Internet users navigating to the disputed domain name are likely to believe, incorrectly, that they are at an employee website associated with Complainant and its DANAHER Mark.
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See 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”).
In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name as it did not submit a response to the Complaint, but given the facts of this case, the Panel finds that Respondent would have been hard pressed to furnish availing arguments had it chosen to respond.
In support, the Panel finds that Respondent is not commonly known by the disputed domain name or any name similar to it, nor has Complainant authorized or licensed Respondent to use its DANAHER Mark in the disputed domain name. In addition, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use.
The Panel also concludes that Respondent does not use the disputed domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use because the resolving website presents users with pay-per-click links that purportedly list third party entities that offer employee benefits competing with those of Complainant. Using a disputed domain name to resolve to a page with pay-per-click competing links does not constitute a bona fide offering of goods and services or legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii). See 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).”); see also Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
This Panel finds that, based on the record, the Complainant has demonstrated the existence of Respondent’s bad faith registration and use pursuant to paragraph 4(b) of the Policy as described below.
First, the use of a disputed domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion or a false association with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).
Second, Respondent registered and is using the disputed domain name in bad faith as Respondent engaged in typosquatting. See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sept. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”). Here, Respondent engaged in typosquatting by deleting the letter “e” in the term “benfits” in the disputed domain name. Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Third, the Panel finds that Respondent registered and is using the disputed domain name in bad faith because Respondent registered the disputed domain name with actual knowledge of Complainant's rights in the DANAHER Mark. Actual knowledge of a complainant’s mark prior to registering a disputed domain name is sufficient to establish bad faith under Policy ¶ 4(a)(iii).
It strains credulity to think that Respondent did not have actual knowledge of Complainant’s DANAHER Mark or of Complainant. Prior knowledge of a complainant’s trademark and use of a disputed domain name that incorporates the trademark is sufficient to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it); Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s mark at the time of registration).
Finally, the Panel concludes that Respondent registered and is using the <danaherbenfitsinfo.com> disputed domain name for bad faith disruption of the Complainant’s business for commercial gain. Under Policy ¶¶ 4(b)(iii) and (iv), using a disputed domain name to host parked, pay-per-click competing links is generally considered evidence of bad faith disruption for commercial gain. 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).”).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by 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 <danaherbenfitsinfo.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: December 20, 2021
[i] This misspelling is an example of typosquatting, a situation in which a disputed domain name includes a misspelled term.
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