Zoetis Inc. and Zoetis Services LLC v. Greg Porter / zoetisusa
Claim Number: FA1704001727883
Complainant is Zoetis Inc. and Zoetis Services LLC (“Complainant”), represented by Laura J. Winston of Kim Winston LLP, New York, USA. Respondent is Greg Porter / zoetisusa (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zoetisusa.org>, registered with Wild West Domains, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 19, 2017; the Forum received payment on April 19, 2017.
On April 20, 2017, Wild West Domains, LLC confirmed by e-mail to the Forum that the <zoetisusa.org> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the names. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 21, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 11, 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@zoetisusa.org. Also on April 21, 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 18, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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, Zoetis Inc. and Zoetis Services LLC, is a global research-based company focused on animal health. In furtherance of its business, Complainant has registered the ZOETIS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,400,976, registered Sept. 10, 2013). Complainant has also registered the ZOETIS mark with the Swiss Federal Institute of Intellectual Property (e.g., 630491, registered Feb. 28, 2012). Respondent’s <zoetisusa.org> is confusingly similar to the ZOETIS mark because the disputed domain name incorporates the entirety of Complainant’s mark paired with the addition of the generic geographic term “usa,” and the “.org” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in <zoetisusa.org>. Respondent is not commonly known by the disputed domain name and Complainant has not licensed or permitted Respondent to use the ZOETIS mark. There are no facts to suggest Respondent is commonly known by the <zoetisusa.org> 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. The disputed domain <zoetisusa.org> resolves to a parked webpage advertising the website services of “Zoho Sites.” The failure to actively use a domain name, or failure to show demonstrable preparations to use a domain name does not give the Respondent rights under Policy ¶¶ 4(c)(i) or (iii). Complainant’s third party vendor also received a pair of emails from an email address associated with <zoetisusa.org> which sought to appear to be emails from the Executive Vice President of Complainant. The emails sought to inquire about a request for quotation. Use of a domain name for the purposes of phishing information does not show rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii).
Respondent has registered <zoetisusa.org> in bad faith. Respondent’s registration of the disputed domain name suggests a connection to Complainant even though Respondent has no connection with Complainant. The disputed domain name resolves to a parked webpage with a link to a webpage advertising the services of Zoho Sites. Respondent has created a likelihood of confusion with the ZOETIS mark and fosters the assumption that the content found at the parked website is sponsored or endorsed by Complainant. Respondent’s use of an email address 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. Respondent’s impersonation of Complainant’s CEO disrupts Complainant’s business, which shows bad faith. Respondent knew that Complainant was the owner of the registered ZOETIS mark; the use of the name of an actual employee of Complainant in an email containing the disputed domain name is evidence that Respondent is aware of Complainant’s rights in the trademark. Additionally, Respondent’s use of a subtly transposed address of Complainant in the registration of <zoetisusa.org> is also evidence of bad faith under ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Zoetis Inc. and Zoetis Services LLC, is a global research-based company focused on animal health. Complainant has registered the ZOETIS mark with the USPTO (e.g., Reg. No. 4,400,976, registered Sept. 10, 2013). Complainant has also registered the ZOETIS mark with the Swiss Federal Institute of Intellectual Property (e.g., 630491, registered Feb. 28, 2012). Respondent’s <zoetisusa.org> is confusingly similar to the ZOETIS mark.
Respondent, Greg Porter / zoetisusa, registered <zoetisusa.org> on January 1, 2017.
Respondent has no rights or legitimate interests in <zoetisusa.org>. The disputed domain <zoetisusa.org> resolves to a parked webpage advertising the website services of “Zoho Sites.” Complainant’s third party vendor also received a pair of emails from an email address associated with <zoetisusa.org> which sought to appear to be emails from the Executive Vice President of Complainant, but were not legitimate emails. The emails sought to inquire about a request for quotation. These false emails constitute attempts at phishing.
Respondent has registered and used <zoetisusa.org> 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 has rights in the ZOETIS mark under Policy ¶ 4(a)(i) through registration with the USPTO and with the Swiss Federal Institute of Intellectual Property. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office).
Respondent’s <zoetisusa.org> is confusingly similar to the ZOETIS mark because the disputed domain name incorporates the entirety of Complainant’s mark, paired with the generic geographic term “usa” and the “.com” gTLD.
Respondent has no rights or legitimate interests in <zoetisusa.org>. Respondent is not commonly known by the disputed domain name. Complainant has not licensed or permitted Respondent to use the ZOETIS mark. The WHOIS information identifies “Greg Porter” of “zoetisusa” as registrant of the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Respondent has not made any use of or made any demonstrable preparations to use the <zoetisusa.org> domain name in connection with a bona fide offering of goods or services. See Microsoft Corporation v. Lang Qing, FA 1447828 (Forum July 8, 2012) (finding that the failure to make an active use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use). The disputed domain <zoetisusa.org> resolves to a parked webpage with a link to a webpage advertising services of Zoho Sites. Therefore, Respondent has failed to establish rights or legitimate interests in the disputed domain under Policy ¶¶ 4(c)(i) and 4(c)(iii).
Additionally, while the webpage of the disputed domain may be parked, Responded uses the disputed domain name to affect a phishing scheme through emails associated with the domain. 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.”). Therefore, Respondent’s use of the disputed domain name for phishing is not a bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
Respondent registered and used <zoetisusa.org> in bad faith. Respondent’s registration of the disputed domain name suggests a connection to Complainant even though Respondent has no connection with Complainant. Further, Respondent has done so with the intent to attract Internet users to its advertisements, presumably for Respondent’s commercial gain pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent). The disputed domain name resolves to a parked webpage with a link to a webpage advertising the services of Zoho Sites. Respondent has created a likelihood of confusion with the ZOETIS mark and fosters the assumption that the content found at the parked website is sponsored or endorsed by Complainant.
Respondent’s impersonation of Complainant’s CEO disrupts Complainant’s business showing bad faith registration and use under Policy ¶ 4(b)(iii). See Brownell Travel, Inc. v. Troy Haas, FA1411001589137 (Forum Dec. 20, 2014) (finding the use of the domain name to send emails impersonating the CEO to the Complainant’s Account Manager to attempt to commit fraud on the Complainant constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Respondent’s use of false contact information in connection with the registration of the disputed domain name is evidence of bad faith registration and use. See 3636275 Canada v. eResolution.com, D2000-0110 (WIPO Apr. 10, 2000) (finding that use of false registration information constitutes bad faith); and see General Commc’n, Inc. v. General Commc’n Inc., FA 778968 (Forum Oct. 4, 2006) (finding bad faith registration and use where the respondent listed the complainant’s contact information instead of its own information in the WHOIS database). Complainant points to the WHOIS information for the domain <zoetisusa.org> which uses an address which is a subtle transposition of Complainant’s address.
Respondent registered the<zoetisusa.org> domain name with actual knowledge of the ZOETIS mark and Complainant’s rights in the mark; therefore, Respondent registered the disputed domain name in bad faith under 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").
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zoetisusa.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 30, 2017
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