N.V. Organon and Organon LLC v. (Redacted for Privacy)
Claim Number: FA2206001998801
Complainant is N.V. Organon and Organon LLC (“Complainant”), represented by Joshua M. Dalton of Morgan, Lewis & Bockius LLP, Massachusetts, USA. Respondent is (Redacted for Privacy) (“Respondent”), (Location redacted for Privacy).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <organonjobs.com> registered with Wild West Domains, 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 QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 1, 2022; the Forum received payment on June 1, 2022.
On June 3, 2022, Wild West Domains, LLC confirmed by e-mail to the Forum that the <organonjobs.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 June 6, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 2022 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@organonjobs.com. Also on June 6, 2022, 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 official response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 6, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Neil Anthony Brown QC as Panelist.
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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
There are two Complainants in this matter: N.V. Organon and Organon LLC. Complainants allege they are both under the same parent company, establishing a nexus between both Complainants and that therefore, they should be treated as a single entity for this proceeding.
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
In the present case, the Complainants submit that they are multiple persons or entities who have a sufficient nexus and who can each claim to have rights to the domain name listed in the Complaint.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
“It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity”.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts the evidence in the Complaint to the effect that it establishes a sufficient nexus or link between the Complainants to file the Complaint, so that Complainant has complied with UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). The Panel will therefore treat both complainants as a single entity in this proceeding and the matter may go forward on that basis.
PRELIMINARY ISSUE: IDENTITY THEFT
Respondent contends that it has been the victim of identity theft. Specifically, on June 14, 2022, the Forum received an email from Respondent stating as follows: “I received a written notice of complaint for N.V. Organon and Organon LLC vs. (Redacted for Privacy). I am not familiar with any of these parties. Not sure if this is spam or mistakenly sent to me because of (Redacted for Privacy). If you do not believe this was in error, could you please provide me with a copy of the complain for my review so I can respond appropriately.”
Later on the same day, the Forum received a further email from Respondent stating as follows: “The person/company who registered the domain is using my address without my knowledge and permission. Wild West Domains LLC. Never heard of them. The phone numbers and emails are unknown to me. The address listed in the Statement of Information is for a beauty supply shop in Arizona. I have no knowledge of this domain, the company or anything related to this matter.”
The Forum has advised the Panel that with the exception of Respondent’s emails denying registration of the domain name, Respondent has not provided other evidence in support of a claim of stolen identity. However, the Panel is disposed to accept the veracity of the emails sent by Respondent to the Forum and as by implication, claiming stolen identity or its equivalent. Further, as of June 13, 2022, the Forum had not received any formal Response and proceeded with the Panel appointment. With that background the Panel must now make the decision whether redaction of Respondent’s identity is appropriate.
According to Policy ¶ 4(j), “[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.” According to ICANN Rule 16 (b), the full decision of a panel must be published together with the date of its implementation, except if the panel determines otherwise under Policy ¶ 4(j). In Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Forum Dec. 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Forum May 19, 2005), the panels omitted the respondents’ personal information from the decisions, pursuant to Policy ¶ 4(j), in an attempt to protect the respondents who claimed to be victims of identity theft, from becoming aligned with acts the actual registrants appeared to have sought to impute to the respondents.
However, according to Forum Supplemental Rule 15(b), “All requests pursuant to Policy paragraph 4(j) and Rule 16(b) to have a portion of the decision redacted, must be made in the Complaint, the Response, or an Additional Submission that is submitted before the Panel’s decision is published.” (emphasis added). Rule 1 defines “respondent” as “the holder of a domain-name registration against which a complaint is initiated;” and Forum Supplemental Rule 1(d) further defines “the holder of a domain-name registration” as “the single person or entity listed in the WHOIS registration information at the time of commencement.” The Panel notes prior UDRP decisions where panels took the view that the registrar-confirmed registrant of a disputed domain name (per the WHOIS at commencement of the proceeding) was the proper respondent, notwithstanding the possibility that said respondent’s identity was stolen. See, e.g., Banco Bradesco S/A v. Gisele Moura Leite, D2014-0414 (WIPO Apr. 30, 2014). In this case, neither Claimant nor Respondent have explicitly requested such redaction, but the Panel finds that Respondent’s email necessarily implies such a request and the Panel will proceed on the basis that such a request has been made and that it is encompassed by an additional submission constituted by the emails from the named Respondent. Consequently, the Panel will now determine whether the circumstances of the present case, including the claim of identity theft by Respondent, warrant the redaction of Respondent’s name and location from the Panel’s decision, in keeping with Respondent’s implied request.
