Dechra Pharmaceuticals PLC v. joshua forde
Claim Number: FA2206001999038
Complainant is Dechra Pharmaceuticals PLC (“Complainant”), represented by Leonard Searcy of Shook, Hardy & Bacon LLP, Missouri, USA. Respondent is joshua forde (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dechrapharmaceutical.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 3, 2022; the Forum received payment on June 3, 2022.
On June 10, 2022, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <dechrapharmaceutical.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 June 13, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 2022 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@dechrapharmaceutical.com. Also on June 13, 2022, 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 July 10, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant is a Pennsylvania-based veterinarian medical company.
Complainant claims rights in the DECHRA mark through registration with the United States Patent and Trademark Office (“USPTO”).
The at-issue domain name <dechrapharmaceutical.com> is confusingly similar because it wholly incorporates Complainant’s mark differing only through the addition of the term “pharmaceutical” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <dechrapharmaceutical.com> domain name. Respondent is not commonly known by the at-issue domain name, nor has Complainant authorized Respondent to use the DECHRA mark in any way. Additionally, Respondent fails to use the at-issue domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent uses the domain name to pass off as Complainant in furtherance of a phishing scheme whereby Respondent poses as Complainant and contacts job seeker so that it may interview the job seeker, extract personal information, and misdirect the job seeker to follow Respondent’s fraudulent instructions. Respondent impersonates Complainant via text messages, email, texts, chat apps, and other communication software. Furthermore, Respondent does not make active use of the domain name.
Respondent registered and uses the at-issue domain in bad faith. Respondent uses the at-issue domain name to pass off as Complainant in furtherance of a phishing scheme. Respondent had actual knowledge of Complainant’s rights in the DECHRA mark prior to registration of the <dechrapharmaceutical.com> domain. Finally, Respondent fails to make active use of the disputed domain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in DECHRA.
Respondent is not affiliated with Complainant and is not authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its DECHRA trademark.
Respondent uses the <dechrapharmaceutical.com> domain name to pass off as Complainant as part of a phishing scheme to defraud third parties.
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”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s USPTO trademark registration for DECHRA shows Complainant’s rights in mark under Policy ¶ 4(a)(i). 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).”).
Respondent’s DECHRA domain name contains Complainant’s DECHRA trademark followed by the descriptive term “pharmaceutical” with all followed by the “.com” top-level domain name. The difference between Complainant’s trademark and Respondent’s domain name fails to distinguish the domain name from Complainant’s mark for the purpose of Policy ¶ 4(a)(i). The Panel thus concludes that Respondent’s <dechrapharmaceutical.com> domain name is confusingly similar to Complainant’s DECHRA trademark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
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.
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “joshua forde” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <dechrapharmaceutical.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <dechrapharmaceutical.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Furthermore, Respondent uses the <dechrapharmaceutical.com> domain name to defraud third parties. To wit, Respondent, using text messages, chat apps, email, or other electronic methods pretends to be employed by Complainant and tells the targeted party that he or she is a great match for a job with Complainant. Respondent solicits personal information from the targeted party then invites the target to be subject to an interview. Regarding the interview, Respondent instructs the target party to communicate with Complainant by emailing the fake hiring manager at <dechrapharmaceutical.com>. Respondent, still posing as Complainant, then conducts the interview by Skype or chat and further extracts personal data from the target party. Following the interview Respondent fraudulently offers the target party a job with Complainant. Undoubtedly, Respondent will make further requests to its targets telling them that fulfilling the request is a prerequisite step for being hired. Respondent’s likely criminal use of <dechrapharmaceutical.com> to pass itself off as Complainant and defraud third-parties indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(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.”);see also, 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 purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, there is evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As elaborated above regarding rights and legitimate interests, Respondent uses the at-issue domain name to pass itself off as Complainant to phish for third party private information and to misdirect third-party internet users regarding employment with Complainant. Respondent’s use of its confusingly similar domain name to pass itself off as Complainant in furtherance of a phishing scheme is evidence of bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv). See Eastman Chemical Company v. Lukas Moris, FA 1956649 (Forum Aug. 23, 2021) (“Complainant first argues Respondent registered and uses the disputed domain name in bad faith because Respondent uses the disputed domain name to impersonate Complainant in furtherance of a phishing scheme. A domain name that is used in connection with a phishing scheme over email may be evidence of a domain name registered and used in bad faith under Policy ¶¶ 4(b)(iii) and (iv).”); see also, Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”).
Additionally, Respondent had actual knowledge of Complainant’s rights in the DECHRA mark when it registered <dechrapharmaceutical.com> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s DECHRA trademark and from Respondent’s use of the confusingly similar domain name to pose as Complainant in furtherance of fraud as discussed elsewhere herein. Respondent’s registration and use of <dechrapharmaceutical.com> with knowledge of Complainant’s trademark rights in DECHRA further shows Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering 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 <dechrapharmaceutical.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 11, 2022
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