Lonza Ltd. v. Jerome Farfarley
Claim Number: FA2104001941281
Complainant is Lonza Ltd. (“Complainant”), represented by Jake M Christensen of Greer, Burns & Crain LTD, Illinois, USA. Respondent is Jerome Farfarley (“Respondent”), Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lonza.club>, registered with GoDaddy.com, LLC.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 13, 2021; the Forum received payment on April 13, 2021.
On April 13, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <lonza.club> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 April 14, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 4, 2021 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@lonza.club. Also on April 14, 2021, 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 May 7, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant submits that it is one of the world’s leading suppliers to the pharmaceutical and biotech market with revenues of over US$ 2.7 billion in 2020 in the United States alone, and claims rights in the LONZA trademark and service mark established through its ownership of the extensive portfolio of trademark and service mark registrations across the world described below. Additionally, Complainant claims rights in the mark through its extensive international use in its business.
Complainant submits that the disputed domain name is identical and confusingly similar to its LONZA trademark and service mark as it comprises Complainant’s mark in its entirety with the addition of the generic Top-Level (“gTLD”) extension <.club>.
Complainant argues that consumers will likely be confused into believing that there is a connection of source, sponsorship, affiliation or endorsement between Complainant’s LONZA trademark by its use in the disputed domain name.
Complainant contends that it is well established that where a complainant’s trademark is entirely incorporated a domain name at issue, the addition of a gTLD extension, does not prevent a finding of confusing similarity. Citing Novartis AG v. ruanhuanhuan, FA 1574397 (Forum Sept. 19, 2014) (finding that the <alcon.club> domain name is confusingly similar to the ALCON mark, as the addition of the top-level domain “.club” is not enough to defeat the identical nature of the disputed domain name pursuant to Policy ¶ 4(a)(i)).
Complainant then alleges that Respondent has no rights or legitimate interests in the disputed domain name, arguing that Respondent is not commonly known by the disputed domain name and the WHOIS information for the disputed domain name does not indicate that the Respondent is commonly known by the <lonza.club> domain name. Neither is the term LONZA the subject of any trademark application or trademark registration of Respondent.
Further, Complainant asserts that it has not licensed, otherwise permitted or authorized Respondent to use the LONZA trademark or brand, or to apply for any domain name that is confusingly similar to such mark or brand. Citing Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration);
Additionally Complainant argues that the disputed domain name is inactive and contends that panels established under the Policy have previously held that a respondent’s inactive use or passive holding of a disputed domain name is demonstrative of a lack of rights or legitimate interests in a domain name at issue.
Complainant concludes that Respondent’s actions in connection with the disputed domain name are not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does Respondent conduct a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant then alleges that the disputed domain name was registered and is being used in bad faith.
Complainant argues that Respondent was undoubtedly aware of Complainant’s rights in the LONZA mark when it registered the disputed domain name. Citing Digi Int’l v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”).
Complainant adds that the disputed domain name was registered primarily for the purpose of falsely associating itself with Complainant and intentionally creating a likelihood of confusion with the Complainant's LONZA mark.
Furthermore, given Complainant’s rights in the LONZA trademark and Respondent’s lack of actual bona fide or legitimate use of the disputed domain name, bad faith can be reasonably inferred. Citing Compagnie Générale des Etablissements Michelin v. Ryan Ali, D2015-1454 (WIPO Oct. 27, 2015) (panel finding “that, in the absence of any right or legitimate interest and lacking any contrary evidence from the Respondent, the Respondent's registration of a domain name confusingly similar to the Complainant's worldwide well-known trademark suggests opportunistic bad faith”);
B. Respondent
Respondent failed to submit a Response in this proceeding, however Complainant has filed a copy of an email that purports to have been sent by Respondent to Complainant’s representatives after this proceeding was commenced. This is addressed in the Procedural Issue section below.
Complainant is a manufacturer of pharmaceutical, biotech products for which it uses the LONZA trademark and is the owner of an extensive portfolio of trademark registrations for the LONZA trademark across the world including Spain and also including the following United States registrations for which it has provided copies of the registration certificates:
· United States Trademark registration LONZA, registration number 956,300 registered on the Principal Register on April 3, 1973 for good in international classes 1, 2, 4 and 5.
