Elanco Animal Health Inc. v. Oleksandr Borodai
Claim Number: FA2307002055513
Complainant is Elanco Animal Health Inc. (“Complainant”), represented by Corsearch, Inc., Texas, USA. Respondent is Oleksandr Borodai (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <seresto-collar.com> and <serestofleacollar.org> (collectively “Domain Names”), registered with Hosting Ukraine 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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to Forum electronically on July 31, 2023; Forum received payment on July 31, 2023.
On August 1, 2023, Hosting Ukraine LLC confirmed by e-mail to Forum that the <seresto-collar.com> and <serestofleacollar.org> domain names are registered with Hosting Ukraine LLC and that Respondent is the current registrant of the names. Hosting Ukraine LLC has verified that Respondent is bound by the Hosting Ukraine 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 August 7, 2023, Forum served the Complaint and all Annexes, including a Ukrainian and English Written Notice of the Complaint, setting a deadline of August 28, 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@seresto-collar.com and postmaster@serestofleacollar.org. Also on August 7, 2023, the Ukrainian and English 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 August 29, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith 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 THE PROCEEDING
The language of the registration agreements for the Domain Names is Ukrainian. The Complaint is in English and Complainant requests that pursuant to UDRP Rule 11(a) the language of the proceeding be English.
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. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the language requested by Complainant. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Ukrainian 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.”) and Zappos.com, Inc. v. Zufu aka Huahaotrade, D2008-1191 (WIPO October 15, 2008) (holding that proceedings could be conducted in English even though the registration agreement was in Chinese where “the disputed domain resolves to a website [that] is exclusively in English, from which can be reasonably presumed that the Respondent has the ability to communicate in English in order to conduct his business over the website in English”).
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. The website that the Domain Name <seresto-collar.com> resolves to (“Respondent’s Website”) is entirely in English. Furthermore, the Domain Names themselves contain various English words such as “flea” and “collar”. The Panel also notes the absence of any response by Respondent indicating a preference that the proceeding continue in Ukrainian. After considering the circumstances of the present case, the Panel decides that the proceeding should be continued in the English language.
A. Complainant
Complainant, Elanco Animal Health Inc. is an American pharmaceutical company that produces medicines and vaccinations for pets and livestock. Complainant has rights in the SERESTO mark through Complainant’s registration of the mark with multiple international government agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,317,500, registered on April 9, 2013). Respondent’s <seresto-collar.com> and <serestofleacollar.org> domain names are identical or confusingly similar to Complainant’s SERESTO mark as they merely add a generic word or words and the “.com” generic top-level-domain ("gTLD") to the wholly incorporated mark.
Respondent lacks rights or legitimate interests in the Domain Names. Respondent is not commonly known by the Domain Names, nor has Respondent been authorized by Complainant to use the SERESTO mark. Respondent has not used the Domain Names in connection with a bona fide offering of goods or services as Respondent passes off as Complainant by advertising counterfeit versions of Complainant’s products for sale on the Respondent’s Website or (in the case of <serestofleacollar.org>) holds the Domain Name inactively pending use for the purpose outlined above.
Respondent registered and uses the Domain Names in bad faith. Respondent’s Website disrupts Complainant’s business as Respondent uses <seresto-collar.com> to pass off as Complainant while offering to sell counterfeit products and holds <serestofleacollar.org> inactively pending use for such a purpose. Additionally, Respondent had actual knowledge of Complainant’s rights to the SERESTO mark prior to registering the Domain Names based on the content of the Respondent’s Websites and the fact that Respondent and Complainant have participated in a previous UDRP proceeding where a finding of bad faith was made against Respondent.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the SERESTO mark. Each of the Domain Names is confusingly similar to Complainant’s SERESTO mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names in bad faith.
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”).
Complainant has rights in the SERESTO mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g., Reg. No. 4,317,500, registered on April 9, 2013). Registration of a mark with a nation’s trademark agency is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Glashütter Uhrenbetrieb GmbH v. li zilin / QQ869292929, FA 1575562 (Forum Sept. 23, 2014) (holding, “Trademark registrations with a governmental authority are sufficient to prove rights in a mark pursuant to Policy ¶4(a)(i)”).
The Panel finds that <seresto-collar.com> and <serestofleacollar.org> are confusingly similar to the SERESTO mark as they each incorporate the SERESTO mark while adding generic terms, in one case a hyphen and a gTLD. Adding a generic term, a hyphen and a gTLD to a mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”); 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.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the SERESTO mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA 1621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS information of record lists “Oleksandr Borodai” as the registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
The Domain Name <seresto-collar.com> resolves to the Respondent’s Website which, through the reproduction of the SERESTO Mark and reference to (and copyrighted photos of) Complainant’s products, passes itself off as official websites of the Complainant for the purpose of selling unauthorized versions of Complainant’s goods, in direct competition with Complainant’s merchandise. The use of a confusingly similar domain name to resolve to a webpage that directly offers unauthorized versions of a complainant’s goods does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use; indeed it provides a false impression that the Respondent is affiliated with or authorized by Complainant. See BALENCIAGA SA v. ling lin, FA 1768542 (Forum February 16, 2018) (“The disputed domain names incorporate Complainant's registered mark, and are being used for websites that prominently display Complainant's mark and logo, along with apparent images of Complainant's products, offering them for sale at discounted prices. The sites do not disclaim any connection with Complainant, and in fact seem to be designed to create an appearance of such a connection. Such use does not give rise to rights or legitimate interests.”). See also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
The Domain Name <serestofleacollar.org> is presently inactive. Passively holding a disputed domain name may suggest a lack of rights and legitimate interests in the domain name per Policy ¶ 4(a)(ii). See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”). Furthermore in the present case the Panel considers it likely that <serestofleacollar.org> is being held pending use in a similar manner to <seresto-collar.com>.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Names (June 29, 2023), Respondent had actual knowledge of Complainant’s SERESTO mark since the Respondent’s Website passes off as an official website of the Complainant and as such reproduces material from Complainant and makes repeated references to Complainant and its products. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register two domain names that contain the SERESTO mark and use one of them (the other being inactively held) to redirect visitors to websites selling goods in direct competition with the Complainant under the SERESTO mark other than to take advantage of Complainant’s reputation in the SERESTO mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Names in bad faith to create confusion with Complainant’s SERESTO mark for commercial gain by using the confusingly similar <seresto-collar.com> domain name (<serestofleacollar.org> likely being passively held pending similar use) to resolve to a website that, through the use of the SERESTO mark and copyrighted material, passes off as an official website of Complainant and offers unauthorized versions of Complainant’s products in direct competition with the Complainant’s products. Using a confusingly similar domain name to trade upon the goodwill of a complainant can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1 1612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). See also See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant or is otherwise affiliated or associated with Complainant.”).
The Panel finds Complainant has satisfied 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 <seresto-collar.com> and <serestofleacollar.org> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: August 30, 2023
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