Zoetis Inc. and Zoetis Products LLC v. VistaPrint Technologies Ltd
Claim Number: FA1502001604926
Complainant is Zoetis Inc. and Zoetis Products LLC (“Complainant”), represented by Laura J. Winston of Kim Winston LLP, New York, United States. Respondent is VistaPrint Technologies Ltd (“Respondent”), Hamilton, Bermuda.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <zoetls.com>, <z0etis.com>, and <zoettis.co> 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 13, 2015; the Forum received payment on February 13, 2015.
On February 13, 2015, Tucows Domains Inc. confirmed by e-mail to the Forum that the <zoetls.com>, <z0etis.com>, and <zoettis.co> 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 February 17, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 9, 2015 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@zoetls.com, postmaster@z0etis.com, postmaster@zoettis.co. Also on February 17, 2015, 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 March 18, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant uses the ZOETIS mark in connection with its services in the field of animal health and veterinary medicine in class 44. Complainant has registered the ZOETIS mark with the likes of the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,400,976, registered Sep. 10, 2013), which evinces rights in the mark. Respondent’s <zoetls.com>, <z0etis.com>, and <zoettis.co> domain names are confusingly similar to the ZOETIS mark as the <zoetls.com> domain name replaces the letter “i” with the letter “l” (lowercase “L”) and adds the generic top-level domain name (“gTLD”) “.com,” the <z0etis.com> domain name replaces the letter “o” with the number “0” and adds the gTLD “.com”, and the <zoettis.co> domain name adds the letter “t” and the country code top-level domain (“ccTLD”) “.co” to the ZOETIS mark.
ii) Respondent has no rights or legitimate interests in the <zoetls.com>, <z0etis.com>, and <zoettis.co> domain names. Respondent is not commonly known by the disputed domain names or any variant of ZOETIS, nor has Complainant consented or authorized Respondent to use the ZOETIS mark in any way. Further, Respondent is not making a bona fide offering of goods or services through the disputed domain name, nor a legitimate noncommercial or fair use. Respondent used the name of Executive Vice President and Chief Financial Officer of Complainant’s business, Paul Herendeen, in connection with the email address paul.herendeen@zoettis.co in an attempt to obtain financial gain from Complainant, and to phish for personal information. Further, all disputed domain names resolve to a web page advertising and providing a link to Respondent’s website.
iii) Respondent is using the disputed domain names in bad faith. Respondent has a history of bad faith, as demonstrated by prior UDRP proceedings, which constitutes a pattern pursuant to Policy ¶ 4(b)(ii). Further, Respondent likely had actual/constructive notice when registering the disputed domain names, evidenced by Respondent’s use of the name of an employee of Complainant’s company in connection with a phishing scheme. Additionally, 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 source or affiliation with Complainant.
B. Respondent
Respondent did not submit a response. The Panel notes the following registration dates for Respondent’s disputed domain names:
<zoetls.com> December 14, 2014;
<z0etis.com> December 18, 2014;
<zoettis.co> January 7, 2015.
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names in bad faith.
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 argues that the <zoetls.com>, <z0etis.com>, and <zoettis.co> domain names are confusingly similar to the ZOETIS mark. Complainant contends that the disputed domain names are confusingly similar to the ZOETIS mark as the <zoetls.com> domain name replaces the letter “i” with the letter “l” (lowercase “L”) and adds the generic top-level domain name (“gTLD”) “.com”, the <z0etis.com> domain name replaces the letter “o” with the number “0” and adds the gTLD “.com”, and the <zoettis.co> domain name adds the letter “t” and the ccTLD “.co” to the ZOETIS mark. Previous panels have found that such alterations to a complainant’s mark are unpersuasive in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Am. Online, Inc. v. garybush co uk, FA 360612 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s domain name is confusingly similar to Complainant’s AOL mark because the disputed domain name incorporates the mark with the mere addition of the nondistinctive number ‘0.’ The addition of the number ‘0’ is insufficient to distinguish the domain name from Complainant’s mark.”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the addition of the letter “c” to the complainant’s SAFLOK mark does not distinguish the <saflock.com> domain name from the mark under Policy ¶ 4(a)(i)). Further, this Panel notes that past panels have found that the addition of a gTLD or a ccTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Crocs, Inc. v. [Registrant], FA 1043196 (Nat. Arb. Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”). This Panel therefore agrees that the disputed domain names in this case are confusingly similar to the ZOETIS mark as the changes made to the mark are insufficient to overcome a finding of confusing similarity under 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant, in arguing that Respondent has no rights or legitimate interests, begins by making the contention that Respondent is not commonly known by the <zoetls.com>, <z0etis.com>, and <zoettis.co> domain names or any variation of the ZOETIS mark. Additionally, Complainant argues that it has never given Respondent permission, authorization, or license to use the ZOETIS mark in any form or fashion. Past panels have found such a lack of authorization to indicate a lack of rights or legitimate interests. The Panel notes that the WHOIS information identifies “VistaPrint Technologies Ltd” as registrant. See Compl., at Attached Ex. E. As Respondent has failed to add any evidence to the record, the Panel finds that there is no basis in the available evidence to find Respondent commonly known by the disputed domain names per Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding 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).
