Zoetis Inc. and Zoetis Services LLC v. Cimpress Schweiz GmbH
Claim Number: FA1703001719875
Complainant is Zoetis Inc. and Zoetis Services LLC (“Complainant”), represented by Laura J. Winston of Kim Winston LLP, New York, USA. Respondent is Cimpress Schweiz GmbH (“Respondent”), Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zeotisus.com>, registered with Tucows Domains Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 2, 2017; the Forum received payment on March 2, 2017.
On March 3, 2017, Tucows Domains Inc. confirmed by e-mail to the Forum that the <zeotisus.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 March 3, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 23, 2017 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 firstname.lastname@example.org. Also on March 3, 2017, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On April 5, 2017, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is a global research-based company focused on animal health.
Complainant holds a registration for the ZOETIS mark, on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,822,378, registered September 29, 2015.
Respondent registered the domain name <zeotisus.com> on or about November 10, 2016.
The domain name is confusingly similar to Complainant’s ZOETIS mark.
Respondent has not been commonly known by the domain name.
Respondent has no connection with Complainant.
Complainant has not licensed or otherwise permitted Respondent to use the ZOETIS mark in any way.
Respondent has not made any use of or any demonstrable preparations to use the disputed name in connection with a bona fide offering of goods or services.
The domain name resolves to an error page with a link to a webpage advertising services of Vistaprint, which is a wholly owned subsidiary of Respondent.
Complainant has received a pair of emails from an email address associated with the domain name which appear to be emails from the Chief Executive Officer of Complainant.
In an evident attempt to conduct a phishing scheme for Respondent’s profit, the emails inquire about processing an expense payment.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s use of the domain name creates among Internet users a likelihood of confusion with the ZOETIS mark and fosters the assumption that the content found at the parked website is sponsored or endorsed by Complainant.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent knew of Complainant and its rights in the ZOETIS mark when it registered the domain name.
Respondent has registered and is using the domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the ZOETIS mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015):
Registration of a mark with a governmental authority … is sufficient to establish rights in the mark for purposes of Policy ¶4(a)(i)
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <zeotisus.com> is confusingly similar to Complainant’s ZOETIS mark. The domain name incorporates the entirety of Complainant’s mark with only a transposition of the “o” and “e”, paired with the generic geographic term “us” and the generic Top Level Domain (“gTLD”) “.com”. These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Forum April 6, 2001):
The addition of ‘US’ or ‘USA’ [to the mark of another in creating a domain name] does not alter the underlying mark held by the complainant.
See also RingCentral, Inc. v. Aug.ine Rivera, FA 1562126 (Forum July 1, 2014):
Transposition of letters in [a] trademark [in creating a domain name] does not distinguish the domain name.
Further, see Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum April 10, 2007):
The mere addition of a generic top-level domain (“gTLD”) “.com” [to the mark of another in forming a domain name] does not serve to adequately distinguish the Domain Name from the mark.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the disputed <zeotisus.com> domain name, that Respondent has no connection with Complainant, and that Complainant has not licensed or otherwise permitted Respondent to use the ZOETIS mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Cimpress Schweiz GmbH,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that a respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), where the relevant WHOIS information named “Fred Wallace” as its registrant). See also IndyMac Bank F.S.B. v. Eshback, FA 830934 (ForumDec. 7, 2006) (finding that a respondent failed to establish rights to or legitimate interests in the a domain name where that respondent was not authorized to register domain names featuring a UDRP complainant’s mark and failed to submit evidence that it was commonly known by the domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent employs the <zeotisus.com> domain name to facilitate a scheme by which it seeks to profit illicitly by sending to Complainant a pair of emails from an email address associated with the domain name which appear to be emails from the Chief Executive Officer of Complainant and which inquire about processing an expense payment. This use of the domain name is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii). See, for example, Crow v. LOVEARTH.net, FA 203208 (Forum November 28, 2003)
It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant ....
Therefore, the Panel finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the <zeotisus.com> domain name, as alleged in the Complaint, disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, Brownell Travel, Inc. v. Troy Haas, FA1411001589137 (Forum December 20, 2014) (finding that the use of a domain name to send emails impersonating the CEO of a UDRP complainant to that complainant’s account manager in an attempt to commit financial fraud on that complainant constituted evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iii)).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the ZOETIS mark when it registered the <zeotisus.com> domain name. This further demonstrates Respondent’s bad faith in registering the domain name. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum September 5, 2007) (finding that a UDRP respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii), having first concluded that that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <zeotisus.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 6, 2017
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