The Panel also notes the following comments by the learned panelist in Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Forum May 19, 2005) and will follow them in the present proceeding:
“In e-mail correspondence addressed to the National Arbitration Forum, the Respondent identified in the Complaint filed in this proceeding asserts that it is the victim of identity theft and that it is not the actual holder of the domain name which is the subject of the Complaint. The information supplied in that e-mail communication makes the claim of identity theft plausible, and Complainant does not contest this assertion. Accordingly, we find that it is in the interests of justice that the identity of the Respondent named in the Complaint be redacted from this decision to protect the identity of that person. Therefore, the Respondent in this proceeding will be identified only as “[Unknown Holder].” See Policy ¶ 4(j): “[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.” See also Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Forum Dec. 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Forum May 19, 2005), in which presiding panels omitted respondents’ personal information from their decisions in order to protect named respondents who claimed to be victims of identity theft from becoming aligned with acts the actual registrants appeared to have sought to impute to those respondents. Further see Nat’l Westminster Bank plc v. [Redacted], FA 1028337 (Forum July 25, 2007).”
It is clear to the Panel that it has a discretion to determine that part of the decision in this matter may be redacted when the decision is published, but it is also clear that the discretion must be exercised judicially. In all the circumstances and because the Panel finds that the named Respondent’s request is genuine, the Panel determines that there should be redacted from the decision in this proceeding any text or inference that could identify the named Respondent.
The term “Respondent” will be used consistently to reflect the entity that the Registrar has confirmed as the registrant of the disputed domain name.
A. Complainant
Complainant made the following contentions.
Complainant, Organon, is a pharmaceutical company with a focus on women’s health. Complainant asserts rights in the ORGANON mark through its registration of the mark with the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 6,495,744, registered on September 28, 2021). See Compl. Ex. D. Respondent’s <organonjobs.com> domain name is identical or confusingly similar to Complainant’s ORGANON mark, as it incorporates the mark in its entirety, only adding the generic term “jobs” and the “.com” generic top-level domain (gTLD).
Respondent lacks rights or legitimate interests in the <organonjobs.com> domain name. Complainant has not authorized or licensed Respondent to use the ORGANON mark, nor is Respondent commonly known by the disputed domain name. Further, Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as Respondent attempts to pass off as Complainant via email, in furtherance of a phishing scheme.
Respondent registered and uses the <organonjobs.com> domain name in bad faith. First, Respondent passes itself off as Complainant via email, offering fraudulent job opportunities on Complainant’s behalf. Respondent further engages in a phishing scheme, requesting personal information from users. Finally, Respondent had actual notice of Complainant’s rights, evidenced by Respondent’s attempts at passing off as Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. The two named Complainants are a Netherlands company and an associated company in the United States, engaged in the global pharmaceutical industry and dedicated to women’s health. They will be referred to in this decision as “Complainant” which it to be taken to mean the joint rights and interests of both named Complainants as a single entity.
2. Complainant has established its rights in the ORGANON mark through the registration of the mark with the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 6,495,744, registered on September 28, 2021).
3. Respondent registered the <organonjobs.com> domain name on March 3, 2022.
4. Respondent has used the disputed domain name to send fraudulent emails impersonating Organon human resources employees which purport to offer authentic job opportunities at Organon but which in reality are intended to elicit personal information from the addressees.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the ORGANON mark through its registration of the mark with the USPTO (e.g., Reg. No. 6,495,744, registered on September 28, 2021). See Compl. Ex. D. Registering a mark with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See H-D Michigan, LLC v. Private Whois Service, FA 1006001328876 (Forum July 12, 2010) (finding that “Complainant has sufficiently registered its HARLEY-DAVIDSON mark with the USPTO to prove Complainant’s rights in the mark according to Policy ¶ 4(a)(i), regardless of the fact that Respondent lives or operates outside the United States.”). Therefore, the Panel finds Complainant has sufficiently established its rights in the ORGANON mark.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ORGANON mark. Complainant argues Respondent’s <organonjobs.com> domain name is identical or confusingly similar to Complainant’s ORGANON mark, as it incorporates the mark in its entirety, only adding the generic term “jobs” and the “.com” gTLD. Simply adding a generic term and a gTLD is insufficient to differentiate a disputed domain name from a mark. 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.”). Since Respondent only adds the word “jobs” and a gTLD, the Panel therefore finds the <organonjobs.com> domain name is confusingly similar to Complainant’s ORGANON mark.
