DECISION

 

Elanco Animal Health Inc. v. Alex Man

Claim Number: FA2312002076280

PARTIES

Complainant is Elanco Animal Health Inc. ("Complainant"), represented by Corsearch, Inc., Texas, USA. Respondent is Alex Man ("Respondent"), International.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <bayerseresto.com>, <elancoserestocollars.com> and <elancoserestocollars.shop>, registered with NameSilo, LLC.

 

PANEL

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.

 

Alan L. Limbury, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on December 21, 2023. Forum received payment on December 21, 2023.

 

On December 26, 2023, NameSilo, LLC confirmed by e-mail to Forum that the <bayerseresto.com>, <elancoserestocollars.com> and <elancoserestocollars.shop> domain names are registered with NameSilo, LLC and that Respondent is the current registrant of the names. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 January 2, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 22, 2024 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@bayerseresto.com, postmaster@elancoserestocollars.com, postmaster@elancoserestocollars.shop. Also on January 2, 2024, 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 January 23, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Founded in 1954, Complainant, Elanco Animal Health Inc., is an American pharmaceutical company which produces medicines and vaccinations for pets and livestock. It is the second-largest animal health company in the world. In 2020, Complainant acquired the animal health business of Bayer AG, the owner of the mark BAYER. 

 

Complainant has rights in the ELANCO and SERESTO marks through numerous trademark registrations, including with the United States Patent and Trademark Office ("USPTO"). Respondent's <bayerseresto.com>, <elancoserestocollars.com> and <elancoserestocollars.shop> domain names are confusingly similar to Complainant's mark. Bayer AG has confirmed with Complainant that it has no objection to the transfer to Complainant of the <bayerseresto.com> domain name should Complainant obtain such an order.

 

Respondent lacks rights and legitimate interests in the <bayerseresto.com>, <elancoserestocollars.com> and <elancoserestocollars.shop> domain names. Respondent is not commonly known by the domain names and there is no evidence that at the time Respondent registered the domain names it had trademark or intellectual property rights in those names.  Complainant is not affiliated with Respondent; has not licensed the marks ELANCO and SERESTO to Respondent; and has not granted Respondent any right, authorization, or permission to use Complainant's marks in a domain name or in any other capacity. Respondent does not use the domain names for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead uses the <bayerseresto.com> and <elancoserestocollars.shop> domain names to pass itself off as Complainant while selling unauthorized products and potentially engaging in phishing. The resolving website at <elancoserestocollars.com> previously offered products that competed with those of Complainant. Respondent does not presently use the domain name <elancoserestocollars.com> for a bona fide offering of goods and services or legitimate noncommercial or fair use as the resolving website lacks any substantive content.

 

Respondent registered the domain names in bad faith with actual knowledge of Complainant's rights in the ELANCO and SERESTO marks and uses them in bad faith to disrupt Complainant's business while attracting users for commercial gain and creating a likelihood of confusion. Additionally, Respondent potentially engages in phishing.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has established all the elements entitling it to relief.

 

DISCUSSION

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").

 

Identical and/or Confusingly Similar

Complainant, Elanco Animal Health Inc., has shown that it has rights in the ELANCO and SERESTO marks through numerous registrations, including with the USPTO (e.g., ELANCO, Reg. No. 4509321, registered on April 8, 2014 and SERESTO, Reg. No. 4317500, registered on April 9, 2013 by Complainant's wholly owned subsidiary, Elanco Animal Health GmbH, (formerly Bayer Animal Health GmbH).

 

The Panel finds Respondent's <bayerseresto.com>, <elancoserestocollars.com> and <elancoserestocollars.shop> domain names to be confusingly similar to Complainant's marks. The <bayerseresto.com> domain name incorporates the entire SERESTO mark, together with the name Bayer, which has long been associated with the SERESTO mark.  The <elancoserestocollars.com> and <elancoserestocollars.shop> domain names incorporate the entirety of both ELANCO and SERESTO marks, together with the descriptive word "collars", which does nothing to  distinguish the domain names from the marks. The inconsequential gTLDs ".com" and ".shop" may be ignored.

 

Complainant has established this element.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain names for purposes of paragraph 4(a)(ii) of the Policy, i.e.

 

(i)         before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain names or names corresponding to the domain names in connection with a bona fide offering of goods or services; or

 

(ii)         Respondent (as an individual, business or other organization) has been commonly known by the domain names, even if Respondent has acquired no trademark or service mark rights; or

 

(iii)         Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

 

The <bayerseresto.com> domain name was registered on May 27, 2023 and the <elancoserestocollars.com> and <elancoserestocollars.shop> domain names were both registered on August 13, 2023, in each case long after the registration of the ELANCO and SERESTO marks.

 

The websites to which the <bayerseresto.com> and <elancoserestocollars.shop> domain names resolve sell flea and tick collars that bear Complainant's trademark and images. The <elancoserestocollars.com> previously resolved to the <elancoserestocollars.shop> website but presently is inactive. MX records have been set up for the <bayerseresto.com> domain name, enabling phishing emails to be sent from it.

 

These circumstances, together with Complainant's assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <bayerseresto.com>, <elancoserestocollars.com> and <elancoserestocollars.shop> domain names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.

 

The Panel finds that Respondent has no rights or legitimate interests in respect of the domain names.

 

Complainant has established this element.

 

Registration and Use in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain names in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:

 

(iv)                      by using the domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on its website or location.

 

The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant's ELANCO and SERESTO marks when Respondent registered the <bayerseresto.com>, <elancoserestocollars.com> and <elancoserestocollars.shop> domain names and that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's websites, by creating a likelihood of confusion with Complainant's marks as to the source of Respondent's websites and of the goods promoted on those websites. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).

 

Respondent's bad faith registration of the <bayerseresto.com> domain name is further shown by the fact that MX records have been set up, enabling Respondent to send phishing emails from that domain name.

 

Although the <elancoserestocollars.com> domain name is currently inactive, having previously been used in bad faith to resolve to the <elancoserestocollars.shop> website, it was clearly registered in bad faith on the same day as the <elancoserestocollars.shop> website and there is no plausible good faith use to which it may be put. See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) ("Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).")

 

Complainant has established this element.

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <bayerseresto.com>, <elancoserestocollars.com> and <elancoserestocollars.shop> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Alan L. Limbury, Panelist

Dated: January 26, 2024