Zoetis Inc. and Zoetis Products LLC v. VistaPrint Technologies Ltd
Claim Number: FA1403001550102
Complainant is Zoetis Inc. and Zoetis Products LLC (“Complainant”), represented by Laura J. Winston of Kim Winston LLP, New York, USA. Respondent is VistaPrint Technologies Ltd (“Respondent”), Bermuda.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <zoetiis.com>, <zoetisin.com>, and <zoetis-health.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 known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 21, 2014; the National Arbitration Forum received payment on March 21, 2014.
On March 21, 2014, Tucows Domains Inc. confirmed by e-mail to the National Arbitration Forum that the <zoetiis.com>, <zoetisin.com>, and <zoetis-health.com> domain names are registered with Tucows Domains Inc. and that Respondent is the current registrant of the names. 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 24, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 14, 2014 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@zoetiis.com, postmaster@zoetisin.com, postmaster@zoetis-health.com. Also on March 24, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 21, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant
i. Complainant, Zoetis Inc. and Zoetis Products LLC, is a global research-based company focusing only on animal health.
ii. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ZOETIS mark (Reg. No. 4,400,976, filed March 3, 2012, registered September 10, 2013) and with the Government of Bermuda’s Intellectual Property Office for the ZOETIS mark (Reg. No. 51,541 registered March 2, 2012).
iii. Respondent’s <zoetiis.com>, <zoetisin.com>, and <zoetis-health.com> domain names are confusingly similar to Complainant’s ZOETIS mark.
i. Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain names.
ii. Respondent is not commonly known by the disputed domain names.
iii. Each of the domain names resolves to a website advertising Respondent’s website creation services.
iv. Respondent is using the disputed domain names to phish for consumers’ information.
i. The domain names were registered and are being used in bad faith.
ii. Respondent’s conduct is part of a pattern of bad faith conduct with respect to its registration of domain names.
iii. Respondent’s use of the disputed domain names to advertise its own business constitutes an intentional attempt to attract users for commercial gain by creating a likelihood of confusion as to the source or affiliation.
iv. Respondent is using the “nevine.n.albert.zoetiis.com” email address to conduct its phishing scheme.
v. At the time Respondent registered the disputed domain names, Respondent knew that Complainant was the owner of the ZOETIS mark.
i. <zoetiis.com> on May 27, 2013;
ii. <zoetisin.com> on March 15, 2014;
iii. <zoetis-health.com> on May 29, 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Zoetis Inc. and Zoetis Products LLC, is a global research-based company focusing only on animal health. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ZOETIS mark (Reg. No. 4,400,976, filed March 3, 2012, registered September 10, 2013) and with the Government of Bermuda’s Intellectual Property Office for the ZOETIS mark (Reg. No. 51,541 registered March 2, 2012).
Respondent, VistaPrint Technologies Ltd, registered the disputed domain names on the following dates: <zoetiis.com> on May 27, 2013; <zoetisin.com> on March 15, 2014; <zoetis-health.com> on May 29, 2013.Each of the domain names resolves to a website advertising Respondent’s website creation services. Respondent is using the disputed domain names to phish for consumers’ financial information.
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(e), 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. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. 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); see also 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.”).
Complainant owns rights in the ZOETIS mark under Policy ¶ 4(a)(i) through registration with the USPTO (Reg. No. 4,400,976, filed March 3, 2012, registered September 10, 2013) and with the Government of Bermuda’s Intellectual Property Office for the ZOETIS mark (Reg. No. 51,541, registered March 2, 2012). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
Complainant contends that Respondent’s <zoetiis.com>, <zoetisin.com>, and <zoetis-health.com> domain names are confusingly similar to Complainant’s ZOETIS mark. The only difference between the <zoetiis.com> domain name and Complainant’s ZOETIS mark is the presence of an additional “i.” Respondent’s addition of another letter does not differentiate the domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)). Respondent’s <zoetisin.com> domain name contains Complainant’s mark paired with the common abbreviation for India. Respondent’s inclusion of a geographic term is inconsequential to a Policy ¶ 4(a)(i) analysis. See Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Nat. Arb. Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”). Respondent’s <zoetis-health.com> domain name contains Complainant’s mark, paired with the generic term “health” and a hyphen. Respondent’s inclusion of a hyphen and a generic term to Complainant’s mark does not distinguish the domain name from the mark under Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark). Respondent adds a generic top-level domain (“gTLD”) to each of the disputed domain names. Respondent’s addition of a gTLD to the mark is irrelevant under Policy ¶ 4(a)(i). See AOL Inc. v. Morgan, FA 1349260 (Nat. Arb. Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark). Thus, the Panel finds that Respondent’s <zoetiis.com>, <zoetisin.com>, and <zoetis-health.com> domain names are confusingly similar to Complainant’s ZOETIS mark pursuant to Policy ¶ 4(a)(i).
