Catalent Pharma Solutions, Inc. and R. P. Scherer Technologies, LLC v. Kenna Jones
Claim Number: FA2105001949075
Complainants are Catalent Pharma Solutions, Inc. and R. P. Scherer Technologies, LLC (“Complainant”), represented by Vanessa A. Ignacio of Lowenstein Sandler LLP, New Jersey, USA. Respondent is Kenna Jones (“Respondent”), Wyoming, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <catalentcareers.com>, registered with Wild West Domains, 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.
Complainants submitted a Complaint to the Forum electronically on May 28, 2021; the Forum received payment on May 28, 2021.
On June 1, 2021, Wild West Domains, LLC confirmed by e-mail to the Forum that the <catalentcareers.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 June 3, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 23, 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@catalentcareers.com. Also on June 3, 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 June 25. 2021, pursuant to Complainants’ 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.
Complainants request that the disputed domain name be transferred from Respondent to Complainant. They do not identify which Complainant.
A. Complainant
Complainants claim rights in the CATALENT mark established by ownership of the trademark and service mark registrations set out below and extensive international use of the mark in their business that employs approximately 11,000 employees worldwide and holds approximately 1,200 patents and patent applications in advanced delivery, drug and biologics formulation, and manufacturing. Complainants assert that they produce more than 70 billion doses for nearly 7,000 customer products each year.
Complainants allege that the disputed domain name is confusingly similar to the CATALENT mark in which they have rights as the disputed domain name incorporates the mark in its entirety merely adding the term “careers”.
Complainants argue that the addition of the descriptive term to the CATALENT mark does not create a distinct domain name, but instead renders the disputed domain name confusingly similar to the complainant’s marks. See Continental Airlines Inc. v. Carolyn Reeves, FA0805001183179 (Forum June 16, 2008) (finding “that the addition of the generic term ‘careers,’ fails to create a distinct domain name”).
Complainants allege that Respondent has no rights or legitimate interests in the disputed domain name which it is argued was registered on May 8, 2021. well after Complainants had established rights in the CATALENT mark in 2007.
Complainants assert that CATALENT is an arbitrary term which has no meaning outside its use as a means to identify Complainants as a source of their products and services.
Complainants assert that Respondent has been granted no license or other rights to use the CATALENT mark as part of any domain name or for any other purpose and Complainants are in no way associated or affiliated with Respondent. Moreover, the Whois record does not identify the domain name registrant or registrant organization.
It is further contended that upon information and belief, Respondent has not used the disputed domain name nor has it made any preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Upon information and belief, Respondent itself neither offers goods nor services.
Referring to a screen capture submitted in an annex to the Complaint, Complainants submit that the disputed domain name currently resolves to a parked page.
Complainants further allege that upon information and belief, the disputed domain name has been used to send emails purporting to come from Complainants’ employee, a recruiter named Emily, to pass itself off as Complainants to “phish” for personal information while purporting to contact prospective job candidates and solicit personal and financial information by fraud.
Complainants submit that such use of the disputed domain name, phishing for personal and financial information is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use pursuant to Policy. Panels have found that the use of a domain name to fraudulently acquire financial information is evidence of a lack of rights and legitimate interests. See Allianz of Am. Corp. v. Bond, FA 690796 (Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to UDRP ¶ 4(c)(iii)).
Complainants then contend that the disputed domain name has been registered and is being used in bad faith arguing that Respondent had actual knowledge of Complainants’ rights in the CATALENT mark prior to registering the disputed domain name because Respondent deliberately chose a domain name with the CATALENT mark and the cover of legitimacy to its phishing scheme. Respondent’s choice to register the disputed domain name adding only the generic term “careers” to the CATALENT mark is a clear indication of the intention to mislead internet users.
Additionally, Complainants argue that it is indisputable that Respondent knew of Complainants’ business because Respondent used the infringing domain to impersonate a named employee of Complainants, sending fraudulent emails, using her name to prospective job candidates in furtherance of a phishing scheme. See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the [] domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith…). Thus, based upon this evidence Respondent had actual knowledge of Complainants’ rights in the CATALENT mark prior to registering the disputed domain name and this also supports a finding of bad faith under Policy ¶ 4(a)(iii).
Furthermore, Complainants argue that Respondent registered and used the disputed domain name in bad faith by sending fraudulent emails in furtherance of phishing scheme shortly after the disputed domain name was registered on May 8, 2021. Complainants contend that phishing schemes are clear evidence of bad faith registration. See, e.g., Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”).
Additionally, Complainants submit that the inactive holding of the disputed domain name by Respondent is evidence of bad faith registration and use.
Moreover, it is inconceivable that any active use by Respondent could be anything but disruptive to Complainants or misleading to internet users. See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of complainant’s business notwithstanding that a respondent’s then present use of it was not immediately commercially competitive); see also 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 [disputed] 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).”).
