Lonza Ltd. v. Jovanni Martinez / LONZA
Claim Number: FA2105001943686
Complainant is Lonza Ltd. (“Complainant”), represented by Jake M Christensen of Greer, Burns & Crain LTD, Illinois, USA. Respondent is Jovanni Martinez / LONZA (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pharmalonza.com>, registered with Tucows Domains 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 May 3, 2021; the Forum received payment on May 3, 2021.
On May 3, 2021, Tucows Domains Inc. confirmed by e-mail to the Forum that the <pharmalonza.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 May 4, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 2021 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@pharmalonza.com. Also on May 4, 2021, 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 28, 2021 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 mark established by its ownership of the trademark and service mark registrations set out below. In addition, Complainant submits that it has established rights and goodwill through its use of the mark in its business as one of the leading companies providing manufacturing services to the pharmaceutical, biotech and specialty ingredients markets since 1955, growing to an international business with trademark registrations in over 30 countries and annual revenues of over US$ 2.7 billion in 2020 in the United States alone.
Complainant alleges that the disputed domain name is confusingly similar and nearly identical to Complainant’s LONZA trademark as it comprises Complainant’s LONZA trademark in its entirety with the additional, merely descriptive and common abbreviated term “pharma” and generic Top Level Domain (“gTLD”) <.com> extension.
Complainant submits that adding a generic or descriptive term and/or a gTLD extension to a complainant’s mark does not sufficiently distinguish a disputed domain name from a mark in a Policy ¶ 4(a)(i) analysis. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)).
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name, so its actions do not fall within Policy ¶ 4(c)(ii). The WHOIS information for the disputed domain name does not indicate that the Respondent is commonly known by the <pharmalonza.com> domain name, and the term LONZA is not an applied for or registered trademark of Respondent.
Complainant asserts that it has not licensed, otherwise permitted or authorized the Respondent to use the LONZA trademark or brand, or to apply for any domain name that is confusingly similar to such mark or brand.
Complainant adds that the disputed domain name does not resolve to any active website and argues that panels established under the Policy have previously held that a respondent’s inactive use or passive holding of a disputed domain name is demonstrative of a 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).”).
Referring to email correspondence, and a statutory declaration made by the global head of intellectual property within Complainant’s group of companies, exhibited in an annex to the Complaint, Complainant submits that on April 20, 2021, it discovered Respondent was holding himself out to be Complainant by using the disputed domain name <pharmalonza.com> in an email address to send fraudulent emails to Complainant’s potential customers and/or business partners. Complainant submits that such use cannot be categorized as either a legitimate or good faith activity.
Complainant then alleges that the disputed domain name was registered in bad faith arguing that given Complainant’s pre-existing rights in the LONZA trademark, that the disputed domain name <pharmalonza.com> incorporates Complainant’s LONZA mark in its entirety, and Respondent’s lack of actual bona fide or legitimate use of the disputed domain name, bad faith can be reasonably inferred. See Compagnie Générale des Etablissements Michelin v. Ryan Ali, D2015-1454 (WIPO Oct. 27, 2015) (panel finding “that, in the absence of any right or legitimate interest and lacking any contrary evidence from the Respondent, the Respondent's registration of a domain name confusingly similar to the Complainant's worldwide well-known trademark suggests opportunistic bad faith”).
Additionally, Complainant asserts that Respondent is not making any active use of the disputed domain name as a website address, and contends that such failure to make an active use of the disputed domain name is in itself 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.”).
Referring to the redacted copies of email correspondence exhibited in an annex to the Complainant, Complainant repeats that on April 20, 2021, it discovered Respondent was falsely holding itself out to be Complainant by using the disputed domain name in an email address to send fraudulent emails to potential customers and/or business partners of Complainant. Complainant alleges that Respondent’s use of the disputed domain name for such a 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).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a member of a group of companies that provide manufacturing services to the pharmaceutical, biotech and specialty ingredients markets in which it uses the LONZA mark and is the owner of an international portfolio of trademark registrations including the following:
· United States registered trademark LONZA , registration number 956,300 , registered on the Principal Register on April 3, 1973 for goods in international classes 1,2,4 and 5;
· United States registered trademark and service mark LONZA , registration number 4,483,125, registered on the Principal Register on for goods and services in international classes 9, 35 and 42;
· United States registered trademark LONZA (stylized) number 4,639.815 registered on the Principal Register on November 18, 2014 for goods 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) number 5,222,498, registered on the Principal Register on June 13, 2017 for services in international classes 40 and 42;
Complainant also incorporates the LONZA mark as part of its company name and operates a website at <www.lonza.com>.
