Horizon Pharma, Inc. v. BECKY JOHNSON
Claim Number: FA1604001672142
Complainant is Horizon Pharma, Inc. (“Complainant”), represented by James J. Saul of Faegre Baker Daniels LLP, Illinois, USA. Respondent is BECKY JOHNSON (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <horizonpharm.org>, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 26, 2016; the Forum received payment on April 27, 2016.
On April 27, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <horizonpharm.org> 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 April 28, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 18, 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@horizonpharm.org. Also on April 28, 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 May 24, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant uses the HORIZON PHARMA mark in connection with pharmaceutical preparations and substances. Complainant has registered the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,967,638, registered May 24, 2011), which demonstrates rights in the mark. Respondent’s <horizonpharm.org> domain name is confusingly similar to the HORIZON PHARMA mark because it incorporates almost the entire mark, omitting only the second “a” and the space between words of the mark. The only other difference from the mark is the addition of the generic top-level domain (“gTLD”) “.org.”
ii) Respondent has no rights or legitimate interests in the <horizonpharm.org> domain name. Respondent is not commonly known by the disputed domain name. Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <horizonpharm.org> domain name. Respondent is engaging in inactive holding of the disputed domain name. Further, Respondent is using the disputed domain name to engage in a phishing scheme. Respondent uses the emails attached to the domain name to send recruiting emails, purported to be from Complainant, to job seekers.
iii) Respondent’s use of the emails attached to the domain name to engage in a phishing scheme in order to fraudulently obtain personal information and money from job seekers constitutes bad faith registration and use of the <horizonpharm.org> domain name.
B. Respondent
Respondent did not submit a response. The Panel notes that the <horizonpharm.org> domain name was registered on September 28, 2015.
Complainant established that it has rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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 (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 HORIZON PHARMA mark in connection with pharmaceutical preparations and substances. Complainant claims it has registered the mark with the USPTO (e.g., Reg. No. 3,967,638, registered May 24, 2011), which it contends demonstrates rights in the mark. Panels have found registration with the USPTO to be sufficient to establish rights in a trademark. See Dell Inc. v. Rino Manangkalangi, FA 1626784 (Forum Aug. 5, 2015) (holding that Complainant has rights in the ALIENWARE trademark and service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with the USPTO.). Therefore, the Panel sees that Complainant has demonstrated rights in the HORIZON PHARMA mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <horizonpharm.org> domain name is confusingly similar to the HORIZON PHARMA mark because it incorporates almost the entire mark, omitting only the second “a” and the space. The only other difference from the mark is the addition of the gTLD “.org.” Panels have found such alterations to marks to be insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Wells Fargo & Company v. VALERIE CARRINGTON, FA 1621718 (Forum July 2, 2015) (finding that the <wllsfago.com> domain name is confusingly similar to the WELLS FARGO mark as the domain name merely omits the “e” and “r” from the mark while adding the “.com” gTLD suffix.); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel therefore agrees that Respondent’s <horizonpharm.org> domain name is confusingly similar to the HORIZON PHARMA mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the <horizonpharm.org> domain name. First, Complainant asserts that Respondent is not commonly known by the disputed domain name. The Panel sees that the WHOIS information regarding the <horizonpharm.org> domain name lists “Becky Johnson” as registrant. Complainant also asserts that it has not given Respondent permission to use its HORIZON PHARMA mark. The Panel notes that Respondent has not submitted a response in this proceeding. Therefore, in light of the available evidence, the Panel agrees there is no basis to find Respondent commonly known by the disputed domain name pursuant to 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).
Further, Complainant argues that Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <horizonpharm.org> domain name. Rather, Complainant contends that Respondent is engaging in inactive holding of the disputed domain name. Complainant claims that the disputed domain name resolves to a blank page. Although Complainant does not provide any evidence that Respondent is engaged in inactive holding, as the Panel finds the record supports Complainant’s contentions, it finds that inactive holding does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint).
Complainant further contends that Respondent is using the disputed domain name to engage in a phishing scheme. Complainant claims that Respondent uses the emails attached to the domain name to send recruiting emails, purported to be from Complainant, to job seekers. Complainant contends that Respondent impersonates individuals from Complainant’s human resources department and provides job seekers with a job briefing and conducts an interview under the guise of Complainant. Complainant claims that Respondent then informs the job seekers that they must purchase computer software from Respondent in connection with their new employment. As the Panel finds the evidence supports Complainant’s claims that Respondent is engaged in a phishing scheme, it finds such use does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum March 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretenses. The disputed domain name is being used to cause the recipients of these emails to mistakenly believe Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”).
While Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant contends that Respondent’s use of the emails attached to the domain name to engage in a phishing scheme in order to fraudulently obtain personal information and money from job seekers constitutes bad faith registration and use of the <horizonpharm.org> domain name. Panels have found email phishing schemes to indicate bad faith registration and use under Policy ¶ 4(a)(iii). See Emdeon Business Services, LLC v. HR Emdeon Careers, FA1507001629459 (Forum August 14, 2015) (finding that the respondent had engaged in an email phishing scheme indicating bad faith under Policy ¶ 4(a)(iii), where respondent was coordinating the disputed domain name to send emails to Internet users and advising them that they had been selected for a job interview with the complainant and was persuading the users to disclose personal information in the process). The Panel agrees with Complainant and holds that the use of emails attached to a disputed domain name to send emails to Internet users in an attempt to gain personal information and collect money constitutes bad faith registration and use under 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 <horizonpharm.org> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: June 6, 2016
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