Zoetis Inc. and Zoetis Services LLC v. tomy Office
Claim Number: FA1703001721046
Complainant is Zoetis Inc. and Zoetis Services LLC (“Complainant”), represented by Laura J. Winston of Kim Winston LLP, New York, USA. Respondent is tomy Office (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zoetis-uk.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 9, 2017; the Forum received payment on March 9, 2017.
On March 11, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <zoetis-uk.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 March 13, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 3, 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@zoetis-uk.com. Also on March 13, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 12, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
A. The domain name is virtually identical to the trademark in which Complainant has rights.
2. Complainant is a global research-based company and the largest such company focusing only on animal health. Complainant employs approximately 9,000 people worldwide and has a local presence in over 45 countries, including 28 manufacturing facilities in 13 countries. Complainant’s products and services serve veterinarians, livestock producers, and people who raise and care for farm and companion animals in over 100 countries.
3. Through its indirectly wholly-owned subsidiary, Zoetis Services LLC, Complainant is the owner of trademark registrations in the United States and other jurisdictions around the world, including United States Trademark Reg. No. 4,822,378 filed March 3, 2012 for the mark ZOETIS for “non-medicated animal feed additives for use as nutritional supplements” in class 5; United States Trademark Reg. No. 4,809,065 filed December 29, 2011 for the mark ZOETIS for “veterinary preparations for the prevention and treatment of respiratory and infectious diseases, bacterial for treatment of poultry, bovines, porcines, allergies, dermatological disorders for treatment of canines, veterinary vaccines for treatment of poultry, swines, equines” in class 5; United States Trademark Reg. No. 4,804,400 filed July 24, 2012 for the mark ZOETIS for “machines for sorting, counting, classifying, handling and treating avian eggs and hatched chicks” in class 7; United States Trademark Reg. No. 4,777,782 filed May 10, 2012 for the mark ZOETIS (Stylized) for “veterinary preparations for the prevention and treatment of respiratory and infectious diseases, bacterial for treatment of poultry, bovines, porcines, allergies, dermatological disorders for treatment of canines, veterinary vaccines for treatment of poultry, swines, equines” in class 5 and “providing information and advice in the field of animal health and veterinary medicine” in class 44; United States Trademark Reg. No. 4,400,976 filed March 3, 2012 for the mark ZOETIS for “providing information and advice in the field of animal health and veterinary medicine” in class 44; Community Trademark Reg. No. 010922409 filed May 30, 2012 for the mark ZOETIS (Stylized) for “veterinary preparations for the prevention and treatment of parasitic infections, inflammation and inflammatory diseases, respiratory and infectious diseases, immunological, bacterial, viral and fungal diseases, osteoporosis, cardiovascular disease, central nervous system diseases and disorders, urological, urogenital and urinary disorders, gastrointestinal disorders, musculoskeletal disorders, allergies, diabetes, hypertension, stroke, cancer, blood, pain, obesity, digestive disorders, ophthalmological disorders, behavioral disorders, reproductive disorders, dermatological disorders, tooth decay, tooth sensitivity, gingivitis, halitosis and periodontal disease and for skin and tissue repair and to lower cholesterol; nutritional additives and food supplements for medical purposes; veterinary vaccines and substances, diagnostic kits for use in disease testing, diagnostic preparations for medical and veterinary use, all of the foregoing for treating felines, canines, bovines, porcines, equines, llamas, rabbits, rodents, birds, ferrets, poultry, goats, sheep and aquatic animals, non- medicated animal feed additives” in class 5 and “providing information and advice in the field of animal health and veterinary medicine” in class 44; and Community Trademark Reg. No. 010680379 filed February 28, 