Haemonetics Corporation v Paul Wallace
WIPO Case No. D2025-1024
•15-05-2025
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Haemonetics Corporation v. Paul Wallace
Case No. D2025-1024
1. The Parties
Complainant is Haemonetics Corporation, United States of America (“United States” or “U.S.”), represented by Sunstein LLP., United States.
Respondent is Paul Wallace, United States.
2. The Domain Name and Registrar
The disputed domain name <hr-haemonetics.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2025. On March 13, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 13, 2025, 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 (Registrant Name Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to Complainant on March 17, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 31, 2025.
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on April 2, 2025. In accordance with the Rules, paragraph 5, the due date for Response was April 22, 2025. The Respondent did not submit any response. Accordingly, the Center
notified Respondent’s default on April 24, 2025.
The Center appointed Scott R. Austin as the sole panelist in this matter on May 1, 2025. 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.
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4. Factual Background
Without contest by Respondent, Complainant asserts in its Complaint and its Annexes attached provide evidence sufficient to support that:
Complainant is a publicly traded U.S. corporation based in Boston, Massachusetts, recognized as a leading
provider of blood-processing equipment and blood-management services under the trademark
HAEMONETICS (the “HAEMONETICS Mark”)
Complainant owns trademark registrations that consist of or contain the HAEMONETICS Mark, including:
| - | United States Trademark Registration No. 1,057,423, HAEMONETICS, registered on February 1, 1977, for a range of blood processing related equipment in International Classes 9 and 10 and claiming a first use date of May 28, 1971; |
| - | United States Trademark Registration No. 5,232,710, HAEMONETICS, registered on June 27, 2017, for a range of blood management software and blood related product in International Classes 9, 10, 35, and 42. |
The disputed domain name was registered on March 2, 2025, and at the time of the filing of the Complaint resolved to a “parked” website comprising pay-per-click (“PPC”) links to websites featuring chemotherapy and cancer treatment healthcare related content by which Respondent purportedly earns revenue but is now
inactive.
5. Parties’ Contentions
A. Complainant
Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark, that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.
Notably, Complainant contends that its HAEMONETICS Mark is well-known based on its registration almost 50 years prior to registration of the disputed domain name, recognition as well known in the decision of a prior panel and contends it is “recognized worldwide as a leading provider of blood management solutions” in its Complaint.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent from the terms of the Policy that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2.
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Thus, for Complainant to succeed it must prove within the meaning of paragraph 4(a) of the Policy and on the balance of the probabilities that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel finds that Complainant has met its burden in all three elements of the Policy and will deal with each of these elements in more detail below.
A. Identical or Confusingly Similar
To prove this element, Complainant must have trade or service mark rights, and the disputed domain name must be identical or confusingly similar to Complainant’s trade or service mark.
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Moreover, “[n]oting in particular the global nature of the Internet and Domain Name System, the jurisdiction(s) where the trademark is valid is not considered relevant to panel assessment under the first element. […] the filing/priority date, date of registration, and date of claimed first use, are not considered relevant to the first element test. These factors may however bear on a panel’s further substantive determination under the second and third elements”. WIPO Overview 3.0, section 1.1.2.
Based upon the trademark registrations cited by Complainant, as well as supporting documents, the Panel finds that Complainant has established trademark rights in and to its HAEMONETICS Mark.
Having met its burden for established trademark rights in the HAEMONETICS Mark, Complainant next contends that the disputed domain name is identical or confusingly similar to Complainant’s HAEMONETICS Mark because the dominant part of the disputed domain name comprises the term “haemonetics”, identical to the HAEMONETICS Mark, registered by Complainant as its official domain name and as a trademark in numerous countries all over the world.
WIPO Overview 3.0 Section 1.7 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.”
Prior UDRP panels have held the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks. WIPO Overview 3.0, section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”); see also BNP Paribas v. Ronan Laster, WIPO Case No. D2017-2167; Compagnie Gervais Danone v. DomainPark Limited, WIPO Case No. D2008-0587; and Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
The disputed domain name leads with the letters “hr”, a common abbreviation for “human resources”,
followed by a hyphen used to append the abbreviation to the entirety of the HAEMONETICS Mark.
