Takeda Pharmaceutical Company Limited v. Rejeev Venkayya
Claim Number: FA1603001666755
Complainant is Takeda Pharmaceutical Company Limited (“Complainant”), represented by James J. Saul of Faegre Baker Daniels LLP, Illinois, United States. Respondent is Rejeev Venkayya (“Respondent”), California, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <takedapharmaceuticalsusa.com>, registered with GoDaddy.com, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 21, 2016; the Forum received payment on March 21, 2016.
On March 22, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <takedapharmaceuticalsusa.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 March 22, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 11, 2016 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@takedapharmaceuticalsusa.com. Also on March 22, 2016, 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 April 15, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant uses the TAKEDA mark in connection with its pharmaceutical company. Complainant has registered the TAKEDA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 769,053, registered May 5, 1964), which establishes rights in the mark.
2. Respondent’s <takedapharmaceuticalsusa.com> domain name is confusingly similar to the TAKEDA mark as it incorporates the mark in its entirety while adding the generic term “Pharmaceuticals,” the geographic term “USA,” and the generic top-level domain (“gTLD”) “.com.” Respondent registered the domain name in February 2016.
3. Respondent has no rights or legitimate interests in the <takedapharmaceuticalsusa.com> domain name. Respondent is not commonly known by the domain name, nor does Respondent have permission to use the TAKEDA mark
4. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <takedapharmaceuticalsusa.com> domain name. Rather, the domain name resolves to an inactive website. Moreover, Respondent uses the e-mail address associated with the domain, <williams.cassy@takedapharmaceuticalusa.com>, to pass itself off as Complainant and phish for Internet users’ sensitive personal and/or financial information.
5. Respondent is using the <takedapharmaceuticalsusa.com> domain name in bad faith. First, Respondent attempts to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Further, Respondent is using an e-mail address in connection with the domain name in an attempt to pass itself off as Complainant and phish for personal and financial information from Internet users.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the TAKEDA mark. Respondent’s domain name is confusingly similar to Complainant’s TAKEDA mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <takedapharmaceuticalsusa.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(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 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 uses the TAKEDA mark in connection with its pharmaceutical company. Complainant registered the TAKEDA mark with the USPTO (Reg. No. 769,053, registered on May 5, 1964). USPTO registration is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Next, Complainant argues that Respondent’s <takedapharmaceuticalsusa.com> domain name is confusingly similar to the TAKEDA mark as it incorporates the mark in its entirety while adding the generic term “Pharmaceuticals,” the geographic term “USA,” and the gTLD “.com.” Such alterations to a mark are insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Nat. Arb. Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel agrees that Respondent’s <takedapharmaceuticalsusa.com> domain name is confusingly similar to the TAKEDA mark under 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 <takedapharmaceuticalsusa.com> domain name. 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 argues that Respondent has no rights or legitimate interests in the <takedapharmaceuticalsusa.com> domain name. First, Respondent is not commonly known by the domain name nor has Complainant given Respondent permission, authorization, consent or license to use the TAKEDA mark. The WHOIS information lists “Rejeev Venkayya” as registrant of record. Therefore, in light of the available evidence, the Panel finds that there is no basis to find Respondent commonly known by the <takedapharmaceuticalsusa.com> domain name per Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding that a respondent had no rights or legitimate interest in the disputed domain name where it was not commonly known by the mark and never applied for a license or permission to use the mark).
Further, Complainant argues that Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use with the <takedapharmaceuticalsusa.com> domain name. Rather, Complainant contends that Respondent is not making any active use of the domain name. Moreover, Complainant argues that Respondent uses the e-mail address associated with the domain, <williams.cassy@takedapharmaceuticalusa.com>, to pass itself off as Complainant and phish for Internet users’ sensitive personal and/or financial information. Specifically, Complainant asserts that Respondent scours job boards and recruiting websites and sends “recruiting” e-mails to individuals from the aforementioned e-mail address, inviting these individuals to an online interview, at which time Respondent conducts a faux interview and requests personal and/or financial information from them. The record supports Complainant’s contentions.
A respondent’s failure to make any active use of a domain, and attempts to pass itself off as a complainant and/or phish for consumers’ information demonstrates neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also 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); Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent’s <takedapharmaceuticalsusa.com> domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent uses the e-mail address associated with the domain, <williams.cassy@takedapharmaceuticalusa.com>, to pass itself off as Complainant and phish for Internet users’ sensitive personal and/or financial information. Furthermore, Respondent scours job boards and recruiting websites and sends “recruiting” e-mails to individuals from the aforementioned e-mail address, inviting these individuals to an online interview. This activity amounts to bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Further, the record shows that Respondent is attempting to trick internet users into divulging personal information. Respondent uses recruiting e-mails sent from the e-mail address <williams.cassy@takedapharmaceuticalsusa.com> that is attached to the domain name. After that initial e-mail, Respondent invites Internet users to a Google HangOut, where Respondent asks users to provide sensitive personal or financial information. This is further evidence of bad faith under Policy ¶ 4(a)(iii). See Qatalyst Partners LP v. Devimore, FA 1393436 (Nat. Arb. Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <takedapharmaceuticalsusa.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 20, 2016
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