DECISION

 

Amgen Inc. v. Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf

Claim Number: FA2403002087142

 

PARTIES

Complainant is Amgen Inc. ("Complainant"), represented by Mary D. Hallerman, District of Columbia, USA. Respondent is Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf ("Respondent"), Iceland.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <amgen.uk.net> and <amgen.uk.com>, registered with NameCheap, Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 6, 2024; Forum received payment on March 6, 2024.

 

On March 6, 2024, CentralNic confirmed by e-mail to Forum that the <amgen.uk.net> and <amgen.uk.com> domain names are registered by Respondent and Respondent is bound by the CentralNic Dispute Resolution Policy (the "CDRP Policy"). CentralNic further verified that mediation was conducted and failed.

 

On March 7, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 27, 2024 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 the attention of postmaster@amgen.uk.net and postmaster@amgen.uk.com. Also on March 7, 2024, a Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was sent 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On March 28, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Terry F. Peppard as sole Panelist in this proceedings.

 

Having reviewed the pertinent communication records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules appurtenant to the CDRP Dispute Resolution Policy ("Rules"). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the CDRP Policy, CDRP Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: MULTIPLE RESPONDENTS 

Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") provides that a "complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder."  Complainant alleges that the entities controlling the domain names at issue are the same person or entity, which is operating under several aliases. Complainant therefore requests that the two domain name registrants be treated in this proceeding for all purposes as a single Respondent. In support of its request, Complainant asserts the following:

 

(1) the two contested domain names have identical structure, beginning with the mark AMGEN, followed by the country code "uk" (for United Kingdom) and ending with the generic Top Level Domain ("gTLD"), ".net" in one case and ".com" in the other;

 

(2) the domain names are registered with the same Registrar;

 

(3) the domain names were registered one day apart in time;

 

(4) the domain names are being used in the same manner, which is to deliver to recruitment agencies e-mail messages purporting to be from a recruiter employed by Complainant and requesting a return phone call;

 

Respondent does not refute any of these assertions. Therefore, and because it appears from the asserted facts that they cannot be explained by reference to mere coincidence, the Panel concludes that Complainant's request should be granted. See, for example, Caterpillar v. Arendt, FA1789701 (Forum July 2, 2018):

 

The Panel finds that the domain names are under common control because the three domain names are constructed in the same manner, were registered on the same date with the same registrar, have been used in the same way, and use … [the same]… servers…. These elements are sufficient to find that the domain names were registered by the same domain name holder.

 

See also OS Asset, Inc. v. Yan / Beacon Capital Partners, LLC v. Gary Rynhoud, et al., FA 2057022, (Forum Sept. 17, 2023):

 

[T]he disputed domain names are similar to one other and were registered within days of each other. Both … domain names were registered with the same Registrar, use the same privacy shield, use the same naming convention, and were registered under the same Customer Number. . . . the Panel concludes that consolidation of multiple respondents is appropriate in this case.

 

Accordingly, this Decision will refer to the two identified respondents throughout as a single Respondent.

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant is a global biopharmaceuticals company devoted to research regarding and treatment of cardiovascular disease, as well as oncology, bone health, neuroscience, nephrology and inflammation.

 

Complainant holds a registration for the trademark AMGEN, on file with the United States Patent and Trademark Office ("USPTO") as Registry No. 3,921,146, registered February 15, 2011, and renewed March 25, 2021.

 

Respondent registered the domain name <amgen.uk.net> on January 17, 2024, and the domain name <amgen.uk.com> on January 16, 2024.

 

Both domain names are confusingly similar to Complainant's AMGEN trademark.

 

Respondent has not been commonly known by either of the domain names.

 

Complainant has not given Respondent permission to use its AMGEN mark.

 

Respondent is not employing the domain names in connection with either a bona fide offering of goods or services or a legitimate noncommercial or fair use.

 

Rather, Respondent uses the domain names to facilitate the operation of a fraudulent "phishing" scheme by which it delivers to unsuspecting recruitment agencies e-mail messages purporting to come from a recruiter employed by Complainant and requesting a return phone call.

 

Respondent simultaneously uses the domain names to redirect to Complainant's official website at <amgen.com>.

 

By these means Respondent seeks to acquire illicit financial gain.

 

Respondent has neither any rights to nor any legitimate interests in either of the domain names.

 

Respondent's use of the domain names disrupts Complainant's business.

 

Respondent both registered and now uses the domain names in bad faith.

 

Complainant certifies that, prior to the filing of its Complaint, it has participated in a CentralNic Mediation, and that the mediation has been terminated owing to Respondent's refusal to participate.

 

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)       the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and

(2)       Respondent has no rights to or legitimate interests in respect of either of the domain names; and

(3)       the domain names have been registered and are being used by Respondent in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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:

 

i.                      the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.                      Respondent has no rights or legitimate interests in respect of the domain name; and

iii.                      the domain name has been registered or is being used in bad faith.

