Zoetis Inc. and Zoetis Services LLC v. Chimes Kofi / Web Development Service
Claim Number: FA1711001756692
Complainant is Zoetis Inc. and Zoetis Services LLC (“Complainant”), represented by Laura J. Winston of Kim Winston LLP, New York, USA. Respondent is Chimes Kofi / Web Development Service (“Respondent”), Ghana.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zoetisghana.com>, registered with Web4Africa 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 1, 2017; the Forum received payment on November 1, 2017.
On November 3, 2017, Web4Africa Inc. confirmed by e-mail to the Forum that the <zoetisghana.com> domain name is registered with Web4Africa Inc. and that Respondent is the current registrant of the name. Web4Africa Inc. has verified that Respondent is bound by the Web4Africa 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 November 8, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 28, 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@zoetisghana.com. Also on November 8, 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 December 4, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant is a global research-based company and the largest such company focusing only on animal health. Complainant employs approximately 9,000 people worldwide and has a local presence in over 45 countries, including 28 manufacturing facilities in 13 countries. Complainant’s products and services serve veterinarians, livestock producers, and people who raise and care for farm and companion animals in over 100 countries.
Complainant is the owner of the ZOETIS mark, and has registered it with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,400,976, registered Sep. 10, 2013).
Respondent’s <zoetisghana.com> is confusingly similar to Complainant’s ZOETIS mark because it incorporates the entirety of Complainant’s mark and merely appends the geographic term “ghana” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <zoetisghana.com> domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS information lists Respondent as “Chimes Kofi/Web Development Service.” Complainant also has not authorized, licensed, or otherwise permitted Respondent to use the mark. Further, Respondent does not use the <zoetisghana.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the <zoetisghana.com> domain name resolves to a website that advertises a company called Zoetis Veterinary Company LTD Ghana, which displays Complainant’s mark, copyrighted photographs, and designs, while offering competing goods and services.
Respondent has registered and is using the at-issue domain name in bad faith. The domain name resolves to a website that makes multiple uses of Complainant’s trademarks and copyrighted material, and offers goods and services identical or nearly identical to those offered in connection with Complainant’s trademarks. Further, Respondent registered the domain name with actual or constructive knowledge of Complainant’s ZOETIS mark, as Complainant was the owner of the mark at the time of registration and Respondent uses the domain name in connection with veterinary services offered by Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the ZOETIS mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and has not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the ZOETIS trademark.
Respondent uses the domain name to operate a website that advertises a company called Zoetis Veterinary Company LTD Ghana. The website displays Complainant’s mark, copyrighted photographs, and designs, while offering competing goods and services.
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 at-issue domain name is identical to a trademark in which Complainant has rights.
Complainant shows it registered its ZOETIS mark with the USPTO as wells as other trademark registries worldwide. Trademark registration is conclusive evidence of Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <zoetisghana.com> domain name contains Complainant’s entire ZOETIS trademark, followed by generic geographic term “ghana” all with the top-level “.com” appended thereto. However, the differences between Complainant’s trademark and the <zoetisghana.com> domain name fail to distinguish the domain name from Complainant’s mark for the purpose of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <zoetisghana.com> domain name is confusingly similar to Complainant’s ZOETIS trademark. 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 Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“[O]f course it is well established in prior UDRP cases that the addition of a ‘.com’ suffix is irrelevant when determining if a disputed domain name is identical or confusingly similar to a trademark.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Chimes Kofi” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the <zoetisghana.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <zoetisghana.com> domain name for the purposes of Policy ¶ 4(c)(ii). SeeCoppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s <zoetisghana.com> domain name addresses a website that advertises a putative entity called Zoetis Veterinary Company LTD Ghana. The website displays not only Complainant’s trademark but other proprietary intellectual property such as Complainant’s copyrighted photographs and graphic designs. The website further offers services competing with those offered by Complainant. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶4(c)(iii). See Bloomberg Finance L.P. v. Nikita A Paskhalnyy / Private Person, FA 1638757 (Forum November 5, 2015) (finding no rights or legitimate interests where Respondent offered Complainant’s own financial news services in the Russian language); see also Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
Given the foregoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii).
Respondent’s confusingly similar domain name creates confusion among internet users not only because the domain name includes Complainant’s trademark but also because Respondent offers competing services on a website addressed by the domain name. These circumstances demonstrate bad faith registration and use of the <zoetisghana.com> domain name under both Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See H-D U.S.A., LLC v. Janis Vecvanags, FA1503001608165 (Forum April 6, 2015) (holding that the respondent’s use of the disputed domain name to sell counterfeit HARLEY-DAVIDSON products disrupted the complainant’s business and indicated bad faith under Policy ¶ 4(b)(iii)); see also, Dell Inc. v. Innervision Web Solutions, FA 445601 (Forum May 23, 2005), (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services).
Next and as mentioned above, Respondent uses the confusingly similar domain name to address a website that sports Complainant’s trade dress. Respondent thereby seeks to pass itself off as Complainant. “Passing off” is additional evidence of Respondent’s bad faith registration and use of the <zoetisghana.com> See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”); see also, Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”);.
Finally, Respondent had actual knowledge of Complainant’s rights in the ZOETIS mark when it registered the <zoetisghana.com> domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark; from Respondent’s use of Complainant’s trademark and trade dress on the <zoetisghana.com> website; and from Respondent’s offering competing services on such website. Registering and using a trademark identical domain name with knowledge of Complainant’s rights in such domain name indicates bad faith registration and use pursuant to 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zoetisghana.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 5, 2017
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