DECISION

 

ExecuPharm, Inc. v. Skyland Grain

Claim Number: FA2006001900186

 

PARTIES

Complainant is ExecuPharm, Inc. (“Complainant”), represented by Alexis Crawford Douglas of K&L Gates LLP, Illinois, United States.  Respondent is Skyland Grain (“Respondent”), Kansas, United States.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <execupharm.org>, registered with NameCheap, Inc..

 

PANEL

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.

 

James Bridgeman SC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on June 15, 2020; the Forum received payment on June 15, 2020.

 

On June 15, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <execupharm.org> 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 June 22, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 13, 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@execupharm.org.  Also on June 22, 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 July 16, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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.

 

RELIEF SOUGHT

Complainant requests that the disputed domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant submits that the disputed domain name <execupharm.org> is identical to the EXECUPHARM trademark in which Complainant has rights.

 

Complainant claims to have common law rights in the EXECUPHARM mark acquired by its use of the mark in the provision of staffing services for biopharmaceutical companies in the United States since at least January 12, 1998.

 

Complainant asserts that in the fiscal year 2019, it had a revenue of over $130 million. Complainant adds that it promotes its EXECUPHARM business online through its website at <execupharm.com>, has over 14,000 followers on LinkedIn, and promotes its business through media partnerships online (banner advertising, sponsored content), at industry trade shows, and through social media channels, blogs, and other digital media.

 

Complainant argues that prior panels have found common law rights in a trademark are sufficient to for allow a complainant to demonstrate rights for the purposes of the Policy. 

 

Complainant asserts that it has been using its domain name <execupharm.com> to promote its services since April 1998 and argues that prior panels established under the Policy  have found that a complainant’s registration of a similar domain name serves as evidence of a complainant’s common law rights in the mark. See Palm Desert Nat’l Bank, N.A. v. Manila Indus., Inc., FA 843468 (Forum Jan. 17, 2007) (“Complainant’s . . . registrations for the <palmdesertnationalbank.net> and <palmdesertnationalbank.org> domain names serve as further evidence of complainant’s rights in the mark.”).

 

Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name <execupharm.org> and asserts that on information and belief, Respondent was not commonly known as “Execupharm” prior to obtaining the disputed domain name and is not currently known as “Execupharm.” See Gallup Inc. v. Amish Country Store, FA 96209 (Forum Jan. 23, 2001) (finding that respondent does not have rights in a domain name when respondent is not known by the mark).

 

Complainant argues that while the identity of the registrant of the disputed domain name on the published WHOIS record is protected by a privacy service, the unveiled details disclose Respondent as the registrant and Complainant states that Respondent is not an entity that Complainant has authorized to use its ECUPHARM mark. Complainant adds that that it has not authorized Respondent to use its EXECUPHARM mark in a domain name or otherwise.

 

Complainant argues that a search of worldwide trademark records shows no evidence that Respondent owns trademark rights in any term, much less EXECUPHARM and that Respondent could not have any such rights because of Complainant’s exclusive and continuous use of the EXECUPHARM mark for more than 25 years in the employee-staffing for clinical research support services field.

 

Complainant further alleges that the registration of the disputed domain name coincided with a series of communications over the course of several weeks in March and April of 2020, asserting that Complainant had sustained a data breach and demanding that Complainant make payment of a ransom  in exchange for the return of Complainant’s sensitive data.

 

Complainant submits that these communications culminated in a threat on April 20, 2020 that if the demanded ransom was not paid, Complainant’s files would be posted online and would “sweep all the news agencies”. Complainant is concerned that the disputed domain name may be used by those who are making these demands as it was registered on that same date and resolves to an Index page with a “cgi-bin” link but without any content.

 

Complainant further alleges that Respondent has provided false contact information as registrant of the disputed domain name and has adduced evidence that a browser search for the Respondent by name reveals a grain co-op in Kansas, Oklahoma and Colorado. Complainant asserts that neither the primary address or the addresses of any of the co-op locations correspond with the address listed in the domain name registration. Moreover, the address listed in the registrant information is not a real Kansas City, Kansas address.

 

Additionally, Complainant submits that the website to which the disputed domain name currently resolves has no substantive content and on information and belief, Respondent is inactively holding the disputed domain name while blackmailing respondent into paying ransom fees and threatening to use the disputed  domain name to disseminate sensitive data. Complainant submits that this inactive holding of the disputed domain name while engaging in other nefarious conduct demonstrates that Respondent has no rights or legitimate interest in the disputed domain name. See GRF Services Limited v. Super Privacy Service LTD c/o Dynadot, FA1811001817534 (Forum Dec. 20, 2018) (finding respondent had no rights or legitimate interests in a domain name when no substantive content resulted from navigating to the domain name and evidence showed the IP address associated with the domain name was malicious and distributed malware).

 

Therefore, Complainant argues that Respondent is not using the disputed domain name in connection with the bona fide offering of goods or services, nor for a legitimate non-commercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).

 

Complainant submits that the disputed domain name was registered and is being used in bad faith.

 

Complainant argues that bad faith registration may be presumed where, as in this case, Respondent had knowledge of Complainant’s trademark rights prior to the registration of the identical or confusingly similar disputed domain name.

