Intuitive Surgical Operations, Inc. v. Henry Charlton
Claim Number: FA2212002022497
Complainant is Intuitive Surgical Operations, Inc. (“Complainant”), represented by Jennifer M. Lantz, California, USA. Respondent is Henry Charlton (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <intuitivesurgicalinc.com>, registered with NameCheap, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on December 1, 2022; Forum received payment on December 1, 2022.
On December 2, 2022, NameCheap, Inc. confirmed by e-mail to Forum that the <intuitivesurgicalinc.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 December 6, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 2022 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@intuitivesurgicalinc.com. Also on December 6, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On December 29, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 contends as follows:
Complainant, Intuitive Surgical Operations, Inc., is manufacturer of medical and surgical equipment and instruments.
Complainant has rights in the INTUITIVE SURGICAL mark through trademark registration, including with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <intuitivesurgicalinc.com> domain name is confusingly similar to the INTUITIVE SURGICAL mark since it includes the entirety of the mark, merely appending an additional term and generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <intuitivesurgicalinc.com> domain name as Respondent is not commonly known by the at-issue domain name and Complainant has never authorized Respondent to use the INTUITIVE SURGICAL mark. Respondent uses the entirety of the mark in the at-issue domain name to pass off as Complainant and redirect Internet users to Complainant’s legitimate website. Respondent is also likely passing off in furtherance of a phishing scheme.
Respondent registered and uses the <intuitivesurgicalinc.com> domain name in bad faith to pass itself off as Complainant to redirect Internet users to Complainant’s legitimate website. Respondent knew of Complainant’s rights in the INTUITIVE SURGICAL mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the INTUITIVE SURGICAL mark.
Complainant’s rights in INTUITIVE SURGICAL existed prior to Respondent’s registration of the at-issue domain name.
Respondent is not authorized to use Complainant’s trademarks.
Respondent uses the confusingly similar at-issue domain name to redirect internet users to Complainant official website.
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”).
The at-issue domain is confusingly similar to a trademark in which Complainant has rights.
Complainant’s USPTO registration of its INTUITIVE SURGICAL mark is sufficient to establish Complainant’s rights in a mark for the purposes of Policy 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”); see also, Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The at-issue domain name contains Complainant’s INTUITIVE SURGICAL trademark less its domain name impermissible space, followed by the term “inc” and with all followed by the “.com” top-level domain name. The differences between the <intuitivesurgicalinc.com> domain name and Complainant’s trademark are insufficient to distinguish the domain name from Complainant’s trademark under Policy ¶ 4(a)(i). Therefore, the Panel finds that <intuitivesurgicalinc.com> is confusingly similar to Complainant’s INTUITIVE SURGICAL mark. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also, The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”);
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Henry Charlton” and the record before the Panel contains no evidence that tends to prove that Respondent is commonly known by the <intuitivesurgicalinc.com>domain name. The Panel therefore concludes that Respondent is not commonly known by the <intuitivesurgicalinc.com> domain name for the purposes of Policy ¶ 4(c)(ii). SeeCoppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s confusingly similar <intuitivesurgicalinc.com> domain name redirects internet users to Complainant’s genuine website. Respondent’s use of the domain name in this manner constitutes neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶4(c)(iii). See Better Existence with HIV v. AAA, FA 1363660 (Forum Jan. 25, 2011) (finding that “even though the disputed domain name still resolves to Complainant’s own website, Respondent’s registration of the disputed domain name in its own name fails to create any rights or legitimate interests in Respondent associated with the disputed domain name under Policy ¶ 4(a)(ii)”).
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii).
First, Respondent uses the at-issue domain name to pass itself off as Complainant and redirect traffic to Complainant’s official website. Such use is disruptive to Complainant’s business and shows Respondent’s attempt to attract internet users, who are confused as to the domain name’s sponsorship, to the at-issue domain name. Further, the domain name’s redirection to Complainant’s website serves to mistakenly validate that the domain name is owned or sponsored by Complainant. Respondent’s use of <intuitivesurgicalinc.com> indicates Respondent’s bad faith regarding Respondent’s registration and use of the domain name under Policy ¶ 4(b)(iii) and under Policy ¶ 4(b)(iv). See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”)); see also, Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)). Notably, Respondent’s use of the at-issue domain name ensures that the domain name is poised so that it might be later used in furtherance of a phishing scheme. However, Complainant need not wait until Respondent trades on Complainant’s trademark or perpetrates fraud via the domain name for the Panel to find Respondent to be acting in bad faith pursuant to Policy ¶ 4 (a)(iii). Here, Respondent’s mere registration of the confusingly similar domain name without some benign basis for doing so suggests Respondent’s present bad faith intent to inappropriately capitalize on the trademark laden <intuitivesurgicalinc.com> domain name in the future.
Moreover, Respondent had actual knowledge of Complainant’s rights in the INTUITIVE SURGICAL mark when it registered <intuitivesurgicalinc.com> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s use of the domain name to redirect internet users to Complainant’s website. Registering and using a confusingly similar domain with knowledge of Complainant’s rights therein further indicates Respondent’s bad faith registration and use of <intuitivesurgicalinc.com> pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <intuitivesurgicalinc.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 29, 2022
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