Respondent’s appending this term to Complainant’s HAEMONETICS Mark does not prevent a finding of
confusing similarity for the reasons stated in the UDRP decisions cited above. The addition of the Top-Level
Domain (“TLD”), “.com” in this case, is viewed as a standard registration requirement and as such is
disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11; see also
Research in Motion Limited v. thamer Ahmed Alfarshooti, WIPO Case No. D2012-1146.
Complainant’s HAEMONETICS Mark remains fully recognizable as incorporated in its entirety into the disputed domain name. Accordingly, the Panel finds the disputed domain name is confusingly similar to the
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HAEMONETICS Mark in which Complainant has rights and Complainant has thus satisfied its burden under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances in which Respondent may demonstrate rights or legitimate interests in a disputed domain name.
Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the perplexing task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Respondent here has failed to appear to present any evidence of its rights or legitimate interests in the disputed domain name.
The Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
First, Complainant contends that there is no affiliation or business relationship between it and Respondent that would give rise to any license, permission, or authorization to use the HAEMONETICS Mark in the disputed domain name or otherwise.
The Panel finds that Respondent has neither any connection with Complainant, nor has Respondent been authorized or licensed by Complainant to use and register the HAEMONETICS Mark or to register any domain name incorporating Complainant’s HAEMONETICS Mark.
Prior UDRP panels under the Policy have found that “[i]n the absence of any license or permission from Complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed”. See Sportswear Company S.P.A. v. Tang Hong, WIPO Case
No. D2014-1875.
Paragraph 4(a)(ii) of the Policy also directs an examination of the facts to determine whether a respondent has rights or legitimate interests in a domain name. Paragraph 4(c) lists a number of ways in which a respondent may demonstrate that it does have such rights or legitimate interests.
The Panel notes that Respondent is not commonly known by the disputed domain name or the HAEMONETICS Mark to avail itself of the benefits of paragraph 4(c)(ii) of the Policy. The WhoIs record submitted in the Annex to the initial Complaint shows Respondent’s name was privacy protected, and therefore the Complaint could only reference Respondent as [Registrant Name Redacted for Privacy], the Registrar disclosed registrant information shows Registrants Name as Paul Wallace. Neither name resembles the disputed domain name in any manner.
The Panel finds upon review of the WhoIs record and evidence submitted by Complainant that Respondent, rights or legitimate interests pursuant to paragraph 4(c)(ii) of the Policy.
Complainant next contends that Respondent is not using the disputed domain name in connection with a legitimate noncommercial or fair use of the disputed domain name anticipated under paragraph 4(c)(iii) of the Policy but has intentionally chosen a domain name based on a well-known registered trademark is a deliberate attempt to take commercial advantage of Complainant’s rights in the HAEMONETICS Mark.
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The Panel notes that the record of evidence submitted in the Annex to the Complaint supports Complainant’s argument that Respondent is juxtaposing Complainant’s widely recognized HAEMONETICS Mark for blood management products and services with a “parked” page comprising pay-per-click links to websites featuring chemotherapy and cancer treatment healthcare services, a field in which Complainant’s services are clearly used. It is reasonable, therefore, for the Panel to infer that such links capitalize on the reputation and goodwill of the Complainant’s mark or otherwise mislead Internet users for Respondent’s commercial benefit.
Previous UDRP panels have held that “a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry”. Here, the disputed domain name combines the well- known HAEMONETICS Mark with terms descriptive of the human resources department for Complainant’s business, namely, “hr”, and uses such risk of implied affiliation to mislead Internet users expecting to find a job opportunity with Complainant and instead are directed to a website featuring pay-per-click links to health care sites that likely result in click-through revenue for Respondent and also likely mislead users based on a false association with Complainant’s Mark and reputation. WIPO Overview 3.0, sections 2.5.1 and 2.5.3. Applying UDRP paragraph 4(c), panels have also found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. WIPO Overview 3.0, section 2.5.9.
