DECISION

 

Elanco Animal Health GmbH v. wang xiongwei / cai wei

Claim Number: FA2409002114282

 

PARTIES

Complainant is Elanco Animal Health GmbH ("Complainant"), represented by Corsearch, Inc., Texas, USA. Respondent is wang xiongwei / cai wei ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <serestocollarkr.xyz> and <serestocollarkx.com>, registered with Dynadot Inc.

 

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. 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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 5, 2024; Forum received payment on September 5, 2024.

 

On September 6, 2024 and September 11, 2024, Dynadot Inc confirmed by e-mail to Forum that the <serestocollarkr.xyz> and <serestocollarkx.com> domain names are registered with Dynadot Inc and that Respondent is the current registrant of the names. Dynadot Inc has verified that Respondent is bound by the Dynadot 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 September 16, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 7, 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@serestocollarkr.xyz and postmaster@serestocollarkx.com. Also on September 16, 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 October 8, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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.

 

MULTIPLE RESPONDENTS

Notwithstanding any differences in the domain registration records for the at-issue domain names the at-issue domain names nevertheless appear to be effectively controlled by the same person or entity. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") provides that a "complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder."

 

The at-issue domain names are similarly constructed as each domain name consists of Complainant's trademark followed by the suggestive term "collar" followed by either "kr" or "kx." Furthermore, Complainant's implicit position that the domain names' nominal registrants should be treated as a single entity is unopposed. Therefore, the Panel elects to treat the at-issue domain names' nominal registrants as a single entity (herein Respondent) for the purposes of this proceeding.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends in part as follows:

 

Complainant Elanco Animal Health GmbH is a globally-operating company. The company has its headquarters in Germany (Leverkusen) and is the owner of the SERESTO mark. Complainant offers market-leading pet care products, which include Seresto, K9 Advantix II, Advantage II, Advantage Multi, Advantage Home & Yard, Quellin, and Synovi.

 

Respondent's at-issue domain names are each confusingly similar to a trademark in which Complainant has rights. Complainant has USPTO, EUIPO, and WIPO trademark registrations for its SERESTO trademark and each domain name wholly contain Complainant's trademark merely adding the suggestive term "collar," two letters -either "kr" (possibly an abbreviation for Korea) or "kx" and conclude with either the ".xyz" or ".com" top-level. Respondent's additions to Complainant's trademark in forming the at-issue domain names do not distinguish the domain names from Complainant's mark under the Policy.

 

Respondent lacks rights and legitimate interests in the at-issue domain name. Respondent is not commonly known by the at-issue domain names and there is no evidence that Respondent had rights in the domain names at the time they were registered. Respondent is not affiliated with Respondent and Complainant's has not authorized Respondent to use its trademarks.

 

The <serestocollarkx.com> is currently inactive, but previously redirected to a website using SERESTO and offering products that appear very similar to Complainant's products creating a false affiliation with Complainant. Respondent has shown no bona fide use of the <serestocollarkx.com> domain name. Respondent's <serestocollarkr.xyz> domain name addresses a commercial website offering apparel items for sale that are unrelated to Complainant. Respondent is thereby trying to profit off the goodwill and fame associated with Complainant's mark. Likewise, such use does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(i).

 

Respondent registered and used the at-issue domains in bad faith. Respondent's <serestocollarkx.com> domain name is currently inactive but previously redirected to a website offering products very similar to Complainant's products. Failure to make active use of a domain name is evidence of bad faith. The <serestocollarkr.xyz> domain name addresses a website where Respondent offers apparel for sale that is unrelated to Complainant. Respondent is attempting to attract internet users to its <serestocollarkr.xyz> website by creating a likelihood of confusion between Complainant's mark and Respondent's domain name per Policy ¶ 4(b)(iv).

 

Given Respondent's prior use of <serestocollarkx.com> where it offered products using the SERESTO trademark, it is obvious that Respondent had actual knowledge of Complainant and its trademarks. Respondent's prior knowledge shows bad faith. Further showing bad faith, Respondent used a privacy feature to hide its identity.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has rights in the SERESTO trademark.

 

Respondent is not affiliated with Complainant and had not been authorized to use Complainant's trademark in any capacity.

 

Respondent registered the at‑issue domain names after Complainant acquired rights in SERESTO.

 

Respondent now holds <serestocollarkx.com> inactively. Respondent's <serestocollarkr.xyz> domain name addresses a website where Respondent offers products for sale that are unrelated to Complainant.

 

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

The at-issue domain names are confusingly similar to a trademark in which Complainant has rights.

 

Complainant shows that it has multiple trademark registrations worldwide for its SERESTO mark including registrations with the USPTO, EUIPO, and WIPO. Any of such registration is sufficient to demonstrate Complainant's rights in in a mark under Policy ¶ 4(a)(i).See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant's registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)).

