Lonza Ltd. and Capsugel Belgium NV v. GDS souza
Claim Number: FA2106001952458
Complainants are Lonza Ltd. and Capsugel Belgium NV (together “Complainants”), represented by Jake M Christensen of Greer, Burns & Crain LTD, Illinois, USA. Respondent is GDS souza (“Respondent”), Brazil.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <capsugel-lonza.com> and <capsugellonza.com>, registered with Hosting Concepts B.V. d/b/a Registrar.eu.
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 June 24, 2021; the Forum received payment on June 24, 2021.
On June 26, 2021, Hosting Concepts B.V. d/b/a Registrar.eu confirmed by e-mail to the Forum that the <capsugel-lonza.com> and <capsugellonza.com> domain names are registered with Hosting Concepts B.V. d/b/a Registrar.eu and that Respondent is the current registrant of the names. Hosting Concepts B.V. d/b/a Registrar.eu has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Registrar.eu 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 29, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 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@capsugel-lonza.com, postmaster@capsugellonza.com.
Also on June 29, 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 July 22, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC as Panelist.
On the same day, the Forum at the request of the Panel, issued a request for further information, specifically requesting Complainants to nominate which of them were to receive the transfer of the disputed domain name if they were successful. Complainants were allowed until July 23, 2021 to Respond, Respondent was allowed until July 26, 2021 to make submissions.
On July 23, Complainants responded nominating the first named Complainant.
No timely submissions were received from Respondent.
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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
This Panel finds that the uncontested evidence supported by a formal verifying declaration by the Global Head of Intellectual Property of Complainants’ mutual parent corporation, Lonza Group Ltd., establishes that Complainants are each subsidiaries of the mutual parent corporation. In such circumstances this Panel accepts that Complainants are entities which have sufficient nexus and can each claim to have rights to both of the disputed domain names listed in the Complaint.
A. Complainant
The Complaint explains that Complainants are each subsidiaries of the same parent company Lonza Group Ltd.
The Complaint submits that the LONZA mark has been used since as early as 1955 and that the Complainants’ group has since grown to achieve a market revenue of US$ 2.7 billion in 2020 in the United States alone. The Complaint adds that Complainant’s group adopted the trademark CAPSUGEL as early as 1979, which it uses for a range of dosage forms for the biopharmaceutical and consumer health and nutrition industries.
The Complaint submits that the disputed domain names are nearly identical to the LONZA and CAPSUGEL trademarks in which Complainants have rights.
It is contended that when viewed in their entirety the disputed domain names <capsugel-lonza.com> and <capsugellonza.com> each combine both of the LONZA and CAPSUGEL trademarks, with the mere addition of a hyphen in the domain name <capsugel-lonza.com>, and the generic Top-Level Domain (“gTLD”) extension <.com> in both instances.
It is argued that that it is well established that where a complainant’s trademark is recognizable within the disputed domain name, the addition of other terms does not prevent a finding of confusing similarity.
Furthermore, it is submitted in the Complaint that the mere addition of the hyphen in the disputed domain name <capsugel-lonza.com> “is not significant when examining whether the domain name is identical or confusingly similar to the Complainant’s trademark under the Policy, paragraph 4(a)(i).” See Worldpay Limited v. pay world / PrivacyProtect.org, D2014-0018 (WIPO Mar. 19, 2014) (holding that the “addition of a hyphen [between ‘world’ and ‘pay’] does not distinguish the disputed domain name from the [c]omplainant’s WORLDPAY trademark.”).
Likewise, it is contended that the addition of a gTLD <.com> extensions do not prevent a finding of confusing similarity. See Capital One Financial Corp. v. Darifa Azzouzi, FA1905001842810 (Forum Jun. 6, 2019) (“[t]he disputed domain name fully incorporates Complainant’s CAPITAL ONE mark, merely adding the gTLD ‘.icu’…the addition of a gTLD is not sufficient to overcome a confusingly similar analysis per Policy ¶ 4(a)(i)”).
