Lonza Ltd. v. Accounts Receivable Ch - Manchester
Claim Number: FA1904001840209
Complainant is Lonza Ltd. (“Complainant”), represented by Tanja Proehl of Greer, Burns & Crain, Ltd., Illinois, USA. Respondent is Accounts Receivable Ch - Manchester (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lonza-uk.com>, registered with Wild West Domains, LLC.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 23, 2019; the Forum received payment on April 23, 2019.
On April 24, 2019, Wild West Domains, LLC confirmed by e-mail to the Forum that the <lonza-uk.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 April 26, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 16, 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 postmaster@lonza-uk.com. Also on April 26, 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 May 21, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a leading company operating in the pharmaceutical, biotech, and specialty ingredients markets. Complainant has rights in the trademark LONZA based upon its use of the mark in commerce since 1955 and its registration of the mark with the United States Patent and Trademark Office (“USPTO”), THE United Kingdom Intellectual Property Office (“UKIPO”), and many other national trademark offices around the world. Respondents <lonza-uk.com> domain name, registered on April 9, 2019, is confusingly similar to Complainant’s LONZA mark because it wholly incorporates the mark with the addition of the geographic term “uk” the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <lonza-uk.com> domain name. Respondent is neither commonly known by the disputed domain name, nor has Complainant authorized Respondent to use its LONZA mark. Furthermore, Respondent attempts to pass itself off as Complainant in furtherance of a phishing scheme aimed at Complainant’s customers. Additionally, Respondent’s disputed domain name’s resolving website is inactive.
Respondent registered and uses the <lonza-uk.com> domain name in bad faith. Respondent seeks commercial gain based upon consumer confusion with the LONZA mark by using the disputed domain name in an attempt at passing itself off as Complainant in furtherance of a phishing scheme. Further, Respondent fails to make an active use of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
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”).
Complainant claims rights in the LONZA trademark based upon its registration of the mark with the USPTO and other national trademark offices including the UKIPO. Registration of a mark with such national offices is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in the LONZA mark per Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <lonza-uk.com> domain name is confusingly similar to Complainant’s LONZA mark because it wholly incorporates Complainant’s LONZA mark with the addition of the geographic term “uk” the “.com” gTLD. Further, while Complainant does not make this contention, the domain name also adds a hyphen. Panels have consistently held that the addition of the term “uk,” hyphens, and gTLDs are irrelevant, creating confusing similarity under Policy ¶ 4(a)(i). See PAIGE, LLC v. Chris Kimber, FA 1714208 (Forum Mar. 9, 2017) (“Accordingly, the Panel agrees that… “uk” is an irrelevant addition under the Policy, creating confusing similarity under Policy ¶ 4(a)(i).”); see also Daniel Handler v. Masanori Toriimoto / PLAN-B Co.,Ltd, FA 1778986 (Forum May 7, 2018) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Thus, the Panel agrees that Respondent’s <lonza-uk.com> domain name is confusingly similar to Complainant’s LONZA mark under Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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”).
Complainant argues that Respondent lacks rights or legitimate interests in the <lonza-uk.com> domain name because Respondent is neither commonly known by the disputed domain name, nor has Complainant authorized Respondent to use its LONZA mark. Where a response is absent, 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 that 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.”). Here, the relevant WHOIS information indicates that Respondent is known as “Accounts Receivable Ch – Manchester” and, in the absence of a Response or any other submission by the Respondent, there is no evidence that it is known otherwise or that it has permission to use the LONZA mark. Thus, the Panel finds that Respondent lacks rights or legitimate interests in the <lonza-uk.com> domain name as Respondent is neither commonly known by the disputed domain name, nor did Complainant authorize Respondent to use its LONZA mark.
Furthermore, Complainant argues that Respondent lacks rights or legitimate interests in the <lonza-uk.com> domain name because Respondent does not provide a bona fide offering of goods or services nor a noncommercial or fair use of the domain. Rather, Complainant asserts that Respondent attempts to pass itself off as Complainant in furtherance of a phishing scheme. Passing oneself off via email in furtherance of a phishing scheme is not indicative of rights or legitimate interests under Policy ¶ 4(c)(i) and (iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). As evidence of phishing, Complainant provides a copy of an email sent to one of its customers using an address that includes the disputed domain name and requests payment to “our new bank account”. Thus, the Panel agrees that Respondent lacks rights or legitimate interests in the <lonza-uk.com> domain name under Policy ¶¶ 4(c)(i) and (iii).
Next, Complainant argues that Respondent lacks rights or legitimate interests in the <lonza-uk.com> domain name because there is no resolving website from Respondent’s disputed domain name. Holding a disputed domain name inactively and where it resolves to no web content is generally not sufficient to confer rights or legitimate interests under the Policy. See Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where the respondent merely passively held the domain name). Here, Complainant merely asserts that the disputed domain name resolves to an inactive webpage but it does not provide a browser screen shot or other supporting evidence for this claim. Nevertheless, the Panel’s own attempt to browse to the disputed domain name resulted in no resolving web content. Thus, the Panel agrees that Respondent lacks rights or legitimate interests in the <lonza-uk.com> domain name under Policy ¶ 4(a)(ii).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the LONZA trademark prior to registering the <lonza-uk.com> domain name. In support of this, it points out that the mark is a coined term that was invented by Complainant, the mark has gained wide notoriety in Complainant’s industry in the United States and the United Kingdom, and it points to the near identity between Respondent’s domain name and the LONZA mark. Consequently, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the LONZA mark prior to registration of the disputed domain name.
Complainant next claims that Respondent registered and uses the <lonza-uk.com> domain name in bad faith because Respondent engages in disruption of Complainant’s business by attempting to pass itself off as Complainant in furtherance of a phishing scheme. Passing oneself off in furtherance of a phishing scheme can evince bad faith registration and use under both Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails supported a finding of bad faith registration and use under Policy ¶ 4(b)(iii)); see also Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name in an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use per Policy ¶ 4(b)(iv)). As noted above, Complainant provides a copy of an email sent using the disputed domain name requesting payment to “our new bank account”. Thus, the Panel agrees that Respondent registered and uses the <lonza-uk.com> domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Finally, Complainant argues that Respondent registered and uses the <lonza-uk.com> domain name in bad faith because Respondent fails to make an active use of the disputed domain name. Failure to actively use a domain name can provide evidence of bad faith registration and use under the non-exclusive Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA 1608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). As noted, Complainant merely asserts that the disputed domain name resolves to an inactive webpage and does not provide any supporting evidence for this claim. However, the Panel has browsed to the disputed domain name and found that it resolves to no web content. Thus, the Panel agrees that the disputed domain name is inactive and it finds that Respondent registered and uses the <lonza-uk.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <lonza-uk.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: May 24, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page