Elanco Animal Health Inc. v. Abby Cotterell
Claim Number: FA2305002043772
Complainant is Elanco Animal Health Inc. (“Complainant”), represented by Corsearch, Inc., Texas, USA. Respondent is Abby Cotterell (“Respondent”), Montana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <seresto-store.com>, registered with GoDaddy.com, LLC.
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 Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on May 9, 2023; Forum received payment on May 9, 2023.
On May 10, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <seresto-store.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 May 16, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 5, 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-store.com. Also on May 16, 2023, 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 June 12, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions. Complainant is an Indiana-based veterinary medical company. Complainant claims rights in the SERESTO mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,317,500 registered April 9, 2013). See Compl. Ex. E. The disputed domain name <seresto-store.com> is confusingly similar because it fully incorporates Complainant’s registered mark, adding a hyphen, the generic term “store” and the “.com” generic top-level domain (“gTLD”) to form.
Respondent lacks rights or legitimate interests in the <seresto-store.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the SERESTO mark in any way. Additionally, Respondent fails to use the disputed domain name in connection with make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass itself off as Complainant to offer counterfeit or otherwise unauthorized versions of Complainant’s goods. Also, Respondent uses the disputed domain name in association with phishing emails.
Respondent registered and uses the <seresto-store.com> domain name in bad faith. Respondent uses the disputed domain to pass itself off as Complainant to offer competing goods, thereby disrupting Complainant’s business and diverting customers for commercial gain. Also, Respondent uses the disputed domain name in association with an email scheme. Respondent had actual knowledge of Complainant’s rights in the SERESTO mark prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the provision of veterinary medical goods and services.
2. Complainant has established its rights in the SERESTO mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,317,500 registered April 9, 2013).
3. Respondent registered the <seresto-store.com> domain name on June 1, 2021.
4. Respondent has caused the disputed domain name to be used to pass itself off as Complainant, to offer counterfeit or otherwise unauthorized versions of Complainant’s goods and in association with phishing emails.
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:
(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”).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SERESTO mark. Complainant argues that Respondent’s <seresto-store.com> domain name is confusingly similar to Complainant’s SERESTO mark. The addition of a generic or descriptive phrase, a hyphen, and a gTLD generally fails to distinguish a disputed domain name sufficiently from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Here, the disputed domain name incorporates wholly Complainant’s mark and is merely followed by the term “store” before also adding the “.com” gTLD. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
(a) Respondent has chosen to take Complainant’s SERESTO mark and to use it in its domain name adding only the generic word “store”, which cannot negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the domain name on June 1, 2021;
(c) Respondent has caused the disputed domain name to be used to pass itself off as Complainant, to offer counterfeit or otherwise unauthorized versions of Complainant’s goods and in association with phishing emails;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent is not commonly known by the <seresto-store.com> domain name, nor has Complainant authorized or licensed Respondent to use its SERESTO mark in the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name, while a lack of evidence demonstrating otherwise may affirm a Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). Here, the WHOIS information identifies Respondent as “Abby Cotterell”, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain name. See Registrar Verification Email. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the <seresto-store.com> domain name in connection with a bona fide offering of goods or services or for a legitimate, noncommercial or otherwise fair use as, instead, Respondent attempts to pass itself off as Complainant for Respondent’s commercial gain. Passing off for commercial gain can represent a failure to use a domain name in connection with a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate, noncommercial or otherwise fair use per Policy ¶ 4(c)(iii). Complainant provides screenshot evidence of the resolving website for the disputed domain name, which uses Complainant’s SERESTO mark and logos to sell similar products. See Amend. Compl. Ex. H. The Panel therefore finds that Respondent has failed to use the <seresto-store.com> domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii);
