Zoetis Inc. and Zoetis Belgium S.A. v. DNescrow Afternic / Afternic
Claim Number: FA1702001715824
Complainant is Zoetis Inc. and Zoetis Belgium S.A. (“Complainant”), represented by Laura J. Winston of Kim Winston LLP, New York, USA. Respondent is DNescrow Afternic / Afternic (“Respondent”), represented by Richard D. Margiano of Richard D. Margiano, PLLC, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alphatrak.com>, registered with GoDaddy.com, LLC.
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.
Eleni Lappa as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 3, 2017; the Forum received payment on February 3, 2017.
On February 6, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <alphatrak.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 February 8, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 20, 2017 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@alphatrak.com. Also on February 8, 2017, 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.
A timely Response was received and determined to be complete on March 20, 2017.
Complainant’s Additional Submission was received and determined to be in compliance with the Rules on March 27, 2017.
Respondent’s Additional Submission was received and determined to be in compliance with the Rules on April 3, 2017.
On March 31, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eleni Lappa 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant submitted the following:
Zoetis, Inc., along with its indirectly wholly-owned subsidiary Zoetis Belgium S.A. (collectively, “Complainant”) is a global research-based company focusing on animal health. In connection with this business, Complainant uses the ALPHATRAK mark to offer blood glucose monitors for pets. Complainant has rights to the ALPHATRAK mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,299,595, registered Sept. 25, 2007). See Compl., at Attached Annex B. Respondent’s <alphatrak.com> is identical or confusingly similar to Complainant’s mark, as it consists of the mark in its entirety, merely adding to generic top-level domain (“gTLD”) “.com” in order to form a domain name.
Respondent has no rights or legitimate interests in <alphatrak.com>. Respondent has not been commonly known by the disputed domain name, nor has Complainant consented to or otherwise authorized the use of the ALPHATRAK mark by any third party. Respondent has failed to use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the disputed domain name resolves to a website displaying advertisements and links to third-party websites—some of which directly compete with Complainant’s business. See Compl., at Attached Annex F. Neither has Respondent made demonstrable preparations to use the site for a rights-granting purpose under the Policy.
Respondent has registered and used the disputed domain name in bad faith. Respondent is attempting to use the confusing similarity of the <alphatrak.com> domain name to attract Internet users for commercial gain. Also, Respondent’s inactive holding of the disputed domain name is evidence of its bad faith. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the ALPHATRAK mark. Further, Respondent’s use of a privacy service also raises a rebuttable presumption of bad faith.
B. Respondent
Respondent submitted the following:
Respondent admits that the ALPHATRAK mark allegedly owned by Complainant is the same word as the “alphatrak” portion of Respondent’s <alphatrak.com> domain name.
Respondent alleges it has made demonstrable preparations to use the disputed domain name for a bona fide offering of goods or services. Respondent purchased the disputed domain name on May 3, 2016, solely for the purpose of developing a line of fitness apparel. Respondent alleges it has expended a large amount of money and energy in preparation of the launching of its Alphatrak brand. Further, Respondent claims that its intended use of the domain name is legitimate because athletic wear is not covered by Complainant’s trademark registration.
Respondent argues that the placeholder website contents at <alphatrak.com> was generated by a prior registrar and is a common practice of registrars and not bad faith as Respondent receives no commercial gain from the website. Respondent has not been inactively holding the disputed domain, and in fact has owned it for less than a year. Further, Respondent suggests that if Complainant had been diligent and acted properly, this dispute would have occurred before Respondent invested over $100,000.00 in the Alphatrak brand.
C. Additional Submissions
Complainant additionally submitted the following:
a) Respondent’s website <otcoutlet.com> sells various devices for diabetes care, including blood glucose meters. In light of this, Respondent has not offered any legitimate reason as to why it sought registration of a domain name that contains Complainant’s ALPHATRAK mark, and links to products and content that are for Complainant’s exact line of business. Further, Respondent’s name OTC outlet contain the term “OTC” which suggests a business that sells medical products and does not support that they are now expanding into sports fabrics.
b) Respondent erroneously attempts to shift responsibility for the content of the website resolving from the <alphatrak.com> domain name. Moreover, Respondent’s statements that it has not profited from advertisements placed on the parked domain are irrelevant. The products featured on Respondent’s website are highly similar to those offered by Complainant, and are further evidence that Respondent knew of Complainant’s rights in the ALPHATRAK mark when it registered and subsequently used the disputed domain name. Finally, Respondent’s argument regarding the doctrine of laches is inappropriate.
Respondent additionally submitted the following:
Respondent does not only sell medical products and in fact it sells beachwear under its website www.beachgal.com therefore it has some legitimate rights or interests on using alphatrak.com
Respondent does not derive any commercial gain from the ads placed on the alphatrak.com web address which has not yet been launched as a website by Respondent therefore it has not exhibited bad faith in the registration and use of the alphatrak.com domain name.
The domain name at issue is alphatrak.com.
Complainant has rights to the ALPHATRAK mark in various jurisdictions, including, among else, its registration with the United States Patent and Trademark Office (“USPTO”) Reg. No. 3,299,595, registered Sept. 25, 2007.
Respondent has no registered trademark rights on the name ALPHATRAK.
Complainant’s business activity encompasses the sales of medical devices used for calculating glucose levels on animals.
Respondent’s business activity encompasses the sales of medical devices used for calculating glucose levels on humans.
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.
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.”
There are 2 Complainants in this matter: Zoetis, Inc., and Zoetis Belgium S.A. Complainant Zoetis Belgium S.A. is an indirectly wholly-owned subsidiary of Zoetis, Inc. and owner of the ALPHATRAK trademark.
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.
