LabConnect.com
PARTIES
Complainant is
Labconnect, LLC (“Complainant”), represented by
Lynne E. Graybeal of
Perkins Coie LLP, Washington, US. Respondent is
fiyyaz pirani / Medology (“Respondent”), Texas, US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is
<labconnect.com>, registered with
Google LLC.
PANEL
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.
The Honourable Neil Anthony Brown QC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on May 29, 2019; the Forum received payment on May 29, 2019.
On May 30, 2019, Google LLC confirmed by e-mail to the Forum that the
<labconnect.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 June 3, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 2019 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
[email protected]. Also on June 3, 2019, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On June 25, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant
Complainant made the following contentions.
Complainant operates in the laboratory services industry providing laboratory testing, kit building, sample managements etc. Complainant has rights in the LABCONNECT mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (
e.g. Reg. No. 3,101,103, registered June 6, 2006).
See Amend. Compl. Ex. D1. Respondent’s
<labconnect.com> domain name is identical or confusingly similar to Complainant’s LABCONNECT mark because it wholly incorporates Complainant’s LABCONNECT mark, and merely adds the “.com” generic top-level domain (“gTLD”). Complainant previously owned the disputed domain name, having registered it on October 20, 2003, but the registration inadvertently lapsed, whereupon the domain name was bought by a third party who sold it to Respondent who registered it on July 10, 2017. This was less than a month after Complainant had announced that it had received $25 million in funding, which of course was information of commercial value.
See Amend. Compl. Ex. G.
Respondent lacks rights or legitimate interests in the
<labconnect.com> domain name. Respondent is not authorized to use Complainant’s LABCONNECT mark and is not commonly known by the disputed domain name.
See Amend. Compl. Ex. E. Additionally, Respondent fails to use the disputed domain name in connection with a
bona fide offering of goods and services or for a legitimate noncommercial or fair use because the resolving webpage is inactive.
See Amend. Compl. Ex. I.
Respondent registered and uses the
<labconnect.com> domain name in bad faith because Respondent had actual knowledge of Complainant’s LABCONNECT mark prior to registering the disputed domain name. Additionally, Respondent opportunistically registered the disputed domain name in bad faith by registering the disputed domain name after Complainant’s public announcement that it had received an investment of nearly $25 million.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
1. Complainant is a United States company engaged in in the laboratory services industry and the provision of related goods and services.
2. Complainant has established its trademark rights in the LABCONNECT mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (
e.g. Reg. No. 3,101,103, registered June 6, 2006).
3. Complainant previously owned the disputed domain name, having registered it on October 20, 2003, but the registration inadvertently lapsed, whereupon the domain name was bought by a third party who sold it to Respondent who registered it on July 10, 2017. This was less than a month after Complainant had announced that it had received $25 million in funding, which of course was information of commercial value.
4. Respondent has failed to use the disputed domain name in connection with a
bona fide offering of goods and services or for a legitimate noncommercial or fair use because the resolving webpage is inactive.
DISCUSSION
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”).
Identical and/or Confusingly Similar
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the LABCONNECT mark based upon registration with the USPTO (
e.g., Reg. No. 3,101,103, registered June 6, 2006).
See Amend. Compl. Ex. D1. Registration of a mark with the USPTO is sufficient to establish rights in the mark pursuant to 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).”) Therefore, the Panel finds Complainant has rights in the LABCONNECT mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s LABCONNECT mark. Complainant argues Respondent’s
<labconnect.com> domain name is identical or confusingly similar to Complainant’s LABCONNECT mark because it wholly incorporates Complainant’s LABCONNECT mark, and merely adds the “.com” generic top-level domain (“gTLD”). The mere addition of a gTLD is inconsequential and does not avoid a finding of identity.
See MTD Products Inc v. Mike Kernea / Skyline, FA 1775278 (Forum Apr. 19, 2018) (“The mere addition of a gTLD is inconsequential and does not avoid a finding of identity.”). Therefore, the Panel agrees with Complainant and finds Respondent’s disputed domain name to be identical to the Complainant’s LABCONNECT mark.
