WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Agilent Technologies Inc. v. Arturo Clemente Jr.
Case No. D2007-1799
1. The Parties
Complainant is Agilent Technologies Inc., of California, United States of America, represented by Haynes and Boone, LLP, of United States of America.
Respondent is Arturo Clemente Jr., of California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <agilentoss.com> (the “Domain Name”) is registered with Melbourne IT trading as Internet Names Worldwide (the “Registrar”)
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2007. On December 6, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 7, 2007, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing contact details. It also confirmed that the date of expiry of the Domain Name was March 25, 2008, and that the Domain Name will remain on registrar lock pending conclusion of the administrative proceeding and thus cannot be transferred by Respondent. Further the Registrar confirmed that Respondent had agreed to the adjudication of disputes pursuant to the Registration Agreement. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 12, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response from Respondent was January 1, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 4, 2008.
The Center appointed James H. Grossman as the sole panelist in this matter on January 14, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center, to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant states that it is the world’s premier test and measurement company and is publicly traded on the New York Stock Exchange with customers in more than 110 countries and with approximately 20,000 employees. Net revenues in fiscal year 2006 were $4.97 billion. According to Complainant, Agilent is considered a leader and innovator in the Operational Support Systems (“OSS”) market and its solutions have been deployed by the majority of the world’s largest telecommunications service providers. Complainant defines OSS as the umbrella term for software that supports the telecommunications industry with respect to inventory management, CRM, middleware, performance monitoring, test and measurement and provisioning.
The Complaint according to Complainant is based on its holding a so-called family of AGILENT Marks spread over pages of its Complaint. However, specifically with regard to the phrase “agilent oss”, Complainant states that it uses the phrase regularly in connection with its OSS offerings which pre-date the registration date of the Domain Name which was registered only in 2007. Complainant offers its OSS services at the website, “http://oss.support.agilent.com” where it provides a password-protected portal for its customers to access private subscriber information. Complainant also owns the domain names <agilentoss2005.com>, <agilentoss2006.com>, and <agilentoss2007.com>. These Marks are in addition to all the other so-called family of AGILENT Marks on the Internet which seek to set Complainant apart.
Complainant alleges that on or about April 30, 2007, it learned that Respondent had registered the Domain Name. The Panel visited the Domain Name site on January 25, 2008. The site is still password protected and, accordingly, the Panel was unable to see the text of the site.
5. Parties’ Contentions
Complainant argues that the Domain Name is confusingly similar or identical to the AGILENT Marks. It cites prior panels who have held that when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain names, such domain name meets the test of being identical or confusingly similar, Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. Complainant also points to the fact that it has established common-law trademark rights in the term “agilent oss” and has been using the same Mark in commerce for many years prior to the registration of the Domain Name, including on its company website.
To the best of Complainant’s knowledge, Respondent has never used the Domain Name for any bona fide, non-commercial use. The use of the secret password protection in order to even obtain access to the site is unconvincing evidence of any legitimate interest in the Domain Name as it gives no explanation at all as to why Respondent precisely chose to register that particular name with millions of possible alternatives, Associated British Foods plc v. Pacific Game Technology (Holding) Ltd., WIPO Case No. D2005-0416. Also, Complainant contends that the fact the Domain Name resolves to a password-protected site with no content and thus in Complainant’s view resolves to a dormant or inactive site confirms Respondent’s lack of rights or legitimate interests in the Domain Name, Jupiters Limited. v. Aaron Hall, WIPO Case No. D2000-0574.
Complainant further states, (1) that it has never given any consent to Respondent’s use of any of Complainant’s Marks nor has Respondent ever requested such permission; (2) Respondent is not known by the disputed Domain Name; and 3) that the Mark AGILENT consists of a fanciful term coined and used by Complainant and Respondent has no logical reason to use Complainant’s distinctive Mark, thereby confirming lack of legitimate interest on the part of Respondent.
With regard to Respondent’s use of the Domain Name in bad faith, Complainant cites a number of earlier decided cases on what it believes to be substantially the same bad faith usage including, ACCOR v. Park Junghee, WIPO Case No. D2004-0478, wherein the Panel held that passive holding of a domain name may disrupt the business of Complainant, such as by confusing Internet users who are attempting to reach Complainant’s site. However, even more potentially damaging is the possibility that a customer of Complainant may accidentally access Respondent’s site and insert their user name and password for the legitimate Complainant site, thereby providing confidential private information to Respondent, an unauthorized party to receive such information, Keller Williams Realty, Inc. v. Fusion Mktg, WIPO Case No. D2001-1266.