The disputed domain name <pharmalonza.com> was registered on April 13, 2021 and does not resolve to any website but is being used to establish an email account from which Respondent is sending emails in which Complainant alleges Respondent is impersonating Complainant and engaging in 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 enquiry from the Forum seeking confirmation details of the registration of the disputed domain name for the purposes of this Complaint.
Respondent is the registrant of the disputed domain name. Respondent availed of a privacy service to conceal his name on the published WhoIs and the identity of the registrant was disclosed by the Registrar to the Forum in the course of this proceeding. The Registrar confirmed that Respondent is the registrant of the disputed domain name.
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, convincing and uncontested evidence that it has rights in the LONZA mark established by its ownership of the trademark/service mark registrations described above. In addition, Complainant has shown that it has established rights and goodwill in the mark through its extensive and intentional use in its business providing manufacturing services to the pharmaceutical, biotech and specialty ingredients markets.
The disputed domain name is composed of the word “pharma” as a prefix to Complainant’s LONZA mark in combination with the Top Level Domain extension <.com>.
Complainant’s LONZA mark is the dominant and only distinctive element in the disputed domain name. The other elements add no distinguishing character to the disputed domain name because the prefix “pharma” is generic and descriptive and for the purposes of evaluating confusing similarity between the disputed domain name and Complainant’s mark.
Furthermore, the gTLD <.com> extension may be ignored because in the circumstances of this Complaint, on the balance of probabilities, 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 LONZA mark in which Complainant has rights.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out an uncontested prima facie case that Respondent has no rights or legitimate interests in the disputed domain name because
· Respondent is not commonly known by the disputed domain name;
· the WHOIS information for the disputed domain name does not indicate that Respondent is commonly known by the <pharmalonza.com> domain name;
· the term LONZA is not an applied for or registered trademark of Respondent.
· Complainant has not licensed, otherwise permitted or authorized the Respondent to use the LONZA trademark or brand, or to apply for registration of any domain name that is confusingly similar to such mark or brand;
· the disputed domain name does not resolve to any active website; and
· on April 20, 2021, Complainant discovered that Respondent was using the <pharmalonza.com> domain name in an email address to impersonate Complainant by sending fraudulent emails to potential customers and/or business partners of Complainant, which use cannot be categorized as either a legitimate nor good faith activity.
It is well established that, as in this case, once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts the respondent to prove such rights or interests. Respondent has failed to discharge the burden of production in this proceeding.
This Panel must therefore 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 satisfied this Panel that, on the balance of probabilities the disputed domain name was registered in bad faith because it is composed of Complainant’s distinctive trademark in its entirety, in combination with the descriptive and generic term “pharma” which references Complainant’s field of activity. Complainant has an extensive international business and reputation. It is most improbable that the registrant of the disputed domain name was unaware of Complainant, its mark and reputation when the disputed domain name was chosen and registered.
This Panel finds therefore that the disputed domain name was registered primarily for the purpose of disrupting the business of Complainant and intentionally creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement.
Additionally Complainant has satisfied this Panel that, on the balance of probabilities, the disputed domain name is being used in bad faith because the uncontested evidence is that the disputed domain name is being used to establish an email account from which Respondent is sending emails. The exact purpose of Respondent’s email is not clear because the evidence adduced by Complainant is redacted and it the full context of the correspondence is not clear. It is therefore not possible to find on the basis of the email correspondence adduced, that the disputed domain name is being used for the purposes of phishing.
However, the statutory declaration of the global head of intellectual property within Complainant’s group of companies avers that on April 20, 2021, Complainant discovered Respondent was using the <pharmalonza.com> domain name to impersonate Complainant, by sending fraudulent emails to potential customers and/or business partners from an email address @pharmalonza.com.
Taken together, the copy redacted email correspondence and the statutory declaration allow this Panel to find that the disputed domain name is being used in bad faith to impersonate Complainant.
In making this finding this Panel takes into account that the disputed domain name is not being used as a website address so that there is no evidence of any bona fide use of the disputed domain name by Respondent and Respondent has not engaged in this proceeding.
As this Panel has found that on the balance of probabilities 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 succeed in its application for transfer of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pharmalonza.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: June 1, 2021
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