Covance Inc. v. Excel Physical Therapy / Michael Obergottsberger
Claim Number: FA1808001800630
Complainant is Covance Inc. (“Complainant”), represented by Peter Kidd of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Excel Physical Therapy / Michael Obergottsberger (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <covrance.com>, registered with 1&1 Internet SE.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 8, 2018; the Forum received payment on August 8, 2018.
On August 10, 2018, 1&1 Internet SE confirmed by e-mail to the Forum that the <covrance.com> domain name is registered with 1&1 Internet SE and that Respondent is the current registrant of the name. 1&1 Internet SE has verified that Respondent is bound by the 1&1 Internet SE 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 August 13, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@covrance.com. Also on August 13, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 6, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Covance Inc., is the world’s most comprehensive drug development company.
Complainant uses its COVANCE mark to promote its products and services and established rights in the mark through registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <covrance.com> domain name is confusingly similar to Complainant’s COVANCE mark as it merely adds the letter “r” and the generic top-level domain (“gTLD”) “.com.”
Respondent does not have rights or legitimate interests in the <covrance.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its COVANCE mark in any fashion. Respondent is also not commonly known by the domain name as the WHOIS information of record lists “Excel Physical Therapy / Michael Obergottsberger” as the registrant. Respondent is not using the <covrance.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to defraud Complainant’s customers by passing itself off as Complainant’s employee in fraudulent emails.
Respondent registered and is using the <covrance.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and create confusion with Complainant’s mark for commercial gain by using the <covrance.com> domain name to pass off as Complainant and conduct a fraudulent email scheme. Moreover, Respondent registered the at-issue domain name with full knowledge of Complainant’s rights in the COVANCE mark. Further, Respondent engaged in typosquatting by registering a domain name containing a misspelled term.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in COVANCE as demonstrated by its registration of such mark with the USPTO.
Complainant’s rights in the COVANCE mark existed prior to Respondent’s registration of the at-issue domain name.
Respondent uses the domain name to defraud Complainant’s customers by passing itself off as Complainant’s employee in fraudulent emails.
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 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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for the COVANCE trademark evidences its rights in such mark for the purposes of Policy ¶ 4(a)(I). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”)
Furthermore, the at-issue domain name is a misspelling or mistyping of Complainant’s COVANCE trademark. Respondent simply inserts the letter “r” into Complainant’s trademark then adds a necessary top-level domain, here “.com,” to complete the <covrance.com> domain name. Importantly, the slight differences between the <covrance.com> domain name and Complainant’s COVANCE trademark are insufficient to distinguish Respondent’s domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i) Respondent’s <covrance.com> domain name is confusingly similar to Complainant’s COVANCE trademark. See Twitch Interactive, Inc. v. Antonio Teggi, FA 1626528 (Forum Aug. 3, 2015) (finding the <twitcch.tv> domain name confusingly similar to the TWITCH TV trademark because the domain name consisted of a common misspelling of the mark by merely adding the letter “c”); see also, Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information for the at-issue domain name identifies its registrant as “Excel Physical Therapy / Michael Obergottsberger” and the record contains no evidence that otherwise tends to prove that Respondent is commonly known by the <covrance.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding 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).
Moreover, Respondent uses the at-issue domain name so that it may pass itself off as Complainant in fraudulent email. In such email, Respondent impersonates one of Complainant’s employees to deceive the recipient to transfer money that was purportedly owed to Complainant. Respondent’s use of the <covrance.com> domain name in this manner constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a non-commercial or fair use under Policy ¶ 4(c)(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 purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <covrance.com> domain name was registered and used in bad faith. As discussed below without limitation, Policy ¶ 4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith regarding the at-issue domain name pursuant to paragraph 4(a)(iii) of the Policy.
As discussed above regarding rights and legitimate interests, Respondent uses the confusingly similar domain name to host email which pretends to be from one of Complainant’s employees. Respondent then exploits the charade to illicitly extract funds from Complainant’s customers who mistakenly believe they are dealing with Complainant. Respondent thereby attempts to disrupt Complainant’s business and create confusion with Complainant’s mark for commercial gain. Per Policy ¶ 4(b)(iii) and (iv), use of a domain name to disrupt a complainant’s business or create confusion as to the source, sponsorship, affiliation or endorsement of the content therein for commercial gain indicates bad faith. See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”).
Additionally, Respondent’s overt misspelling of Complainant’s trademark in the at-issue domain name shows that Respondent is engaged in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the resulting string in a domain name hoping that internet users will either inadvertently type the malformed string when searching for products or services related to the domain name’s target trademark or, as in the instant case, on viewing the domain name will confuse the domain name with its target trademark. Here, in creating the at-issue domain name Respondent modifies Complainant’s trademark by inserting the letter “r.” Predictably, parties receiving email from <covrance.com> pretending to be from an employee of Complainant, will mistakenly believe the email actually originated from Complainant, when it did not. Typosquatting, in itself, indicates 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).”); see also, Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Finally, Respondent registered <covrance.com> knowing that Complainant had trademark rights in the COVANCE trademark. Respondent’s prior knowledge is evident given Respondent’s use of the domain name to impersonate one of Complainant’s employees in email from the at-issue domain name. It follows that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <covrance.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See 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); see also, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <covrance.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 9, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page