Alphapharm Pty Limited ACN 002 359 739 v. Alpharpharm Global
Claim Number: FA1303001489058
Complainant is Alphapharm Pty Limited ACN 002 359 739 (“Complainant”), represented by Brian P. Gregg of McNees Wallace & Nurick LLC, Pennsylvania, USA. Respondent is Alpharpharm Global (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alphapharm-oceania.com>, registered with eNom, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 8, 2013; the National Arbitration Forum received payment on March 14, 2013.
On March 8, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <alphapharm-oceania.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 March 14, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 3, 2013 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@alphapharm-oceania.com. Also on March 14, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 16, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the ALPHAPHARM mark. Respondent’s domain name is confusingly similar to Complainant’s ALPHAPHARM mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <alphapharm-oceania.com> domain name, and that Respondent registered and uses 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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant, Alphapharm Pty Limited CAN 002 359 739, contends that it owns the ALPHAPHARM mark, which it uses in connection with its pharmaceutical business and is the owner of trademark registrations with the Australia’s Copyright Law Branch for the ALPHAPHARM mark (e.g., Reg. No. 1,123,915, registered on July 13, 2006). Complainant’s registration of the ALPHAPHARM mark with Australia’s Copyright Law Branch sufficiently demonstrates its rights in the mark under Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
Complainant argues that Respondent’s <alphapharm-oceania.com> domain name is confusingly similar to Complainant’s ALPHAPHARM mark, as the inclusion of the term “oceania” does little to reduce any confusion with Complainant’s ALPHAPHARM trademark. Complainant asserts that Oceania is a region of the world located in the Pacific Ocean which includes numerous south-Pacific islands and includes Australia. Respondent’s addition of a geographic term does not negate confusing similarity under Policy ¶ 4(a)(i). See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). Respondent also adds a hyphen to the disputed domain name which dows not distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Lastly, Respondent adds the generic top-level domain (“gTLD”) “.com” to the disputed domain name. The addition of a gTLD is inconsequential to a Policy ¶ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Accordingly, the Panel determines that Respondent’s <alphapharm-oceania.com> domain name is confusingly similar to Complainant’s ALPHAPHARM mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant claims that the WHOIS records for the domain name indicate the owner of the domain is “Alphapharm Global,” which is not a name under which Complainant is registered or does business. Complainant argues that a Google search for “Alphapharm Global” revealed no relevant results, only returning to Complainant’s homepage as the top result. Complainant contends that Alphapharm Global is not an entity in existence anywhere in the world. Further, Complainant claims that Respondent has utilized the domain name to confuse recruiting firms as to its affiliation with Complainant. Complainant argues that Respondent is not affiliated with Complainant and Complainant has not given consent, license, or other authorization to Respondent for Respondent’s use of Complainant’s ALPHAPHARM trademark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s only use of the domain name is as means to redirect Internet users who attempt to access the domain name to Complainant’s legitimate home page at <alphapharm.com.au>. Complainant asserts that Respondent offers no goods or services through the domain name. Complainant contends that Respondent targets recruiting firms which connect temporary workers with open positions, poses as “James Howard” and uses an email address that contains the domain name (“@alphapharm-oceania.com”), establishes his credibility with an employee of a recruiting firm and identifies a potential candidate which he claims to desire to recruit for the position, causes the recruiting firm to contact the proposed candidates and arranges for interviews, Respondent tells the recruiting firm their desire to make an offer to hire the candidate for the open position, and provides bank routing information for an account where the “newly hired” candidate’s salary is to be deposited. Complainant argues that Respondent uses an email address that contains the domain name (“@alphapharm-oceania.com”) and further identifies himself in his email commuications as being affiliated with Alphapharm Australia and identifies his physical address as “15 Garnet Street, Carole Park, QLD 4300” which is Complainant’s address. The Panel finds that Respondent’s use of the disputed domain name to pass off as Complainant is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent has used the domain name to perpetrate an elaborate scam in which the domain name is central to causing Respondent’s email communications to appear credible, enabling Respondent to confuse and mislead third parties for Respondent’s financial gain. Complainant contends that Respondent’s scam works as follows:
i) Respondent targets recruiting firms which connect temporary workers with open positions, and if the recruiter is able to fill Respondent’s position with an acceptable candidate, the recruiting firm pays the candidate’s salary and invoices Respondent;
ii) Respondent, posing as “James Howard,” sets his scam in motion by contacting Tara Gross at OfficeTeam, a recruiting firm, and inquires about filling a role in Respondent’s human resources department. In doing so, Respondent uses an email address that contains the domain name (“@alphapharm-oceania.com”) and further identifies himself in his email communications as being affiliated with Complainant.
iii) Once Respondent establishes his credibility with an employee of a recruiting firm, Respondent identifies a potential candidate which he claims to desire to recruit for the position. Respondent provides the recruiting firm with the name and email address of the candidate. No doubt Respondent later impersonates the candidate for purposes of making the arrangement appear legitimate and further misleading the recruiting firm victim.
iv) The recruiting firm contacts the proposed candidates and arranges for interviews to be conducted via telephone or video conference. The recruiting firm is told that the interviews go well and Respondent desires to make an offer to hire the candidate for the open position.
v) Respondent then provides bank routing information for an account it controls and presents this to the recruiting firm as the location where the “newly hired” candidate’s salary is to be deposited.
Complainant contends that Respondent’s scam suggests Respondent has an affiliation with Complainant. Respondent’s use of the disputed domain name in an attempt to pass itself off as Complainant, thereby enabling Respondent’s revenue-generating scam, demonstrates bad faith use and registration under Policy ¶ 4(b)(iv). See Am. Int’l Grp., Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); see also Smiths Grp. plc v. Snooks, FA 1372112 (Nat. Arb. Forum Mar. 18, 2011) (finding that the respondent’s attempt to impersonate an employee of the complainant was evidence of bad faith registration and use under Policy ¶ 4(a)(iii))
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 <alphapharm-oceania.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 25, 2013
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