Complainant argues that it is inconceivable that Respondent would not have knowledge of the worldwide fame of Complainant and its AGILENT Marks before registering the Domain Name which underscores Respondent’s bad faith use and registration of the Domain Name. Complainant cites the Associated British Foods plc Case referred to above which held that the use of another’s trademark that consists of an “invented word” in a domain name establishes bad faith as “the Respondent did certainly not choose this word by coincidence when registering its domain name”. Such knowledge that it was registering a Domain Name which infringes on the legal rights of a third party breaches Section 11 (ii) of its Registration Agreement Statement and may be considered bad faith, Google, Inc. v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240. Complainant alleges that Respondent is not using the Domain Name for a bona fide offering of goods or services, an attribute of a bad faith claim.
Finally, Complainant makes the argument that whether Respondent registered Complainant’s well-known trademark as a domain name in the hopes of selling it to Complainant at a grossly inflated price, or to operate a “phishing” scheme designed to trick Complainant’s Agilent OSS support clients into providing their confidential information, it is clear that Respondent acted in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith.
In cases such as this where Respondent fails to answer to the Complaint, the Panel has to determine if in fact Complainant has made an argument sufficient to meet the requirements of each of the three elements. There is no evidence to refute the allegations of Complainant. It is for this reason that the Panel has spelled out Complainant’s contentions in such detail.
A. Identical or Confusingly Similar
The Panel finds that the Domain Name is confusingly similar to Complainant’s trademark. Although more relevant under the second and third elements of the Policy, the Panel notes that Respondent has taken a well recognized name in the technology field “Agilent” and simply added one of the Company’s many businesses to form the Domain Name in order to deceive an “Agilent” client into proceeding to provide confidential information to an unintended recipient. It may be argued that this deception is far more serious than simply bringing a consumer into a wrongful site since this action by Respondent has the potential of commercial espionage in that the information as to one client’s OSS requirements could be worth considerable monies to a competitor. But there is no need for such speculation in that Complainant as set forth above has provided the Panel with a well detailed analysis of the components of this element. The Panel is of the view that the AGILENT Marks and its OSS business is entitled to protection from Respondent who seeks to pass himself off as a division or affiliate of a multinational company. Any client would in all likelihood believe that this site was controlled by Complainant.
The Panel notes that, for purposes of its OSS business, Complainant uses the domain name <oss.support.agilent.com>. However, for some reason there was no evidence of the date of the establishment by Complainant of the domain name <oss.support.agilent.com>, although such establishment dates were given for many other domain names, including <Agilentoss2005.com>, <Agilenttoss2006.com>, and <Agilentoss2007.com> and preceded Respondent’s registration of the Domain Name.
B. Rights or Legitimate Interests
Complainant is quite clear that it has never given any permission to Respondent to use the Domain Name for any purpose nor is there any evidence that Respondent is making legitimate non-commercial or fair use of the Domain Name. In fact Respondent has registered the unusual and well recognized name of a major technology company together with the OSS part of Complainant’s business without any right to do so. Complainant has provided the Panel with extensive details of its many trademarks and domain names relating to its business. Complainant has been using similar domain names prior to the establishment by Respondent of the Domain Name in March 2007. Compared with this recent registration of the Domain Name, Complainant has been growing an already multinational business through the use of its various Marks at least since 1995.
However, while Complainant talks of the Domain Name site as inactive or dormant, there is no evidence as to what would happen to a client or an employee of Complainant actually inputting a simulated password, etc. This possibly would have provided the Panel with better evidence of the intent of Respondent as to use of such information. Nevertheless, the Panel finds that Complainant has more than fulfilled its obligation of proof on this element of its case.
C. Registered and Used in Bad Faith
There is substantial evidence of bad faith registration and use by Respondent. The Panel agrees with Complainant that it is impossible to believe that Respondent could simply come up with the word “agilentoss” out of the blue. This seems a well thought out plan of Respondent to use the trademark and Domain Name of Complainant for some self serving purpose at the expense of Complainant. The Panel is of the view that Respondent has wrongfully established this Domain Name to deceive Complainant’s clients into thinking that they are dealing with Complainant. Whether it is for “phishing” or for extortion or whatever the case maybe, there is no reason for this wrongful taking of Complainant’s well-known asset.
Accordingly, the Panel finds that Complainant has fulfilled all of the three elements as required by the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <agilentoss.com> be transferred to Complainant.
James H. Grossman
Dated: January 28, 2008