Catalent Pharma Solutions, Inc. and R. P. Scherer Technologies, Inc. v. Brandon Souto
Claim Number: FA1811001815217
Complainant is Catalent Pharma Solutions, Inc. and R. P. Scherer Technologies, Inc. (“Complainant”), represented by Vanessa A Ignacio of Lowenstein Sandler LLP, New Jersey, USA. Respondent is Brandon Souto (“Respondent”), Connecticut, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <catalents.us>, registered with NameCheap, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 6, 2018; the Forum received payment on November 6, 2018.
On November 7, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <catalents.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On November 12, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 3, 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@catalents.us. Also on November 12, 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 December 4, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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 usTLD 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 usTLD Policy, usTLD 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.
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 Catalent Pharma Solutions, Inc. (“Catalent”) and R.P. Scherer Technologies, Inc. (“RP”). Complainant RP is a wholly-owned subsidiary of Complainant Catalent. Complainant RP is the listed owner of all CATALENT trademarks, which Complainant Catalent uses in connection with its goods and services. 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.” The Panel here finds that the evidence in the Complaint supports a finding of a sufficient nexus or link between the Complainants, thus the Panel treats them all as a single entity in this proceeding.
A. Complainant
Complainant is a leading provider of developmental solutions and advanced delivery technologies for drugs, biologics, and consumer and animal health products. Complainant has rights in the CATALENT mark through its trademark registrations all around the world, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,496,711, registered Sep. 2, 2008) and the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA772937, registered Jul. 26, 2010). Respondent’s <catalents.us> domain name is confusingly similar to Complainant’s CATALENT mark as Respondent merely adds the letter “s” and a “.us” country code top-level domain (“ccTLD”) to the mark.
Respondent has no rights or legitimate interests in the <catalents.us> domain name. Respondent is not licensed or authorized to use Complainant’s CATALANT mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent’s disputed domain name resolves to an inactive, parked webpage. Further, Respondent uses an email address associated with the disputed domain name to pass off as Complainant in furtherance of a phishing scheme.
Respondent registered and uses the <catalents.us> domain name in bad faith. Respondent’s attempts to pass off as Complainant in furtherance of an email phishing scheme. Furthermore, Respondent had actual and constructive knowledge of Complainant’s rights in the CATALENT mark prior to registering and subsequent use of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Catalent Pharma Solutions, Inc. and R. P. Scherer Technologies, Inc. (“Complainant”), of Somerset, New Jersey, USA. Complainant is the owner of domestic and international registrations for the mark CATALENT, which it has continuously used since at least as early as 2007, in connection with its provision of development solutions and advanced delivery technologies for drugs, biologics and various types of health products. Complainant is also the owner of numerous domain names featuring top-level and country codes, such as <catalent.com> and <catalent.us>.
Respondent is Brandon Souto (“Respondent”), of Norwich, Connecticut, USA. Respondent’s registrar’s address is listed as Phoenix, Arizona, USA. The Panel notes that the <catalents.us> domain name was registered on or about October 3, 2018.
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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 claims rights in the CATALENT mark based upon registration of the mark with multiple trademark offices around the world, including the USPTO (e.g., Reg. No. 3,496,711, registered Sep. 2, 2008) and the CIPO (e.g., Reg. No. TMA772937, registered Jul. 26, 2010). Registration of a mark with multiple trademark authorities is sufficient to establish rights in that mark per Policy ¶ 4(a)(i). See State Farm Mutual Automobile Insurance Company v. Henry Francis, FA 1738716 (Forum July 28, 2017) (acknowledging complainant’s rights in a mark when it had registered the mark with the United States Patent and Trademark Office and the Canadian Intellectual Property Office). The Panel here finds that Complainant’s registration of the CATALENT mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant argues Respondent’s <catalents.us> domain name is confusingly similar to the CATALENT mark, as the name incorporates the mark in its entirety, while adding the letter “s” and a “.us” ccTLD. Misspelling of a mark, either by adding or removing letters, and adding a ccTLD to the mark may not be sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See LodgeWorks Partners, L.P. v. Isaac Goldstein / POSTE RESTANTE, FA 1717300 (Forum Apr. 5, 2017) (“The Panel agrees; Respondent’s <archerhotels.com> is confusingly similar to complainant’s ARCHER HOTEL mark.”); see also Philip Morris USA Inc. v. Naveen Patnayak, FA 1731422 (Forum June 12, 2017) (“First, the addition of “.us” is inconsequential to the claim of confusing similarity.”). The Panel here finds
the <catalents.us> domain name is confusingly similar to the CATALENT mark per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes 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). Complainant has met this burden.
Complainant argues that Respondent has no rights or legitimate interests in the <catalents.us> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the CATALENT mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). Here, the WHOIS information of record identifies the registrant of the disputed domain name as “Brandon Souto,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel here finds that Respondent has not been commonly known by the <catalents.us> domain name under Policy ¶ 4(c)(iii).
Complainant claims Respondent fails to use the <catalents.us> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Specifically, Complainant argues Respondent uses an email address associated with the disputed domain name to pass off as Complainant in furtherance of a phishing scheme. Use of an email to pass off as a complainant to procure users’ personal or financial information may not be indicative of any rights or legitimate interests per Policy ¶¶ 4(c)(ii) or (iv). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”); see also H-D U.S.A., LLC v. Yoshihiro Nakazawa, FA 1736477 (Forum July 21, 2017) (“A complainant can use assertions of passing off and offering competing goods or services to evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Complainant provides a copy of an email purporting to be associated with Complainant to obtain a customer’s payment. Further, Complainant provides a document attached to the email which contains bank account information used in this purported phishing scheme. The Panel here finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use under a Policy ¶¶ 4(c)(ii) or (iv) analysis.
Complainant also asserts Respondent’s inactive holding of the <catalents.us> domain name indicates it does not have rights or legitimate interests in the name. Inactive holding of a domain name does not demonstrate rights or legitimate interests in the name per Policy ¶¶ 4(c)(ii) or (iv). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Complainant contends Respondent’s domain name resolves to an inactive, parked website. The Panel here finds that Respondent does not have rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(ii) or (iv).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
Complainant has proven this element.
The Panel notes that Complainant has not made specific arguments under Policy ¶ 4(b). However, specific arguments are not required under the Policy where Complainant shows bad faith use and registration in some manner. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). The Panel here evaluates the totality of circumstances to consider whether Complainant’s Policy ¶ 4(a)(iii) arguments are sufficient to establish bad faith.
Complainant contends that Respondent’s impersonation of Complainant in emails designed to fraudulently solicit deposits and goods shipments from third parties evinces Respondent’s bad faith. Such use of a domain name can be used to support a finding of bad faith registration and use per Policy ¶ 4(a)(iii). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). The Panel again notes that Complainant provides a copy of an email purporting to be associated with Complainant in order to obtain a customer’s payment. Further, Complainant provides a document attached to the email which contains bank account information used in this purported phishing scheme. The Panel here finds that Respondent registered and used the <catalents.us> domain name in bad faith per Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <catalents.us> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: December 18, 2018
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