Further, Complainant contends that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant alleges that the resolving page for each disputed domain name displays an advertisement for Respondent’s business with a link to Respondent’s business page included. See Compl., at Attached Ex. G. The Panel agrees that Respondent’s use of the disputed domain names to divert Internet users to its own commercial business does not constitute a bona fide offering of goods or services per Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant further alleges that Respondent’s use of the <zoettis.co> domain name for a fraudulent email scheme impersonating Executive Vice President and Chief Financial Officer of Complainant’s business, Paul Herendeen, in connection with the email address [redacted]@zoettis.co constitutes phishing. The Panel notes that Complainant has provided a copy of an email sent using the <zoettis.co> domain name in an email string in furtherance of fraudulent activity. See Compl., at Attached Ex. F; see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use). The Panel agrees that Respondent’s use of the <zoettis.co> domain name in an effort to phish for personal information in fraudulent emails for commercial gain further evinces Respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).
Complainant argues that Respondent has engaged in a pattern of bad faith pursuant to Policy ¶ 4(b)(ii). Panels have noted two ways to establish a pattern of bad faith under Policy ¶ 4(b)(ii): multiple domain names in dispute in the case at hand, and/or prior adverse UDRP proceedings involving the respondent. Complainant argues that Respondent has had extensive involvement in prior UDRP decisions for its cybersquatting activities. In support of this allegation, Complainant points the Panel to multiple decisions in which Respondent was found to have registered and used domain names in bad faith. See Compl., at P. 7; see also, e.g., 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). Previous panels have not hesitated in finding a pattern of bad faith under Policy ¶ 4(b)(ii), where the complainant presents previous adverse UDRP proceedings involving the respondent. See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations). The Panel agrees that Respondent’s history of bad faith as demonstrated by prior UDRP cases is sufficient to support a finding of bad faith per Policy ¶ 4(b)(ii).
Complainant contends that Respondent’s registration and use of the disputed domain names constitute bad faith under Policy ¶ 4(b)(iv), alleging Respondent’s intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant and the ZOETIS mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s websites associated with the disputed domain names and Respondent’s services advertised therein. See Compl., at Attached Ex. G. The Panel agrees that Respondent’s use of the disputed domain names to divert Internet users searching for Complainant to its own site by creating a likelihood of confusion for commercial gain constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Additionally, Complainant argues that Respondent’s attempt to use the <zoettis.co> domain name in an effort to phish for personal information in fraudulent emails for commercial gain constitutes bad faith. The Panel recalls that Respondent has used the associated email string in furtherance of commercial fraud. See Compl., at Attached Ex. F. The Panel agrees that such phishing behavior via one of the disputed domain names lends additional evidence to support a finding of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See PineBridge Investments IP Holdings Limited v. uche victor, FA 1551301 (Nat. Arb. Forum May 6, 2014) (“[r]espondent is trying to confuse Internet users into believing that Respondent is in fact the CEO of [c]omplainant’s business, when it is not. The [p]anel finds that using a disputed domain name to attract Internet users to a website by confusing them as to the [c]omplainant’s affiliation with [r]espondent’s disputed domain name indicates bad faith use and registration under Policy ¶ 4(b)(iv)”).
Complainant argues that Respondent registered the disputed domain names with actual or constructive knowledge of the ZOETIS mark. Complainant argues that Respondent’s attempt to phish via fraudulent emails indicates that Respondent knew of Complainant’s ZOETIS mark and its rights thereof, as demonstrated by Exhibit F. See SHUAA Capital psc v. Oba Junkie / shuaa capital psc, FA 1581255 (Nat. Arb. Forum Oct. 29, 2014) (“Respondent’s knowledge of Complainant’s mark is apparent by Respondent’s attempt to project itself as Complainant.”). The Panel agrees that Respondent’s behavior here indicates that it had actual knowledge of Complainant’s rights in the ZOETIS mark, constituting bad faith registration per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zoetls.com>, <z0etis.com>, and <zoettis.co> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: March 24, 2015
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