Pear Therapeutics, Inc. v. Richard dinovits
Claim Number: FA2010001917865
Complainant is Pear Therapeutics, Inc. (“Complainant”), represented by Jennifer M. Hetu of Honigman Miller Schwartz and Cohn LLP, Michigan, USA. Respondent is Richard dinovits (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <peartherapeutic.com>, registered with NameCheap, Inc..
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 21, 2020; the Forum received payment on October 21, 2020.
On October 22, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <peartherapeutic.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 October 26, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 16, 2020 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@peartherapeutic.com. Also on October 26, 2020, 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 November 20, 2011 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant discovers, develops, and delivers clinically validated software-based therapeutics to provide better outcomes for patients, smarter engagement and tracking tools for clinicians, and cost-effective solutions for payers. Complainant has a pipeline of products and product candidates across therapeutic areas, including mental health disorders, severe insomnia and multiple sclerosis. Its lead product, RESET, treats substance use disorder, and was the first PDT to receive marketing authorization from the FDA to treat disease. Complainant’s second product candidate, RESET-O for the treatment of opioid use disorder, is currently under review by the FDA with breakthrough designation.
Referring to press release and a third-party website announcement exhibited in an annex to the Complaint, Complainant asserts that it has been recognized for its revolutionary work, winning the Medtech Breakthrough Award For Digital Health Innovation in 2020; the Xconomy Digital Trailblazer award in 2018; and a Fierce Innovation Award in the Digital Health Solution category for RESET, the first FDA-cleared prescription digital therapeutic to treat any disease in 2017.
Complainant submits that its PEAR THERAPEUTICS mark has been widely promoted among members of the general consuming public and symbolizes the tremendous goodwill associated with Complainant and Complainant’s services.
Complainant submits that the disputed domain name <peartherapeutic.com> is confusingly similar to Complainant’s PEAR THERAPEUTICS mark as it wholly incorporates the mark, with the only difference being that the disputed domain name does not feature the letter “s” at the end of term “therapeutics”. Put another way, the disputed domain name is simply Complainant’s mark in singular form vs. plural form. Citing Provide Commerce, Inc. v. e on Craze, FA1506001626318 (Forum Aug. 11, 2015). (“Removal or addition of a singular letter does not distinguish a disputed domain name from a mark.”).
Panels established under the Policy have consistently found confusing similarity between a complainant’s mark and a respondent’s disputed domain name where the respondent’s domain name simply lacked the letter “s”. Citing Ferring B.V. v. John Mastrell / ferringpharmaceutical, FA1508001632792 (Forum Sept. 9, 2015) (holding the <ferringpharmaceutical.com> domain name confusingly similar to the complainant’s FERRING PHARMACEUTICALS mark as it “merely uses the singular form of the word ‘pharmaceutical’ and adds the generic Top-Level Domain (‘gTLD’) <.com>.)
Complainant adds that the addition of the gTLD <.com> extension is of no consequence to the Policy ¶ 4(a)(i) analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum Sept. 27, 2002) (“[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Complainant alleges that Respondent has no rights or legitimate interest in the disputed domain name.
Complainant alleges that Respondent’s only use of the disputed domain name is to facilitate a phishing scheme that solicits personal information from job applicants. Complainant has received numerous communications from individuals who have been contacted by Respondent via an email address associated with the disputed domain name namely, careers@peartherapeutic.com and the website to which the disputed domain name resolves.
In this regard, Complainant refers to copies of email correspondence from an email account associated with the disputed domain name which it alleges shows that Respondent is using the disputed domain name to initiate email exchanges with individuals seeking employment with Complainant. The email was sent to Complainant by a concerned a targeted recipient who suspected that something was amiss and reported this alleged fraudulent phishing scam to Complainant.
The email illustrates that as part of a job offer and the “interview” process, Respondent requests personal data, including Social Security number and banking information, from the recipient under the false pretense that such information will be used in connection with employment. Complainant submits that Responding is thus is using the disputed domain name in bad faith to pass itself off as Complainant with the goal of harvesting internet users’ personal information. “Use of a domain name to phish for Internet users’ personal information is evidence of bad faith.” Citing United States Postal Service v. kyle javier, FA 1787265 (Forum June 12, 2018).
Complainant submits that panels in previous cases under the Policy have found that use of a disputed domain name to pass oneself off as a complainant in furtherance of a phishing scam that steals users’ sensitive information does not constitute a bona fide offering of goods or services nor a legitimate noncommercial fair use under Policy ¶¶ 4(c)(i) and (iii). See Bittrex, Inc. v. Matheus Lemos, FA1807001797378 (Forum Aug. 16, 2018). “Where a respondent’s website contains nearly identical content and color scheme as a complainant’s website, ‘Respondent attempts to pass off as Complainant to engage in a phishing scheme to obtain information from users. Passing off in furtherance of a phishing scheme can evince a failure to make a bona fide offering of goods or services or legitimate noncommercial or fair use.’”
Complainant alleges that the disputed domain name was registered and is being used in bad faith.
Complainant asserts that the term PEAR THERAPEUTIC in the disputed domain name has no meaning other than as Complainant’s PEAR THERAPEUTICS mark or as a reference to such mark. This is especially evident due to the fact that the website to which the disputed domain name resolves is identical to Complainant’s website.
Complainant alleges that the phishing scam described above is evidence that the disputed domain name is being used in bad faith.
