Zoetis Inc. and Zoetis Services LLC v. Leach Mayhall / zoetis-inc
Claim Number: FA1705001730886
Complainant is Zoetis Inc. and Zoetis Services LLC (“Complainant”), represented by Laura J. Winston of Kim Winston LLP, New York, USA. Respondent is Leach Mayhall / zoetis-inc (“Respondent”), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zoetis-inc.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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 10, 2017; the Forum received payment on May 10, 2017.
On May 10, 2017, Wild West Domains, LLC confirmed by e-mail to the Forum that the <zoetis-inc.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 11, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 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@zoetis-inc.com. Also on May 11, 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 June 5, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 asserts trademark rights in ZOETIS. Complainant holds a national registration for that trademark. Complainant submits that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because it has no trademark rights; is not commonly known by the same name; and the domain name has not been used other than for a nefarious purpose.
Complainant alleges that Respondent registered the disputed domain name in bad faith having targeted Complainant’s business and then used the domain name in bad faith for illicit gain and in a way disruptive of Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Paragraph 3(a) of the Rules provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two named complainants: Zoetis Inc. and Zoetis Services LLC. The Complaint does not address the Forum’s Supplemental Rule 1(e). All that is said in the Complaint is that one is an “indirectly wholly-owned subsidiary” of the other. Whether or not that bald statement shows a sufficient nexus might in other circumstances be open to question. Here, there is no contest by Respondent to this or any other matter. For the purposes of Supplemental Rule 1(e) it is reasonable to accept Complainant’s uncontested submission that the named complainants are part of the one company group. The Panel can reasonably assume that one is the group company and the other owns the group intellectual property assets (including the trademark registration nominated below). In this case the Panel therefore treats the named complainants as a single entity[i] and all references herein to “Complainant” are to be understood in that way.
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the ZOETIS trademark in connection with its global animal care business;
2. Complainant owns United States Patent and Trademark Office (“USPTO”) Reg. No. 4,804,400, registered September 1, 2015 for the trademark;
3. the disputed domain name was registered on August 16, 2016; and
4. the domain name resolves to a parked webpage but has been used in correspondence, as described later.
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 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.
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.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.[ii] Complainant therefore has rights since it provides proof of its registration with the USPTO, a national trademark authority.
For the purposes of comparison of the disputed domain name with the trademark the gTLD, “.com”, can be disregarded, as can the addition “-inc”, neither of which has value in distinguishing the domain name from the trademark. The Panel finds the domain name confusingly similar to the trademark. [iii]
Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) 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 noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark 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 lists “Leach Mayhall / zoetis-inc” as the domain name registrant. Complainant states that there is no association between the parties. There is nothing else that might suggest a legitimate connection between the parties. Absent a Response, the Panel treats the use of “zoetis-inc” in the WhoIs information as a deceptive fabrication. The Panel finds no evidence that Respondent might be commonly known by the disputed domain name.
There is no evidence that Respondent has any trademark rights. The disputed domain name resolves to a parked webpage. The only “use” of the disputed domain name has been in faxed correspondence from Respondent to customers of Complainant in what is said to have been an attempt by Respondent to pass itself off as Complainant for illicit purposes. The evidence provided with the Complaint indicates that is clearly so. Accordingly, there has been no bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name.
A prima facie case has been made.[v] The onus shifts to Respondent and in the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
Further guidance on that requirement 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, as separate matters, registration and use of the domain name in bad faith. The fraudulent use of the domain name in correspondence directed to Complainant’s vendors clearly shows that Respondent targeted Complainant’s business and trademark and so registered the domain name in bad faith. The fraudulent use for the purpose of commercial gain shows use in bad faith.
Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zoetis-inc.com> domain name be TRANSFERRED from Respondent to Complainant or to one of the nominated complainants.
Debrett G. Lyons, Panelist
Dated: June 13, 2017
[i] See Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (FORUM May 12, 2006), where the panel stated: “It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.”; see also Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (FORUM Dec. 28, 2003), where the panel treated two complainants as a single entity where both held rights in trademarks contained within the disputed domain names; see Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (FORUM Feb. 6, 2004), where the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
[ii] See, for example, Mothers Against Drunk Driving v. phix, FA 174052 (FORUM Sept. 25, 2003).
[iii] See, for example, Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (FORUM Dec. 31, 2007) finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names; Avaya Inc. v. Evelyn Dayda / Avaya Unlimited Sources LLC, FA 1611255 (FORUM May 4, 2015) finding that as “the ‘usa’ portion of the disputed domain name is a generic geographic term, the internet user will assume that the domain name deals with the activities of Complainant in the USA and that it will lead to a website dealing with that subject. The domain name is therefore confusingly similar to the AVAYA mark and the Panel so finds.”). By analogy, the use of “inc.” would only imply to an Internet user that they are looking at the address of the global arm of Complainant’s organization.
[iv] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[v] See generally, Mortgage Research Center LLC v. Miranda, FA 993017 (FORUM July 9, 2007); Kmart of Mich., Inc. v. Cone, FA 655014 (FORUM Apr. 25, 2006) ; Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (FORUM Mar. 15, 2016); Church Mutual Insurance Company v. Paul Looney, FA 1668317 (FORUM May 17, 2016) all concerned with the use of domain names to create a false identity.
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