Zoetis Inc. and Zoetis Services LLC v. James Buttler / British Speed Post LLC
Claim Number: FA1712001762965
Complainant is Zoetis Inc. and Zoetis Services LLC (“Complainant”), represented by Laura J. Winston of Kim Winston LLP, New York, USUA. Respondent is James Buttler / British Speed Post LLC (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zoetisanimalwelfare.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 14, 2017; the Forum received payment on December 14, 2017.
On Dec 16, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <zoetisanimalwelfare.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 December 20, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2018 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@zoetisanimalwelfare.com. Also on December 20, 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 January 10, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant registered the ZOETIS mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,822,378, registered Sep. 29, 2015). See Compl. Annex B. Respondent’s <zoetisanimalwelfare.com> domain name is confusingly similar to Complainant’s mark as it appends the generic terms “animal” and “welfare” as well as the “.com” generic top-level-domain (“gTLD”) to the wholly incorporated mark.
Respondent has no rights or legitimate interests in the <zoetisanimalwelfare.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent displays Complainant’s ZOETIS mark in conjunction with an attempt to trade on the goodwill associated with Complainant’s mark. See Compl. Annex F.
Respondent registered and uses the <zoetisanimalwelfare.com> domain name in bad faith. Respondent attempts to pass off as Complainant for Respondent’s commercial gain via the intentional creation of confusion as to the source, sponsorship, or affiliation of the resolving website with Complainant. Respondent had actual knowledge of Complainant’s rights in the ZOETIS mark prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The two Complainants in this matter are Zoetis Inc. and Zoetis Services LLC. Zoetis Services LLC is an indirectly wholly-owned subsidiary of Zoetis Inc.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”). In Alabama One Call, Louisiana One Call System, Tennessee One-Call System, Inc. v. Windward Marketing Group, Inc., D2009-1243 (WIPO, Nov. 6, 2009), the Panel found that where “Complainants are represented by a single authorized representative; each Complainant seeks the same remedy with respect to each disputed domain name; and the Complaint involves a single Respondent….”, consolidation of Complainants is permissible.
As the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the two Complainants, it will treat them as a single entity in this proceeding and the matter may proceed on that basis. The Complainants will hereafter be referred to as “the Complainant.”
1. Complainant is a United States company that is a global research-based company and the largest such company focusing only on animal health.
2. Complainant has established its trademark rights in the ZOETIS mark by registering it with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,822,378, registered Sep. 29, 2015).
3. Respondent registered the <zoetisanimalwelfare.com> domain name on November 14, 2017.
4. Respondent displays Complainant’s ZOETIS mark in conjunction with an attempt to trade on the goodwill associated with Complainant’s mark and pass itself off as Complainant.
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 first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant submits that it has rights in the ZOETIS mark based upon registration with the USPTO (e.g. Reg. No. 4,822,378, registered Sep. 29, 2015). See Compl. Annex B. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the ZOETIS mark.
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ZOETIS mark. Complainant argues that Respondent’s <zoetisanimalwelfare.com> domain name is confusingly similar to Complainant’s mark as it appends the generic terms “animal” and “welfare” as well as the “.com” gTLD to the wholly incorporated mark. Similar changes in a registered mark have failed to distinguish a domain name sufficiently for the purposes of Policy ¶4 (a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). The Panel therefore finds that the <zoetisanimalwelfare.com> domain name is confusingly similar to the ZOETIS mark under Policy ¶4 (a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ZOETIS mark and to
use it in its domain name, adding only the generic words “animal” and “welfare” which encourages internet users to assume that the domain name relates to the activities of Complainant;
(b) Respondent registered the disputed domain name on November 14, 2017;
(c) Respondent displays Complainant’s ZOETIS mark in conjunction with an attempt to trade on the goodwill associated with Complainant;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant submits that Respondent has no rights or legitimate interests in the <zoetisanimalwelfare.com> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the ZOETIS mark. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The Panel notes that a privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. As a result, the Panel notes that the WHOIS information of record identifies Respondent as “James Buttler / British Speed Post LLC.” Additionally, lack of evidence in the record to indicate that a complainant authorized respondent to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the <zoetisanimalwelfare.com> domain name under Policy ¶ 4(c)(ii);
(f) Complainant submits Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent displays Complainant’s ZOETIS mark in conjunction with a company unrelated to Complainant’s business on the resolving website of the disputed domain name. See Compl. Annex F. Use of a domain name in an attempt to pass Respondent off as Complainant and trade on the goodwill associated with a mark does not evince a bona fide offer per Policy ¶ 4(c)(i) or a legitimate noncommercial or otherwise fair use per Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (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). Complainant submits Respondent displays the ZOETIS mark in conjunction with an animal hospital business called “Zoetis Animal Welfare”. See Compl. Annex F. Complainant further submits Respondent has copied the resolving website of the disputed domain name from a legitimate business as Respondent’s resolving website mirrors that of the North Country Animal Hospital in almost every respect. See Compl. Annex G. The Panel therefore finds Respondent lacks rights and legitimate interests in the disputed domain name per Policy ¶¶ 4(c)(i) & (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends Respondent attempts to pass off as Complainant for Respondent’s commercial gain via the intentional creation of confusion as to the source, sponsorship, or affiliation of the resolving website with Complainant. Use of a disputed domain name in conjunction with a complainant’s mark in an attempt to pass off for a respondent’s commercial gain represents bad faith per Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (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); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Complainant submits Respondent uses the disputed domain name to display Complainant’s ZOETIS mark in conjunction with the “Zoetis Animal Welfare” business to gain commercially from the confusion between Respondent and Complainant. See Compl. Annex F. The Panel agrees with Complainant and therefore finds Respondent registered and used the <zoetisanimalwelfare.com> domain name in bad faith per Policy ¶ 4(b)(iv).
Secondly, Complainant alleges Respondent had actual knowledge of Complainant’s rights in the ZOETIS mark prior to registration of the disputed domain name. Actual knowledge of a complainant's rights in the mark prior to registering a disputed domain name utilizing said mark is sufficient for a finding that a respondent acted in bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent must have had actual knowledge of the ZOETIS mark as Respondent registered a domain name suggesting a connection to Complainant and Respondent registered the domain name subsequent to Complainant’s acquisition of rights in the ZOETIS mark. See Compl. Annex B. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the ZOETIS mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zoetisanimalwelfare.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 11, 2018
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