2012 for the mark ZOETIS for “veterinary preparations for the prevention and treatment of parasitic infections, inflammation and inflammatory diseases, respiratory and infectious diseases, immunological, bacterial, viral and fungal diseases, osteoporosis, cardiovascular disease, central nervous system diseases and disorders, urological, urogenital and urinary disorders, gastrointestinal disorders, musculoskeletal disorders, allergies, diabetes, hypertension, stroke, cancer, blood, pain, obesity, digestive disorders, ophthalmological disorders, behavioral disorders, reproductive disorders, dermatological disorders, tooth decay, tooth sensitivity, gingivitis, halitosis and periodontal disease and for skin and tissue repair and to lower cholesterol; nutritional additives and food supplements for medical purposes; veterinary vaccines and substances, diagnostic kits for use in disease testing, diagnostic preparations for medical and veterinary use, all of the foregoing for treating felines, canines, bovines, porcines, equines, llamas, rabbits, rodents, birds, ferrets, poultry, goats, sheep and aquatic animals” in class 5, “non-medicated animal feed additives” in class 31, and “providing information and advice in the field of animal health and veterinary medicine” in class 44. Complainant’s trademark registration with numerous recognized trademark authorities conclusively demonstrates Complainant’s rights in the ZOETIS mark under Policy ¶4(a)(i). See Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA0807001213758 (Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SIPO] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶4(a)(i).”); Metro. Life Ins. Co. v. Bonds, FA0612000873143 (Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i)); Paisley Park Enters. v. Lawson, FA0412000384834 (Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶4(a)(i) through registration of the mark with the USPTO); Am. Int’l Group, Inc. v. Morris, FA0509000569033 (Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”); AOL LLC v. Interrante, FA0604000681239 (Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶4(a)(i).”); Argenta Spaarbank NV v. Argenta, Mailadmin Ltd., D2009-0249 (WIPO June 8, 2009) (finding that Complainant had provided evidence of a trademark registration with the OHIM and had thus established rights in the mark); Expedia, Inc. v. Tan, FA0705000991075 (ForumJune 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶4(a)(i).”). Registration of a mark in one country establishes Complainant’s rights regardless of the country that Respondent is in. See Homer TLC, Inc. v. Song Bin, FA1306001505218 (Forum July 30, 2013) (“Complainant’s USPTO registration sufficiently establishes its rights in the HOME DEPOT mark under Policy ¶4(a)(i), despite the fact Respondent resides outside of the United States.”); W.W. Grainger, Inc. v. Above.com Domain Privacy, FA1007001334458 (Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶4(a)(i)] rights even when Respondent lives or operates in a different country.”); Williams-Sonoma, Inc. v. Fees, FA0703000937704 (Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA0703000932344 (Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction); KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business); Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of the complainant to register all possible domain names that surround its substantive mark does not hinder the complainant’s rights in the mark; “Trademark owners are not required to create ‘libraries’ of domain names in order to protect themselves”).
4. Prior to its formation as an independent company, Complainant was part of Pfizer Inc., one of the largest pharmaceutical companies in the world. Previously known as Pfizer Animal Health, Complainant adopted the trade name ZOETIS in 2012 in preparation for its spin-off into an independent company. On August 13, 2012, Pfizer Inc. issued a press release publicly introducing the name ZOETIS and discussing steps being taken for an IPO and transfer of Pfizer’s animal health business to Complainant. The news of the spin-off was reported in the Wall Street Journal and other investor and trade publications.
5. Complainant operates the domain name <zoetis.com> and uses it as its primary web site and as the second level domain for its employees’ email addresses.
