Teleflex Incorporated v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA1811001818748
Complainant is Teleflex Incorporated (“Complainant”), represented by Kevin M. Bovard of Baker & Hostetler LLP, Pennsylvania, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <teleflexbenefit.com>, registered with GoDaddy.com, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 29, 2018; the Forum received payment on November 29, 2018.
On November 30, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <teleflexbenefit.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 3, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 24, 2018 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@teleflexbenefit.com. Also on December 3, 2018, 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 28, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it is a global provider of medical technology products, including specialty devices for a range of procedures in critical care and surgery that are designed to improve the health and quality of people’s lives. Complainant has a long history of innovation related to medical devices. Its business focuses on the design, development, manufacture and supply of single- and multi-use medical devices, used by hospitals and healthcare providers in therapeutic, critical care, and surgical applications. Complainant is a Forbes 1000 business, with revenues exceeding $2 billion annually. It employs approximately 14,000 people worldwide and serves healthcare providers in more than 150 countries. Complainant has used its mark TELEFLEX in connection with medical technology products since 2008. Complainant asserts rights in the TELEFLEX mark based on registration in the United States in 2010 and in the European Union in 2008. The mark is also registered elsewhere around the world.
Complainant alleges that the disputed domain name is confusingly similar to its TELEFLEX mark, as the domain name incorporates the entire mark, merely adding the descriptive term “benefit” and generic top-level domain (“gTLD”) “.com.” Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the TELEFLEX mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain resolves to a website with pay-per-click hyperlinks to employee benefit services and products. Further, Respondent’s omission of a single letter from Complainant’s legitimate domain name <teleflexbenefits.com> is evidence of typosquatting. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and is using the disputed domain name in bad faith. Respondent has engaged in a pattern of bad faith registration as it has a history of adverse UDRP decisions. Respondent also attempt to attract, for commercial gain, users to the disputed domain name where it profited from pay-per-click links. Further, Respondent attempted to conceal its identity through the use of a privacy service and with false contact information. Respondent’s registration of the disputed domain name also constitutes typosquatting. Finally, Complainant contends that Respondent had constructive notice of Complainant’s rights in the TELEFLEX mark. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark TELEFLEX and uses it to market medical devices.
Complainant’s registration of its mark dates back to 2008.
The disputed domain name was registered in 2018.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website features click-through advertising links to products and services that are not related to those of 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(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 disputed domain name is confusingly similar to the TELEFLEX mark, as the domain name incorporates the entire TELEFLEX mark, merely adding the descriptive term “benefit” and generic top-level domain (“gTLD”) “.com.” Addition of descriptive terms and/or a gTLD is insufficient to overcome a confusingly similar analysis per Policy ¶ 4(a)(i). See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel therefore finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has not authorized Respondent to use the TELEFLEX mark in any way. Respondent is not commonly known by the disputed domain name: where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). Here, the WHOIS information of record identifies the owner of the disputed domain name as “Carolina Rodrigues / Fundacion Comercio.” The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Respondent fails to use the disputed domain name to make a bona fide offering of goods and services or for a legitimate or noncommercial or fair use. Instead, the disputed domain name resolves to a website which is being used to host pay-per-click ads to products and services unrelated to those of Complainant. Use of a domain name to host a page for third-party links is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Bank of Am. Fork v. Shen, FA 699645 (Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)). The Panel therefore finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods and services or for a legitimate or noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent uses the disputed domain name to host pay-per-click ads unrelated to Complainant’s business. Use of a domain name to host a page for third-party links can be evidence of bad faith per Policy ¶ 4(b)(iv). See Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1502001605757 (Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).”). The Panel therefore finds that Respondent registered and is using the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Further, Respondent has engaged in a pattern of bad faith registrations: Complainant provides evidence of past UDRP proceedings in which Panels ruled against Respondent. This is evidence of bad faith per Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Accordingly the Panel finds that Respondent registered and is using the disputed domain name in bad faith per Policy ¶ 4(b)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <teleflexbenefit.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: December 28, 2018
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