The Pane notes that while the
<labconnect.com> domain name was registered prior to Complainant’s rights in the mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.
See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii));
see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”). Furthermore, the relevant date of analysis under Policy ¶ 4(a)(i) is the date on which the respondent first obtained registration ownership of the disputed domain name and not the date that it was first registered by any entity.
See MG Icon LLC v DNS MANAGER / HTTP GROUP, FA 1649222 (Forum Jan. 4, 2016) (holding that the relevant date for Policy ¶ 4(a)(i) analysis is the date on which respondent first obtained registration ownership of the disputed domain name, and not the date that it was first registered by any entity).
Complainant has thus made out the first of the three elements that it must establish.
Rights or Legitimate Interests
It is now well established that 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 out a
prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s LABCONNECT trademark and to use it in its domain name;
(b) Complainant previously owned the disputed domain name, having registered it on October 20, 2003, but the registration inadvertently lapsed, whereupon the domain name was bought by a third party who sold it to Respondent who registered it on July 10, 2017. This was less than a month after Complainant had announced that it had received $25 million in funding, which of course was information of commercial value;
(c) Respondent has failed to use the disputed domain name in connection with a
bona fide offering of goods and services or for a legitimate noncommercial or fair use because the resolving webpage is inactive;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the
<labconnect.com> domain name as Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the LABCONNECT mark. WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name.
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 support a finding that the respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”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.”). Complainant provides WHOIS information for Respondent indicating that Respondent is known as “firaz pirani / Medology” and no information of the record indicates that Respondent was authorized to use the Complainant’s LABCONNECT mark.
See Amend. Compl. Ex. E. Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii);
(f) Respondent fails to use the disputed domain name in connection with a
bona fide offering of goods and services or for a legitimate noncommercial or fair use because the resolving webpage is inactive.
See Amend. Compl. Ex. I. An inactive webpage may not be a
bona fide offering of goods or services or a legitimate noncommercial or fair use.
See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a
bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Therefore, the Panel finds that Respondent has failed to provide a
bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
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 has thus made out the second of the three elements that it must establish.
Registration and Use in Bad Faith
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent had actual and/or constructive knowledge of Complainant’s rights in the LABCONNECT mark as the result of Complainant’s extensive use of the mark predating the date on which respondent registered the
<labconnect.com> domain name and Respondent’s opportunistic timing. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s mark prior to registering is adequate to find bad faith under 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.”). Use of a mark on a resolving webpage may demonstrate that a respondent had actual knowledge of a complainant’s rights in a mark at the time of registration, thus constituting bad faith.
Finex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 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”). Thus, as the Panel agrees, the Panel finds that Respondent had actual notice of Complainant’s rights in the LABCONNECT mark under Policy ¶ 4(a)(iii), showing bad faith.
Secondly, Complainant contends that Respondent opportunistically registered the disputed domain name in bad faith by registering it after Complainant’s public announcement that it had received an investment of nearly $25 million. Registration of a disputed domain name shortly after a major public announcement, for example a funding announcement, may demonstrate opportunistic bad faith as it does in the present case. See Zynga Inc. v. Ryan G Foo / PPA Media Services, FA 1650448 (Forum Jan. 14, 2016) (finding the respondent engaged in opportunistic bad faith where it “registered the <wwwzynga.com> domain name the same day Complainant announced it received $29 million in funding from outside investors and acquired the then largest virtual world game on social networks.”). Complainant provides publicly available articles regarding Complainant’s funding published prior to Respondent’s purchase of the disputed domain name. See Amend. Compl. Ex. J. Therefore, the Panel finds Respondent opportunistically registered the disputed domain name in bad faith.
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the LABCONNECT mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be
GRANTED.
Accordingly, it is Ordered that the
<labconnect.com> domain name be
TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 26, 2019
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