Catalent Pharma Solutions, Inc. and R. P. Scherer Technologies, LLC v. Bart Morgan / Bartmog
Claim Number: FA2005001897016
Complainant is Catalent Pharma Solutions, Inc. and R. P. Scherer Technologies, LLC (“Complainant”), represented by Vanessa A. Ignacio of Lowenstein Sandler LLP, United States. Respondent is Bart Morgan / Bartmog (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <catelent.com>, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 19, 2020; the Forum received payment on May 19, 2020.
On May 20, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <catelent.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 26, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 15, 2020 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@catelent.com. Also on May 26, 2020, 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 June 17, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it is a provider of development solutions and delivery technologies for drugs, biologics, and other health products. Since 2007, Complainant has been the leading provider of development solutions and advanced delivery technologies for drugs, biologics and consumer and animal health products. Complainant’s oral, injectable, and respiratory delivery technologies address the full diversity of pharmaceutical industry, including small and large molecule biologics, consumer/OTC and animal health products. Complainant helps its customers get products to market faster, including nearly half of new drug products approved by the Food and Drug Administration in the last decade. Complainant employs approximately 11,000 employees worldwide and holds approximately 1,200 patents and patent applications in advanced delivery, drug and biologics formulation, and manufacturing. Annually, Complainant produces more than 70 billion doses for nearly 7,000 customer products (approximately 1 in every 20 doses of such products taken each year). Complainant does business with 87 of the top 100 branded drug marketers, 22 of the top 25 generics marketers, 24 of the top 25 biologics marketers, and 21 of the top 25 consumer health marketers globally. Complainant’s customers rely on its innovative product development, superior quality, advanced manufacturing, and skilled technical services to support their development and marketed product needs. Complainant has rights in the CATALENT mark based upon registration in the United States in 2008.
Complainant alleges that the disputed domain name is essentially identical and confusingly similar to its CATALENT since it is merely a misspelling of the mark: the second letter “a” is replaced with an “e.” Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent does not have rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name and is not licensed or authorized to use Complainant’s CATALENT mark. Additionally, Respondent fails to use the disputed domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent displays a parked webpage and uses the disputed domain name to impersonate Complainant in furtherance of an email phishing scheme. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith because Respondent uses the disputed domain name to impersonate Complainant and engage in an email phishing scheme. Also, Respondent displays a parked link page at the disputed domain. Additionally, Respondent’s typosquatting evidences bad faith. Further, Respondent uses a privacy service to conceal its identity. Finally, Respondent had actual knowledge of Complainant’s rights in the CATALENT mark. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark CATALENT and uses it to market development solutions and delivery technologies for drugs, biologics, and other health products.
Complainant’s rights in its mark date back to 2008.
The disputed domain name was registered in 2020.
Complainant has not licensed or otherwise authorized Respondent to use its mark. The resolving website displays advertising links to products and services not related to Complainant. The disputed domain name was used in fraudulent email phishing scheme; the signature block of the emails displays Complainant’s mark and business address.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The disputed domain name is confusingly similar to Complainant’s CATALENT mark since it is merely a misspelling of the mark: the second letter “a” is replaced with an “e”. Misspelling a complainant’s mark by adding, removing, or transposing letters, and adding a gTLD may not sufficiently mitigate confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Zhichao Yang, FA 1804964 (Forum Oct. 1, 2018) (“Misspelling of a complainant’s mark, either by adding, removing, or transposing letters, does not sufficiently mitigate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i).”); see also Bechtel Group, Inc. v. Eliza Dushku, FA 1631725 (Forum Sept. 1, 2015) (finding <betchel.com> confusingly similar to BECHTEL); see also Exxon Mobil Corp. v. Orville Walk, FA 1503047 (Forum July 13, 2013) (finding <exxonmobile.net> confusingly similar to EXXONMOBIL); see also, Chegg Inc. v. Company CEO / Qulity Programming, FA 1610061 (Forum Apr. 20, 2015) (finding confusing similarity where respondent’s <chwgg.com> domain name was a simple misspelling of a complainant’s CHEGG.COM mark). Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain name: where a response is lacking, the WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Here, the WHOIS information of record lists the registrant as “Bart Morgan / Bartmog”. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
The disputed domain name resolves to a parked webpage displaying click-through advertising links for products and services that are not related to Complainant. This is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Bloomberg Finance L.P. v. Syed Hussain / IBN7 Media Group, FA 1721384 (Forum Apr. 26, 2017) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name). The Panel therefore finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
In addition, Respondent uses the disputed domain name to impersonate Complainant as part of a fraudulent email phishing scheme. Specifically, Complainant provides evidence that an email address associated with the disputed domain was used to impersonate one of Complainant’s employees in emails to Complainant’s customers that are designed to solicit financial information; the signature block of the emails displayed Complainant’s mark and business address. Use of an email address associated with a disputed domain name to pass off as a complainant in furtherance of email phishing is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the at-issue domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”). Thus, the Panel finds on this ground also that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
For all the above reasons, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent uses the disputed domain name to impersonate Complainant and engage in an email phishing scheme. Use of a domain name to impersonate a complainant in furtherance of a fraudulent email scheme may constitute bad faith pursuant to Policy ¶ 4(a)(iii). See Airbnb, Inc. v. JAMES GRANT, FA1760182 (Forum December 28, 2017) (“Using a misleading email address to defraud unwary customers certainly constitutes bad faith.”). Thus the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Further, also as already noted, the resolving web page is a parked page that contains advertising links. This can demonstrate a respondent’s bad faith per Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). The Panel therefore finds that Respondent has registered and used the domain name in bad faith per Policy ¶ 4(b)(iv).
Further, the disputed domain name is a mere misspelling of Complainant’s mark. This is constitutes typosquatting: Misspelling of a complainant’s mark in order to commercially benefit from a confusing similarity between a disputed domain name and the mark can evince bad faith under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). Consequently, the Panel finds that Respondent’s typosquatting further evinces bad faith registration and use per Policy ¶ 4(a)(iii).
Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the signature block of the fraudulent emails displays Complainant’s mark and business address. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also 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). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <catelent.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: June 17, 2020
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