WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Haemonetics Corporation v. Contact Privacy Inc. / Charles Orr
Case No. D2018-0937
1. The Parties
The Complainant is Haemonetics Corporation of Braintree, Massachusetts, United States of America (“United States”), represented by Sunstein Kann Murphy & Timbers LLP, United States.
The Respondent is Contact Privacy Inc. of Toronto, Ontario, Canada / Charles Orr of Charleston, South Carolina, United States.
2. The Domain Name and Registrar
The disputed domain name <haemoentics.com> (the “Disputed Domain Name”) is registered with Google LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2018. On April 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 27, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 7, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 8, 2018.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 1, 2018.
The Center appointed Lynda M. Braun as the sole panelist in this matter on June 11, 2018. 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
The Complainant, based in Massachusetts, United States, is recognized globally as a leading provider of blood management solutions and is publicly traded on the New York Stock Exchange. The Complainant is the owner of trademark registrations in 30 jurisdictions worldwide, including in the United States, the residence of the Complainant and the Respondent. The HAEMONETICS trademark registrations, including United States Trademark No. 1,057,423 for HAEMONETICS, registered on February 1, 1977, are used in connection with goods and services in International Classes 9, 10, 35 and 42, for computer software, processing equipment, consulting services and computer services, respectively, all in the field of blood management (the “HAEMONETICS Mark”). The Complainant has used the HAEMONETICS Mark in connection with blood-processing equipment and blood-management services dating back to as early as 1977, with its first use in commerce of 1971.
The Disputed Domain Name was registered by the Respondent on April 16, 2018. The Disputed Domain Name does not resolve to an active website.
5. Parties’ Contentions
The following are the Complainant’s contentions:
- The Disputed Domain Name is confusingly similar to the Complainant’s trademark.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Disputed Domain Name was registered and is being used in bad faith.
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to be successful in these proceedings:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
The Panel concludes that the Disputed Domain Name is confusingly similar to the HAEMONETICS Mark.
First, it is uncontroverted that the Complainant has established rights in the HAEMONETICS Mark based on its longstanding use as well as its numerous trademark registrations for the HAEMONETICS Mark in multiple jurisdictions worldwide. The Disputed Domain Name <haemoentics.com> consists of the HAEMONETICS Mark in its entirety followed by the generic Top-Level Domain (“gTLD”) “.com”. The Disputed Domain Name is a misspelling of the HAEMONETICS Mark, with the transposition of the letters “n” and “e”. This is an example of typosquatting in which a domain name includes a misspelled trademark. Here, the transposition of the letters “n” and “e” in the Disputed Domain Name does not operate to prevent a finding of confusing similarity between the HAEMONETICS Mark and the Disputed Domain Name. A domain name which contains the misspelling of a trademark will be found to be confusingly similar to such trademark where the misspelled trademark, as in the present case, remains the dominant or principal component of the domain name. See Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings, WIPO Case No. D2004-0971.
Second, it is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy, even one that is misspelled, such as <haemoentics.com>. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; see also Hoffmann-La Roche, Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923.
Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of production to demonstrate rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. In particular, the Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case and there is no evidence in the record that the Respondent is in any way associated with the Complainant. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its trademark. Finally, the name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. Based on the passive use made of the Disputed Domain Name, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
This Panel finds that, based on the record, the Complainant has demonstrated the Respondent’s bad faith registration and use of the Disputed Domain Name.
First, based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to create a likelihood of confusion with the Complainant’s HAEMONETICS Mark.
Second, bad faith may be found where the Respondent knew or should have known of the Complainant’s registration and use of the HAEMONETICS Mark prior to registering the Disputed Domain Name. See Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. The Respondent registered the Disputed Domain Name long after the Complainant obtained its trademark registrations for the HAEMONETICS Mark in the United States and other jurisdictions throughout the world. The fame of the HAEMONETICS Mark makes it disingenuous for the Respondent to claim that he was unaware that the registration of the Disputed Domain Name would violate the Complainant’s rights. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights in the complainant’s trademarks).
Third, the Respondent’s registration and use of the Disputed Domain Name that is confusingly similar to the Complainant’s well-known trademark suggests bad faith registration and use. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests bad faith).
Finally, inactive or passive holding of the Disputed Domain Name by the Respondent may amount to bad faith use. See Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v ChinaVogue.com, WIPO Case No. D2005-0615; Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Properties, WIPO Case No. D2005-1085. It has long been held in UDRP decisions that the passive holding of a domain name that incorporates a well-known trademark without a legitimate Internet purpose may indicate that the Disputed Domain Name is being used in bad faith under paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574. Here the Panel has considered and found bad faith use by the Respondent due to the passive holding of the Disputed Domain Name.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <haemoentics.com> be transferred to the Complainant.
Lynda M. Braun
Date: June 14 2018