Zoetis Inc. and Zoetis Services LLC v. Zoetis Inc
Claim Number: FA1801001765645
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”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zoetiscareer.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically January 5, 2018; the Forum received payment January 5, 2018.
On January 8, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <zoetiscareer.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and 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 8, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 29, 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@zoetiscareer.com. Also on January 8, 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 February 1, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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’s Contentions in this Proceeding:
Complainant is the largest global research-based company, focusing on animal health. Complainant, through its wholly owned subsidiary, Zoetis Services LLC, is the owner of trademark registrations for the ZOETIS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,822,378, registered Sept. 29, 2015). See Compl. Annex B. Respondent’s <zoetiscareer.com> is confusingly similar to Complainant’s ZOETIS mark, as it incorporates the mark in its entirety, adding the generic term “career” and the “.com” generic top level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <zoetiscareer.com> domain name. Based on the WHOIS information of record, Respondent is not commonly known by the disputed domain name. Further, Complainant has never authorized Respondent to use the ZOETIS mark. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <zoetiscareer.com> resolves to an inactive webpage that displays a 404 error message. See Compl. Annex F. However, Respondent is using the domain name to send fraudulent employment offer emails to unsuspecting third parties. See Compl. Annex G.
Respondent registered and is using the <zoetiscareer.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business by passing itself off as Complainant’s employees in fraudulent emails presenting employment offers. The emails are a part of a phishing scheme intended to obtain Internet users’ personal and financial information. See Compl. Annex G. Other than the fraudulent use, Respondent’s <zoetiscareer.com> resolves to an inactive website with no demonstrable preparations for use. See Compl. Annex F. Respondent registered <zoetiscareer.com> with actual knowledge of Complainant and its rights to the ZOETIS mark.
B. Respondent’s Contention in this Proceeding:
Respondent did not submit a Response. The Panel notes that Respondent registered the <zoetiscareer.com> domain name December 27, 2017.
Complainant established that it has legal rights and legitimate interests in the domain name at issue here that used Complainant’s protected mark in its entirety.
Respondent has no such rights or legitimate interests in the mark or the domain name using Complainant’s protected mark.
Respondent registered and disputed domain name that is confusingly similar to Complainant’s protected mark.
Respondent registered and both uses the domain to phish fraudulently for Information it is not entitled to and purports to hold the disputed domain name passively, both of which support findings of 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant has rights to its ZOETIS marks through registration with the USPTO (e.g., Reg. No. 4,822,378, registered Sept. 29, 2015). See Compl. Annex B. Registrations with USPTO are sufficient to establish rights in a mark. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Accordingly, the Panel finds Complainant sufficiently established rights in the ZOETIS mark.
Complainant contends Respondent’s <zoetiscareer.com> domain name is confusingly similar to Complainant’s ZOETIS mark, as it incorporates the mark in its entirety, adding the generic term “career” and the “.com” gTLD. The inclusion of generic terms and a gTLD to a fully incorporated mark does not distinguish a disputed domain name from the original mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists 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 finds that Respondent’s <zoetiscareer.com> is confusingly similar to Complainant’s ZOETIS mark.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name that is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights and Legitimate Interests:
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), then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant asserts that Respondent does not have rights or legitimate interests in <zoetiscareer.com>. Complainant urges Respondent is not commonly known by the disputed domain name. WHOIS information associated with this case identifies Respondent as “Zoetis Inc.” See Compl. Amend. Annex. When the WHOIS information presents the appearance that a respondent may be known by the disputed domain name, absent a response and affirmative evidence, respondent is presumed not to be known by that name. See Google Inc. v. S S / Google International, FA1506001625742 (Forum Aug. 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name.
Complainant further argues Respondent is not using the <zoetiscareer.com> domain name in conjunction with a bona fide offering or goods or services, or a legitimate noncommercial or fair use of the domain. Complainant demonstrates that Respondent’s <zoetiscareer.com> resolves to an inactive website. See Compl. Annex F. Failure to actively use a domain name and show demonstrable preparations of use may evince a lack of rights under Policy ¶¶ 4(c)(i) and (iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Moreover, Complainant asserts that Respondent uses the disputed domain name to send fraudulent employment emails to unsuspecting users. The use of a domain name to pose as complainant’s employees to send fraudulent emails is not a bona fide offering under the Policy. See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in <zoetiscareer.com> per the Policy.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant contends Respondent registered and is using the <zoetiscareer.com> domain name in bad faith. Complainant argues that Respondent attempts to disrupt Complainant’s business by passing itself off as Complainant’s employees in fraudulent emails presenting employment offers. The use of a disputed domain name to impersonate a complainant’s employees with the intent to disrupt complainant’s business evidences bad faith use and registration. Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the Respondent’s use of the disputed domain names to send fraudulent emails supported a finding of bad faith registration and use under Policy ¶ 4(b)(iii)).
Additionally, Complainant illustrates that Respondent’s emails are a part of a phishing scheme intended to obtain Internet users’ personal and financial information under the guise of employment offers. See Compl. Annex G. Using a disputed domain name in furtherance of a phishing scheme also supports findings of bad faith registration and use. See Emdeon Business Services, LLC v. HR Emdeon Careers, FA1507001629459 (Forum Aug. 14, 2015) (finding that the respondent had engaged in an email phishing scheme indicating bad faith under Policy ¶ 4(a)(iii), where respondent was coordinating the disputed domain name to send emails to Internet users and advising them that they had been selected for a job interview with the complainant and was persuading the users to disclose personal information in the process). Given the evidence provided, the Panel finds that Respondent registered and is using <zoetiscareer.com> while purporting to passively hold it in bad faith under the Policy.
Next, Complainant asserts that the disputed domain name resolves to an inactive website with no demonstrable preparations for use. Inactive holding of domain names with no evidence of active use of the webpages also supports findings of bad faith registration and use. See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); Indiana University v. Ryan G Foo / PPA Media Services, FA1411001588079 (Forum Dec. 28, 2014) (“Under the circumstances, Respondent’s seemingly inactive holding of the disputed domain name, coupled with the bad faith phishing use establishes Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii).”). Consequently, the Panel finds that because Respondent’s <zoetiscareer.com> lacks active content, the disputed domain name was registered in bad faith pursuant to Policy ¶ 4(a)(iii).
Respondent registered <zoetiscareer.com> with actual knowledge of Complainant and its rights to the ZOETIS mark. “[A]lthough the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith,” panels have found “actual knowledge through the name used for the domain and the use made of it.” Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014). In light of the fame and notoriety of Complainant's ZOETIS mark, it is inconceivable that Respondent could have registered the disputed domain name without actual and/or constructive knowledge of Complainant's rights in the mark. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Therefore, where the circumstances indicate that Respondent had actual knowledge of Complainant's mark when it registered <zoetiscareer.com>, the Panel finds bad faith. Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Complainant’s having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zoetiscareer.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 13, 2018.
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