Zoetis Inc. and Zoetis Services LLC v. Paul Adams / zoetismail
Claim Number: FA1704001729095
Complainants are Zoetis Inc. and Zoetis Services LLC (collectively “Complainant”), represented by Laura J. Winston of Kim Winston LLP, New York, USA. Respondent is Paul Adams / zoetismail (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zoetismail.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 27, 2017; the Forum received payment on April 27, 2017.
On April 28, 2017, Wild West Domains, LLC confirmed by e-mail to the Forum that the <zoetismail.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 May 2, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 22, 2017 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@zoetismail.com. Also on May 2, 2017, 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 May 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Zoetis Inc. id a global research-based company based in New Jersey, USA. A subsidiary, Zoetis Services LLC, owns its trademark, ZOETIS. In connection with this business, Complainant uses the ZOETIS mark to promote its goods and services.
2. Complainant has rights in the mark based upon its registration of the ZOETIS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,804,400, registered Sept. 1, 2015). Respondent’s domain name,[1] <zoetismail.com>, is confusingly similar as it contains Complainant’s mark in its entirety and adds the generic word “mail” as well as the generic top-level domain (“gTLD”) “.com”.
3. Respondent lacks rights and legitimate interests in the domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to register a domain name containing the ZOETIS mark.
4. Further, Respondent does not use <zoetismail.com> in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Specifically, the resolving website for the domain name leads to a parked webpage comprising the colorful heading “ZOHO” and a link to the home page of a website development entity named Zoho Corporation Pvt. Ltd.
5. Respondent registered and is using the domain name in bad faith. Respondent uses <zoetismail.com> to send fraudulent emails. Further, Respondent intentionally attracts Internet users who were otherwise seeking Complainant or Complainant’s goods and services for Respondent’s commercial gain. Respondent’s behavior indicates actual knowledge of Complainant’s rights in the ZOETIS mark which is further evidence of Respondent’s bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the ZOETIS mark. Respondent’s domain name is confusingly similar to Complainant’s ZOETIS mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <zoetismail.com> domain name and that Respondent registered and uses the domain name 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(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. See 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); 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 upon its registration with the USPTO (e.g., Reg. No. 4,804,400, registered Sept. 1, 2015). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark.”). The Panel therefore finds Complainant has rights in the ZOETIS mark pursuant to Policy ¶ 4(a)(i).
Next, Complainant argues Respondent’s domain name, <zoetismail.com>, is confusingly similar to Complainant’s mark as it contains the mark in its entirety and adds the generic term “mail” as well as the gTLD “.com”. The addition of generic terms and a gTLD do not remove a domain name from the realm of confusing similarity. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where a domain name contains a complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain). The Panel therefore finds Respondent’s domain name to be confusingly similar to Complainant’s ZOETIS mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <zoetismail.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues Respondent is not commonly known by <zoetismail.com> nor has Complainant authorized Respondent to register a domain name containing its trademark. Where a response is lacking, WHOIS information can support a finding that a respondent has not been commonly known by a domain name. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record lists the registrant as “paul adams.” As such, the Panel concludes Respondent has not been commonly known by the disputed domain name.
Next, Complainant argues Respondent has failed to use <zoetismail.com> in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead the resolving website for the domain name leads to a parked webpage comprising the colorful heading “ZOHO” and a link to the home page of a website development entity named Zoho Corporation Pvt. Ltd. Holding of a confusingly similar domain name with no demonstrable preparations to use it can show a lack of rights and legitimate interests in a domain name per Policy ¶¶ 4(c)(i) & (iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii)). The Panel therefore finds Respondent lacks rights and legitimate interests per Policy ¶¶ 4(c)(i) & (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts Respondent has created a likelihood of confusion with the ZOETIS mark, leading Internet users to believe that Respondent’s webpage is endorsed by Complainant. The Panel agrees. Use of a confusingly similar domain name to take advantage of Internet users’ confusion for commercial gain is evidence of a respondent’s bad faith per Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). The Panel therefore finds evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv).
Finally, Complainant contends Respondent had actual notice of the ZOETIS mark before registering and using the <zoetismail.com> domain name. Actual notice is sufficient for a finding of bad faith per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
The Panel finds Complainant has satisfied 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 <zoetismail.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: June 5, 2017
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