AB SCIEX, LLC v. VistaPrint Technologies Ltd
Claim Number: FA1405001559200
Complainant is AB SCIEX, LLC (“Complainant”), represented by Tricia L. Schulz of Foley & Lardner LLP, Wisconsin, USA. Respondent is VistaPrint Technologies Ltd (“Respondent”), Bermuda.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <absciexllc.com>, registered with TUCOWS, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 13, 2014; the National Arbitration Forum received payment on May 16, 2014.
On May 14, 2014, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <absciexllc.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, 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 May 20, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 9, 2014 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@absciexllc.com. Also on May 20, 2014, 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.
A timely Response was received and determined to be complete on.
On The Honourable Neil Anthony Brown QC, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 made the following contentions.
a) Complainant is a global firm providing scientific analytical tools and services to clients around the world. Complainant has offices in Europe and the United States and sells to over thirty-five countries throughout the world.
b) Complainant has rights in the AB SCIEX mark through trademark rights it has licensed from Thermo Fisher Scientific, which acquired Complainant in early 2014. See Complainant’s Exhibit 3. Complainant’s trademark is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,032,339 registered Sept. 27, 2011).
c) Respondent’s <absciexllc.com> domain name is confusingly similar to Complainant’s AB SCIEX mark. The disputed domain name incorporates Complainant’s mark in its entirety while adding the term “llc.”
d) Respondent does not have any rights or legitimate interests in the <absciexllc.com> domain name.
a. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its AB SCIEX mark in any way.
b. The <absciexllc.com> domain name is being used to send fraudulent emails purporting to be from Complainant in order to fraudulently purchase items, and therefore Respondent is attempting to pass itself off as Complainant.
e) Respondent registered and is using the <absciexllc.com> domain name in bad faith.
a. Respondent is attempting to pass itself off as Complainant through the use of an email address connected to the disputed domain. Respondent is sending fraudulent purchase orders claiming to be a representative of Complainant and completing fraudulent transactions.
b. Respondent had knowledge of Complainant’s AB SCIEX mark prior to registering the disputed domain name because Complainant’s mark is distinctive and well-known.
B. Respondent
Respondent failed to submit a Response in this proceeding.
2. Complainant has rights in the AB SCIEX mark through trademark rights it has licensed from Thermo Fisher Scientific, which acquired Complainant in early 2014. Complainant’s trademark is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,032,339 registered Sept. 27, 2011).
3. Respondent became the registrant of the disputed domain name on February 11, 2014.
4.The <absciexllc.com> domain name is being used to send fraudulent
emails purporting to be from Complainant in order to encourage the recipient to purchase items and Respondent is accordingly attempting to pass itself off as 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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant contends it has rights in the AB SCIEX mark through trademark rights it has licensed from Thermo Fisher Scientific, which acquired Complainant in early 2014. See Complainant’s Exhibit 3. Complainant’s trademark is registered with the USPTO (Reg. No. 4,032,339 registered Sept. 27, 2011). The Panel notes that Respondent resides or operates in a different country than that in which Complainant holds its trademark registration; however, past panels have determined that a complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant own a registration in a different country. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the AB SCIEX mark within the meaning of Policy ¶ 4(a)(i) because Complainant holds a valid registration for the mark with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s AB SCIEX mark. Complainant alleges that Respondent’s <absciexllc.com> domain name is confusingly similar to Complainant’s AB SCIEX mark. Complainant observes that the disputed domain name incorporates Complainant’s mark in its entirety while adding the term “llc.” The Panel notes that the disputed domain name also removes the space that exists between the terms in Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com.” First, the Panel finds that the addition of a generic or descriptive term to a trademark in a disputed domain name does not sufficiently differentiate the dispute domain name from the trademark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Next, the Panel finds that the neither the removal of a space from a trademark or the addition of a gTLD negates a finding of confusing similarity. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent’s <absciexllc.com> domain name is confusingly similar to Complainant’s AB SCIEX mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s AB SCIEX mark, adding only the letters “llc” which indicate that it is referring to a company;
(b) The <absciexllc.com> domain name is being used to send fraudulent emails purporting to be from Complainant in order to encourage the recipient to purchase items, and Respondent is accordingly attempting to pass itself off as Complainant;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant contends that Respondent does not have any rights or legitimate interests in the <absciexllc.com> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its AB SCIEX mark in any way. The Panel notes that the WHOIS record for the disputed domain name lists “VistaPrint Technologies Ltd” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent was not authorized by Complainant to use the AB SCIEX mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <absciexllc.com> domain name under Policy ¶ 4(c)(ii);
(e)Complainant alleges that the <absciexllc.com> domain name is being used to send fraudulent emails purporting to be from Complainant in order to purchase items fraudulently, and therefore Respondent is attempting to pass itself off as Complainant. In Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. n/A a/k/a james valdeshi and Serified Systems a/k/a ozkiegb, FA 1220460 (Nat. Arb. Forum Oct. 2, 2008), the panel found that the respondent’s attempt to pass itself off as the complainant for fraudulent commercial gain “utterly fail[ed] as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Therefore, the Panel finds that Respondent’s use of the <absciexllc.com> domain name for fraudulent commercial purposes does not demonstrate a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
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 has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent registered and is using the <absciexllc.com> domain name in bad faith. Complainant asserts that Respondent is attempting to pass itself off as Complainant through the use of an email address connected to the disputed domain. Complainant states that Respondent is sending fraudulent purchase orders claiming to be a representative of Complainant and completing fraudulent transactions. Such conduct has been found to represent bad faith. See Smiths Group plc v. Lee Snooks, FA 1372112 (Nat. Arb. Forum March 18, 2011) (use of <smithsdetections.com> domain name to place fraudulent purchase orders by email for cell phones on the complainant’s corporate account constituted bad faith). Therefore, as the Panel accepts that submission the Panel finds that Respondent registered and is using the <absciexllc.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent is using an email associated with the disputed domain name to place fraudulent purchase orders.
Complainant alleges that Respondent had knowledge of Complainant’s AB SCIEX mark prior to registering the disputed domain name because Complainant’s mark is distinctive and well-known. The Panel notes that constructive notice is generally regarded as insufficient to support a finding of bad faith. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith). However, as the Panel determines Respondent was well aware of Complainant’s mark at the time Respondent registered the disputed domain name, then the Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (Nat. Arb. Forum March 13, 2012) (“[A] finding of bad faith hinges squarely on the probability that it was more likely than not that [the] [r]espondent knew of, and targeted, [the] [c]omplainant’s trade mark.”); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the AB SCIEX mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <absciexllc.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 20, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page