N.V. Organon and Organon LLC v. Lei Shi
Claim Number: FA2307002054780
Complainant is N.V. Organon and Organon LLC (“Complainant”), represented by Meaghan H. Kent of Morgan, Lewis & Bockius LLP, US. Respondent is Lei Shi (“Respondent”), CN.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <organonaplywithin.com>, <organonapplywitin.com>, and <organonapplywith.com>, registered with Cloud Yuqu LLC.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to Forum electronically on July 26, 2023; Forum received payment on July 26, 2023.
On July 27, 2023, Cloud Yuqu LLC confirmed by e-mail to Forum that the <organonaplywithin.com>, <organonapplywitin.com>, and <organonapplywith.com> domain names are registered with Cloud Yuqu LLC and that Respondent is the current registrant of the names. Cloud Yuqu LLC has verified that Respondent is bound by the Cloud Yuqu 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 July 27, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint in both English and Simplified Chinese, setting a deadline of August 16, 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@organonaplywithin.com, postmaster@organonapplywitin.com, postmaster@organonapplywith.com. Also on July 27, 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 in both English and Simplified Chinese.
On August 17, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDINGS
Prior to discussing the three elements of the Policy, the Panel must decide on the language of the proceedings. The Registration Agreement is written in Simplified Chinese, thereby making the language of the proceedings Simplified Chinese.
Pursuant to UDRP Rule 11(a), the Panel has the authority to determine a different language for the proceedings, having regard to the circumstances of the case. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Pursuant to Rule 10(b), Respondent must be given a fair opportunity to present its case. Pursuant to Rule 10(c), the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
In the present case, Respondent has received the Written Notice and Commencement Notification in Simplified Chinese and has chosen not to respond to the Complaint. The resolving websites are in English. Pursuant to Rule 11(a), having regard to the circumstances of the case, the Panel determines that fairness and justice to both parties, and due expedition, are best satisfied by conducting the remainder of the proceedings in English. See H-D U.S.A., LLC v. Yoshihiro Nakazawa, FA 1736477 (Forum July 21, 2017); see also UBS AG v. ratzel laura, FA 1735687 (Forum July 14, 2017).
PRELIMINARY ISSUE: MULTIPLE 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.”
There are two Complainants in this matter: N.V. Organon and Organon LLC. Complainants argue that N.V. Organon and Organon LLC are under common control by the same ultimate parent company.
Previous panels have interpreted the 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.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
The Panel finds that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and thus it will treat them as a single entity in this proceeding.
A. Complainant
Complainant states that it is a global pharmaceutical company dedicated to women’s health with a foundation of more than 60 medicines and other products across a range of areas including pain management, reproductive health, contraception, psychiatry, hormone replacement therapy, and anesthesia. Complainant employs approximately 9,000 individuals. Complainant provides information about its products and services online through its website located at <www.organon.com>. Complainant’s total revenue exceeded 6 billion dollars in 2021 and 2022. On June 2, 2021, Complainant 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 mark ORGANON through its registration in the United States in 2021.
Complainant alleges that the disputed domain names are confusingly similar to its ORGANON mark, as they incorporate the mark in its entirety and merely add misspellings of the generic/descriptive terms “apply” and “within”, or “apply with”, together with the “com” generic top-level domain (“gTLD”).
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use the ORGANON mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the resolving websites display pay-per-click advertising hyperlinks for products and services not related to Complainant.
Further, says Complainant, Respondent registered and is using the disputed domain names in bad faith. As shown by a previous UDRP case, the disputed domain names were registered to perpetrate a fraudulent phishing scheme involving the impersonation of Complainant’s employees to elicit personal information from vulnerable job applicants. Respondent registered and uses the disputed domain names intentionally to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s marks. Respondent had actual knowledge of Complainant’s rights in the ORGANON mark at the time it registered and subsequently used the disputed domain names. Respondent used a privacy protection service.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark ORGANON and uses it to market pharmaceutical products.
Complainant’s rights in its mark date back to 2021.
The disputed domain names were registered in 2023.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent is using the disputed domain names to resolve to websites containing advertising links for products and services not related to Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 disputed domain names incorporate Complainant’s ORGANON mark in its entirety and merely add misspellings of the generic/descriptive terms “apply” and “within”, or “apply with”, together with the “com” generic top-level domain (“gTLD”). The addition of a generic or descriptive term (even if misspelled) and a gTLD to a mark is generally insufficient to negate confusingly similar under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Milliman, Inc v. Domain Administrator, See PrivacyGuardian.org/Zhichao Yang, D2018-2178 (WIPO, Nov. 17, 2018) (finding that the addition of “benefis”, “bennefits”, “bnefits”, and “benefits” does not distinguish a disputed domain name from the complainant’s trademarks and ordering the transfer of <millimanbenefis.com>, <millimanbennefits.com>, <millimanbnefits.com>, and <millimannbenefits.com>); see also Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”). Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its ORGANON mark in any way. Respondent is not commonly known by the disputed domain names: under Policy ¶ 4(c)(ii), WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). Here, the WHOIS information of record identifies the registrant as “Lei Shi”. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not been commonly known by the disputed domain names.
The resolving websites display advertising hyperlinks for products and services not related to Complainant. Use of a domain name to resolve to a webpage displaying third party hyperlinks is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Bloomberg Finance L.P. v. Syed Hussain / IBN7 Media Group, FA 1721384 (Forum Apr. 26, 2017) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name). The Panel therefore finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services, or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Complainant alleges that the disputed domain names were registered to perpetrate a fraudulent phishing scheme involving the impersonation of Complainant’s employees to elicit personal information from vulnerable job applicants. In support, it cites a UDRP case for the domain name <organonapplywithin.com> in which the Panel found phishing. However, the Respondent in the cited case is not the Respondent in the instant case. Consequently, the Panel finds that Complainant has failed to satisfy its burden of proof for this allegation and will not further discuss it.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, as already noted, the resolving websites display advertising links to third party websites unrelated to Complainant’s business. Use of a domain name to resolve to a page of third-party links can demonstrate a respondent’s bad faith per Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). The Panel therefore finds that Respondent has registered and uses the disputed domain names in bad faith per Policy ¶¶ 4(b)(iv).
Further, Respondent displays a pattern of bad faith registration of disputed domain names containing Complainant’s mark. Registration of multiple domain names containing a complainant’s mark can substantiate an argument that a respondent registered and uses a disputed domain name in bad faith per Policy ¶ 4(b)(ii). See NIKE, Inc., and Nike Innovate, C.V. v. Emile Boulanger, FA 1732458 (Forum July 3, 2017) (finding that registration of several infringing domain names in a case satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Caterpillar Inc. v. Angie Arendt / DIAHOST .CO / keith mosley, FA1805001789701 (Nat. Arb. Forum July 2, 2018) (finding that Respondent engaged in a pattern of bad faith and registration by registering multiple domain names that contain Complainant’s famous CATERPILLAR mark). Thus the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <organonaplywithin.com>, <organonapplywitin.com>, and <organonapplywith.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: August 17, 2023
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