6. Respondent has registered the following domain name: zoetis-uk.com, registered November 8, 2016.
7. Respondent’s domain name is virtually identical to Complainant’s trademark. Specifically, Respondent’s <zoetis-uk.com> domain name incorporates the entirety of Complainant’s mark, paired with the geographic term “uk” and a hyphen. Respondent’s addition of a hyphen and a geographic term to Complainant’s mark does not distinguish Respondent’s domain name from Complainant’s mark under Policy ¶4(a)(i). See Health Devices Corp. v. Aspen S T C, FA0305000158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶4(a)(i).”); Hewlett-Packard Dev. Co. L.P. v. Reza Rasti, FA0911001293423 (Forum Dec. 28, 2009) (finding <hp-iran.com> and <compaq-iran.com> confusingly similar to the HP and COMPAQ marks, noting that “the addition of a hyphen and a geographic term renders the disputed domain name confusingly similar to the mark”); Hess Corp. v. GR, FA0608000770909 (Forum Sept. 19, 2006) (finding that the respondent’s <hess- uk.com> domain name was confusingly similar to the complainant’s HESS mark, as the mere addition of “uk” and a hyphen failed to sufficiently differentiate the disputed domain name from the registered mark); Chevron Intellectual Property LLC v. None, None, FA1306001504045 (Forum July 7, 2013) (finding <chevroniraq.com> confusingly similar to CHEVRON); Trip Network Inc. v. Alviera, FA0702000914943 (Forum Mar. 27, 2007) (finding that the addition of geographic terms, such as “Cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶4(a)(i)); Pirelli & C. S.p.A. v. Tabriz, FA0702000921798 (Forum Apr. 12, 2007) (finding that the addition of a hyphen between terms of a registered mark did not differentiate the <p-zero.org> domain name from the P ZERO mark under Policy ¶4(a)(i)); Dell, Inc. v. Mahmoud Dehghan, FA0612000870419 (Forum Feb. 2, 2007) (finding the domain names <dell-iran.com> and <dell-iran.net> confusingly similar to the DELL trademark); Skype Ltd. v. Sacramento, FA0607000747948 (Forum Aug. 30, 2006) (“The addition of the geographic term [“Brasil”] does not avoid confusing similarity pursuant to Policy ¶4(a)(i).”); Ticketmaster Corp. v. Kumar, FA0607000744436 (Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark); Trump v. Web-adviso, D2010-2220 (WIPO Mar. 5, 2011) (finding <trumpindia.com> confusingly similar to TRUMP); Gannett Co. v. Chan, D2004- 0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well- known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); Laboratoires De Biologie Vegetale Yves Rocher v. Choi, FA0202000104201 (Forum Mar. 22, 2002) (holding that the <yveskorea.com> domain name was confusingly similar to the complainant’s YVES ROCHER mark even though the domain name was only similar in part); AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights). Respondent adds a generic top-level domain (“gTLD”) to the disputed domain name. Respondent’s addition of a gTLD to the mark is irrelevant under Policy ¶4(a)(i). See AOL Inc. v. Morgan, FA1009001349260 (Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark); Nat’l Academy of Recording Arts & Sciences, Inc. v. zhangjian / jian zhang, FA1208001456997 (Forum Sept. 12, 2012) (<grammycn.com> confusingly similar to GRAMMY trademark; “the addition of geographic terms and a gTLD do not remove the disputed domain name from the realm of confusing similarity”; domain name transferred); Abt Elecs., Inc. v. Ricks, FA0701000904239 (Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶4(a)(i) analysis.”); Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA0702000916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); Reese v. Morgan, FA0702000917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); Innomed Techs., Inc. v. DRP Servs., FA0312000221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); Isleworth Land Co. v. Lost in Space, SA, FA0208000117330 (Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶4(a)(i) analysis.”); Bank of Am. Corp. v. McCall, FA0211000135012 (Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”).
8. Because of the near-identical nature of the domain name and Complainant’s trademark, an internet user could easily be confused into believing that a web site using Respondent’s domain name is owned or sponsored by Complainant, and a recipient of an email emanating from the domain name could easily be confused into thinking that the email is coming from Complainant. See Zoetis Inc. v. VistaPrint Technologies Ltd, FA1403001550102 (Forum May 5, 2014); Regents of the University of Michigan v. VistaPrint Technologies Ltd, FA1208001460764 (Forum Oct. 5, 2012); Solazyme Inc. v. VistaPrint Technologies Ltd, FA1408001574178 (Forum Sept. 11, 2014) (respondent’s domain name <sollazyme.com> confusingly similar to complainant’s trademark SOLAZYME); HealthSouth Corp. v. VistaPrint Technologies Ltd., FA1409001581088 (Forum Oct. 29, 2014) respondent’s domain name <healthsouth.co> confusingly similar to complainant’s trademark HEALTHSOUTH). This use of Complainant's trademark could confuse consumers into thinking that this domain name refers to Complainant's business dealings in the United Kingdom. See InfoSpace, Inc. v. domains Asia Ventures, FA0310000198909 (Forum Nov. 10, 2003) (“Internet users may believe that the website located at the <dogpileuk.com> domain name is run by a United Kingdom branch or affiliate of Complainant…Consequently, the Panel finds that the geographic identifier “uk” does not significantly distinguish Respondent’s domain name from Complainant’s mark…”).