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 ORGANON mark and to use it in its domain name adding only the generic word “jobs” to the mark;
(b) Respondent registered the domain name on March 3, 2022;
(c) Respondent has used the disputed domain name to send fraudulent emails impersonating Organon human resources employees which purport to offer authentic job opportunities at Organon but which in reality are intended to elicit personal information from the addressees;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends Respondent lacks rights and legitimate interests in the <organonjobs.com> domain name because Respondent is not authorized to use the ORGANON mark, nor is Respondent commonly known by the disputed domain name. Previously, panels have looked at the available WHOIS information to determine whether a respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). When the WHOIS information appears to show the respondent may be known as the disputed domain name, the Panel may request additional affirmative evidence to support respondent is known as the disputed domain name. See Google Inc. v. S S / Google International, FA1506001625742 (Forum Aug. 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”). Finally, lack of authorization to use a mark serves as further indication that a respondent is not commonly known by the disputed domain name. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). Here, the WHOIS information shows Respondent is known as (Redacted for Privacy) but there is no other evidence to suggest Respondent is known as <organonjobs.com> or that Complainant authorized Respondent to use the ORGANON mark. See Registrar Verification Email. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Although Complainant does not specifically argue this, the Panel may find Respondent does not use the <organonjobs.com> domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use because Respondent attempts to pass itself off as Complainant via email in furtherance of a phishing scheme. Unlawfully sending emails in furtherance of a phishing scheme is not a bona fide offering of goods and services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). In this case, Complainant provides evidence that Respondent sent phishing emails to unsuspecting users. See Compl. Ex. E. As the Panel agrees, the Panel finds Respondent does not use the disputed domain name in compliance with Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a 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 Respondent registered and disputed the <organonjobs.com> in bad faith as Respondent attempts to attract users for commercial gain by passing itself off as Complainant via email. When a respondent fraudulently sends emails on complainant’s behalf, the Panel may find bad faith per Policy ¶ 4(b)(iv). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). Here, the Panel again references screenshots of the fraudulent emails sent by Respondent. See Compl. Ex. E. As the Panel agrees, the Panel finds Respondent acted in bad faith per Policy ¶ 4(b)(iv).
Secondly, Complainant submits Respondent’s use of the emails in furtherance of a phishing scheme is additional evidence of bad faith under Policy ¶ 4(a)(iii). A respondent’s use of a disputed domain name in connection with a phishing scheme, unlawfully getting personal and financial information from unsuspecting users, is evidence of bad faith. See CoorsTek, Inc. v. Gwendolyn K Bohn / CoorsTek Inc, FA 1764186 (Forum Feb. 2, 2018) (“Respondent sent email to users seeking employment at Complainant’s business and asked for personal information such as a photo ID. Therefore, the Panel finds Respondent’s emails constitute a phishing scheme and this indicates bad faith registration and use per Policy ¶ 4(a)(iii).”). Complainant provides screenshots of the phishing emails sent to unsuspecting users. See Compl. Ex. E. As the Panel agrees Respondent engages in a phishing scheme, the Panel finds Respondent acted in bad faith within the meaning of Policy ¶ 4(a)(iii).
Thirdly, Complainant contends Respondent had actual notice of Complainant’s rights in the ORGANON mark, evidenced by Respondent’s emails in which it passed itself off as Complainant. A Panel may determine whether a respondent had actual notice of a complainant’s rights in the mark by looking at the respondent’s use of the mark. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Here, the Panel again references screenshots of Respondent’s emails, using the ORGANON mark to pass itself off as Complainant. See Compl. Ex. E. Therefore, the Panel finds Respondent had actual notice of Complainant’s rights in the ORGANON mark and acted in bad faith in the registration of the domain name and subsequently in its use.
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 <organonjobs.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated July 7, 2022
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