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 VistaPrint Technologies Ltd. of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Domains Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 22, 2017. On November 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 23, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 December 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 24, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 2, 2018.
The Center appointed C. K. Kwong as the sole panelist in this matter on January 29, 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 is the owner of the numerous trademarks consisting of or comprising the word HAEMONETICS. These registrations include the following United States Trademark Registrations:
(a) Registration No. 1057423 for the mark HAEMONETICS in respect of certain goods under Class 10 (US Class 44) with first use claimed from May 28, 1971 and registered as of February 1, 1977;
(b) Registration No. 4287976 in respect of the mark HAEMONETICS THE BLOOD MANAGEMENT COMPANY in respect of certain goods and services under Classes 9, 10, 35 and 42 registered as of February 12, 2013;
(c) Registration No. 5232710 for the mark HAEMONETICS in respect of certain goods and services under Classes 9, 10, 35 and 42 registered as of June 27, 2017.
The uncontradicted evidence produced by the Complainant shows that the registration of its aforesaid HAEMONETICS mark occurred many years before the registration of the disputed domain name on February 23, 2016.
Other than the particulars shown on the printout of the database search conducted by the Complainant in the WhoIs Database (Annex 1 to the Complaint), there is no other evidence in the case file concerning the background of the Respondent and its business.
The disputed domain name resolves to an inactive website. 5. Parties' Contentions A. Complainant
The Complainant has made the following contentions:
1. The Complainant is recognized worldwide as a leading provider of blood management solution and is listed on the New York Stock Exchange. The mark HAEMONETICS is unique to the Complainant who adopted the mark since 1971 and registered it in 30 jurisdictions including the United States.
2. The disputed domain name is confusingly similar to the Complainant's trademarks.
3. The HAEMONETICS trademark is highly distinctive of the Complainant's products and services which cannot be legitimately chosen by a third party unless it seeks to create an impression of an association with the Complainant.
4. The Respondent is not affiliated in any way with the Complainant and has never licensed or otherwise permitted the Respondent to use the HAEMONETICS mark.
5. The HAEMONETICS mark is well-known.
6. The Respondent has constructive notice of the Complainant's HAEMONETICS mark prior to its registration and use of the disputed domain name.
7. The disputed domain name contains the Complainant's HAEMONETICS mark, with a small cynical alteration. It is a deliberate attempt to take commercial advantage of the Complainant's HAEMONETICS mark.
8. The Respondent has no legitimate interest in the disputed domain name.
9. This is a case of typo squatting.
10. The Respondent's use of the disputed domain name is an attempt to attract Internet users for commercial gain to the Respondent's prospective website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or products on the website.
11. The disputed domain name was registered and used by the Respondent in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 Notice of Proceedings
The contact particulars of the Respondent and the disputed domain name were fully set out in the WhoIs search results provided in Annex 1 to the Complaint. Such contact details also match those provided by the Registrar to the Center on November 23, 2017.
On December 4, 2017, the Center forwarded the notification of Complaint and commencement of administrative proceeding and the Written Notice to the Respondent in accordance with the contact details above by email, fax and courier.
The Panel notes that the documents were delivered to the Respondent's registered address in Hamilton, Bermuda on December 6, 2017 and signed for delivery by person known as Barber. The documents were also delivered to the Respondent's administration address in Lexington, Massachusetts, United States with delivery signed for by person known as A. Reardon on December 6, 2017.
The Panel finds that the Complainant and the Center have duly communicated with the Respondent using the contact information which the Respondent has chosen to provide to the Registrar as reflected in the above contact details, their respective obligations of such communication have been discharged and the Respondent is bound accordingly.
The Panel is satisfied that the failure of the Respondent to furnish a Response is not due to any omission or inadequate communication by the Center. 6.2 The Three Elements
In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that "[the] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 14(b) of the Rules further provides that, "if a Party, in the absence of exceptional circumstances, does not comply with any provisions of, or requirement under these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate." Paragraph 5(e) of the Rules further provides that, "[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint."