Finally, Complainants submit that the use of a privacy service to mask Respondent’s identity in registering the disputed domain names is further evidence of its bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The first Complainant is a provider of development solutions and advanced delivery technologies for drugs, biologics and consumer and animal health products and is a wholly owned subsidiary of the second Complainant. The second Complainant is the owner of an international portfolio of trademark and service mark registrations for the CATALENT mark including the following:
· United States service mark CATALENT registration number 3496684 registered on September 2, 2008 on the Principal Register for services in international classes 35, 39, 40, 42
· United States trademark CATALENT registration number 3496 711, registered on September 2, 2008 on the Principal Register for goods in international classes 5, 10.
Complainants have an established Internet presence and own numerous domain names incorporating its CATALENT mark including <catalent.com>, <catalent.us>, <catalent.info>, <catalent.net>, <catalent.org>, <catalent.biz>, <catalentpharma.com>, <catalentpharma.us>, <catalentpharma.org>, <catalentpharma.info>, <catalentpharma.net> and <catalentstore.com> through which Complaint’s goods and services are offered.
The disputed domain name was registered on May 8, 2021 and is being passively held by Respondent, resolving to an inactive web page.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and information provided by the Registrar in response to the enquiry from the Forum seeking confirmation details of the registration of the disputed domain name for the purposes of this Complaint.
Respondent is the registrant of the disputed domain name. Respondent's name is concealed on the published WhoIs by use of a privacy serve and the identity of the registrant was disclosed by the Registrar to the Forum in the course of this proceeding.
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”).
Complainants have made out a clear and convincing, uncontested case that they have rights in the that it has rights in the CATALENT mark established by their ownership of the trademark and service mark registrations described above and extensive use of the mark in their international business.
The disputed domain name consists of the Complainants’ CATALENT mark in its entirety, the word “careers” and the generic Top Level (“gTLD”) domain extension <.com>.
Complainants’ mark is the initial, dominant, and only distinctive element in the disputed domain name. The other elements add no distinguishing character to the disputed domain name.
The word “careers” is descriptive and generic and for the purposes of evaluating confusing similarity between the disputed domain name and Complainant’s mark, the gTLD <.com> extension may be ignored because in the circumstances of this Complaint, on the balance of probabilities it would be recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.
This Panel finds therefore that the disputed domain name is confusingly similar to the CATALENT mark in which Complainant has rights.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out an uncontested prima facie case that Respondent has no rights or legitimate interest in the disputed domain name arguing that
· the disputed domain name was registered on May 8, 2021. well after Complainants had established rights in the CATALENT mark in 2007;
· CATALENT is an arbitrary term which has no meaning outside its use as a means to identify Complainants as a source of their products and services;
· Respondent has been granted no license or other rights to use the CATALENT mark as part of any domain name or for any other purpose;
· Complainants are in no way associated or affiliated with Respondent;
· the WhoIs record does not identify the domain name registrant or registrant organization;
· Respondent neither uses nor has not made preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;
· Respondent itself neither offers goods nor services;
· the screen capture submitted in an annex to the Complaint shows that the disputed domain name currently resolves to a parked page;
· upon information and belief, the disputed domain name has been used to send emails purporting to come from Complainants, to pass itself off as Complainants, to “phish” for personal information while purporting to contact prospective job candidates and solicit personal and financial information by fraud;
· such use of the disputed domain name is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use pursuant to Policy.
It is well established that, as in this case, once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts the respondent to prove such rights or interests.
Respondent has failed to discharge the burden of production in this proceeding. This Panel must therefore find that on the balance of probabilities, Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant has satisfied this Panel that on the balance of probabilities the disputed domain name was registered in bad faith because on the balance of probabilities the registrant was aware of Complainants’ CATALENT mark when the disputed domain name was chosen and registered. CATALENT is a coined term and it is the dominant and distinctive element of the disputed domain name.
On the balance of probabilities therefore the disputed domain name was registered in order to reference and take predatory advantage of Complainants’ goodwill and reputation.
Additionally, Complainant has satisfied this Panel that on the balance of probabilities the disputed domain name is being used in bad faith.
While Complainants have alleged that upon information and belief Respondent has used the disputed domain name for a phishing scheme. they describe in detail an email which they allege was sent, impersonating one of their employees. Yet they have not produced this email in evidence. There is in fact no evidence to support this bare assertion.
Nonetheless, Complainants have adduced uncontested evidence that the disputed domain name is being passively held. It does not resolve to any active web page. Since Respondent has not responded to this Complainant, there is no evidence that Respondent has any bona fide business. The disputed domain name prominently contains Complainants’ distinctive, coined trademark without any explanation. Respondent availed of a privacy service to conceal its identity on the published WhoIs. Taken together these factors prove on the balance of probabilities that Respondent’s inactive and passive holding of the disputed domain name constitutes use in bad faith for the purposes of the Policy.
As this Panel has found that on the balance of probabilities the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in its application for transfer of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Complainants request transfer of the disputed domain name but do not identify which of the two related Complainants should receive the transfer. As it would appear that the second Complainant holds the trademark registrations, it appears appropriate that the domain name should be transferred to that party. If this is not the case it will be easily transferred between the two related parties.
Accordingly, it is Ordered that the <catalentcareers.com> domain name be TRANSFERRED from Respondent to Complainant R. P. Scherer Technologies, LLC.
James Bridgeman SC
Panelist
Dated: June 28, 2021
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