B. Respondent should be considered as having no rights or legitimate interests in the domain name.
9. The above domain name was registered long after Complainant’s filing date of its US trademark registrations, the filing dates of registrations in other countries and the press release and news story announcing the spin-off of Complainant into an independent company.
10. The WHOIS information lists Respondent as "tomy Office." Complainant has not consented to or otherwise authorized the use of ZOETIS-UK or any other term by Respondent. Nor is there anything to suggest Respondent is commonly known by the <zoetis-uk.com> domain name. See Southern California University for Professional Studies, Inc. v. Wan, FA0904001258605 (Forum June 9, 2009) (concluding that the respondent was not commonly known by the <scups-edu.info> domain name under Policy ¶4(c)(ii) based on the WHOIS information and other evidence in the record); M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA0606000740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶4(c)(ii) based on the WHOIS information and other evidence in the record).
11. ZOETIS is a term coined by Complainant that has no meaning other than as Complainant’s trademark and business name.
12. Respondent has not made any use of or made any demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. Specifically, the resolving website for the <zoetis-uk.com> domain name leads to an inactive webpage. The failure to actively use a domain name, or failure to show demonstrable preparations to use the domain name, does not give Respondent rights under Policy ¶¶4(c)(i) or (iii). See Microsoft Corporation v. Lang Qing, FA1206001447828 (Forum July 8, 2012) (finding that the failure to make an active use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use); Sun Microsystems, Inc. v. Color Vivo Internet c/o David Carrero Fdez-Baillo, FA0909001282898 (Forum October 21, 2009) (noting that failure to make any active use of a domain name is not a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii)); George Weston Bakeries Inc. v. McBroom, FA0703000933276 (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); Thermo Electron Corp. v. Xu, FA0605000713851 (Forum July 12, 2006) (finding that a respondent’s non-use of disputed domain names demonstrated that that respondent was not using them for either a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii)); Hewlett-Packard Co. v. Shemesh, FA0503000434145 (Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii).”); Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA0407000296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii).”); TMP Int’l, Inc. v. Baker Enters., FA0310000204112 (Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶4(a)(ii).”).
13. Respondent is not commonly known by nor has ever been commonly known by the domain name. See St. Lawrence Univ. v. Nextnet Tech, FA0701000881234 (Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); Coppertown Drive-Thru Sys., LLC v. Snowden, FA0605000715089 (Forum July 17, 2006) (finding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); Braun Corp. v. Loney, FA0605000699652 (Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names, and so failed to show that it had rights to or legitimate interests in them as provided in Policy ¶4(c)(ii), where the relevant WHOIS information, as well as the other evidence in the record, gave no indication that that respondent was commonly known by the domain names, and where a UDRP complainant had not authorized that respondent to register a domain name containing its mark); RMO, Inc. v. Andy Burbidge, FA0103000096949 (Forum May 16, 2001) (interpreting Policy ¶4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); Great S. Wood Pres., Inc. v. TFA Assocs., FA0007000095169 (Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent linked the domain name to <bestoftheweb.com>).
14. On November 8, 2016, Lorena Parra Celis, Director and Regulatory Assistant for HR Chile of Complainant, received a phone call and several emails from the email address mark.davies@zoetis-uk.com. The subject of the emails were “Travel Support (Zoetis Inc UK)” and “RE: Travel Support (Zoetis Inc UK).” The emails are meant to look like emails from Mark Davies, an International Digital Manager based out of the UK office of Complainant.