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), 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 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). 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.”).
Complainant asserts that Respondent is not commonly known by the <zoetiis.com>, <zoetisin.com>, and <zoetis-health.com> domain names. Complainant argues that it has not consented to or otherwise authorized the use of the ZOETIS mark by Respondent. The registrant of the disputed domain names is listed as “VistaPrint Technologies Ltd” in the WHOIS record. Respondent fails to provide any evidence that it is known by any of the disputed domain names. Accordingly, the Panel finds that Respondent is not commonly known by the <zoetiis.com>, <zoetisin.com>, and <zoetis-health.com> domain names under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s <zoetiis.com>, <zoetisin.com>, and <zoetis-health.com> domain names resolves to a website advertising Respondent’s website creation services. Respondent’s disputed domain names link to a page for “Vistaprint.” Therefore, the Panel finds that Respondent is not using the <zoetiis.com>, <zoetisin.com>, and <zoetis-health.com> domain names in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant claims that Respondent is using the <zoetiis.com> domain name to phish for consumers’ financial information. Complainant alleges that in March of 2014, a distributor of Complainant received two emails from the “nevine.n.albert@zoetiis.com“ email address. Complainant argues that the subject of the first email was titled “Swift code.” Complainant states that the first email stated “We Just received an email from Our account department, Our bank account ( Zoetis Belgium SA) is been submitted for auditing by the government so that export grant can be claimed and due to this we cannot make use of it to receive any further payment until the auditing process is concluded. (Attached) is our subsidiary Trading Bank account Hongkong branch for all incoming remittance( $64,600).” Complainant contends that this email message was followed by banking details for making a payment by bank transfer. Complainant argues that the subject of the second email was “P.O. 11011#” and stated “Dear Sirs, Kindly requested to send us your offer urgently listed in enclosed list based on CIF Bandar Abbas ,Iran including all terms and conditions urgently ( SKF and FAG ,two offers to be compared and decision making).” Complainant contends that Nevine N. Albert is an employee of Complainant, with the email address “nevine.n.albert@zoetis.com.” Complainant argues that Respondent used Ms. Albert’s name in an attempt to make it appears as if the recipient was receiving an email from an employee of Complainant in an effort to obtain banking information from the recipient. In Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006), the panel held that respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). The Panel finds that Respondent is using the <zoetiis.com> domain name to phish for financial information; therefore, Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).
Complainant argues that Respondent’s conduct is part of a pattern of bad faith conduct with respect to its registration of domain names, including for purposes of sending out phishing emails.See Regents of the University of Michigan v. VistaPrint Technologies Ltd, FA 1460764 (Nat. Arb. Forum Oct. 5, 2012)(Respondent used email addresses appearing to come from the complainant for phishing; domain name transferred); see also Century 21 Real Estate LLC v. VistaPrint Technologies Ltd, FA 1422157 (Nat. Arb. Forum February 2, 2012)(domain name transferred); see also Designs Around You, Inc. v. VistaPrint Technologies Ltd, FA 1409501 (Nat. Arb. Forum Nov. 4, 2011) )(domain name transferred). The Panel finds that Respondent has engaged in a bad faith pattern of registering domain names. Therefore, Respondent has registered and is using the <zoetiis.com>, <zoetisin.com>, and <zoetis-health.com> domain names in bad faith pursuant to Policy ¶ 4(b)(ii). See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Nat. Arb. Forum Feb. 18, 2008) (determining that the respondent’s forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii)).
Complainant asserts that Respondent’s use of the <zoetiis.com>, <zoetisin.com>, and <zoetis-health.com> domain names to advertise its own business constitutes an intentional attempt to attract users for commercial gain by creating a likelihood of confusion as to the source or affiliation. In Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000), the panel found that respondent violated Policy ¶ 4(b)(iv) because respondent admittedly used complainant’s well-known mark to attract users to respondent's website. Consequently, the Panel concludes that Respondent’s use of the disputed domain names to divert users to its own website shows bad faith according to Policy ¶ 4(b)(iv).
Respondent’s use of the <zoetiis.com> domain name to phish for financial information shows bad faith registration and use under Policy ¶ 4(a)(iii). See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
Complainant contends that at the time Respondent registered the disputed domain names, Respondent knew that Complainant was the owner of the ZOETIS mark. Complainant argues that Respondent knew that Complainant held rights in the ZOETIS mark because it used the name of an actual employee of Complainant in an email address containing the domain name <zoetiis.com>. Therefore, the Panel finds that Respondent had actual knowledge of Complainant's ZOETIS mark and rights and therefore Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zoetiis.com>, <zoetisin.com>, and <zoetis-health.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 5, 2014
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