AmerisourceBergen Services Corporation v. We Host
Claim Number: FA2010001916197
Complainant is AmerisourceBergen Services Corporation ("Complainant"), represented by Jason Caskey of Kutak Rock LLP, Nebraska, USA. Respondent is We Host ("Respondent"), Uganda.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amerisourcebergens.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 7, 2020; the Forum received payment on October 7, 2020.
On October 9, 2020, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by email to the Forum that the <amerisourcebergens.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com ("Registrar") and that Respondent is the current registrant of the name. Registrar has verified that Respondent is bound by Registrar's 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 October 12, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 2, 2020 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@amerisourcebergens.com. Also on October 12, 2020, the Written Notice of the Complaint, notifying Respondent of the email 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 November 6, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 provides pharmaceutical-related products and services under the AMERISOURCEBERGEN mark. Complainant owns various U.S. trademark registrations for the mark with first use dates as early as 2001.
The disputed domain name <amerisourcebergens.com> was registered in January 2020 and was used for a website that prominently displayed Complainant's mark and purported to provide the same services as Complainant. Complainant brought these facts to the attention of Registrar and requested that it transfer the domain name to Complainant or permit Complainant to purchase it. Registrar notified Complainant in June 2020 that it had suspended the domain name due to its use for "phishing activities," and that the domain name would remain suspended until its expiration in January 2021. Registrar declined to transfer the domain name to Complainant or permit Complainant to purchase it, but invited Complainant to gain control of the domain name by filing a complaint under the Policy. Complainant asserts that there is no plausible circumstance under which a party other than Complainant could legitimately register or use the disputed domain name.
Complainant contends on the above grounds that the disputed domain name <amerisourcebergens.com> is confusingly similar to its AMERISOURCEBERGEN mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was 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 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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <amerisourcebergens.com> incorporates Complainant's registered AMERISOURCEBERGEN trademark, adding only a letter "s" and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., CommScope, Inc. of North Carolina v. Zhuang Yan / WANGYONG, FA 1764026 (Forum Feb. 14, 2018) (finding <commscopes.com> confusingly similar to COMMSCOPE); Servpro Industries, Inc. & Servpro Intellectual Property, Inc. v. Patricia L'Hommedieu, FA 1560946 (Forum July 2, 2014) (finding <servpros.com> confusingly similar to SERVPRO); Amerisource Heritage Corp. v. N.A. c/o Domain Admin, FA 647054 (Forum Mar. 29, 2006) (finding <amerisourcebergan.com> confusingly similar to AMERISOURCEBERGEN). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization. Its only apparent use has been for a website that prominently displayed Complainant's mark and purported to offer the same services as Complainant. Such use does not give rise to rights or legitimate interests in a domain name under the Policy. See, e.g., Dell Inc. v. Nitin Makkar / JKM Global Services, FA 1863628 (Forum Oct. 16, 2019) (finding lack of rights or interests in similar circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
The disputed domain name incorporates Complainant's registered mark without authorization. Its only apparent use has been for a website that prominently displayed Complainant's mark and purported to offer the same services as Complainant. The domain name was subsequently suspended by Registrar due to its use for "phishing activities." (Complainant refers to Respondent as "the previous registrant" and to Registrar as "Respondent," but it does not appear to the Panel that ownership of the domain name has changed hands since its initial registration in January 2020, as a result of the suspension or otherwise.)
Respondent's conduct is indicative of bad faith registration and use under the Policy. See, e.g., Dell Inc. v. Nitin Makkar / JKM Global Services, supra. The fact that Respondent's active use of the domain name has been interrupted due to the suspension does not preclude a finding of bad faith use. See, e.g., Ideal Industries, Inc. v. Amanda, Test Equipment Distributors LLC, D2017-0662 (WIPO May 4, 2017) (finding bad faith use of domain name that had been suspended by registrar prior to initiation of UDRP proceeding). Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amerisourcebergens.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: November 9, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page