An individual, purportedly mark.davies@zoetis-uk.com, initially called Lorena Parra Celis asking for a contact with a Chilean travel agency. The individual sent an initial email to Lorena Parra Celis with his contact information. Thereafter, Lorena Parra Celis sent an email to mark.davies@zoetis-uk.com asking for additional information for invoices related to the travel agency. In response, the email sent from mark.davies@zoetis-uk.com states:
“Yes Lorena,
Thanks, i will send them invoice details now”
15. Mark Davies is an International Digital Manager based out of the UK office of Complainant. Mr. Davies’ actual email address is mark.davies@zoetis.com.
16. Respondent used Mr. Davies’ name combined with Respondent’s domain name <zoetis- uk.com>, and pretended to inquire about asking for a contact with a Chilean travel agency for travel tickets related to work related activities of Complainant, in an attempt to make it appear as if Ms. Parra Celis were receiving an inquiry about processing an invoice from an employee of Complainant. Respondent did so in an effort to obtain financial gain from Complainant, with no legitimate purpose for doing so.
17. The emails emanating from mark.davies@zoetis-uk.com constitute attempts at phishing.
18. Use of a domain name for the purposes of phishing information for the Respondent’s own purposes is not bona fide use of a domain name. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA1003001314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”); Zoetis Inc. v. VistaPrint Technologies Ltd, FA1403001550102 (Forum May 5, 2014); Zoetis Inc. v. VistaPrint Technologies Ltd, FA1502001604926 (Forum March 24, 2015); Hess Corp. v. GR, supra (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
19. Respondent is not making any legitimate noncommercial or fair use of the domain name.
C. The domain name was registered and is being used in bad faith.
20. At the time that Respondent registered the domain name, Respondent knew that Complainant was the owner of the trademark ZOETIS. In fact, the use of the name of an actual employee of Complainant in an email address containing the domain name <zoetis-uk.com> is evidence that Respondent is aware of Complainant’s rights in the trademark ZOETIS and is attempting a phishing scheme in order to deceive an email recipient into thinking that they are receiving emails from an employee of Complainant.
21. Respondent’s use of the email address mark.davies@zoetis-uk.com to conduct its phishing scheme constitutes an intentional attempt to attract users for commercial gain by creating a likelihood of confusion as to source or affiliation.
22. Respondent’s impersonation of Complainant’s employee disrupts and competes with Complainant’s business. Past panels have determined that the use of a domain by a respondent to impersonate a complainant’s employees constitutes bad faith registration and use pursuant to Policy ¶4(b)(iii). See Microsoft Corporation v. Terrence Green, FA1602001661030 (Forum April 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)); Chevron Intellectual Property, LLC v. Jack Brooks, FA1509001635967 (Forum Oct. 6, 2015) (finding that Respondent’s use of <chevron-corps.com> to impersonate an executive of Complainant in emails is in opposition to Complainant and is therefore in bad faith under Policy ¶4(b)(iii)); Brownell Travel, Inc. v. Troy Haas, FA1411001589137 (Forum Dec. 20, 2014) (finding the use of the domain name to send emails impersonating the CEO to the Complainant’s Account Manager to attempt to commit fraud on the Complainant constituted bad faith registration and use under Policy ¶4(b)(iii)); The Hackett Group, Inc. v. Brian Herns/The Hackett Group, FA1412001597465 (Forum Feb. 6, 2015) (finding that the use of emails associated with the domain name to send fraudulent emails contains the requisite competitive nature under Policy ¶4(b)(iii) and this is evidence of bad faith disruption); National Oilwell Varco, L.P. v. Craig Wood/NOV, FA1408001575951 (Forum September 22, 2014) (“We are persuaded by the evidence that Respondent’s use of the <nov-inc.com> domain name to commit a commercial fraud while purporting to act in the name of the Complainant, all as alleged in the Complaint, demonstrates bad faith in the registration and use of the domain name”); Qatalyst Partners LP and Qatalyst Partners LLP v. Devimore, FA1106001393436 (Forum July 13, 2011) (finding that a UDRP respondent’s use of a disputed domain name to create an e-mail address which it employed to pass itself off as a complainant in a phishing scheme was evidence of bad faith registration and use under Policy ¶4(a)(iii)); Smiths Grp. plc v. Snooks, FA1102001372112 (Forum Mar. 18, 2011) (finding that a respondent’s attempt to impersonate an employee of a UDRP complainant was evidence of bad faith registration and use of a contested domain name under Policy ¶4(a)(iii)).