(g) Complainant argues that Respondent uses the <seresto-store.com> domain name to offer services in direct competition with Complainant. Using a confusingly similar domain name that resolves in a webpage that directly competes with Complainant fails to provide a bona fide offering of goods or services. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Complainant provides screenshot evidence of the resolving website for the disputed domain name, which uses Complainant’s SERESTO mark and logos to trick Internet users into believing there is a connection between Respondent and Complainant and to sell similar products in competition with Complainant’s business. See Amend. Compl. Ex. H. The Panel therefore finds that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii);
(h) Complainant argues that Respondent uses the <seresto-store.com> domain name in furtherance of a phishing scheme, which will not qualify as a bona fide offering of goods or services, nor a legitimate non-commercial or fair use. Phishing has been defined by past panels as a practice that defrauds Internet users into sharing valuable personal information through the use of emails, pop-ups, or other methods. See Juno Online Servs., Inc. v. Iza, FA 245960 (Forum May 3, 2004) (defining “phishing” as “the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit card numbers, passwords, social security numbers and other personal information that may be used for fraudulent purposes”). Additionally, use of a domain name to facilitate a phishing scheme through emails impersonating a complainant may not be described as either a bona fide offering of goods or services, nor a legitimate non-commercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA1403001550388 (Forum May 5, 2014) (“Respondent is using the domain name in emails to various IT hardware suppliers in an attempt to impersonate Complainant and defraud its customers. The domain name also resolved to a website similar to Complainant's website. The Panel found that such actions precluded a bona fide offer or fair use.”). Complainant attached evidence that suggests that Respondent used the <seresto-store.com> domain name to send fraudulent emails passing itself off as Complainant. See Compl. Ex. P. As the Panel agrees, it finds Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name. Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <seresto-store.com> domain name in bad faith by intercepting users seeking Complainant’s services and commercially benefitting via the offer of competing services. Using a confusingly similar domain name to offer services in direct competition with a complainant for a registrant’s benefit can evince a finding of bad faith pursuant to Policy ¶ 4(b)(iv). See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). Complainant provides screenshot evidence of the resolving website for the disputed domain name, which uses Complainant’s SERESTO mark and logos to trick Internet users into believing that there is a connection between Respondent and Complainant and to sell similar products in competition with Complainant’s business. See Amend. Compl. Ex. H. The Panel agrees that Respondent attempted by this means to benefit commercially by use of Complainant’s mark in bad faith for the purposes of Policy ¶ 4(b)(iv).
Secondly, Complainant submits that Respondent registered and uses the <seresto-store.com> domain in bad faith as Respondent attempts to pass itself off as Complainant for Respondent’s commercial gain. Use of a disputed domain name in connection with passing off behavior in order to benefit commercially can evince bad faith registration and use pursuant to Policy ¶ 4(b)(iv). 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.”). Complainant provides screenshot evidence of the resolving website for the disputed domain name, which uses Complainant’s SERESTO mark and logos to sell similar products. See Amend. Compl. Ex. H. The Panel therefore concludes that Respondent registered and uses the disputed domain name in bad faith.
Thirdly, Complainant contends that Respondent registered and uses the <seresto-store.com> domain name to disrupt users for commercial gain in bad faith by passing itself off as Complainant via phishing emails. Using email accounts associated with the disputed domain name to send fraudulent emails supports a finding of bad faith per Policy ¶ 4(b)(iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”). As previously noted, Complainant provides evidence that suggests Respondent uses an email account associated with the disputed domain name to pass itself off as Complainant in order to facilitate a phishing scheme. See Compl. Ex. P. As the Panel agrees, it finds that Respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv).
Fourthly, Complainant claims that Respondent had actual or constructive knowledge of Complainant’s rights in the SERESTO mark prior to registration of the <seresto-store.com> domain name. Constructive knowledge is insufficient for a finding of bad faith registration of a disputed domain name; actual knowledge, however, is sufficient for a finding of bad faith per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Actual knowledge can be determined in an analysis of the totality of the circumstances surrounding the registration and subsequent use per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant contends that Respondent must have had actual knowledge of Complainant’s rights in the SERESTO mark prior to registration of the disputed domain name based upon Complainant’s trademark rights and Respondent’s use of the SERESTO mark in the disputed domain name and on the resolving website. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
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-store.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC, Panelist
Dated: June 13, 2023
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