Theseus Pharmaceuticals, Inc. v. Neil Schaye / Theseus Pharmaceutical
Claim Number: FA2208002009134
Complainant is Theseus Pharmaceuticals, Inc. (“Complainant”), represented by Todd Marabella of Goodwin Procter LLP, Massachusetts, USA. Respondent is Neil Schaye / Theseus Pharmaceutical (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <theseuspharmaceutical.net>, registered with NameCheap, Inc..
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 19, 2022; the Forum received payment on August 19, 2022.
On August 19, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <theseuspharmaceutical.net> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 August 24, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 13, 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@theseuspharmaceutical.net. Also on August 24, 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 response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 21, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist (the "Panel").
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.
A. Complainant
Complainant asserts trademark rights in THESEUS PHARMACEUTICALS and submits that the domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides therapeutic research and development services by reference to the trademark THESEUS PHARMACEUTICALS;
2. Complainant is the owner of United States Patent & Trademark Office (“USPTO”) Reg. No. 6,719,056, registered May 3, 2022, for the trademark;
3. the disputed domain name was created on May 18, 2022; and
4. the domain name resolves to a webpage with links such as “Pharmaceutical Company”, “Pharmaceutical Drug” and “Pharmaceutical Sales Jobs”.
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 to prove each of the following elements to obtain an order that the domain name be 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 based on 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory[i].
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights[ii]. Complainant provides evidence of its USPTO registration for the trademark and so has established trademark rights.
The disputed domain name merely omits the letter “S” from the word PHARMACEUTICALS in the trademark and adds the gTLD, “.net”. Neither of those alterations carry any distinctive value and the trademark remains the recognizable part of the disputed domain name. It follows that the Panel finds the disputed domain name to be confusingly similar to the trademark for the purposes of paragraph 4(a)(i) of the Policy[iii].
Accordingly, Complainant has satisfied the first element of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[iv].
The publicly available WhoIs information shielded the name of the underlying domain name registrant by a privacy service provider, but in consequence of these proceedings the Registrar disclosed the name of the actual registrant as “Neil Schaye”, and the registrant organization as “Theseus Pharmaceutical.”
A question arises under paragraph 4(c)(ii) of the Policy as to whether the registrant organisation name, “Theseus Pharmaceutical”, provides a basis for rights or a legitimate interest. Complainant states that “the THESEUS PHARMACEUTICALS trademark, which is the subject of a U.S. trademark registration, permits the inference that Respondent has not been commonly known by the confusingly similar domain name.”
The Panel finds that no such inference should be drawn under the Policy. However, what can be inferred from the lack of any bona fide use of the domain name (see below) is that the organisational name has been chosen here in an unsophisticated attempt to show legitimacy in the name where none exists. This ruse is not uncommon and panelists as a whole give the adoption of a registrant name corresponding with an at-issue domain name little or no weight in the absence – as in this case – of other evidence corroborating that the Respondent is known by the name. Finally, there is nothing to suggest that Respondent has trademark rights of its own.
As to use of the disputed domain name, Complainant states:
“… Respondent targets the domain name theseuspharmaceutical.net to misleadingly market, sell, and distribute freelance talent through its technology services to Theseus customers and users without authorization from Theseus, the rightful owner of the THESEUS PHARMACEUTICALS trademark.”
The submission appears to bear no relationship to the evidence accompanying the Complaint. Exhibit C is described as “webpages from theseusrx.com”. There is no explanation of what ‘theseusrx.com’ might be, but the text suggests that it may be Complainant’s website; it is unclear. In any event, it is seemingly unrelated to anything in the Complaint. Exhibit B is described as “webpages from theseuspharmaceutical.net” but shows nothing connecting it the claim that Respondent misleadingly markets, sells, and distributes “freelance talent through its technology services to Theseus customers and users”.
It is not possible to make sense of the submissions. However, as described earlier, the resolving webpage shows a series of links to third party goods or services which, by their names, suggest themselves to be competitive with those offered by Complainant under the trademark.
It is well established by decisions under the Policy that such use does not give rise to rights or a legitimate interest. The Panel finds that Complainant has made a prima facie case Respondent does not use the disputed domain name for any bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)[v].
The onus shifts to Respondent to establish a legitimate interest and, absent a Response, that prima facie case is not rebutted. The Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied this second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered and used in bad faith.
Guidance is found in paragraph 4(b) of the Policy which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
The Panel finds that paragraph 4(b)(iv) has direct application. The Panel has already found the disputed domain name to be confusingly similar to the trademark. There is no relevant submission from Complainant regarding commercial gain, but the resolving website is entirely typical of usage intended to drive pay-per-click referral fees.
In terms of the Policy, the Panel finds that Respondent has intentionally used the domain name to attract, for commercial gain, Internet users to the resolving website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that website.
The Panel finds registration and use in bad faith and so finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy in respect of the domain name, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <theseuspharmaceutical.net> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Date: September 22, 2022
[i] See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true; Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”)
[ii] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[iii] See, for example, Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1804001782013 (Forum June 4, 2018) holding: “Where a relevant trademark is recognisable 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.”; Lockheed Martin Corporation v. toyosei maruyama, FA 1620489 (Forum July 7, 2015) (“Simply removing the letter ‘s’ from a mark in the creation of a domain name still creates a confusingly similar domain name.”); Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”).
[iv] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[v] See, for example, Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is 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).”)
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