 

Respondent's <serestocollarkr.xyz> and <serestocollarkx.com> domain names each contain Complainant's SERESTO trademark followed by the suggestive term "collar," two letters, and a top-level domain name. The differences between Complainant's trademark and either of Respondent's domain names are insufficient to distinguish one from the other for the purposes of the Policy. Therefore, the Panel finds that Respondent's <serestocollarkr.xyz> and <serestocollarkx.com> domain names are each confusingly similar to Complainant's SERESTO trademark 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.").

 

Rights or Legitimate Interests

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. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances Complainant's prima facie showing acts conclusively.

 

Respondent lacks both rights and legitimate interests in respect of the at-issue domain names. 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. See Charter Communications Holding Company, LLC v. Taha Shaikh / Tskdesigners, FA 1814475 (Forum Nov. 25, 2018) (finding no rights or legitimate interests in <spectrumfeature.com> because complainant never gave respondent permission to use the mark in any manner and "Panels may use these assertions as evidence that no rights or legitimate interests exist in a disputed domain name").

 

The WHOIS information for <serestocollarkr.xyz> and <serestocollarkx.com> indicates that "wang xiongwei/cai wei" is the domain names' registrant and there is nothing in the record that tends to prove that Respondent is otherwise known by either by <serestocollarkr.xyz> or by <serestocollarkx.com>. As such, the Panel finds that Respondent is not commonly known by either at-issue domain name under Policy ¶ 4(c)(iii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Respondent's currently holds its <serestocollarkx.com> domain name passively. Respondent's passive holding of such domain name is neither indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶ 4(c)(iii). See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) ("Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).").

 

Respondent uses the confusingly similar <serestocollarkr.xyz> domain name to address a website that offers apparel products for sale that are wholly unrelated to those products offered by Complainant. Respondent's use of <serestocollarkr.xyz> is also neither indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶ 4(c)(iii). See Vanderbilt Univ. v. U Inc., FA 893000 (Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting internet users to its own website promoting the respondent's books, unrelated to the complainant).

 

Given the foregoing, Respondent lacks rights and lacks legitimate interests in <serestocollarkr.xyz> and in <serestocollarkx.com>.

 

Registration and Use in Bad Faith

As discussed below without being exhaustive, bad faith circumstances are present which lead the Panel to conclude that Respondent acted in bad faith under the Policy regarding each domain name.

 

As mentioned above, Respondent currently holds the at-issue <serestocollarkx.com> domain name passively. Doing so indicates Respondent's bad faith. See CommScope, Inc. of North Carolina v. Zhuang Yan / WANGYONG, FA 1764026 (Forum Feb. 14, 2018) ("Respondent's domain names do not have resolving websites. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use.").

 

As also mentioned above, Respondent uses the <serestocollarkr.xyz> domain name to address an online store that offers apparel for sale. Using the confusingly similar domain name to direct internet traffic to Respondent commercial website shows Respondent's bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting internet users searching for the complainant to its own website and likely profiting); see also, Hancock Fabrics, Inc. v. Active Advantage, Inc., FA 204111 (Forum Dec. 4, 2003) ("Respondent's use of the <hancockfabric.com> domain name, a domain name confusingly similar to Complainant's HANCOCK FABRICS mark, to redirect Internet traffic to a website that provides a selection of jokes demonstrates Respondent' bad faith use of the disputed domain name because Respondent has created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent's website, which evidences bad faith registration and use under Policy ¶ 4(b)(iv).").

 

Moreover, Respondent had actual knowledge of Complainant's rights in SERESTO when it registered <serestocollarkr.xyz> and <serestocollarkx.com> as domain names. Respondent's prior knowledge of Complainant's trademark rights is evident inter alia from the notoriety of Complainant's mark; from Respondent's inclusion of Complainant's mark in multiple domain names; from Respondent's inclusion of the suggestive term "collar" in the at-issue domain names; and from Respondent's prior use of <serestocollarkr.xyz> to address a website offering products similar to those offered by Complainant. Respondent's registration and use of <serestocollarkr.xyz> and <serestocollarkx.com> with prior knowledge of Complainant's rights in SERESTO further shows Respondent's bad faith regarding the at-issue domain names. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) ("Complainant contends Respondent's appropriation of Complainant's trademark was a clear intent to trade upon Complainant's reputation and goodwill in order to confuse Internet users. Therefore, the Panel finds Respondent did have actual knowledge of Complainant's mark prior to registration and this constitutes bad faith per Policy ¶ 4(a)(iii)."); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

DECISION

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

 

Accordingly, it is Ordered that the <serestocollarkr.xyz> and <serestocollarkx.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated: October 9, 2024