Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd
Claim Number: FA1511001646149
Complainant is Zoetis Inc. and Zoetis Services 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 NAME
The domain name at issue is <izoetis.com>, registered with Tucows Domains Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 9, 2015; the Forum received payment on November 9, 2015.
On November 10, 2015, Tucows Domains Inc. confirmed by e-mail to the Forum that the <izoetis.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. 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 November 10, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 30, 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@izoetis.com. Also on November 10, 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 December 7, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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.
A. Complainant
Complainant states that it is a global research-based company and the largest such company focusing only on animal health. Complainant employs approximately 9,800 people worldwide and has a local presence in over 70 countries, including 27 manufacturing facilities in 11 countries. Complainant’s products and services serve veterinarians, livestock producers, and people who raise and care for farm and companion animals in over 120 countries.
According to Complainant, it has rights in the ZOETIS mark based on registration of the mark with the United States Patent and Trademark Office on September 10, 2013. The disputed domain name is confusingly similar to the ZOETIS mark in which Complainant claims to have rights because it includes the whole ZOETIS mark and merely adds the letter “I” and the generic top-level domain (“gTLD”) “.com.” Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. WHOIS information indicates that Respondent registered the disputed domain name using the name “VistaPrint Technologies Ltd,” which does not resemble the disputed domain name. Further, Respondent has failed to make any use or preparations to use the disputed domain name in a way that is a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Complainant alleges that Respondent has registered and is using the disputed domain name in bad faith. The disputed domain name resolves to a web site that displays advertisements for its own business, such as building web sites. This is an attempt to attract users for commercial gain. Further, Respondent’s previous adverse UDRP decisions demonstrate a pattern of bad faith. Finally, Respondent has engaged in phishing, which is further evidence of bad faith. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark ZOETIS and uses it to market animal health care products around the world.
Complainant’s registration of its mark dates back to 2013.
The disputed domain name was registered in 2015.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name points to a web site that contains advertising for Respondent’s own products.
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 has rights in the ZOETIS mark based on registration of the mark. The disputed domain name is confusingly similar to Complainant’s mark because it includes the whole ZOETIS mark and merely adds the letter “I” and the gTLD “.com.” Panels have routinely held that adding the gTLD “.com” to a domain name is irrelevant to an analysis of confusing similarity. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). Additionally, adding letters to a domain is not seen to be a distinguishing feature when the letters are added to a mark. See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark). Thus the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.
Respondent has not been commonly known by the disputed domain name. WHOIS information associated with the disputed domain name indicates that Respondent registered the disputed domain name using the name “VistaPrint Technologies Ltd,” which does not resemble the disputed domain name. Past panels have held that a respondent is not commonly known by a disputed domain based on WHOIS information. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Furthermore, where a party has registered and used a domain name in bad faith (see the discussion below), that party cannot be found to have made a bona fide offering of goods and services, see The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan, D2002-0701 (WIPO Sept. 6, 2002); see also AltaVista Company v. Saeid Yomtobian, D2000 0937 (WIPO Oct. 13, 2000).
Consequently, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Complainant alleges that Respondent has recently targeted Complainant in phishing schemes by registering domain names and sending emails appearing to come from executives and other personnel working for Complainant. However, the Panel notes that Complainant has failed to submit evidence of these emails, so the Panel will not take this allegation into account.
Further, the Panel notes that Respondent’s previous adverse UDRP decisions demonstrate a pattern of bad faith. See Zoetis Inc. v. VistaPrint Technologies Ltd, FA1550102 (Nat. Arb. Forum May 5, 2014) (finding Respondent is engaging in a pattern of bad faith); Bank of America Corp. v. VistaPrint Technologies Ltd., FA1583575 (Nat. Arb. Forum Dec. 3, 2014) (finding pattern of bad faith). Panels have held that a respondent’s prior adverse UDRP decisions can indicate bad faith. See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting). The Panel finds that Respondent’s bad faith is established under Policy ¶ 4(b)(ii) from previous adverse decisions before prior UDRP panels.
The disputed domain name resolves to a web site advertising Respondent’s website creation services. Respondent’s use of the domain name 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. Past panels have found bad faith where confusingly similar domain was used to advertise. See Bama Rags, Inc. v. Zuccarini, FA 94381 (Nat. Arb. Forum May 8, 2000) (finding bad faith where the respondent used a misspelling of the complainant’s famous mark to attract Internet users to a series of advertisements). See also Compagnie de Saint-Gobain v. VistaPrint Technologies Ltd, FA1401001538013 (Nat. Arb. Forum Feb. 10, 2014) (presuming commercial gain from redirect of typosquatted name to Respondent’s website); Allianz of Am. Corp. v. Bond, FA0604000680624 (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); AOL LLC v. iTech Ent, LLC, FA0606000726227 (Nat. Arb. Forum July 21, 2006) (finding that respondent registered and used a disputed domain name in bad faith where it diverted Internet users to its own website, likely profiting from this use); G.D. Searle & Co. v. Celebrex Drugstore, FA0208000123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv) where the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); National Geographic Society v. Domain Admin / Private Registrations Aktiengesellschaft, FA1412001596598 (Nat. Arb. Forum Feb. 6, 2015) (finding that “although the website does not appear to be operated by a direct competitor, there does not need to be direct competition to establish bad faith under ¶ 4(b)(iii). Bad faith can be established through confusion and/or diversion of consumers in a disruptive manner.”).
Thus the Panel finds bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <izoetis.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: December 8, 2015
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