HOLOGIC, INC. v. huade wang
Claim Number: FA2301002030032
Complainant is HOLOGIC, INC. (“Complainant”), represented by Lawrence R. Robins of FisherBroyles LLP, USA. Respondent is huade wang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hologicbenefit.com>, registered with Sav.com, LLC.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to Forum electronically on January 31, 2023; Forum received payment on January 31, 2023.
On Jan 31, 2023, Sav.com, LLC confirmed by e-mail to Forum that the <hologicbenefit.com> domain name is registered with Sav.com, LLC and that Respondent is the current registrant of the names. Sav.com, LLC has verified that Respondent is bound by the Sav.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 February 1, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 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@hologicbenefit.com. Also on February 1, 2023, 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.
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, Hologic, Inc., is a global medical technology company. Complainant has rights in the HOLOGIC mark through Complainant’s registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No.5,150,254, registered February 28, 2017). Respondent’s <hologicbenefit.com> domain name is identical or confusingly similar as it merely adds the generic or descriptive word “benefit” to Complainant’s mark.
Respondent lacks rights or legitimate interests in the <hologicbenefit.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use the HOLOGIC mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as the resolving website redirects users to a pay-per-click website that competes with Complainant.
Respondent registered and uses the <hologicbenefit.com> domain name in bad faith. Respondent’s website disrupts Complainant’s business as Respondent registered the disputed domain name to redirect users to a pay-per-click website that includes sites that either compete with Complainant or confuse Complainant’s employees. Respondent used a purposeful misspelling with Complainant’s mark to typosquat. Finally, Respondent had actual knowledge of Complainant’s rights to the HOLOGIC mark prior to registering the disputed domain name as evidenced by Respondent’s resolving website competing with Complainant and attempting to confuse Complainant’s employees.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <hologicbenefit.com> domain name.
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 has rights in the HOLOGIC mark through Complainant’s registration of the mark with the USPTO (e.g. Reg. No.5,150,254, registered February 28, 2017). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per 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).”). The Panel finds that Complainant has demonstrated rights in the HOLOGIC mark per Policy ¶ 4(a)(i).
Complainant argues that the <hologicbenefit.com> domain name is identical or confusingly similar to its HOLOGIC mark since it includes the entire mark and merely adds the generic or descriptive term “benefit”. When a mark is wholly incorporated into a disputed domain name, any additional terms have been found insufficient to distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See 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).”). To further the confusing similarity, Complainant’s own webpage is <hologicbenefits.com>, Respondent’s <hologicbenefit.com> domain name benefits on the common misspelling of the word “benefits” by omitting the letter “s.” The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
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”). The Panel finds that Complainant has made a prima facie case.
Complainant contends Respondent lacks rights or legitimate interests in the <hologicbenefit.com> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed to Respondent any rights in the HOLOGIC mark. When 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. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). In addition, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). The WHOIS information for the disputed domain name lists the registrant as “huade wang” and Complainant asserts there is no other evidence to suggest that Respondent was authorized to use the HOLOGIC mark. The Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <hologicbenefit.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the resolving website redirects users to a pay-per-click website. Using a confusingly similar domain name to divert users to a pay-per-click website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). Complainant provides screenshots of Respondent’s resolving website showing pay-per-click links The Panel finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant contends Respondent registered and uses the <hologicbenefit.com> domain name in bad faith as Respondent’s resolving website redirect users to a pay-per-click website that contains links to third-party websites that either compete with Complainant or attempt to confuse Complainant’s employees. Registering a disputed domain name to divert users to a website that offers competing hyperlinks may be evidence of bad faith under Policy ¶ 4(b)(iv). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant asserts that it has rights to the <hologicbenefits.com> domain name where Complainant administers employee benefits. Respondent’s <hologicbenefit.com> domain name resolves to a website that offers pay-per-click links to sites that either compete with Complainant or could confuse Complainant’s employees when searching for information on employee benefits. This is evidence that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant contends Respondent registered and uses the <hologicbenefit.com> domain name in bad faith because Respondent registered the disputed domain name with a purposeful misspelling. Panels have found that typosquatting may be evidence of bad faith and registration under Policy ¶ 4(a)(iii). See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.”). Complainant argues Respondent purposefully registered the disputed domain name to leave off the “s” in “benefits”. Since Complainant’s mark is not misspelled, the Panel finds that this is not typosquatting.
Complainant argues Respondent registered the <hologicbenefit.com> domain name with actual knowledge of Complainant’s rights in the HOLOGIC mark based on Respondent’s use of the HOLOGIC mark to compete and/or confuse Complainant’s employees. Use of a mark to divert Internet traffic to a disputed domain name where a respondent passes off as a complainant can demonstrate actual knowledge of a complainant’s rights in a mark at registration and show bad faith per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel finds that Respondent had actual knowledge of Complainant’s rights in its mark and registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <hologicbenefit.com> domain name be TRANSFERRED from Respondent to Complainant.
______________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
March 6, 2023
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