The Complainant is Varian Medical Systems, Inc., United States of America (“United States” or “US”), represented by Sideman & Bancroft LLP, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2020. On June 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 24, 2020, 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 July 2, 2020 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 July 7, 2020. 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 July 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 28, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 29, 2020. The Center appointed Jonathan Agmon as the sole panelist in this matter on August 10, 2020. 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 one of the largest manufacturers of medical devices for treating cancer. Founded in 1948, the Complainant employs over 7,100 people throughout the world and offers medical and scientific devices and software under the VARIAN mark since founding. The Complainant also owns the domain name The Complainant owns numerous trademark registrations for the VARIAN mark worldwide, including but not limited to the following countries: - VARIAN (Registration No. 828848) registered on May 16, 1967 in US; - VARIAN (Registration No. 836706) registered on October 10, 1967 in US; - VARIAN (Registration No. TMA164280) registered on August 1, 1969 in Canada; - VARIAN (Registration No. 283868) registered on December 11, 1974 in Australia; - VARIAN (Registration No. 015135817) registered on August 17, 2016 in European Union; and - VARIAN (Registration No. 015017684) registered on May 3, 2016 in European Union. The disputed domain name was registered on February 14, 2020 and redirects Internet users to a phishing website. 5. Parties’ Contentions A. Complainant The Complainant’s contentions include the following: The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s registered VARIAN mark as the disputed domain name wholly incorporates the VARIAN mark with the term “okta” and generic Top-Level Domain (“gTLD”) “.com” that are insufficient to avoid confusing similarity. The Complainant also argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name as it has not licensed or permitted the Respondent to use its trademark or register the disputed domain name. The Complainant further argues that the disputed domain name was registered and is being used in bad faith to redirect Internet users to a phishing website for commercial gain by creating a likelihood of confusion with the Complainant’s VARIAN mark. For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The disputed domain name integrates the Complainant’s VARIAN mark in its entirety (see Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033; Hoffmann-La Roche Inc. v. Andrew Miller,WIPO Case No. D2008-1345). The disputed domain name comprising of the VARIAN mark with the term “okta” does not avoid confusing similarity with the Complainant’s VARIAN trademark. Further, it is well established that the addition of a gTLD “.com”, as a standard registration requirement, is disregarded under the first element confusing similarity test. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.) Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that he has rights or legitimate interests in respect to the disputed domain name (see WIPO Overview 3.0, section 2.1). In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests. The Complainant has provided evidence that it owns trademark registrations long before the disputed domain name was registered and that it is not affiliated with nor has it licensed or otherwise permitted the Respondent to use the Complainant’s trademark (see LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138). There is also no evidence on record showing that the Respondent is commonly known by the disputed domain name (see WIPO Overview 3.0, section 2.3). Furthermore, the Complainant provided evidence showing that the Respondent has been using the disputed domain name to redirect Internet users to a phishing website. Such use of a domain name for illegal activity, such as phishing, can never confer rights or legitimate interests on a respondent. (See WIPO Overview 3.0, section 2.13.) Further, the Respondent did not submit a Response in the present case and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain name which is sufficient to rebut the Complainant’s prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The Complainant must also show that the Respondent registered and is using the disputed domain name in bad faith (see Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy. The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned registration for the VARIAN mark since the year 1967. In view of the evidence filed by the Complainant, and the global widespread use of the VARIAN mark, it is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name. Therefore, it is unlikely that the Respondent did not know of the Complainant’s mark prior to registration of the disputed domain name (see Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735). Furthermore, the disputed domain name incorporates the Complainant’s trademark in its entirety with the addition of the term “okta” and a gTLD “.com” which the Panel finds is an attempt by the Respondent to confuse and/or mislead Internet users seeking or expecting the Complainant. It is also the Complainant’s evidence the domain name The Complainant has also provided evidence that the pop-up which appears on the phishing websites that Internet users are directed to is a common widely-used scam that tricks users into giving personal information. Such behavior is manifestly considered evidence of bad faith on the part of the Respondent (see WIPO Overview 3.0, section 3.1.4). Given the distinctive nature of the Complainant’s VARIAN mark, and given the evidence provided by the Complainant, the Panel is of the view that the Respondent’s use of the disputed domain name to redirect unsuspecting Internet users to phishing websites for commercial gain, constitutes bad faith and is indicative of the Respondent’s registration and use of the disputed domain name to attract Internet users to his website for commercial gain by creating a likelihood of confusion with the Complainant’s VARIAN mark. Based on the particular circumstances of the present case and the distinctive nature of the VARIAN mark, and based on the evidence presented to the Panel, including the registration of the disputed domain name long after the registration of the Complainant’s marks, the confusing similarity between the disputed domain name and the Complainant’s marks, the Respondent’s use of the disputed domain name, the fact that there is no plausible good faith use the Respondent may put the disputed domain name to, and the fact that no response was submitted by the Respondent, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith. 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 Jonathan Agmon
Sole Panelist
Date: August 24, 2020
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