The Complaint alleges that Respondent has no rights or legitimate interests in the disputed domain names, arguing that Respondent is not commonly known by the disputed domain names, so its actions do not fall within Policy ¶ 4(c)(ii). The WHOIS information for the disputed domain names does not indicate that Respondent is commonly known by the <capsugel-lonza.com> and <capsugellonza.com> domain names, and the terms LONZA and/or CAPSUGEL are not applied for or registered trademarks of Respondent.
The formal declaration attached to the Complaint, avers that Complainants have not licensed, otherwise permitted or authorized the Respondent to use the
LONZA and/or CAPSUGEL trademarks or brands, or to apply for any domain name that is confusingly similar to such mark or brand.
Furthermore, Respondent has no rights in the LONZA and/or CAPSUGEL marks.
Referring to screen captures of the web pages to which the disputed domain names resolved on June 22, 2021, which are annexed as exhibits to the Complaint, the Complaint further alleges that the disputed domain names resolve to inactive web pages.
The Complaint submits that panels established under the Policy have previously held that such inactive use or passive holding of a disputed domain name is demonstrative of a respondent’s lack of rights or legitimate interests in the domain name in issue, pursuant to Policy ¶¶ 4(c)(i) and (iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (“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).”).
It is argued that therefore that Respondent’s actions in connection with the disputed domain names 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).
The Complaint also submits that the disputed domain names were registered and are being used in bad faith.
Complainants contend that the notoriety of the LONZA and CAPSUGEL marks which are incorporated in combination in the disputed domain names, and Respondent’s passive holding of the disputed domain names show that Respondent had actual knowledge of Complainant’s rights in the prior to registering the disputed domain names. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”).
The Complaint adds that given Complainants’ rights in the LONZA and CAPSUGEL trademarks and Respondent’s lack of actual bona fide or legitimate use of the disputed domain names, bad faith registration can be reasonably inferred. See 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”).
Referring to the abovementioned screen captures of the inactive web pages to which the disputed domain names resolve, the Complaint further contends that Respondent’s failure to make an active use of the disputed domain names is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”); Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
C. Additional Submissions
At the request of the Panel, Complainants clarified that their application is to have the disputed domain name transferred to the first named Complainant.
Complainants are designers and manufacturers of pharmaceutical, biotech and healthcare products for which they use the LONZA and CAPSUGEL trademarks. They are part of a group of corporations and share a mutual parent corporation within the group.
The first named Complainant owns a portfolio of trademark and service registrations for the LONZA 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 service mark 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 4,922,144 registered on the Principal Register on March 22, 2016 for services in international classes 40, 41 and 42.
An uncontested formal declaration of counsel, attached to the Complaint avers inter alia that Complainants are also the owners of
· United States service mark registration CAPSUGEL registration number 1,174,776 registered on the Principal Register on October 27, 1981 for goods and services in international class 40; and
· United States trademark registration CAPSUGEL registration number 3,877206 registered on the Principal Register on November 16, 2010 for goods and services in international class 5.
Complainants have an established Internet presence and operate websites at <www.lonza.com> and <www.capsugel.com>.
The WhoIs records for the disputed domain names state that they were both created on May 13, 2021 and May 14, 2021. These different dates presumably are a consequence of time zone differences because the record shows that they were each created close to midnight. As Complainants’ rights long predate the creation of the disputed domain names, nothing turns on this point.
The disputed domain names are both inactive and resolve to parked pages which advertise inter alia website hosting services.
The only information available about Respondent in this proceeding is that which is provided in the Complaint, 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 names in the course of this proceeding.
The Registrar confirms that Respondent, who availed of a privacy service to conceal its identity on the published WhoIs, is the registrant of the disputed domain names.