This Panel considers that Complainant has sufficiently demonstrated that a nexus exists between Zoetis Inc. and Zoetis Begium S.A., and as such it is permissible for the two entities to bring the complaint as one entity, therefore the Panel treats the aforementioned two entities as a single entity in this proceeding.
Identical and/or Confusingly Similar: Policy ¶ 4(a)(i)
Complainant claims rights in the ALPHATRAK mark based upon registration of the mark with the USPTO (e.g. Reg. No. 3,299,595, registered Sept. 25, 2007). There is well established case law that registration of a mark with the USPTO is sufficient to establish rights in that mark. This Panel therefore finds that Complainant’s registration of the ALPHATRAK mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <alphatrak.com> is identical to the ALPHATRAK mark, as the disputed domain name consists entirely of the mark, and merely adds the gTLD “.com.” Addition of a gTLD to a mark in order to form a domain name does not distinguish the domain name for the purposes of Policy ¶ 4(a)(i). This Panel therefore holds that the disputed domain name is identical to the ALPHATRACK mark pursuant to Policy ¶ 4(a)(i).
Rights or Legitimate Interests: Policy ¶ 4(a)(ii).
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.
Complainant argues that Respondent has no rights or legitimate interests in <alphatrak.com> as Respondent is not commonly known by the disputed domain name, nor has Complainant consented or otherwise authorized Respondent or anyone else to use the ALPHATRAK mark in any way. WHOIS information can support a finding that the Respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. The Panel notes that a privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. Complainant further points out that it did not learn of Respondents true identity, OTC Outlet Inc., until after receiving the Response in this proceeding. Lack of evidence in the record to indicate that Respondent had been authorized to register a domain name using a Complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in the disputed domain name. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the disputed domain name is evidenced by its failure to use the name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant contends that Respondent’s <alphatrak.com> resolves to a webpage which displays advertisements and links to third-party websites, some of which compete directly with Complainant’s business. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use. The Panel therefore finds that Respondent lacks rights or legitimate interests pursuant to Policy ¶ 4(c)(i) and (iii).
Complainant further argues that Respondent has not made demonstrable preparations to use the disputed domain name, despite Respondent’s contentions. Complainant contends that Respondent has not established a legitimate reason for seeking registration of a domain name that contains Complainant’s ALPHATRAK mark for sale of sports fabric. In order for a Respondent to declare its intent to use a disputed domain name, it must provide demonstrable evidence of such preparations. Complainant challenges the authenticity of Respondent’s proffered evidence—without support— and claims Respondent has failed to offer a legitimate reason as to why it sought registration of a domain name that contains Complainant’s mark. The Panel finds Respondent’s evidence of demonstrable preparations is not sufficient and that it lacks rights and legitimate interests per the Policy.
Complainant argues that the use of <alphatrak.com> to resolve to a website which displays links to competitors of Complainant is evidence of Respondent’s bad faith registration and use of the disputed domain name. Use of a domain name’ resolving website to display links to third parties which compete with a Complainant’s business can be evidence of bad faith pursuant to Policy ¶ 4(b)(iii) and (iv). The Panel recalls that the disputed domain name resolves to a page of links to third parties that compete with Complainant’s business. Though Respondent argues that it did not place the links on the resolving website and does not benefit commercially from them, Complainant contends that Respondent is responsible for the content. A registrant can be found to be responsible for the content on its resolving website, even if it does not benefit commercially from said content. The Panel therefore finds that Respondent has registered and used the disputed domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant argues that the registration and use of a domain name identical to the ALPHATRAK mark amounts to bad faith, as Respondent, OTC Outlet, Inc., is in the business of selling goods similar to the devices that Complainant uses the mark to sell, namely glucose meters. The more restrictive reading of Policy ¶ 4(b)(iii) allows for a finding of bad faith when a respondent can disrupt the business of a competitor. The Panel recalls Complainant’s argument that Respondent is in the business of selling glucose meters, the same goods covered by the ALPHATRAK mark. The Panel holds that Respondent meets the definition of a competitor for the purposes of Policy ¶ 4(b)(iii), and that the disputed domain name was registered and used in bad faith.
Complainant argues that Respondent had actual knowledge of Complainant's rights in the ALPHATRAK mark. Complainant argues that the fame and notoriety of Complainant’s mark leads to the inference that Respondent knew of Complainant and its mark. Complainant also contends that the fact that Respondent’s other website <otcoutlet.com> prominently features products highly similar to those offered by Complainant indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant also argues that Respondent’s failure to make an active use of the disputed domain name is evidence of its bad faith. Inactive holding of a disputed domain name can be evidence of bad faith per Policy ¶ 4(a)(iii). The Panel recalls that Respondent claims to have purchased the disputed domain name in May of 2016. The Panel holds that Respondent has not demonstrated active use, despite its claimed preparations, and finds that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant further argues that Respondent’s use of misleading contact information suggests bad faith. Use of a privacy service and provision of false or misleading contact information can each be evidence of bad faith pursuant to Policy ¶ 4(a)(iii). Complainant notes that a privacy service was used, and that even after the service was lifted as a result of the commencement of this proceeding, the WHOIS information listed Respondent as “Dnescrow Afternic / Afternic.” See Compl., at Attached Annex E; see also Amended Compl., at Attached Annex E. Complainant contends that not only is Respondent’s use of a privacy shield problematic, even the unmasked contact information does not point to Respondent’s true identity as reflected in the Response. The Panel may finds Respondent’s use of misleading contact information demonstrates Respondent’s bad faith per Policy ¶ 4(a)(iii).
Doctrine of Laches
The Panel finds that the doctrine of laches does not apply as a defense, and correspondingly disregards Respondent’s assertions to that end. Such defense is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alphatrak.com> domain name be TRANSFERRED from Respondent to Complainant.
Eleni Lappa, Panelist
Dated: April 5, 2017
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