Akero Therapeutics, Inc. v. Akero Pharma
Claim Number: FA2306002048145
Complainant is Akero Therapeutics, Inc. (“Complainant”), USA, represented by Tiffany D. Gehrke of Marshall, Gerstein & Borun LLP, USA. Respondent is Akero Pharma (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <akeropharma.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 June 8, 2023; Forum received payment on June 8, 2023.
On June 8, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <akeropharma.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 June 12, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 3, 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@akeropharma.com. Also on June 12, 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 July 11, 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.
A. Complainant
i) Complainant, Akero Therapeutics, Inc. is a biopharmaceutical company focused on developing medicines that reverse the course of serious metabolic disease and transform patients’ lives. Complainant has rights in the AKERO mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 6,228,033 registered on December 22, 2020). The disputed domain name is confusingly similar to Complainant’s AKERO mark because it incorporates the mark in its entirety and adds the generic word “pharma” and the generic top-level domain name (“gTLD”) “.com.”
ii) Respondent has no rights or legitimate interest in the disputed domain name. Complainant did not authorize Respondent to use the AKERO trademark. Respondent is not commonly known by the disputed domain name. Respondent’s unauthorized use of the AKERO trademark, redirection of the domain to Complainant’s website, and configuration of an email server/address in an attempt to pass itself off as Complainant cannot be deemed a bona fide offering of goods or services.
iii) Respondent registered and uses the disputed domain name in bad faith because Respondent redirects the disputed domain to Complainant’s website; Respondent intentionally attempted to disrupt Complainant’s business and divert users away from Complainant’s legitimate business; Respondent intentionally attempts to attract, for commercial gain, Complainant’s customers by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name; and Respondent was aware of Complainant’s trademark rights.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain name was registered on May 3, 2023.
2. Complainant has established rights in the AKERO mark based upon registration with the USPTO (e.g., Reg. No. 6,228,033 registered on December 22, 2020).
4. Respondent redirects the disputed domain to Complainant’s website.
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 AKERO mark based upon registration with the USPTO (e.g., Reg. No. 6,228,033 registered on December 22, 2020).
Registration of a mark with the USPTO is a valid showing of rights under Policy ¶ 4(a)(i). Since Complainant has provided evidence of registration of the AKERO 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 <akeropharma.com> is confusingly similar to Complainant’s AKERO trademark because it incorporates the mark in its entirety and adds the generic word “pharma” and the gTLD “.com”. The addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top-level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s AKERO 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 contends that Respondent has no rights or legitimate interest in the disputed domain name. Complainant did not authorize Respondent to use the AKERO trademark. Respondent 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). 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 Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug, 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). The unmasked WHOIS information for the disputed domain name lists the registrant as “Akero Pharma.” The Panel notes that the address provided in the WHOIS information for the disputed domain name is Complainant’s business address, which indicates that there is no realty of the name “Akero Pharma.” Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant contends that Respondent’s unauthorized use of the AKERO trademark, redirection of the domain to Complainant’s website, and configuration of an email server/address in an attempt to pass itself off as Complainant cannot be deemed a bona fide offering of goods or services. The Panel finds that Respondent’s use of the disputed domain name to redirect to Complainant’s website is likely to confuse consumers as to the relationship between Complainant and Respondent. A simple redirect or forwarding of a domain name to Complainant’s controlled website does not grant Respondent rights or a legitimate interest in the disputed domain name and it cannot constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under the UDRP. See Altavista Co. v. Brunosousa , D2002-0109 (WIPO April 3, 2002) (where the panel found that respondent “has no right or legitimate interest to use an otherwise deceptive trademark . . . even if it is directed to the legitimate owner of the trademark); see also MySpace, Inc. v. Gomez, D2007-1231 (WIPO Oct. 17, 2007) (finding that “the linking of the disputed domain name to the Complainant’s commercial website is not a legitimate non-commercial or fair use of the domain name” and that the respondent’s use “cannot give rise to a right or legitimate interest in the disputed domain name”). Further, Respondent’s configuration of email servers at the disputed domain indicates an intent to send emails using an <@akeropharma.com> email address. Such use can only be intended to deceive customers into routing business to Respondent and away from Complainant. Complainant provides a copy of the Registrar email identifying the registrant, WHOIS record, Mxtoolbox record, and a May 4, 2023 capture showing the redirection. The Panel therefore finds that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per 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 contends that Respondent registered and uses the disputed domain name in bad faith on the grounds that Respondent redirects the disputed domain to Complainant’s website; Respondent configurated an email server to allow the sending of emails using <@akeropharma.com>; Respondent intentionally attempted to disrupt Complainant’s business and divert users away from Complainant’s legitimate business; and Respondent attempts to attract, for commercial gain, Complainant’s customers by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. The Panel agrees and finds that Respondent’s redirection of customers from the disputed domain name to Complainant’s legitimate website is likely to create confusion as to the association of the parties, instill mistaken confidence in Internet users that the disputed domain name is a reliable website for consumers interested in Complainant’s offerings, and ultimately to take economic advantage of future consumers through Respondent’s efforts to legitimize the disputed domain name. Respondent’s configuration of an email server, allowing the sending of <@akeropharma.com> email messages to consumer evidences Respondent’s intent to trade on the likelihood of confusion. See McKinsey Holdings, Inc. v. Mgr. Jakub Bystron, FA 1330650 (Forum July 23, 2010) (finding that Respondent's use of the <mckinsey.us> domain name to resolve to Complainant’s official website was further evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see MySpace, Inc. v. Gomez, D2007-1231 (WIPO Oct. 17, 2007) (finding bad faith when “Respondent has been using the disputed domain name to link to the Complainant’s own website. Inherent in that conduct is the risk that the Respondent may at any time cause Internet traffic to re-direct to a website that is not that of, or associated with, the Complainant.”). The Panel therefore finds that Respondent attempted to commercially benefit off Complainant’s mark in bad faith for the purposes of Policy ¶ 4(b)(iv).
Complainant further contends that at the time of registration, Respondent was aware of Complainant’s trademark because Respondent’s only use of the disputed domain name was to redirect the domain to Complainant’s website and configure an email server. Further, Registrant provided the domain register with fictious contact information by using Complainant’s contact details, with the exception of the phone number and email address. The Panel infers that Respondent had knowledge of Complainant’s rights in the AKERO mark at the time of registering the disputed domain name, due to the notoriety of Complainant’s mark, the redirection of the disputed domain name to Complainant’s website, and the use of fictious contact information by using Complainant’s address. The Panel thus finds that Respondent registered the disputed domain in bad faith under Policy ¶ 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 <akeropharma.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: July 13, 2023
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