Lonza Ltd. v. Domain Administrator / See PrivacyGuardian.org
Claim Number: FA2010001918886
Complainant is Lonza Ltd. (“Complainant”), represented by Jake M. Christensen of Greer, Burns & Crain, Ltd., Illinois, USA. Respondent is Domain Administrator / See PrivacyGuardian.org (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lonza.icu>, registered with NameSilo, 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.
James Bridgeman SC 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, NameSilo, LLC confirmed by e-mail to the Forum that the <lonza.icu> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 2, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 23, 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@lonza.icu. Also on November 2, 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 25, 2020 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 claims rights in the LONZA trademark established through its ownership of its portfolio of trademark registrations described below and through the reputation and goodwill it has established by its long and extensive use of the mark since 1955 on pharmaceutical and medicinal preparations initially in the United States, growing to become a major international supplier to the pharmaceutical and biotech market with revenues of over US$ 2.5 billion in 2019 in the United States alone.
Complainant submits that the disputed domain name <lonza.icu> consists of Complainant’s LONZA trademark in its entirety in combination with the mere addition of the generic Top Level Domain (“gTLD”) extension <.icu>.
Complainant argues that it is well established that where a complainant’s trademark is entirely incorporated within a domain name at issue, the addition of a gTLD extension does not prevent a finding of confusing similarity. See Capital One Financial Corp. v. Darifa Azzouzi, FA1905001842810 (Forum Jun. 6, 2019) (“[t]he disputed domain name fully incorporates Complainant’s CAPITAL ONE mark, merely adding the gTLD ‘.icu’…the addition of a gTLD is not sufficient to overcome a confusingly similar analysis per Policy ¶ 4(a)(i)”).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name, arguing that Respondent is not commonly known by the disputed domain name and so its actions do not fall within Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Forum Jan. 23, 2001) (finding that a respondent does not have rights in a domain name where that respondent is not known by the mark in issue). The WhoIs information for the disputed domain name does not indicate that the Respondent is commonly known by the <lonza.icu> domain name.
Complainant adds that Respondent has not applied to register LONZA as a trademark, nor does Respondent own any trademark registrations for the LONZA mark.
Complainant asserts that it has not licensed, otherwise permitted or authorized Respondent to use the Complainant’s LONZA trademark or brand, or to apply for any domain name that is confusingly similar to such mark or brand. To the contrary, Complainant alleges that the disputed domain name is being used as part of an email address to impersonate Complainant and send correspondence to Complainant’s employees attempting to fraudulently obtain financial information.
Complainant submits that, while the disputed domain name <lonza.icu> which was registered on June 22, 2020 has not been used as the address of an active website, it has already been used as part of an email address in an email phishing scheme attempting to disrupt Complainant’s business and conduct fraudulent activities. To support this allegation the Complainant refers to annexes to the Compliant which contain a declaration of the Global Head of Intellectual Property of Complainant corporation together with a copy of the message generated when using the disputed domain name within a URL which states that the website cannot be reached. Additionally, copies of email correspondence sent to an employee of Complainant from an email account established using the disputed domain name are adduced in evidence.
Complainant submits that since the website under the disputed domain name is inactive, in similar circumstances, prior panels established under the Policy have held that such use or passive holding of a disputed domain name is demonstrative of Respondent’s lack of rights or legitimate interests in the Disputed Domain Name pursuant to Policy ¶¶ 4(c)(i) and (iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Complainant adds that Respondent’s actions in connection with the disputed domain name do not constitute a bona fide offering of goods or services under Policy ¶4(c)(i), nor does Respondent conduct a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant alleges that the disputed domain name was registered and is being used in bad faith.
Complainant submits that the disputed domain name was registered primarily for the purpose of fraudulently obtaining financial information, disrupting the business of Complainant and intentionally creating a likelihood of confusion with the Complainant's LONZA mark as to the source, sponsorship, affiliation, or endorsement.
Complainant restates that Respondent is not making an active use of the disputed domain name as a website address which it alleges is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[i]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”).
Complainant also alleges that Respondent’s use of the <lonza.icu> to perpetrate a fraudulent phishing scheme constitutes bad faith registration and use.
Again referring to the email correspondence adduced in evidence in an annex to the Complaint, Compliant alleges that on October 1, 2020, one of Lonza’s employees received an email that appeared to come from another one of its employee within its Credit & Collection department. In fact this was a fraudulent email that came from an email account established using the <lonza.icu>.