23. The domain name resolves to an inactive webpage.
24. Lacking an overt good faith basis to register and use the confusingly similar domain name, Respondent’s passive holding of the disputed domain name <zoetis-uk.com> is further evidence that Respondent registered and is using the domain name in bad faith. See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum Feb. 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”); Microsoft Corporation v. Lang Qing, supra (Respondent’s failure to make an active use of the <microsoftcloudaccelerator.com> domain name found to be bad faith under Policy ¶4(a)(iii)); OneWest Bank, FSB v. Jacob Zakaria d/b/a EQ Funding, FA1006001328894 (Forum July 20, 2010) (the panel found bad faith use where respondent failed to make active use of the disputed domain name and the respondent registered the domain name approximately 7 years after the complainant registered its trademark with the USPTO); Sun Microsystems, Inc. v. Color Vivo Internet, supra (“in order to find bad faith registration and use pursuant to Policy ¶4(a)(iii) it is not necessary that Respondent have put the domain name to any active use … failure to make an active use of the disputed domain name can, in and of itself, be evidence of bad faith registration and use of the domain pursuant to Policy ¶4(a)(iii)”); Chrisma Productions, Inc. v. Thomas Quinn Jr., FA0905001263592 (Forum July 13, 2009) (finding that Respondent’s inactive use of the <harveykorman.com> domain name constituted bad faith registration and use under Policy ¶4(a)(iii)); Disney Enterprises Inc. v. Meyers, FA0605000697818 (Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶4(a)(iii)); DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s failure to make an active use of the domain name satisfied the requirement of ¶4(a)(iii) of the Policy); Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); Twentieth Century Fox Film Corp. v. Risser, FA0002000093761 (Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”); Capital One Financial Corp. v. C W, FA1402001542251 (Forum Mar. 17, 2014) (finding bad faith where domain name resolved to a blank web page).
25. Respondent’s registration of a domain name suggesting a connection to Complainant even though Respondent has no connection with Complainant whatsoever is evidence of bad faith. See Bergdorf Goodman, Inc. & NM Nevada Trust v. Edwyn Huang, FA0909001286505 (Forum Nov. 4, 2009) (holding that “the registration of a confusingly similar domain name that is obviously connected with a particular trademark owner by someone with no connection with the trademark owner suggests bad faith.”); Deutsche Bank AG v. Diego-Arturo Bruckner, D2000-0277 (WIPO May 30, 2000) (holding that “The Domain Name is so obviously connected with the complainant and its services that its very use by someone with no connection with the complainant suggests opportunistic bad faith”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 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 ZOETIS mark based upon its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,400,976, registered Sep. 10, 2013). Registration with the USPTO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶4(a)(i).). Complainant has rights in the ZOETIS mark based upon its registration with the USPTO pursuant to Policy ¶4(a)(i).
Complainant claims <zoetis-uk.com> is confusingly similar to Complainant’s mark because it contains the Complainant’s entire mark with the addition of a hyphen, and the geographic term “uk,” as well as the gTLD “.com.” Adding a geographic term to a mark to form a domain name does not sufficiently distinguish the domain name from the mark under Policy ¶4(a)(i), see Avaya Inc. v. Evelyn Dayda / Avaya Unlimited Sources LLC, FA 1611255 (Forum May 4, 2015) (finding that as “the ‘usa’ portion of the disputed domain name is a generic geographic term, the internet user will assume that the domain name deals with the activities of Complainant in the USA and that it will lead to a website dealing with that subject. The domain name is therefore confusingly similar to the AVAYA mark and the Panel so finds.”) and Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). The <zoetis-uk.com> domain name is confusingly similar to Complainant’s mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent has no rights or legitimate interests in <zoetis-uk.com> because Respondent is not commonly known by <zoetis-uk.com> and has failed to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. <zoetis-uk.com> resolves to an inactive webpage. While the domain name is not being used as a URL for a web site (and there is no requirement it be used to host a web site), it is being used as part of the email address (admittedly fraudulent). Where there is no response, the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the domain name, especially where false WHOIS information is used. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶4(c)(ii)). The WHOIS information of record identifies Respondent as “tomy Office.” There is no obvious relationship between the WHOIS information and the domain name. Respondent has not been commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii).
