Myriad Genetics, Inc. v. Wesley Karr
Claim Number: FA2212002023655
Complainant is Myriad Genetics, Inc. (“Complainant”), USA, represented by Katherine Califa of Foley & Lardner LLP, District of Columbia. Respondent is Wesley Karr (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myriadgenetics.com>, registered with Sea Wasp, 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 Forum electronically on December 12, 2022; Forum received payment on December 12, 2022.
On December 13, 2022, Sea Wasp, LLC confirmed by e-mail to Forum that the <myriadgenetics.com> domain name is registered with Sea Wasp, LLC and that Respondent is the current registrant of the name. Sea Wasp, LLC has verified that Respondent is bound by the Sea Wasp, 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 19, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2023 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@myriadgenetics.com. Also on December 19, 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 January 12, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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
i) Complainant, Myriad Genetics, Inc., is engaged in the business of genetic testing and precision medicine. Complainant claims rights in the MYRIAD mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,920,379, registered September 19, 1995). The disputed domain name is confusingly similar because it wholly incorporates Complainant’s registered mark differing only through the additions of the term “genetics” and the “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks 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 MYRIAD mark in any way. Additionally, Respondent fails to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses the disputed domain name to host pay-per-click links. Respondent fails to make active use of the disputed domain name.
iii) Respondent registered and uses the disputed domain name in bad faith. Complainant argues that under the totality of circumstances, bad faith can be inferred. Respondent registered the disputed domain name to create a likelihood of confusion. Respondent fails to make active use of the disputed domain name. Respondent uses the disputed domain name to host malware. Respondent had actual knowledge of Complainant’s rights in the MYRIAD mark prior to registration of the disputed domain name.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on April 4, 2007.
2. Complainant has established rights in the MYRIAD mark through registration with the USPTO (e.g., Reg. No. 1,920,379, registered September 19, 1995).
3. The disputed domain name’s resolving webpage hosts generic hyperlinks, some of which feature Complainant's MYRIAD mark and direct Internet users to Complainant’s website, and others that relate to Complainant’s business and direct Internet users to additional third-party websites.
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 argues that the disputed domain name is confusingly similar to Complainant’s MYRIAD mark because it incorporates wholly Complainant’s mark and is merely followed by the by the term “genetics” before also adding the “.com” gTLD. The addition of a generic or descriptive phrase and gTLD generally fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Therefore, the Panel finds 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 argues Respondent lacks rights or legitimate interest in the domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the MYRIAD mark or register a domain name using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed 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)”). The unmasked WHOIS information for the disputed domain name lists Respondent as “Wesley Karr.” Respondent was not given rights to use the MYRIAD mark nor was commonly known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant further argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Respondent uses the disputed domain name to host pay-per-click links. Use of a disputed domain name to host such links does not convey rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii). See Zillow, Inc. v. Domain Admin / Whois Privacy Corp., FA 1784943 (Forum June 7, 2018) (“the <trulia.co> domain name resolves to a variety of pages, including real-estate-related advertising and to the website of a direct competitor of the Complainant in the online real estate field. Therefore, the Panel agrees with Complainant and finds that Respondent does not have rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).”).
Here, Complainant has provided screenshots of the disputed domain name’s resolving webpage, showing generic hyperlinks, some of which feature Complainant's MYRIAD mark and direct Internet users to Complainant’s website, and others that relate to Complainant’s business and direct Internet users to additional third-party websites. Therefore, the Panel finds Respondent does not use the disputed domain name for any bona fide offering of goods or services or any legitimate noncommercial or fair use under 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 uses the disputed domain name in bad faith because the disputed domain name resolves to a webpage that is currently inactive and hosts generic hyperlinks, some of which feature the MYRIAD house mark and direct Internet users to Complainant’s website, and others that relate to Complainant’s business and direct Internet users to additional third-party websites.
The Panel observes that hosting competing or unrelated hyperlinks for financial gains maybe evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Zynex Medical, Inc. v. New Ventures Services, Corp, FA 1788042 (Forum July 2, 2018) (“The resolving webpage [] appears to display [competing] links such as “Electrical Stimulation” and “Physical Therapy Software.” Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).”); see also For Your Ease Only, Inc v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** c/o Dynadot, FA 1791755 (Forum July 16, 2018) (“[T]he evidence shows that Respondent previously used the domain names to resolve to websites which hosted links to Complainant’s competitors; this demonstrates bad faith under Policy ¶¶ 4(b)(iii) and (iv).”); see additionally HEB Grocery Company, LP v. Nikolay Schastenko / SEO Ukraine, FA 1789019 (Forum July 3, 2018) (“Complainant provides screenshots of the domain name’s resolving website and claims, without contradiction that Respondent commercially benefits from an “Affiliate Program” in which users are redirected to job-oriented websites such as “Snagajob” and “Monster.” Therefore, Respondent’s use of the <hebcareers.net> domain name to attract users for commercial gain demonstrates bad faith per Policy ¶ 4(b)(iv).”).
The Panel recalls that Complainant provides a screenshot of the disputed domain name's resolving website, which shows generic hyperlinks, some of which feature Complainant's MYRIAD mark and direct Internet users to Complainant’s website, and others that relate to Complainant’s business and direct Internet users to additional third-party websites. Therefore, the Panel finds Respondent’s bad faith registration and use of the disputed domain name under Policy ¶¶ 4(b)(iii) and (iv).
Complainant additionally asserts that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the MYRIAD mark. While constructive notice is not sufficient for a finding of bad faith, under Policy ¶ 4(a)(iii), actual knowledge is enough in demonstrating bad faith, and may be established through incorporation of a well-known/registered mark into a domain name. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."); see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name that Respondent had knowledge of Complainant’s rights in the MYRIAD mark prior to the registration of the disputed domain name, which supports a finding of bad faith registration 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 <myriadgenetics.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: January 17, 2023
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