Agilent Technologies, Inc. v. DOMAIN IS FOR SALE AT WWW.DAN.COM ---- c/o Dynadot
Claim Number: FA2111001975099
Complainant is Agilent Technologies, Inc. (“Complainant”), represented by Winfield B. Martin of Perkins Coie LLP, Washington, USA. Respondent is DOMAIN IS FOR SALE AT WWW.DAN.COM ---- c/o Dynadot (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <agilentresolution.com>, registered with Dynadot, 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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 30, 2021; the Forum received payment on November 30, 2021.
On December 1, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <agilentresolution.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC 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 December 6, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 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@agilentresolution.com. Also on December 6, 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 January 2, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho-Hyun Nahm, Esq. 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
i) Complainant, Agilent Technologies, Inc., is a manufacturing company specializing in electronics and semiconductor and communications products. Complainant has rights in the AGILENT mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., 2,461,406, registered June 19, 2001). The disputed domain name is confusingly similar to Complainant’s mark because Respondent has incorporated the entire mark and added the generic word “resolution” and the “.com” generic top-level domain (“gTLD”).
ii) Respondent does not have rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant’s AGILENT mark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because the disputed domain previously resolved to a parked webpage where the domain name was offered for sale in excess of its out-of-pocket cost which further demonstrates a lack of legitimate interests in the name.
iii) Respondent has registered and uses the disputed domain name in bad faith because Respondent’s registration of the name suggests opportunistic bad faith. Respondent attempts to sell the disputed domain name sale in excess of its out-of-pocket cost. Respondent had actual knowledge of Complainant’s rights in the mark, which further demonstrates bad faith.
B. Respondent
Respondent did not submit a response to this proceeding.
1.The disputed domain name was registered on September 23, 2021.
2. Complainant has established rights in the AGILENT mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., 2,461,406, registered June 19, 2001).
3. The disputed domain name was registered after Complainant announced that it would be acquiring Resolution Bioscience for up to $695 million.
4. Respondent registered the disputed domain name two days after Complainant filed a trademark application for the AGILENT RESOLUTION mark.
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 asserts rights in the AGILENT mark based on registration with the United States Patent and Trademark Office. Registration with the USPTO is generally sufficient to establish rights in a mark per 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)). Complainant provides evidence of its registration with the USPTO for the AGILENT mark (e.g., 2,461,406, registered June 19, 2001). Therefore, the Panel finds that Complainant has rights in the AGILENT mark under Policy ¶ 4(a)(i).
Complainant contends that the disputed domain name <agilentresolution.com> is confusingly similar to Complainant’s mark because Respondent has incorporated the entire mark and added a generic word and the “.com” gTLD. Domain names which incorporate the entire mark are usually considered confusingly similar, while adding a gTLD generally creates no distinction between a complainant’s mark and a disputed domain name under Policy ¶ 4(a)(i). See 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). Further, adding a generic word does not create a sufficient distinction. See MTD Products Inc v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). The disputed domain name has added the generic word “resolution” and the .com gTLD to Complainant’s mark, which may not create a sufficient distinction. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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”).
Complainant claims that Respondent does not have rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name and is not associated with Complainant or authorized to use Complainant’s AGILENT mark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed domain name. 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). There is no evidence available in the WHOIS information to suggest that Respondent is known by disputed domain name and no information suggests Complainant authorized Respondent to use the AGILENT mark. Rather, the WHOIS information lists the registrant of the domain as “DOMAIN IS FOR SALE AT WWW.DAN.COM ---- c/o Dynadot.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to resolve to a parked webpage that shows that the domain name is available for purchase. A general offer to sell a disputed domain name can show a lack of rights or legitimate interests in the disputed domain name. See 3M Co. v. Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale … provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name) Use of a disputed domain name to resolve to a webpage that offers the domain name for sale is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii); see also Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015) (“The Resolving parked page advertises the sale of the domain name with the message ‘Would you like to buy this domain?’ The Panel accepts this offer as demonstrative of Respondent’s willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name.”). Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and used the disputed domain name in bad faith as Respondent attempts to sell the domain name. Attempts to sell a disputed domain name may be evidence of bad faith per Policy ¶ 4(b)(i). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The <directvgo.com> domain name redirects users to a third party website, it first states, via a link, that the <directvgo.com> domain name may be for sale. If the link is clicked, users are redirected to a page that states, “The owner of Directvgo.com has chosen to receive offer inquiries regarding this domain name.” Therefore, the Panel holds that Respondent registered and uses the domain name in bad faith per Policy ¶ 4(b)(i).”). The disputed domain name previously resolved to a parked webpage that offers the domain name for sale. That website advertised an offer to sell the disputed domain name for $49,500.00. The Panel considers this is an exorbitant fee that is substantially more than out-of-pocket costs. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(i).
Complainant argues that Respondent has registered and uses the disputed domain in bad faith because the date when it registered the name suggests opportunistic bad faith. The disputed domain name was registered after Complainant announced that it would be acquiring Resolution Bioscience for up to $695 million. Respondent registered the disputed domain name two days after Complainant filed a trademark application for the AGILENT RESOLUTION mark, which Complainant argues suggests opportunistic bad faith. Further, Respondent registered two other names in temporal proximity to the rightful owners’ filing of applications to register the trademarks with the USPTO, further suggesting opportunistic bad faith. The registration of a confusingly similar domain name in temporal proximity to a complainant’s filing of an application to register a trademark with the USPTO may be evidence of opportunistic bad faith. See Arizona Board of Regents, for and on behalf of Arizona State University v. Weiping Zheng, FA1504001613780 (Forum May 28, 2015) (finding that the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii), when it registered the disputed domain name just one week after the complainant filed applications to register the SUB DEVIL LIFE mark, and just days after those applications became public through the USPTO’s website). Therefore, the Panel finds bad faith registration and use of the disputed domain name per policy ¶ 4(b)(ii).
Additionally, Complainant alleges that Respondent must have had actual knowledge of Complainant's rights in the AGILENT mark prior to registration of the disputed domain name given the fame of the mark. The Panel infers, due to the notoriety of Complainant’s mark and the totality of circumstances as noted above that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in its mark, which supports a finding of bad faith registration of the disputed domain name under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <agilentresolution.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: January 4, 2022
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