Complainant claims Respondent’s failure to use <zoetis-uk.com> in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use, further evidences Respondent’s lack of rights or legitimate interests in the domain name. The domain name resolves to a website that is unused. A domain name does not have to serve as a URL for a web site. That is not outcome determinative, because a domain name can be otherwise used. In this case, the domain name is being used as part of an email address. Respondent utilized <zoetis-uk.com> to send a series of phishing emails to Complainant (using the name of one of Complainant’s real employees). Using a domain name to send phishing emails inexorably leads to the conclusion a respondent has no rights or legitimate interests in a domain name. See Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum February 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶4(a)(ii).”). Respondent’s behavior constitutes phishing. Respondent does not have rights or legitimate interests in <zoetis-uk.com> pursuant to Policy ¶4(a)(ii).
Furthermore, Respondent did not provide accurate WHOIS information when it registered the domain name. This means Respondent did not publicly associate itself with the domain name. Therefore, Respondent did not acquire any rights to the domain name by virtue of its registration.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and is using <zoetis-uk.com> in bad faith due to Respondent’s phishing attempt impersonating one of Complainant’s employees. Using a domain name to send phishing emails supports a finding of bad faith use and registration under Policy ¶4(b)(iii). 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 supported a finding of bad faith registration and use under Policy ¶4(b)(iii)). Respondent sent multiple emails in an attempt to gain Complainant’s business information. Respondent registered and used <zoetis-uk.com> in bad faith pursuant to Policy ¶4(b)(iii).
Complainant claims Respondent’s inactive holding of <zoetis-uk.com> is further evidence of Respondent’s bad faith pursuant to Policy ¶4(a)(iii). Failure to make an active use, or demonstrable purposes to use, a domain can support a finding that a respondent registered and used a domain in bad faith under Policy ¶4(a)(iii). See Disney Enters. Inc. v. Meyers, FA 697818 (Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶4(a)(iii). However, there is no requirement a domain name must be used to host a web site. It is clear the domain name is actually being used as an email server. The domain name is being used (albeit maliciously). Therefore, this Panel declines to find bad faith on this ground.
Complainant claims Respondent registered and used <zoetis-uk.com> in bad faith through Respondent’s actual knowledge of Complainant’s ZOETIS mark at the time of registration. Actual knowledge of a complainant’s mark prior to registration can support a finding that a respondent registered a domain name in bad faith. See Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Forum May 9, 2006) (“The Panel also finds that there are reasonable grounds to infer that Respondent had actual notice of Complainant’s rights in the mark as well. Complainant’s Radio & Records Magazine is a leading business journal covering an industry towards which Respondent’s services are marketed. Therefore, the Panel finds that Respondent registered the <radioandrecordsmagazine.com> domain name despite having constructive and actual notice of Complainant’s rights in the RADIO & RECORDS mark. Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is further evidence of bad faith registration and use under Policy ¶4(a)(iii).”) It seems clear Respondent knew of Complainant. Respondent knew of one of Complainant’s actual employees in the United Kingdom. Respondent sent an email impersonating that employee to get confidential information on how to book travel (at Complainant’s cost). Clearly, Respondent actually knew about Complainant’s mark when Respondent registered the domain name. Any other conclusion would fly in the face of common sense. Respondent knew about Complainant’s mark when Respondent was trying to perpetrate the fraud. Respondent registered and used the domain name in bad faith under Policy ¶4(a)(iii).
Using false WHOIS information raises the rebuttable presumption of bad faith in the commercial context. Respondent has done nothing to rebut that presumption. Therefore, this Panel is willing to find bad faith registration and use on that ground alone.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <zoetis-uk.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, April 25, 2017
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