DECISION

 

ELANCO ANIMAL HEALTH GMBH v. Gustavo Rodrigues / Ricardo Andrade

Claim Number: FA2502002142869

 

PARTIES

Complainant is ELANCO ANIMAL HEALTH GMBH ("Complainant"), represented by Corsearch, Inc., New York, USA. Respondent is Gustavo Rodrigues / Ricardo Andrade ("Respondent"), Brazil.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <coleirasseresto.com> and <coleiraseresto.com> (collectively "Domain Names"), registered with GoDaddy.com, LLC and Name SRS AB.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 28, 2025; Forum received payment on February 28, 2025.

 

On Mar 03, 2025 and Mar 04, 2025, GoDaddy.com, LLC and Name SRS AB confirmed by e-mail to Forum that the <coleirasseresto.com> and <coleiraseresto.com> domain names are registered with GoDaddy.com, LLC and Name SRS AB and that Respondent is the current registrant of the names. GoDaddy.com, LLC and Name SRS AB have verified that Respondent is bound by the GoDaddy.com, LLC and Name SRS AB registration agreements 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 March 10, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 31, 2025 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@coleirasseresto.com and postmaster@coleiraseresto.com. Also on March 10, 2025, 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 April 1, 2024, 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.

 

RELIEF SOUGHT

Complainant requests that the Domain Names be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: MULTIPLE RESPONDENTS

In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. 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."  

 

Complainant contends that the registrants for the Domain Names are related because the Domain Names are almost identical, consisting of Complainant's mark and the Portuguese term "coleira". The Domain Names have the same IP address and were registered 3 months apart by entities located in Brazil. Each of the Domain Names resolves or has resolved to a website that reproduces the Complainant's mark and offers unauthorized or counterfeit versions of Complainant's pet-care products (the "Respondent's Websites") and include references to similar addresses and similar information in the footer. This evidence, in the Panel's opinion, strongly suggests that the Domain Names are owned/controlled by a single Respondent; were the named Respondents unrelated, it would be unlikely that two unconnected entities would register 2 similar domain names targeted at the same entity and have them resolve to strikingly similar websites.     

 

In light of these contentions, which none of the identified Respondents deny, the Panel concludes that, on the balance of probabilities, the Domain Names are commonly owned/controlled by a single Respondent who is using multiple aliases.  Hereafter the single Respondent will be referred to as "Respondent" in this Decision.

 

PARTIES' CONTENTIONS

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 <coleirasseresto.com> and <coleiraseresto.com> domain names are identical or confusingly similar to Complainant's SERESTO mark as they merely add the descriptive terms "coleira" or "coleiras" (Portugues for "collar" or "collars) 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 Websites.

 

Respondent registered and uses the Domain Names in bad faith. The Respondent disrupts Complainant's business as Respondent uses the Respondent's Websites to pass off as Complainant while offering to sell counterfeit products. 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 which reproduce images of Complainant's products.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

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.

 

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 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 <coleirasseresto.com> and <coleiraseresto.com> are confusingly similar to the SERESTO mark as they each incorporate the SERESTO mark while adding the descriptive terms "coleira" or "coleiras" (Portugues for "collar" or "collars) and a gTLD. Adding a generic or descriptive term and a gTLD to a mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See 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).

 

Rights or Legitimate Interests

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 "Gustavo Rodrigues / Ricardo Andrade" 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 Names resolve or have resolved to the Respondent's Websites which, through the reproduction of the SERESTO Mark and reference to (and copyrighted photos of) Complainant's products, pass themselves 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 confusingly similar domain names to resolve to webpages that directly offer 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 Feb. 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 Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The Panel finds on the balance of probabilities that, at the time of registration of the Domain Names (February 2025 and November 2024 respectively), Respondent had actual knowledge of Complainant's SERESTO mark since the Respondent's Websites pass off as official websites of the Complainant and as such reproduce material from Complainant and make 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 them 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 Domain Names to resolve to websites that, through the use of the SERESTO mark and copyrighted material, pass off as official websites 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, FA 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).

 

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 <coleirasseresto.com> and <coleiraseresto.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Nicholas J.T. Smith, Panelist

Dated: April 1, 2025