Complainant avers that this correspondence shows that he disputed domain name is being used in bad faith to elicit financial information from Complainant or conduct other fraudulent activities. Complainant alleges that use of the disputed domain name for such purpose constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Hess Corp. v. GR, FA 770909 (Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
Complainant further alleges that Respondent’s actions under the disguise of the disputed domain name not only disrupts Complainant’s business, but also may threaten consumers, including Complainant’s customers and business associates. It is well established that the use of a domain name to facilitate fraudulent activity is “perhaps the clearest evidence of registration and use of a domain name in bad faith.” See Juno Online Servs., Inc. v. Nelson, FA 241972 (Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a supplier of pharmaceutical and biotech products to an international market under the LONZA mark for which Complainant owns an international portfolio of trademark registrations including:
· United States registered trademark LONZA, registration number 956,300, registered on the Principal Register on April 3, 1973 or goods in international classes 1,2,4 and 5.
· United States registered trademark and service mark LONZA [stylized], registration number 4,483,125, registered on the Principal Register on February 18, 2014 for goods and services in international classes 9, 35 and 42.
· United States registered trademark mark LONZA [stylized], registration number 4,639,815, registered on the Principal Register on November 18, 2014 for goods and services in international classes 1,2 and 5.
· United States registered service mark LONZA, registration number 4,922,144, registered on the Principal Register on March 22, 2016 for services in international classes 40, 41 and 42.
· United States registered service mark LONZA [stylized], registration number 5,222,498, registered on the Principal Register on June 13, 2017, for services in international classes 40 and 42.
The disputed domain name <lonza.icu> was registered on June 22, 2020 and is being used in connection with an email account used for phishing activity.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the Forum’s request for verification of the registration details of the disputed domain name. Respondent uses a privacy service to conceal its identity on the Registrar’s WhoIs.
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 adduced clear, convincing and uncontested evidence that it has rights in the LONZA trademark established through its ownership of its portfolio of trademark registrations described above and the goodwill it has established by its long and extensive use of the mark since at least as early as 1955 on pharmaceutical and medicinal preparations initially in the United States expanding to an international business.
The disputed domain name <lonza.icu> consists of Complainant’s LONZA trademark in its entirety in combination with the generic Top Level Domain (“gTLD”) extension <.icu>.
Aside from the <. icu> gTLD extension, the disputed domain name is identical to Complainant’s mark.
In the circumstances of the present case the gTLD <.icu> extension may be disregarded under the first element of the test under Policy ¶ 4(a)(i) as it a standard requirement for registration.
This Panel finds therefore that the disputed domain name is identical to the trademark LONZA in which Complainant has rights and 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, arguing inter alia
· that Respondent is not commonly known by the disputed domain name and so its actions do not fall within Policy ¶ 4(c)(ii);
· that Respondent has not applied to register LONZA as a trademark, nor does Respondent own any trademark registrations for the LONZA mark;
· that Complainant has not licensed, otherwise permitted or authorized Respondent to use Complainant’s LONZA trademark or brand, or to apply for any domain name that is confusingly similar to such mark or brand;
· that the disputed domain name is being used as part of an email address in pursuance of a phishing scheme to impersonate Complainant and send correspondence to Complainant’s employees attempting to fraudulently obtain financial information;
· that while the disputed domain name <lonza.icu> which was registered on June 22, 2020 has not been used as the address of an active website;
· that the passive holding of the disputed domain name and its use for fraudulent purposes do not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.
It is well established that where, as in this Complaint, a complainant makes out a prima facie case, the burden of production shifts to the 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 the 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).
Complainant has convincingly argued that the disputed domain name was registered primarily for the purpose of fraudulently obtaining financial information, disrupting the business of Complainant and intentionally creating a likelihood of confusion with the Complainant's LONZA mark as to the source of intentionally misleading emails.
Complainant’s name and mark are distinctive and there is no indication on the record that the registrant had any rights or legitimate interests in the disputed domain name.
It is improbable that the disputed domain name was registered otherwise than in an endeavor to target Complainant. This finding is supported by the fact that Respondent has used the domain name to establish any website but instead has used the disputed domain name to create an email account in an endeavor to perpetrate a phishing scheme.
The email correspondence adduced in evidence in an annex to the Complaint, shows that the disputed domain name is being used in bad faith to impersonate one of Complainant’s employees so as to elicit financial information from another of Complainant’s employees. Such activity amounts to use of the disputed domain name in bad faith.
This Panel finds therefore that the disputed domain name has been registered and is being used in bad faith. Complainant has therefore succeeded in establishing the third and final element of the test in Policy ¶ 4(a)(iii), should be granted the reliefs sought.
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.icu> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
November 25, 2020
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