 

Inasmuch as the CDRP requires that Complainant must have participated in a CentralNic Mediation, and that such mediation has been terminated prior to consideration of the Complaint, and inasmuch as Complainant has certified to its compliance with this requirement, the Panel finds that this proceeding may now advance to a decision.

        

Given the similarity between the Uniform Domain Name Dispute Resolution Policy ("UDRP") and the CDRP Policy, the Panel may draw upon UDRP precedent as applicable in rendering its decision.

 

In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent's failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [...] the Panel finds it appropriate to dismiss the Complaint").

 

Identical and/or Confusingly Similar

By virtue of its registration of the AMGEN trademark with a national trademark authority, the USPTO, Complainant has established that it has rights in that mark sufficient to satisfy the requirement of Policy ¶ 4(a)(i) that it demonstrate standing to pursue its claim against Respondent in this proceeding.  See, for example, Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017):

 

Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.

 

Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent's domain names <amgen.uk.net> and <amgen.uk.com> are confusingly similar to Complainant's AMGEN mark. The domain names incorporate the mark in its entirety, with only the addition of the country code "uk" (for United Kingdom) plus the generic Top Level Domain ("gTLD"), ".net" in one case and ".com" in the other. These alterations of the mark, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy. See, for example, Blue Cross and Blue Shield Assoc. v. Shi Lei, FA 1784643 (Forum June 18, 2018):

 

A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.

 

See also BHP Billiton Innovation Pty Ltd v. Oloyi, WIPO Case No. D2017-0284 (finding that the addition of "usa" to the mark of another in creating a domain name was insufficient to distinguish the resulting domain name from that mark). Further see Dansko, LLC v. zhang wu, FA 1757745 (Forum Dec. 12, 2017) (finding the <danskoshoes.us.com> domain name confusingly similar to the mark DANSKO despite the addition to it of both the ccTLD ".us" and the gTLD ".org").

 

Rights or Legitimate Interests

Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the <amgen.uk.net> and <amgen.uk.com> domain names, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006):

 

Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.

 

Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent's failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain names. See, for example, Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent's failure to respond to a UDRP complaint allows a presumption that a complainant's allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain names that are cognizable under the Policy.

 

We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by either of the domain names <amgen.uk.net> and <amgen.uk.com>, and that Complainant has not licensed or otherwise authorized Respondent to use the AMGEN mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name as "Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf," which does not resemble either of the domain names. On this record, we conclude that Respondent has not been commonly known by either of the disputed domain names so as to have acquired rights to or legitimate interests in either of them within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as "Bhawana Chandel," and nothing in the record showed that that respondent was authorized to use a UDRP Complainant's mark in any manner).

                                                           

We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the challenged domain names to facilitate the operation of a fraudulent "phishing" scheme by which it delivers to unsuspecting recruitment agencies e-mail messages purporting to come from a recruiter employed by Complainant and requesting a return phone call, and, further, that Respondent simultaneously uses the domain names to redirect to Complainant's official website at <amgen.com>, and, finally, that, by these means, Respondent seeks to acquire illicit financial gain. This employment is neither a bona fide offering of goods or services by means of the domain names under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of name is under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in either of the domain names as provided in those subsections of the Policy. See, for example, DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017):

 

Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.

 

The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).

 

Registration or Use in Bad Faith

We are persuaded by the evidence accompanying the Complaint that Respondent's use of the <amgen.uk.net> and <amgen.uk.com> domain names disrupts Complainant's business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent's bad faith in registering and using the domain names. See, for example, BorgWarner Inc. v. McGill, FA 2070564 (Forum Dec. 5, 2023):

 

Respondent registered and uses the Domain Name in bad faith as Respondent uses an email address associated with the Domain Name to attempt to pass itself off as an employee of the Complainant to disrupt the Complainant's business or for financial gain by engaging in fraud. Using a disputed domain name to pass off as an employee of a complainant via email can demonstrate bad faith under Policy …¶ 4(b) (iii) ….

 

We are also convinced by the evidence that Respondent was aware of Complainant and its rights in the AMGEN mark when it registered the disputed domain names. This further demonstrates Respondent's bad faith in registering them. See, for example, BorgWarner, supra:

 

The Panel finds that, at the time Respondent registered the Domain Name, August 31, 2023, Respondent had actual knowledge of Complainant's … mark. The Respondent uses the Domain Name to pass itself off as Complainant for financial gain or to disrupt Complainant's business. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).

 

The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required to be proven under the CDRP Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.

 

Accordingly, it is Ordered that the domain names <amgen.uk.net> and <amgen.uk.com> be TRANSFERRED forthwith from Respondent to Complainant.

 

 

 

____________________________

Terry F. Peppard, Panelist

Dated: April 4, 2024