Complainant is AmerisourceBergen Services Corporation of Conshohocken, Pennsylvania, United States of America, represented by Kutak Rock LLP, United States of America (the “United States”).
Respondent is Domain Privacy c/o Domain Privacy ApS of København K, Denmark / Ray Kennedy of Houston, Texas, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with Ascio Technologies Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2016. On August 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 15, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 22, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 24, 2016. In reply to a communication from the Center sent on August 31, 2016, Complainant filed an amendment to the amended Complaint on September 1, 2016.
The Center verified that the Complaint together with amended Complaint and the amendment to the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 26, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 28, 2016.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on October 3, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant is owner (by way of assignment) of registrations for the word service mark AMERISOURCEBERGEN on the Principal Register of the United States Patent and Trademark Office (USPTO), including registration number 2,609,432, registration dated August 20, 2002, in international class (IC) 35, covering, inter alia, wholesale distributorship services featuring pharmaceuticals, and medical equipment and supplies, and word and design service mark AMERISOURCEBERGEN, registration number 2,617,944, registration dated September 20, 2002, in IC 35, covering “wholesale distributorship services featuring pharmaceuticals, medical and surgical supplies, health care and beauty aid products”.
Complainant’s parent company owns registration of the domain name which it uses in connection with a commercial Internet website on which it offers services relating to distribution of pharmaceuticals, medical supplies and related products.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, the record of registration of the disputed domain name was created on May 13, 2016.
Respondent has used the disputed domain name as the domain identifier portion of email addresses which it uses for contacting suppliers of pharmaceutical and medical products falsely representing that the email is transmitted by Complainant and/or its representatives. Although the disputed domain name includes a single letter misspelling of Complainant’s service mark, as do the email addresses used by Respondent, Respondent in the signature block of its deceptive emails correctly spells Complainant’s service mark. Complainant has provided evidence that some prospective vendors have, in fact, at least initially been misled by the emails transmitted by Respondent. Prospective vendors have contacted Complainant to verify orders placed by Respondent that deceptively incorporate the disputed domain name.
There is no evidence on the record of this proceeding that Respondent has used the disputed domain name in connection with an active website.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)). 5. Parties’ Contentions A. Complainant
Complainant alleges that it owns rights in the service mark AMERISOURCEBERGEN, and that the disputed domain name is nearly identical, and certainly confusingly similar, to its service mark.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent is using the disputed domain name for fraudulent purposes; (2) Respondent has not been commonly known by the disputed domain name; (3) Respondent has not been authorized by Complainant to use its service mark as part of the disputed domain name; and (4) Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent is using the disputed domain name to disrupt Complainant’s business, and; (2) Respondent is using the disputed domain name to create a likelihood of confusion as to its supposed affiliation with Complainant and to profit or otherwise benefit from such confusion. Complainant states that Respondent’s typographically accurate use of Complainant’s service mark in the signature line of its correspondence makes clear that Respondent is aware of Complainant and its service mark, and that Respondent is deliberately using the disputed domain name to engage in fraudulent activity.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The Center formally notified the Complaint to Respondent at the email, fax and physical addresses provided in its record of registration. Courier delivery to Respondent was successful. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief. A. Identical or Confusingly Similar
Complainant has provided evidence of ownership of rights in the service mark AMERISOURCEBERGEN, including through registration at the USPTO and by use in commerce in the United States. Respondent has not challenged Complainant’s service mark rights. The Panel determines that Complainant has rights in the service mark AMERISOURCEBERGEN.
The disputed domain name is identical for purposes of the Policy to Complainant’s service mark, except that it contains an additional letter “r” in “berrgen”. The visual impression, sound and meaning of the disputed domain name and Complainant’s service mark are nearly identical, and are likely to confuse Internet users, including recipients of email messages incorporating the disputed domain name.
The Panel determines that Complainant has rights in the service mark AMERISOURCEBERGEN and that the disputed domain name is confusingly similar to that service mark. B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“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 your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 trademark or service mark at issue”. (Policy, paragraph 4(c)).
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not replied to the Complaint, and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.
Respondent’s use of the disputed domain name as an email identifier to attempt to deceive prospective vendors as to the identity of the source of purchase orders does not establish rights or legitimate interests on the part of Respondent. Respondent’s use of the disputed domain name does not otherwise manifest rights or legitimate interests.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”. These include: “(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, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online 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 respondent’s] website or location.”
Complainant has provided evidence that Respondent is using the disputed domain name to attempt to secure pharmaceutical and/or medical products from suppliers under the false pretense that Respondent is, or is acting on behalf of, Complainant. Such conduct is certainly disruptive to the business of Complainant, although there is no evidence on the record of this proceeding that Complainant is in a competitive relationship with Respondent. Element (iii) of paragraph 4(b) expressly refers to “disrupting the business of a competitor”. Respondent is using the disputed domain name for commercial gain to attempt to attract Internet users to its email purchase orders. This activity might be construed to involve deceptively attracting Internet users to Respondent’s online location within the express terms of paragraph 4(b)(iv), even though such an interpretation may be somewhat strained.
Respondent’s conduct does not fit “neatly” into the circumstances expressly enumerated in paragraph 4 of the Policy. However, the circumstances listed in paragraph 4(b) are illustrative, and not exclusive. Respondent’s use of the disputed domain name in an email address for purposes of defrauding product suppliers manifestly constitutes action in bad faith in view of the objective of the Policy to remedy abuses of the domain name system. Respondent’s conduct constitutes deliberate abuse of the domain name system.
The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, , be transferred to the Complainant.
Frederick M. Abbott
Sole Panelist
Date: October 17, 2016
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