Zoetis Inc. and Zoetis Services LLC v. zoetis Inc.
Claim Number: FA1801001765356
Complainant is Zoetis Inc. and Zoetis Services LLC (“Complainant”), represented by Laura J. Winston of Kim Winston LLP, New York, USA. Respondent is zoetis Inc. (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zoetiscareers.com> (the Domain Name), registered with Google Inc.
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.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 3, 2018; the Forum received payment on January 3, 2018.
On January 4, 2018, Google Inc. confirmed by e-mail to the Forum that the <zoetiscareers.com> domain name is registered with Google Inc. and that Respondent is the current registrant of the name. Google Inc. has verified that Respondent is bound by the Google 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 January 5, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 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@zoetiscareers.com. Also on January 5, 2018, 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 30, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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’s contentions can be summarised as follows:
Zoetis Services LLC is the owner of the registered trade mark ZOETIS for veterinary goods and services with first use recorded as 2013 for information and advisory services relating to the same. It is a wholly owned subsidiary and co- complainant with Zoetis Inc. that owns common law rights in the ZOETIS mark. Complainants operate at the web site Zoetis.com.
The Domain Name, registered in November 2017 incorporates the entirety of Complainants’ ZOETIS mark merely adding the suffix ‘careers’ and the gTLD ‘.com’ neither of which distinguish the Domain Name from Complainant’s mark.
The recipient of an e mail from the Domain Name is likely to think the e mail is emanating from Complainant.
The Domain Name, registered long after Complainants registration and use of ZOETIS, was registered using the Zoetis Inc.’ name, address and telephone number, a blatantly fraudulent action.
Complainant has not authorised the use of the ZOETIS mark or domain name. Respondent is not commonly known by the Domain Name. Zoetis has no meaning other than a term coined by Complainant as its name and trade mark. There has been no use by Respondent in connection with a bona fide offering of goods and services or a legitimate non commercial use. The Domain Name has not been used for a resolving web site. Respondent has no rights or legitimate interests in the Domain Name.
Within three days after registering the Domain Name Respondent used it to impersonate Complainant in a phishing scheme advertising jobs to get information from applicants. Several third parties reported that the trade dress, ZOETIS name and/or names of employees of Complainant had been used in fraudulent e mails purporting to be from Zoetis Inc. when they were not. Such fraudulent and illegal activity demonstrates a lack of rights and legitimate interests in the Domain Name.
The use of the name of Complainant and its web address in the e mails referred to above sent to third parties is evidence that Respondent is aware of Complainant and its rights. It is an intentional attempt to attract users for commercial gain by creating a likelihood of confusion as to source or affiliation under Policy 4 (b)(iv). Impersonation of Complainant and its employees is disruptive and competitive and constitutes bad faith registration and use under Policy 4 (b)(iii). Non use of the Domain Name for a web site is passive use which can also amount to bad faith. Registering a Domain Name suggesting a connection with a complainant where there is none is also evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Zoetis Services LLC is the owner of the registered trade mark ZOETIS for veterinary goods and services with first use recorded as 2013 for information and advisory services relating to the same. It is a wholly owned subsidiary and co- complainant with Zoetis Inc. that owns common law rights in the ZOETIS mark. Complainants operate at the web site Zoetis.com.
The Domain Name registered in 2017 has been used for a phishing scheme purporting to offer employment opportunities connected with Complainant when they are not.
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 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.”).
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 Panel accepts that there is evidence in the Complaint sufficient to establish the necessary nexus or link between Complainants as a parent company with common law rights whose name has been used a phishing scam and its indirectly wholly owned subsidiary that holds the registered trade marks for ZOETIS the trade mark used in the Domain Name. As such both companies can each claim to have rights in the Domain Name.
Identical and/or Confusingly Similar
The Domain Name in this Complaint combines Complainant’s ZOETIS mark (registered in the USA for veterinary related goods and services with first use recorded as 2013), the dictionary word ‘careers’ and the gTLD .com.
The addition of a generic term and a gTLD does not negate confusing similarity between a domain name and a trade mark contained within it. See Wiluna Holdings LLC v Edna Sherman, FA 1652781 (Forum Jan 22, 2016)(Finding the addition of a generic term and gTLD insufficient to distinguish a disputed domain name from a mark under Policy 4 (a) (i).)
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which Complainant has rights for the purpose of the Policy.
Rights or Legitimate Interests
Complainant has not authorised the use of its mark. Respondent has not answered this Complaint and there is no evidence or reason to suggest Respondent is, in fact. commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that Respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that Complainant had not licensed or authorized Respondent to use its ALASKA AIRLINES mark).
The Domain Name has been used in a fraudulent e mail phishing scheme using the Zoetis Inc. name and trade dress. This is deceptive and confusing and amounts to passing off. As such it cannot amount to the bona fide offering of goods and services. (See DaVita Inc. v Cynthia Rochelo FA 1738034 (ForumJuly 20, 2017) finding that ‘Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate non commercial or fair use’).
As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Impersonating a complainant by use of Complainant’s mark in a fraudulent e mail scam is disruptive and evinces bad faith registration and use. See Microsoft Corporation v Terrence Green/ Whois Agent/Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr 4 2016)(finding that respondent’s use of the disputed domain name to send fraudulent e mails constituted bad faith registration and use pursuant to Policy 4 (b)(iii). )
In the opinion of the Panel the use made of the Domain Name in relation to an e mail phishing scam is confusing in that recipients of the e mails will reasonably believe those e mails are connected to or approved by Complainant as the Zoetis Inc. name and trade dress are used. This mimicking by Respondent of Complainant shows that Respondent was aware of Complainant and its business and rights and this constitutes passing off. Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users by creating a likelihood of confusion with Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of electronic content on the Internet under Policy 4 (b)(iv). See Qatalyst Partners L.P. v Devinmore, FA 1393436 (Forum July 13, 2011)(finding that using the disputed domain name as an e mail address to pass itself off as Complainant in a phishing scheme is evidence of bad faith registration and use).
As such, the Panel believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iv) and 4 (b)(iii). There is no need to consider any additional grounds of bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zoetiscareers.com> domain name be TRANSFERRED from Respondent to Complainant Zoetis Services LLC.
Dawn Osborne, Panelist
Dated: January 31, 2018
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