In view of the above, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any argument or evidence to rebut Complainant’s prima facie case. The Panel determines, therefore, that Respondent does not have rights or legitimate interests in the disputed domain name and that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy, paragraph 4(b):
(i) circumstances indicating that the respondent has registered or the respondent has acquired the
domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name
registrations to complainant who is the owner of the trademark or service mark or to a competitor of that
complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs
directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or
service mark from reflecting the mark in corresponding domain name, provided that the respondent has
engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of
a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for
commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood
of confusion with 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 respondent’s website or location.
The Panel finds that Respondent has registered and used the disputed domain name in bad faith for at least the following reasons.
First, Complainant contends and has provided persuasive support that Respondent registered the disputed domain name fully aware of Complainant’s rights, because the submitted record shows the registration date of the disputed domain name is subsequent to when Complainant registered the HAEMONETICS Mark in
the United States where Respondent purportedly resides, and elsewhere, by decades and, therefore,
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Respondent cannot claim to have been using the HAEMONETICS Mark, without being aware of Complainant’s rights to it. Complainant’s evidence in support of its allegations is sufficient for the Panel to agree that Respondent could not plausibly argue that it did not have knowledge of Complainant’s world renowned HAEMONETICS Mark, registered in the United States since 1977, when Respondent registered the disputed domain name decades later in March 2025.
One prior UDRP panel recently acknowledged that it is highly unlikely that a respondent would not have had
awareness of Complainant’s rights given Complainant’s mark is well known and that the respondent in that
case “registered the disputed domain name with the intention of benefitting from the fame of the
Complainant’s mark in some way”. Haemonetics Corporation v. Bhanu Yadav, Haemonetics.com, WIPO
Case No. D2023-3550. This Panel also finds that the HAEMONETICS Mark is well known and distinctive.
| registration of the disputed domain name, the well-known status of the HAEMONETICS Mark, and | The Panel finds that given the decades of use of Complainant’s HAEMONETICS Mark prior to Respondent’s knowledge of Complainant’s rights in its trademarks a factor supporting bad faith). |
| Moreover, the UDRP panel in Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273, stated that, “[t]he incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith”. See also Veuve Clicquot | |
| Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; General v. Montrose Corporation, WIPO Case No. D2000-1568. | |
| Respondent has had multiple opportunities to explain and justify how Respondent came to register the disputed domain name but has failed to do so. Indeed, the fact that Respondent has elected not to appear in this proceeding underscores that Respondent likely has no valid explanation for Respondent’s actions, which to this Panel appears on the evidence submitted to have been undertaken in bad faith. See, e.g., Volkswagen Group of America, Inc. v. Super Privacy Service Ltd. c/o Dynadot, WIPO Case No. D2019-2521. | |
| Complainant contends Respondent’s actions constitute use of the disputed domain name in bad faith because Respondent has chosen a trademark, which is widely recognized in a unique field, and after more than 50 years of operating Complainant asserts is “recognized worldwide as a leading provider of blood management solutions”, to attract visitors to a website featuring PPC links for healthcare services. This use clearly constitutes an intentional attempt by Respondent to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s HAEMONETICS Mark as to the source, affiliation or endorsement of the website to which the disputed domain name resolves in violation of paragraph 4(b)(iv) of the Policy. | |
| As mentioned above, although the disputed domain name was initially used by Respondent to resolve to a website featuring such links, it subsequently became inactive. Complainant contends, however, that the nonuse of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. | |
| Prior UDRP panels have found under the doctrine of passive holding that that the word bad faith “use” in the context of paragraph 4(a)(iii) does not require a positive act on the part of respondent – instead, passively holding a domain name can constitute a factor in finding bad faith registration and use pursuant to Policy paragraph 4(a)(iii). WIPO Overview 3.0, section 3.3. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; see also Alitalia-Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260. | |
| The Panel finds Complainant’s arguments and evidence persuasive, and Respondent has submitted no arguments or evidence to the contrary. Considering all the circumstances, the Panel concludes that |
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Respondent has registered and used the disputed domain name in bad faith and Complainant has satisfied 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 <hr-haemonetics.com> be transferred to Complainant.
/Scott R. Austin/
Scott R. Austin
Sole Panelist
Date: May 15, 2025
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