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 uncontested evidence proves that the first named Complainant is the owner of the above-listed United States registrations for the LONZA mark. The registration certificates for the above-listed CAPSUGEL marks state that a third-party Delaware corporation is the owner, however the formal declaration filed by counsel of Complainants’ parent corporation states that the registrations are now owned by Complainants. Also noting that the word “Capsugel” is incorporated in the name of the second named Complainant, this Panel accepts the uncontested averment and finds that Complainants have rights in both LONZA and CAPSUGEL marks,
The disputed domain names <capsugel-lonza.com> and <capsugellonza.com> each combine both the LONZA and CAPSUGEL trademarks in their entirety and without alteration, with the mere addition of a hyphen in the domain name <capsugel-lonza.com>.
The mere addition of a hyphen in the disputed domain name <capsugel-lonza.com> is not significant and adds no distinguishing character to the subject domain name.
Both marks are clearly identifiable within the disputed domain names. The combination imputes a relationship between the two marks and is therefore likely to create confusion among Internet users.
For the purposes of evaluating confusing similarity the gTLD <.com> extension may be ignored in the circumstances of this Complaint because as a Top-Level Domain extension, 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 each of the disputed domain names are confusingly similar to both the LONZA and CAPSUGEL trademarks in which Complainants have rights and Complainants have therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainants have made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that
· Complainants have rights in the LONZA and CAPSUGEL marks that are incorporated in the disputed domain names;
· Complainants have not licensed, otherwise permitted or authorized the Respondent to use the LONZA and/or CAPSUGEL trademarks or brands, or to apply for any domain name that is confusingly similar to such mark or brand;
· Respondent has not made any actual bona fide or legitimate use of the disputed domain names,
· Respondent is not commonly known by the disputed domain names;
· the WHOIS information for the disputed domain names does not indicate that Respondent is commonly known by the <capsugel-lonza.com> and <capsugellonza.com> domain names;
· the terms LONZA and/or CAPSUGEL are not the subject of any trademark applications or registered trademarks of Respondent;
· the screen captures of the web pages to which the disputed domain names resolve which are annexed as exhibits to the Complaint, show that the disputed domain names are inactive and are being passively hold by Respondent;
· such passive holding does not create rights or legitimate interests in the disputed domain names;
· Respondent’s actions in connection with the disputed domain names do not amount to 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).
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 that burden and therefore this Panel must find that on the balance of probabilities, Respondent has no rights or legitimate interests in the disputed domain names.
Complainants have therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The uncontested evidence shows that on the balance of probabilities, the registrant of the disputed domain names had actual knowledge of Complainants, their group of companies and their rights in and use of the LONZA and CAPSUGEL marks when the disputed domain names were chosen and registered.
The evidence shows that Complainants’ group of companies have an extensive, well established international reputation.
Each of the disputed domain names is a combination of Complainants’’ LONZA and CAPSUGEL marks. Each of these marks is distinctive in its own right and it is most improbable that the combination was chosen and registered without actual knowledge of Complainants. On the balance of probabilities, the disputed domain names were registered in bad faith with the intention of creating a reference to Complainants’ marks and business activities.
This Panel finds therefore that the disputed domain names were each chosen and registered in bad faith with Complainant’s mark in mind in order to create the impression of an association between each of the disputed domain names and Complainants’ businesses.
The abovementioned screen captures are uncontested evidence that the disputed domain names each resolve to inactive web pages which advertise the host’s website related services. There is no obvious relationship between the advertised services and Respondent.
Given the extensive reputation of the marks in which Complainants’ have rights which are incorporated in the disputed domain names, the distinctive character of each of those marks, that it is implausible that the registrant unknowingly chose and registered these combinations of two distinctive marks owned by the same corporation and that Respondent has failed to file a Response, this Panel finds that the passive holding of the disputed domain names by Respondent constitutes bad faith use under the Policy.
As this Panel has found that on the balance of probabilities the disputed domain names were registered and are being used in bad faith, Complainants have therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and are entitled to succeed in its application for transfer of the disputed domain name.
This Panel therefore directs that the disputed domain names be transferred to the first named Complainant as requested.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capsugel-lonza.com> and <capsugellonza.com> domain names be TRANSFERRED from Respondent to Complainant Lonza Ltd.
James Bridgeman SC Panelist
Dated: July 27, 2021
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