Illumina, Inc. v. ROBERT CHAVE
Claim Number: FA1702001717634
Complainant is Illumina, Inc. ("Complainant"), represented by Julia Anne Matheson of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., District of Columbia, USA. Respondent is ROBERT CHAVE ("Respondent"), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <illumina-france.com>, registered with Gandi SAS.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 16, 2017; the Forum received payment on February 16, 2017.
On February 17, 2017, Gandi SAS confirmed by email to the Forum that the <illumina-france.com> domain name is registered with Gandi SAS and that Respondent is the current registrant of the name. Gandi SAS has verified that Respondent is bound by the Gandi SAS 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 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 9, 2017 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@illumina-france.com. Also on February 17, 2017, the Written Notice of the Complaint, notifying Respondent of the email 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 17, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 is a publicly-traded company in the genomics industry, with annual revenues of over US $2 billion and more than 5,500 employees worldwide. Complainant was initially incorporated in 1998 and went public in 2000. Complainant uses ILLUMINA in connection with medical research services, and holds a U.S. trademark registration reflecting a date of first use of 2001. Complainant also claims common-law rights in the ILLUMINA mark.
Respondent registered the disputed domain name <illumina-france.com> in December 2016. In January and February 2017, various suppliers and customers of Complainant received email messages from addresses incorporating the disputed domain name. The messages included the name of an employee of Complainant and sought payments or proposed business arrangements, all presumably for the purpose of defrauding Complainant or its suppliers or customers. The domain name currently resolves to a parked web page generated by the registrar. Complainant alleges that Respondent has not been commonly known by the disputed domain name and that Respondent is using the domain name in order to impersonate Complainant for fraudulent purposes.
Complainant contends on these grounds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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 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 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 (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 Panel notes that the Registration Agreement is written in French. Rule 11(a) provides that the language of this administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise. Complainant requests that the proceeding be conducted in English, noting that both parties appear to be capable of communicating in English, and arguing that requiring the Complaint and other documents to be translated into French would result in unnecessary delay and expense.
Respondent's location and primary language are unknown. The address that appears in the domain name registration (whois) record is in France, but includes the phrase "Obfuscated whois Gandi" and corresponds to be the address of the registrar rather than the actual address of the domain name registrant. More importantly, as Complainant notes, the disputed domain name is in English, as are the email messages received by Complainant's suppliers and others from Respondent.
The Written Notice of the Complaint was transmitted to Respondent in both English and French, and Respondent has not objected to Complainant's request that the proceeding be conducted in English. It appearing that both parties are capable of communicating in English, the Panel considers it appropriate under the present circumstances to conduct the proceeding in that language. See, e.g., Maruha Nichiro Corp. c/o Shigeru Ito v. Wang XiaoWen, FA 1715376 (Forum Mar. 14, 2017).
The disputed domain name <illumina-france.com> corresponds to Complainant's registered ILLUMINA mark, adding a hyphen, the geographic term "France," and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark.
See, e.g., Zoetis Inc. & Zoetis Services LLC v. Laurent Bertier, FA 1666519 (Forum April 18, 2016) (finding <zoetis-france.com> confusingly similar to ZOETIS). The Panel finds that the disputed domain name is confusingly similar to Complainant's mark.
Under the Policy, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's mark. It was registered without Complainant's authorization, and it is being used in an apparent attempt to impersonate Complainant in connection with a fraudulent phishing scheme. See, e.g., Illumina, Inc. v. Melanie Taylor, FA 1693464 (Forum Oct. 12, 2016) (finding lack of rights or legitimate interests in similar circumstances). Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent's registration of a domain name obviously intended to create confusion with Complainant, together with its use of that domain name in connection with a fraudulent scheme involving email messages attempting to defraud Complainant or its customers or suppliers by exploiting that confusion, is indicative of bad faith under the Policy. See, e.g., Illumina, Inc. v. Melanie Taylor, supra. The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <illumina-france.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: March 20, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page