Catalent Pharma Solutions, Inc. and R. P. Scherer Technologies, Inc. v. Isabel Kluge
Claim Number: FA1908001859571
Complainant is Catalent Pharma Solutions, Inc. and R. P. Scherer Technologies, Inc. (“Complainant”), represented by Vanessa A. Ignacio of Lowenstein Sandler LLP, New Jersey, USA. Respondent is Isabel Kluge (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cetalant.com>, registered with NameCheap, Inc..
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 27, 2019; the Forum received payment on August 27, 2019.
On September 3, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <cetalant.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 9, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 30, 2019 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@cetalant.com. Also on September 9, 2019, 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 October 2, 2019, 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 is a leading provider of development solutions and advanced delivery technologies for drugs, biologics, and consumer and animal health products.
Complainant has rights in the CATALENT mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <cetalant.com> domain name is confusingly similar to Complainant’s CATALENT mark as it incorporates the mark, merely changing the letter “a” to an “e,” and adding a “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <cetalant.com> domain name. Respondent is not licensed or authorized to use Complainant’s CATALENT mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the at-issue domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the domain name resolves to a parked website. Furthermore, Respondent uses an email address associated with the domain name to perpetrate a phishing scheme.
Respondent registered and uses the <cetalant.com> domain name in bad faith. Respondent uses an email address in furtherance of a phishing scheme. Respondent also fails to actively use the disputed domain name. Furthermore, Respondent has engaged in typosquatting and registered the domain name with a privacy service. Finally, Respondent had actual or constructive knowledge of Complainant’s rights in the CATALENT mark prior to registering the at-issue domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the CATALENT mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the CATALENT trademark.
Respondent uses the <cetalant.com> domain name to host email addresses which facilitate Respondent passing itself off as Complainant in furtherance of a phishing scheme to economically defraud third parties.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain is confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO trademark registration for its CATALENT mark. Such registration is sufficient to demonstrate Complainant’s rights in the CATALENT mark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
Respondent’s <cetalant.com> domain name contains an obvious misspelling of Complainant’s CATALENT trademark followed by the top-level domain name “.com.” The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish the domain name from the CATALENT trademark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <cetalant.com> domain name is confusingly similar to Complainant’s CATALENT trademark. See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (“Respondent arrives at each of the disputed domain names by merely misspelling each of the disputed domain names and adding the gTLD ‘.com.’ This is insufficient to distinguish the disputed domain names from Complainant’s trademark.”).
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).
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.
The WHOIS information for <cetalant.com> identifies the domain name’s registrant as “Isabel Kluge” and the record before the Panel contains no evidence that tends to prove that Respondent is otherwise commonly known by the <cetalant.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <cetalant.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”).
Additionally, Respondent uses the <cetalant.com>domain name to pass itself off as Complainant in furtherance of a phishing scheme. Respondent uses email from <cetalant.com> to impersonate Complainant’s employees. As part of Respondent’s ruse, attaches bogus letters and invoice to the phony email and engages the recipient in dialog concerning fake invoices in an attempt to fraudulent collect payments that are not owed. Respondent’s use of the at-issue domain name in furtherance of phishing is not indicative of any rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”); See Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA1403001550388 (Forum May 5, 2014) (“Respondent is using the domain name in emails to various IT hardware suppliers in an attempt to impersonate Complainant and defraud its customers. The domain name also resolved to a website similar to Complainant's website. The Panel found that such actions precluded a bona fide offer or fair use.”).
Given the forgoing, Complainant satisfies its initial burden and shows Respondent’s lack of rights and legitimate interests in the at-issue domain name under Policy ¶4(a)(ii).
The at-issue domain name was registered and was being used in bad faith. As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above regarding rights and legitimate interests, Respondent uses the <cetalant.com> domain name to pass itself off as Complainant in bogus email so that it might defraud the emails’ recipients. Respondent’s use of the at-issue domain name to facilitate economic fraud demonstrates bad faith registration and use of the domain name under Policy ¶ 4(a)(iii). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use).
Next, 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 the trademark of another and then uses the resulting string in a domain name hoping that internet users will either: 1) inadvertently type the malformed string when searching for products or services related to the domain name’s target trademark; and/or 2) in viewing the domain name will confuse the domain name with its target trademark. The domain name registrant ultimately desires to exploits the confusion it created by inappropriately capitalizing on the trademark’s goodwill. In creating the at-issue domain name Respondent misspells Complainant’s trademark by changing its first “a” to an “e.” Respondent then uses the domain name to host email pretending to be from Complainant’s employee so that it may attempt to collect on sham invoices. Respondent’s typosquatting, in itself, indicates bad faith under Policy ¶ 4(a)(iii). See 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)); see also, Artemis Marketing Corp. v. ICS INC et al, WIPO Case No. D2019-0141 (Apr. 8, 2019) (“The altering of one or just a few characters is the very nature of typosquatting”).
Finally, Respondent had actual knowledge of Complainant’s rights in the CATALENT mark when it registered <cetalant.com> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark as well as from Respondent’s pretending to be Complainant in email from the <cetalant.com> domain name. Indeed, Registering and using a domain name containing a well-known trademark such as Complainant’s CATALENT mark makes it inconceivable that Respondent was unaware of such trademark when it registered the confusingly similar <cetalant.com> domain name. Registering and using a confusingly similar domain name with knowledge of Complainant’s rights in such domain name shows bad faith registration and use pursuant to Policy ¶4(a)(iii). See 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); see also, 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cetalant.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 2, 2019
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