Takeda Pharmaceutical Company Limited v. LEONEL HERNEANDEZ
Claim Number: FA1704001725525
Complainant is Takeda Pharmaceutical Company Limited (“Complainant”), represented by James J. Saul of Faegre Baker Daniels LLP, Illinois, USA. Respondent is LEONEL HERNEANDEZ (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <takedausapharma.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 6, 2017; the Forum received payment on April 7, 2017.
On April 7, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <takedausapharma.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 April 11, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 1, 2017 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@takedausapharma.com. Also on April 11, 2017, 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 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it is a global pharmaceutical company. In furtherance of its business, Complainant has registered the TAKEDA mark in the United States in 1964.
According to Complainant, the disputed domain name is confusingly similar to the TAKEDA mark because it incorporates the mark in its entirety, adding the geographic term “USA”, the generic term “Pharma” and the “.com” generic top-level domain (“gTLD”).
Complaint alleges that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise permitted Respondent to use the TAKEDA mark and Respondent is not otherwise commonly known by the disputed domain name. Respondent has caused the disputed domain name to resolve to a blank page with no recognizable content. This use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant cites UDRP precedents to support its position.
According to Complainant, while the webpage itself may be blank, Respondent uses the disputed domain name to affect an elaborate phishing scheme through email. Respondent sends “recruiting” emails to individuals from multiple email addresses associated with <takedausapharma.com> which appear to be emails from Complainant’s agents. Specifically, Respondent scours job boards and recruiting websites or posts fake job openings on job boards such as <ncworks.gov> and sends “recruiting” emails to individuals from at least the email addresses <admin@takedausapharma.com> and <hrdept@takedausapharma.com>. Respondent and/or its agents claim to be from Complainant’s Administrative Department and Human Resources Department, and invite victims to join an online audiovisual conference to conduct an online “briefing and interview.” If the victim joins the online conference, Respondent and/or its agents conduct a faux interview and eventually ask the victim to provide sensitive personal and/or financial information (such as social security and bank account numbers) that Respondent improperly uses for commercial gain. To increase the appearance of legitimacy, Respondent and/or its agents also provide the victim with a fake welcome letter that features Complainant’s mark and signature of a company executive. Complainant provides evidence to support its allegations.
Complainant states that efforts to obtain financial gain with no legitimate purpose for doing so constitute attempts at phishing. Use of a domain name for the purposes of phishing information for the Respondent’s own illegitimate purposes does not evince rights or legitimate interests. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent has registered and used the disputed domain name in bad faith. Respondent’s use of email addresses associated with the disputed domain to conduct phishing schemes constitutes an intentional attempt to attract users for commercial gain by creating a likelihood of confusion as to source or affiliation, and is evidence of bad faith. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant registered its TAKEDA mark in 1962 and uses it to market pharmaceutical products around the world.
The disputed domain name was registered in 2017.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
The disputed domain name is used for a phishing scheme.
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.”).
The disputed domain name is confusingly similar to the TAKEDA mark under Policy ¶ 4(a)(i). It incorporates the mark in its entirety inserting the geographic term “USA”, the generic term “Pharma”, and finally a “.com” gTLD. Addition of a geographic term to a mark to form a domain name is insufficient to distinguish the domain name from the mark under Policy ¶ 4(a)(i) analysis for confusing similarity. See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity); see also Avaya Inc. v. Evelyn Dayda / Avaya Unlimited Sources LLC, FA 1611255 (Forum May 4, 2015) (finding that as “the ‘usa’ portion of the disputed domain name is a generic geographic term, the internet user will assume that the domain name deals with the activities of Complainant in the USA and that it will lead to a website dealing with that subject. The domain name is therefore confusingly similar to the AVAYA mark and the Panel so finds.”). Additionally, previous Panels have found that the addition of a term, which describes Complainant’s business, is insufficient in taking the disputed domain out of the realm of confusing similarity. See Foot Locker, Inc. v. Blezin Widmaer, FA 113283 (Forum June 17, 2002) (The addition of generic words is especially confusing where the generic words bear an obvious relationship to the Complainant’s business). Thus, the Panel finds that the disputed domain name is confusingly similar, in the sense of the Policy, to Complainant’s TAKEDA mark.
Complainant has not licensed or permitted Respondent to use the TAKEDA mark in any respect. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record identifies registrant as “Leonel Herneandez.” Thus the Panel finds that Respondent is not commonly known by the disputed domain name.
Respondent has not made any use of or made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The use of a domain name that is confusingly similar to a complainant’s trademark without a demonstrable intention to make use of the disputed domain name is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. 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).”). Respondent has caused the disputed domain name to resolve to a blank page with no recognizable content. Panel finds that Complainant has met its burden under Policy ¶¶ 4(c)(i) and 4(c)(iii).
Additionally, while the webpage itself is blank, Respondent uses the disputed domain name to affect an elaborate phishing scheme through email. Efforts to obtain financial gain with no legitimate purpose for doing so constitute attempts at phishing pursuant to Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 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.”). Complainant indicates that Respondent sends “recruiting” emails to individuals from multiple email addresses associated with the disputed domain name which appear to be emails from Complainant’s agents. Respondent then effectuates a scam which asks victims to provide personal information and/or financial information. Efforts to obtain financial gain with no legitimate purpose for doing so constitute attempts at phishing. Therefore, the Panel finds that the use of the disputed domain name for phishing by the Respondent is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s famous mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, as already noted, Respondent uses the disputed domain to engage in a phishing scheme. This evinces bad faith under Policy ¶ 4(b)(iv) as well as Policy ¶ 4(a)(iii). Panels have defined “phishing” as “a practice that is intended to defraud consumers into revealing personal and proprietary information”. See Capital One Fin. Corp. v. Howel, FA 289304 (Forum Aug. 11, 2004); see also Hess Corporation v. Sister Carmen, FA1507001629045 (Nat. Arb. Forum Aug. 21, 2015); see also SHUAA Capital psc v. Oba Junkie / shuaa capital psc, FA 1581255 (Nat. Arb. Forum Oct. 29, 2014) (“Respondent’s use of the domain name’s e-mail suffix for fraudulent purposes illustrates Policy ¶ 4(a)(iii) bad faith.”). The Panel finds that Respondent has registered and used the disputed domain to engage in a phishing scheme, which is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) and Policy ¶ 4(a)(iii).
Additionally, Respondent’s use of the TAKEDA mark in conjunction with a welcome letter containing the signature of a purported company executive is an attempt at passing off, a practice evocative of bad faith under Policy ¶ 4(a)(iii). Panels have found bad faith to exist when a respondent attempts to impersonate an employee of the complainant. Smiths Group plc v. Snooks, FA 1372112 (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 reproduction of complainant’s logos have also been determined by panels to display bad faith. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent . . . “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”). The Panel finds that such efforts are indeed attempts at passing off and therefore manifest bad faith 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 <takedausapharma.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: May 11, 2017
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