AmerisourceBergen Services v. ben Band
Claim Number: FA2010001918825
Complainant is AmerisourceBergen Services Corporation (“Complainant”), represented by Jason Caskey of Kutak Rock LLP, Nebraska, United States. Respondent is ben Band (“Respondent”), Pennsylvania, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amerisourcebergenglobal.com> (“Domain Name”), registered with Porkbun 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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 29, 2020; the Forum received payment on October 29, 2020.
On October 30, 2020, Porkbun LLC confirmed by e-mail to the Forum that the <amerisourcebergenglobal.com> domain name is registered with Porkbun LLC and that Respondent is the current registrant of the name. Porkbun LLC has verified that Respondent is bound by the Porkbun 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 November 6, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 27, 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@amerisourcebergenglobal.com. Also on November 6, 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 December 2, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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, AmerisourceBergen Services, is a wholesale medical and pharmaceutical supply distributor. Complainant has rights in the AMERISOURCEBERGEN mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 2,609,432, registered Aug. 20, 2002). Respondent’s domain name, <amerisourcebergenglobal.com>, is nearly identical and confusingly similar to Complainant’s mark, only adding the “.com” generic top-level domain (“gTLD”) and the generic term “global” to the AMERISOURCEBERGEN mark.
Respondent lacks rights or legitimate interests in the <amerisourcebergenglobal.com> domain name as Respondent is not commonly known by the Domain Name and is not an authorized user or licensee of the AMERISOURCEBERGEN mark. Additionally, Respondent fails to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, the Domain Name redirects to Complainant’s legitimate website located at <www.amerisourcebergen.com> (“Complainant’s Website”).
Respondent registered and uses the <amerisourcebergenglobal.com> domain name in bad faith. Respondent created and registered the Domain Name with the intention of creating confusion between the Domain Name and the AMERISOURCEBERGEN mark. Additionally, the Domain Name lands on Complainant’s legitimate website which may indicate Respondent is engaged in phishing or similar conduct using an email address associated with the Domain Name. Complainant also contends that Respondent registered the Domain Name with actual knowledge of Complainant’s rights to the AMERISOURCEBERGEN mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the AMERISOURCEBERGEN mark. The Domain Name is confusingly similar to Complainant’s AMERISOURCEBERGEN mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name 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 has rights in the AMERISOURCEBERGEN mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g Reg. 2,609,432, registered Aug. 20, 2002). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The Panel finds that the <amerisourcebergenglobal.com> Domain Name is confusingly similar to Complainant’s AMERISOURCEBERGEN mark as it merely adds the generic term “global” and the “.com” gTLD to the AMERISOURCEBERGEN mark. The addition of a generic term and gTLD to a mark is generally insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the AMERISOURCEBERGEN mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “ben Band” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name is presently inactive but it is stated in the Complaint (and not rebutted by Respondent) that prior to the commencement of the proceeding the Domain Name redirected to the Complainant’s Website. The use of a confusingly similar domain name to resolve to a complainant’s website does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use as it may provide a false impression that the Respondent is affiliated with or authorized by Complainant. See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii)...”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that, at the time of registration of the Domain Name, July 31, 2020, Respondent had actual knowledge of Complainant’s AMERISOURCEBERGEN mark since the Domain Name, prior to the commencement of the proceeding, redirected to Complainant’s Website. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register a domain name that contains the coined AMERISOURCEBERGEN mark and use it to redirect visitors to the Complainant’s Website other than to create a false impression that the Respondent is affiliated with or authorized by Complainant. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith to create confusion with Complainant’s AMERISOURCEBERGEN Mark for commercial gain by using the confusingly similar Domain Name to resolve Complainant’s Website thereby creating a false impression of affiliation. Indeed, given the nature of the Domain Name, it would be difficult to conceive of a way the Domain Name could be used that would not create a false impression of association with Complainant. Under Policy ¶ 4(a)(iii), redirecting a disputed domain name to a complainant’s own website may constitute bad faith. See Ameriquest Mortgage Co. v. Banks, D2003-0293 (WIPO June 6, 2003) (concluding that respondent acted in bad faith by using the disputed domain name to redirect Internet traffic to Complainant’s own website because it “interferes with Complainant’s ability to control the use of its own trademarks on the Internet” . . . [and] creates a risk that Respondent could collect and use data about Internet users intending to access Complainant’s website”); see also Altavista Co. v. Brunosousa, D2002-0109 (WIPO Apr. 3, 2002) (finding, when a domain name is used to redirect to the complainant’s website, that “such redirection will allow the Respondent to divert future users to competing web sites after having built up mistaken confidence in the source of the content,” which constitutes bad faith registration and use).
The Panel finds Complainant has satisfied 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 <amerisourcebergenglobal.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: December 3, 2020
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