The failure of the Respondent to respond does not automatically result in a favourable decision to the Complainant, which is specifically required under paragraph 4(a) of the Policy to establish each of the three elements as provided therein. See The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064 and Berlitz Investment Corp. v. Stefan Tinculescu,WIPO Case No. D2003-0465.
The said three elements are considered below. A. Identical or Confusingly Similar
On the evidence available, the Panel has no hesitation in finding that the Complainant has rights in the trademark HAEMONETICS by reason of its trademark registrations as recited in Section 4 above.
Furthermore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark HAEMONETICS.
The disputed domain name embodies the Complainant's trademark in its entirety. The mere addition of another letter "t" immediately after the same consonant alphabet "t" which is the 8th letter in the Complainant's 12 letter word mark HAEMONETICS does not assist in distinguishing the disputed domain name from the Complainant's mark.
It is also well established practice to disregard the generic top-level domain ("gTLD") part of a domain name, such as ".com", when assessing whether a domain name is identical or confusingly similar to the mark in issue. Société Anonyme des Eaux Minerales d'Evian and Societe des Eaux de Volvic v. Beroca Holdings B.V.I. Limited,WIPO Case No. D2008-0416.
After removing the said extra "t" from the main part of the disputed domain name and the gTLD, only the word "HAEMONETICS" is left in its entirety. Indeed, the main part of the disputed domain name and the Complainant's trademark are identical phonetically and substantially identical visually.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy is established. B. Rights or Legitimate Interests
The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Once such prima facie case is made, the burden will shift to the Respondent to prove that it has rights or legitimate interests in the disputed domain name.
In the present case, the Complainant has asserted registration and use of the registered trademark HAEMONETICS well before the Respondent's registration of the disputed domain name on February 23, 2016. The Complainant has confirmed that it is not affiliated with the Respondent and has not licensed the Respondent to use its mark.
There is no explanation on the record as to why it was necessary for the Respondent to adopt the word "haemonettics" in its domain name.
There is no evidence before the Panel to suggest that the Respondent is commonly known as .
There is also no evidence available to demonstrate any legitimate noncommercial or fair use of the disputed domain name by the Respondent.
The Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Given the Complainant's supported claim of registration of its said HAEMONETICS trademark and the apparent use of that mark for many years long before the registration of the disputed domain name in 2016, there is a strong case for the Respondent to come forward to defend itself. Unfortunately, the Respondent has not come forward with any defence on its choice of embodying the trademark HAEMONETICS in its entirety as part of the disputed domain name .
The choice of the trademark HAEMONETICS in its entirety as part of the disputed domain name with the addition of the letter "t" aforesaid without any explanation, the prior extensive use and the registration of the Complainant's mark in the United States where the Respondent has kept its administrative and technical contact address, the Complainant and Respondent both having administrative addresses in the same State of Massachusetts, as well as the use of the mark as the Complainant's corporate name as listed on the New York Stock Exchange leads to the conclusion that the Respondent must be aware of the existence of the Complainant and its trademark HAEMONETICS at the time of the registration of the disputed domain name.
The Panel notes that the disputed domain name resolves to an inactive website. The consensus view of previous UDRP panels is that passive holding in itself does not preclude a finding of bad faith.
Furthermore, the Panel cannot conceive of any use by the Respondent of the disputed domain name that would not be a bad faith use. Some degree of deception or confusion would seem to be inevitable in any use by the Respondent of the disputed domain name. The use of the term "HAEMONETTICS" in the disputed domain name is likely to create confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website or location or of a product or service on the websites or online locations where the disputed domain name leads to. It is not possible to think of any plausible and genuine use of the disputed domain name by the Respondent.
The Panel finds that the disputed domain name has been registered and used in bad faith under paragraph 4(a)(iii) of the Policy. 7. Decision
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 be transferred to the Complainant.
C. K. Kwong
Sole Panelist
Date: February 12, 2018
Full & Egal Universal Law Academy