Complainant adds that Respondent uses the disputed domain name to divert Internet users to its website, and away from Complainant’s legitimate website and such use is likely to cause confusion with and dilution of the distinctive nature of Complainant’s PEAR THERAPEUTICS mark. In this regard, Complainant refers to screenshots of the website to which the disputed domain name resolves and of Complainant’s own website at <www.PearTherapeutics.com> which are exhibited in an annex to the Complaint. These screenshots show that Respondent’s website is an exact copy of Complainant’s legitimate business website.
Complainant argues that because the website to which the disputed domain name resolves is identical to Complainant’s website and prominently features the PEAR THERAPEUTICS mark, there is a high likelihood that consumers who are directed to Respondent’s website will assume that they are seeing a genuine website owned, operated, or affiliated with Complainant. Indeed, individuals who have been contacted for alleged job opportunities by Respondent have been under the impression that they are communicating with Complainant.
Furthermore, because of the well-known status of the PEAR THERAPEUTICS mark and the fact that the disputed domain name is used with a website that is an exact copy of Complainant’s legitimate website that features the PEAR THERAPEUTICS mark throughout in a prominent manner, Respondent clearly had prior knowledge of Complainant’s rights when it registered the disputed domain name.
Respondent also had constructive knowledge of Complainant’s mark, because the marks are well-known and federally registered, and because Respondent’s use is so transparently opportunistic. See Orange Glo Int’l v. Blume, FA0208000118313 (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant develops, and delivers software-based therapeutics being Prescription Digital Therapeutics, or PDTs which it provides under the PEAR THERAPEUTICS trademark for which it owns:
United States registered trademark and service mark PEAR THERAPEUTICS, registration number 5,399,391, registered on February 13, 2018 in international classes 9 and 42.
Complainant has an established Internet presence with its primary website located at <www.PearTherapeutics.com>
The disputed domain name was registered on September 7, 2020.
There is no information available about Respondent except for that which is provided in the Complaint, the Registrar’s WHOIS, and the information provided by the Registrar in response to the request by the Forum for verification of the registration details of the disputed domain name. Respondent availed of a privacy service to conceal his identity on the published WHOIS, which was disclosed by the Registrar in response to the Forum’s verification request.
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 has provided clear and convincing, uncontested evidence of its rights in the PEAR THERAPEUTICS established by its ownership of its registered trademark described below and its use in its therapeutics business including on its website at located at <www.PearTherapeutics.com>.
The disputed domain name is almost identical to the PEAR THERAPTUTICS mark in which Complainant has rights. The disputed domain name wholly incorporates Complainant’s registered trademark omitting only the letter “s” at the end of term “therapeutics”.
Complainant’s trademark is therefore in effect the only element in the disputed domain name.
For the purposes of evaluating confusing similarity the gTLD <.com> extension may be ignored in the circumstances of this Complaint because as a top level domain extension, it would be recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.
This Panel finds therefore that the disputed domain name is confusingly similar to the PEAR THERAPEUTICS trademark and service mark in which Complainant has rights.
Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, alleging that Respondent’s only use of the disputed domain name is to facilitate a phishing scheme that solicits personal information from job applicants. Complainant asserts that it has received numerous communications from individuals who have been contacted by Respondent via an email address associated with the disputed domain name namely and the website to which the disputed domain name resolves.
Complainant refers to copies of emails attached as an annex to the Complaint which it submits is evidence that the email account associated with the disputed domain name is being used falsely purporting to transmit offers of employment with Complainant and requesting the targeted individual to fill out an employment services agreement, a w4 document, and a direct deposit form, disclosing personal data, including a Social Security number and banking information.
Complainant submits that Respondent is using the disputed domain name to pass itself off as Complainant in furtherance of a phishing scam that steals users’ sensitive information which does not constitute a bona fide offering of goods or services nor a legitimate noncommercial fair use under Policy.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name. Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations and so has not discharged the burden.
In these circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The disputed domain name is almost identical to Complainant’s distinctive trademark. It is improbable that such a distinctive name was chosen and registered by anyone who was unaware of Complainant, its name, business and PEAR THERAPEUTICS mark.
This Panel finds that on the balance of probabilities the disputed domain name was registered in bad faith with Complainant’s mark in mind in order to carry out a phishing scheme by passing itself off as Complainant, taking advantage of Complainant’s goodwill and status in order to mislead Internet users and recipients of emails targeting individuals interested in securing employment with Complainant.
The use to which the disputed domain name has been put supports this finding.
Complainant has adduced in evidence screenshots of the website to which the disputed domain name resolves and of Complainant’s own website at <www.PearTherapeutics.com> which are exhibited in an annex to the Complaint.
These screenshots show that Respondent’s website is an exact copy of Complainant’s legitimate business website.
Complainant has additionally adduced in uncontested evidence, copies of email correspondence from an email account associated with the disputed domain name which it alleges shows that Respondent is using the disputed domain name to initiate email exchanges with individuals seeking employment with Complainant. The emails illustrate that as part of the “interview” process, Respondent requests personal data, including Social Security number and banking information, under the false pretense that such information will be used in connection with employment. Complainant submits that Complainant is using the disputed domain name in bad faith to pass itself off as Complainant with the goal of harvesting internet users’ personal information.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith.
Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to the relief sought in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <peartherapeutic.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
November 23, 2020
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