Zoetis Inc. and Zoetis Services LLC v. Zoetis Health
Claim Number: FA1808001802588
Complainant is Zoetis Inc. and Zoetis Services LLC (“Complainant”), represented by Laura J. Winston of Kim Winston LLP, New York, USA. Respondent is Zoetis Health (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zoetishealthusa.com>, registered with NetEarth One Inc. d/b/a NetEarth.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 22, 2018; the Forum received payment on August 22, 2018.
On August 24, 2018, NetEarth One Inc. d/b/a NetEarth confirmed by e-mail to the Forum that the <zoetishealthusa.com> domain name is registered with NetEarth One Inc. d/b/a NetEarth and that Respondent is the current registrant of the name. NetEarth One Inc. d/b/a NetEarth has verified that Respondent is bound by the NetEarth One Inc. d/b/a NetEarth 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 28, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 17, 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@zoetishealthusa.com. Also on August 28, 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.
A timely Response was received and determined to be complete on August 30, 2018.
On September 6, 2018, the Forum received an Additional Submission from Complainant. It was timely and was accepted by the Forum.
On September 5, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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, Zoetis Inc., and Zoetis Services LLC, is a global research-based company and the largest such company focusing only on animal health. Complainant has rights in the ZOETIS mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,400,976 registered Sep. 10, 2013). See Compl. Annex B. Respondent’s <zoetishealthusa.com> domain name is confusingly similar to Complainant’s mark because Respondent includes the entire mark in the disputed domain name plus the generic phrase “health usa” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <zoetishealthusa.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the mark. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services of for a legitimate noncommercial or fair use. Instead, Respondent fails to make an active use of the disputed domain name. Additionally Respondent uses the disputed domain name to place fraudulent purchase orders in order to phish for the suppliers financial and personal information.
Respondent registered and uses the <zoetishealthusa.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business by impersonating Complainant’s employee to send fraudulent emails. See Compl. Annex G. Furthermore, Respondent is passively holding the disputed domain name by failing to use the domain name for any purpose. See Compl. Annex F. Finally, Respondent had actual knowledge that Complainant was the owner of the ZOETIS trademark yet continued to register and use the domain name anyways.
B. Respondent
Respondent is a legitimate small business with only five employees in the business of supplying medical and safety equipment to clients worldwide. Respondent has never attempted to fraudulently acquire personal or financial information under the name “Zoetis Inc” or “Zoetis Services LLC.” Respondent is willing to transfer the domain name if Complainant is open to negotiations on the cost of the domain name registration.
Respondent registered the disputed domain name on April 25, 2018.
C. Additional Submissions
Complainant
In an Additional Submission filed on September 6, 2018 by Complainant, it alleged that Respondent has, in fact, claimed to be a corporation of more than 700 employees even though in other places it claims to be a small company with five employees. It also alleged that Respondent has made efforts to pass itself off as Complainant by using Complainant’s address as well as using a mix of actual and fictional employees including Juan Ramon Alaix, the actual president of Complainant, in spec sheets to potential clients.
Respondent
In a confusing Additional Submission, Respondent repeats it Response where it agrees to transfer the disputed domain name “if [Complainant] is open to negotiations on the cost of domain registration.” Respondent’s Additional Submission at 1.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain name.
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.
The Panel finds that the disputed domain name, <zoetishealthusa.com>, is confusingly similar to Complainant’s valid and subsisting trademark, ZOETIS. Complainant has adequately pled it rights and interests in and to this trademark. Respondent arrives at the disputed domain name by taking Complainant’s trademark in total and adding the generic words “health” and “usa” and the gTLD “.com.” This is inadequate to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel also finds that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent has no rights, permission or license to register the disputed domain name. Respondent is not commonly known by the disputed domain name.
The disputed domain name apparently resolves to a website that lacks any substantive content. Failure to make active use of a confusingly similar domain name can evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (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 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).”). Complainant provides a screenshot of the resolving webpage, which displays the message “If you are seeing this message, the website for zoetishealthusa.com is not available at this time” and contains links to various services, such as “Developer Blog” and “Forum”. See Compl. Annex F.
As such, the Panel finds that Respondent fails to actively use the disputed domain name.
Additionally, Complainant demonstrates that Respondent uses the disputed domain name to place fraudulent purchase orders in order to phish for the suppliers’ financial and personal information. Complainants may use phishing attempts to evince a lack of any bona fide offering of goods or services or legitimate noncommercial or fair use. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (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).”). Complainant provides copies of the emails sent using the disputed domain name, which purport to send a credit application form under the name “Zoetis Health Inc” requesting a financial account. See Compl. Annex G.
Respondent’s Response does not address this issue.
As such, the Panel the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain name.
The Panel further finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Complainant argues that Respondent uses the disputed domain name to fraudulently send emails to Complainant’s suppliers (or potential suppliers) in hopes of receiving personal or financial information. Phishing schemes through fraudulent email communications which disrupt a complainant’s business can evince bad faith 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)). As noted above, Complainant provides copies of the emails sent using the disputed domain name, which purport to send a credit application form under the name “Zoetis Health Inc” requesting a financial account. See Compl. Annex G.
As such, the Panel finds that Respondent’s use of the disputed domain name to send emails regarding credit/financial information was done in bad faith under Policy ¶ 4(b)(iii).
Complainant also claims that Respondent inactively holds the disputed domain name, as Respondent fails to use the disputed domain name for any purpose. Inactively holding a confusingly similar domain name can evince bad faith registration and use under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Complainant provided a screenshot of the resolving webpage that displays the message “If you are seeing this message, the website for zoetishealthusa.com is not available at this time” and contains links to various services, such as “Developer Blog” and “Forum”. See Compl. Annex F.
The Panel, therefore, finds that Respondent registered and uses the disputed domain name in bad faith.
In its Additional Submission, Complainant also shows that Respondent claimed in some places to be a corporation of more than 700 employees and in its Response claims to be a small company with five employees. Complainant also demonstrates that Respondent has made efforts to pass itself off as Complainant by using Complainant’s address as well as using a mix of actual and fictional employees including Juan Ramon Alaix, the actual president of Complainant, in spec sheets to potential clients.
This, and the fact that Respondent does not respond to any of these allegations in its Response, shows clear evidence that Respondent has engaged in bad faith use and registration of the disputed domain name.
Further, Complainant claims that Respondent had actual knowledge of Complainant’s rights in the ZOETIS mark at the time of registering the <zoetishealthusa.com> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith under 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). Complainant contends that Respondent’s knowledge is demonstrated by Respondent’s use of the unique ZOETIS mark in connection with the health industry, and because Respondent used Complainant’s actual mailing address and telephone number. Given the unique nature of Complainant’s mark and the totality of the circumstances, The Panel finds that Respondent has actual knowledge of Complainant’s prior rights and interests in the ZOETIS mark prior to the registration of the disputed domain name.
Respondent’s Response fails to squarely address any of these issues as well.
As such, the Panel finds that Respondent engaged in bad faith use and registration of 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 <zoetishealthusa.com> domain name TRANSFERRED from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: September 10, 2018
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