· United States Trademark registration LONZA (stylized) registration number 4,639,815 registered on the Principal Register on November 18, 2014 for goods in international classes 1,2 and 5;
· United States trademark and service mark registration LONZA (stylized) registration number 4,483,125 registered on the Principal Register on February 18, 2014 for goods and services in international classes 9, 35 and 42.
· United States Trademark registration LONZA (stylized) registration number. 5,222,498 registered on the Principal Register on June 13, 2017 for services in international classes 40 and 42;
· United States service mark registration LONZA (stylized), registration number 4,4,922,144 registered on the Principal Register on March 22, 2016 for services in international classes 40, 41 and 42,
Complainant has an established Internet presence and operates a website at <www.lonza.com>.
The disputed domain name was created on March 20, 2021 and is inactive.
The only information about Respondent that is admitted in this proceeding (see Procedural Issue section below) is that which is provided by Complainant, the Registrar’s WhoIs and the information provided by the Registrar in response to the Forum’s request for verification of the registration details of the disputed domain name in the Court of this Proceedings.
The Registrar confirms that Respondent, who availed of a privacy service to conceal his identity on the published WhoIs, is the registrant 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.
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”).
Preliminary Procedural Issue
After commencement of this proceeding, Complainant’s representative has submitted, uninvited, a copy of an email that it received purporting to come from Respondent subsequent to the initiation of these proceedings. As this was not submitted directly to the Forum by Respondent, and as no timely Response has been received, this Panel will not admit the document in this proceeding.
Complainant has submitted clear, convincing, and uncontested evidence that it holds rights in the LONZA trademark and service mark established across the world in its extensive portfolio of registrations described above. It is also shown that it has a global reputation and goodwill in the field of pharmaceutical and biotech products with annual revenues of over US$ 2.7 billion in 2020 in the United States alone.
The disputed domain name is identical to Complainant’s LONZA mark. The generic Top-Level Domain <.club> extension may be ignored for the purposes of comparison, as it would correctly be perceived by Internet users as a necessary technical element in the disputed domain name.
This Panel finds therefore that the disputed domain name is identical to the mark in which Complainant has rights. Complainant has therefore satisfied first element in the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, arguing that
· Respondent is not commonly known by the disputed domain name;
· the WHOIS information for the disputed domain name does not indicate that the Respondent is commonly known by the <lonza.club> domain name;
· neither is the term LONZA the subject of any trademark application or trademark registration of Respondent;
· Complainant asserts that it has not licensed, otherwise permitted or authorized the Respondent to use the LONZA trademark or brand, or to apply for any domain name that is confusingly similar to such mark or brand;
· the website to which the disputed domain name resolves is inactive. under the disputed domain name is inactive which is demonstrative of a lack of rights or legitimate interests in the disputed domain name.
It is well established that in such circumstances where Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, the burden of production shifts to Respondent to establish his rights.
Respondent has failed to discharge the burden and so this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore satisfied the second element in the test in Policy ¶ 4(a)(ii) also.
Complainant has provided evidence of its substantial, well-established reputation in its use of the LONZA mark throughout the world .
Additionally, Complainant owns the domain name <lonza.com> which uses as the address for its active website. On the balance of probabilities therefore, the person who registered the disputed domain name must have been aware of Complainant, its name, mark, trademark, domain name, website, reputation and goodwill when the disputed domain name was chosen and registered.
Since its registration, the disputed domain name has been passively held. This Panel finds that on the balance of probabilities the passive holding of the disputed domain name by Respondent is evidence of registration and use of the disputed domain name in bad faith by Respondent.
Respondent had the opportunity to file a Response but chose not to do so.
Furthermore, in the circumstances of this case, Respondent’s use of a privacy service to conceal his identity supports this finding that the disputed domain was registered and is being used in bad faith.
As this Panel is found that the disputed domain name was registered and used in bad faith, Complainant has succeeded in the third and final element in the test in Policy ¶ 4(a)(iii), and is entitled to succeed in this application.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lonza.club> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: May 10, 2021
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