N.V. Organon and Organon LLC v. Office Agent
Claim Number: FA2303002035428
Complainant is N.V. Organon and Organon LLC (“Complainant”), USA, represented by Meaghan H. Kent of Morgan, Lewis & Bockius LLP, USA. Respondent is Office Agent (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <organonpharmaceuticals.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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on March 10, 2023; Forum received payment on March 10, 2023.
On March 13, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <organonpharmaceuticals.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 March 15, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 4, 2023 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@organonpharmaceuticals.com. Also on March 15, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On April 7, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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.
Preliminary Issue: Multiple Complainants
There are two Complainants in this matter: N.V. Organon and Organon LLC. The relevant rules governing multiple complainants are UDRP Rule 3(a) and Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” 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.” Previous panels have interpreted Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated: It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
Complainant contends that N.V. Organon and Organon LLC are under common control by the same ultimate parent company. Accordingly, the relationship between N.V. Organon and Organon LLC is sufficient to establish a nexus between these corporate entities, which should be treated as a single entity in this proceeding. The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and it decides to treat them all as a single entity in this proceeding. The Complainants will be collectively referred to as “Complainant.”
A. Complainant
i) Complainant,
N.V. Organon and Organon LLC is in the pharmaceutical business. Organon is a global pharmaceutical company dedicated to
women’s health with a foundation of more than 60 medicines and other products.
On June 2, 2021, Organon became an independent company through a spin-off of
Merck & Co., Inc., a New Jersey pharmaceutical corporation formed in 1970. Complainant
asserts rights in the ORGANON mark based upon registration with the United
States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 6,495,744,
registered September 28, 2021). The disputed
domain name is confusingly similar to Complainant’s ORGANON trademark because
it contains the mark in its entirety and adds the generic or descriptive word
“pharmaceuticals” and the generic top-level domain name (“gTLD”) “.com”.
ii) Respondent
does not have rights or legitimate interests in the disputed domain
name. Respondent is not licensed or authorized to use Complainant’s ORGANON
mark and is not commonly known by the disputed domain name. Respondent also
does not use the disputed domain name for any bona fide offering of
goods or services or legitimate noncommercial or fair use. Respondent attempts
passing off as Complainant in furtherance of a phishing scheme. The disputed
domain name redirects to Complainant’s website.
iii) Respondent
registered and uses the disputed domain name in bad faith. Respondent
attempts passing off as Complainant in furtherance of a phishing scheme. Respondent
creates a likelihood of confusion with Complainant for commercial gain.
Respondent registered the disputed domain name using a privacy shield.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on March 7, 2023.
2. Complainant has established rights in the ORGANON mark based upon registration with the USPTO (e.g., Reg. No. 6,495,744, registered September 28, 2021).
3. Respondent attempts passing off as Complainant in furtherance of a phishing scheme.
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”).
Complainant asserts rights in the ORGANON mark based upon registration with the USPTO (e.g., Reg. No. 6,495,744, registered September 28, 2021). Registration of a mark with the USPTO is considered a valid showing of rights under Policy ¶ 4(a)(i). Since Complainant has provided evidence of registration of the ORGANON mark with the USPTO, the Panel finds that Complainant has established rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name <organonpharmaceuticals.com> is confusingly similar to Complainant’s ORGANON trademark because it contains the mark in its entirety and adds the generic or descriptive word “pharmaceuticals” and the gTLD “.com”. Adding or removing generic or descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); see also MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s ORGANON mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain name because Respondent is not licensed or authorized to use Complainant’s ORGANON mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Use of a privacy service evidences a respondent is not commonly known by a disputed domain name. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). The WHOIS information for the disputed domain name lists the registrant as “Office Agent.” Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant contends Respondent also does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent attempts passing off as Complainant in furtherance of a phishing scheme. The Panel finds that Respondent fraudulently used the Complainant’s address and telephone number in registering the disputed domain name. Respondent subsequently used the domain name as an email extension “@organonpharmaceuticals.com” to send fraudulent emails impersonating the Complainant’s Business Technology Director. The Panel finds that using the disputed domain name that is confusingly similar to Complainant’s mark to send emails impersonating Complainant does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use. Furthermore, passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name); see also Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”). Complainant provides copies of Respondent’s emails to Apple, showing attempts to purchase MacBook devices and AppleCare.
Thus, the Panel finds Respondent does not provide a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues Respondent attempts passing off as Complainant in furtherance of a phishing scheme. Using a disputed domain name as an e-mail address to pass itself off as a complainant in a phishing scheme is evidence of bad faith registration and use under Policy ¶¶ 4(b)(iv) & 4(a)(iii) See Smiths Group plc v. Snooks, FA 1372112 (Forum Mar. 18, 2011) (finding that the respondent’s attempt to impersonate an employee of the complainant was evidence of bad faith registration and use under Policy ¶ 4(a)(iii); see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”); see also Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA 1550388 (Forum May 5, 2014) (finding that using the domain name to send e-mails to various IT hardware suppliers in an attempt to impersonate Complainant and to defraud such suppliers demonstrates a lack of a bona fide offering of goods or services or legitimate non-commercial fair use). The Panel recalls Complainant provides copies of Respondent’s emails to Apple, showing attempts to purchase MacBook devices and AppleCare. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iv) & 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <organonpharmaceuticals.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: April 14, 2023
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