 

Additionally, Respondent’s knowledge of Complainant’s rights in the EXECUPHARM trademark may be presumed from the identity between the disputed domain name <execupharm.org> and Complainant’s own <execupharm.com> domain name.

 

Complainant submits that the disputed domain name was registered primarily for the purpose of disrupting Complainant’s business and intentionally attempting to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website.

 

Complainant further alleges that Respondent registered the disputed domain name at the same time that it breached Complainant’s computer systems while attacking and disseminating its sensitive data.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has established common law rights in its EXECUPHARM trademark through the goodwill it has established in the mark by its extensive use by Complainant in interstate commerce in the United States since 1995 in connection with employee staffing services.

 

The disputed domain name was registered on April 21,2020 and resolves to an inactive parking page. The identity of the registrant is concealed on the Registrar’s published WhoIs by means of a proxy service.

 

There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the Forum’s request for verification of the registration details of the disputed domain name in the course of this proceeding. The Registrar confirmed that Respondent is the registrant of the disputed domain name.

 

DISCUSSION

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”).

 

Identical and/or Confusingly Similar

Complainant has provided uncontested evidence of long use of the EXECUPHARM in the provision of staffing services for biopharmaceutical companies in the United States since at least January 12, 1998. Complainant has developed an extensive business and goodwill with an annual revenue of over $130 million, an established Internet presence with its website and over 14,000 followers on LinkedIn. It is well established that common law rights in the trademark are sufficient to for allow Complainant to demonstrate rights for the purposes of the Policy. This Panel finds therefore that on the balance of probabilities Complainant has acquired sufficient goodwill and reputation in the use of the EXECUPHARM mark to satisfy the test in Policy ¶ 4(i).

 

The disputed domain name <execupharm.org> consists of Complainant’s EXECUPHARM mark in its entirety in combination with the generic Top Level Domain (gTLD) extension <.org>.

 

For the purposes of comparison the gTLD <.org> extension may be ignored in the circumstances of this Complaint because as a domain extension, it is will be recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.

 

This Panel finds therefore that Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name <execupharm.org> and asserting that on information and belief, Respondent was not commonly known as “Execupharm” prior to obtaining the domain name in dispute; that Respondent  is not currently known as “Execupharm”;  that while the published information about the registrant of the disputed domain name on the WHOIS record is protected by a privacy service, the unveiled details show that the registrant is not an entity that Complainant has authorized to use its ECUPHARM mark; that Complainant has not authorized Respondent to use its EXECUPHARM mark in a domain name or otherwise; that a search of worldwide trademark records shows no evidence that Respondent owns trademark rights in any term, much less EXECUPHARM; that Respondent has provided false contact information as registrant of the disputed domain name and had adduced evidence that Internet search for the name of Respondent reveals a grain co-op in Kansas, Oklahoma and Colorado. Complainant asserts that neither the primary address or the addresses of any of the co-op locations correspond with the address listed in the domain name registration; and moreover, that the address listed in the registrant information is not a real Kansas City, Kansas address.

 

Complainant argues that the disputed domain name is being passively held by Respondent and therefore is not being used in connection with the bona fide offering of goods or services, nor is it being used for a legitimate non-commercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).

 

In its submissions Complainant has sought to associate the registration of the disputed domain name with an alleged a data breach and alleged extortionate demands for a ransom in exchange for the return of Complainant’s sensitive data. No evidence has been adduced to prove these serious allegations and this Panel makes no finding in that regard.

 

It is well established that once Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove its rights or legitimate interests in the disputed domain name. Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations and so has not discharged the burden. In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant further alleges that the disputed domain name was registered and is being used in bad faith, arguing that the registrant of the disputed domain name must have had knowledge of Complainant’s trademark rights prior to the registration of the identical or confusingly similar disputed domain name and that this is supported by the fact that the disputed domain name <execupharm.org> is also identical to Complainant’s own <execupharm.com> domain name.

 

Complainant has also alleged but has not proven that Respondent registered the disputed domain name at the same time that Respondent allegedly breached Complainant’s computer systems while attacking and disseminating its sensitive data and intended to use the disputed domain name for the purposes of  blackmail and extortion. This Panel can make no finding in respect of these unsupported allegations.

 

What is proven however is that Respondent is passively holding the disputed domain name and this Panel finds that such passive holding amounts to use of the disputed domain name in circumstances where the disputed domain name is identical to Complainant’s distinctive mark; where the registrant must have been aware of Complainant, its name, mark, reputation and website; where there is no plausible explanation as to why the disputed domain name was chosen and registered other than create an association in the minds of Internet users with Complainant and its business and to trade off Complainant’s substantial goodwill by capitalizing on users looking for Complainant’s website at <execupharm.com>; where Respondent has on the balance of probabilities given a false name and address as registrant of the disputed domain name while availing also of a proxy service; and where Respondent has failed to respond to the serious allegations made in the Complaint.

 

As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the remedy requested in the Complaint

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <execupharm.org> domain name be TRANSFERRED from Respondent to Complainant.

 

____________________________

 

James Bridgeman  SC

Panelist

Dated: July 17, 2020

 

 

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