Complainant is Shionogi & Co., Ltd. of Osaka, Japan, represented by LeClairRyan, PLLC, United States of America (“United States”).
Respondent is Name Redacted.1 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2018. On April 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 12, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 April 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 7, 2018.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on May 25, 2018. 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 a company organized under the laws of Japan which, together with the Shionogi group of companies, is active in the pharmaceutical industry.
Complainant has provided evidence that it is the registered owner of the following national trademark with protection for the United States:
- Word mark SHIONOGI, United States Patent and Trademark Office (“USPTO”), Registration No.: 3944828, Registration Date: April 12, 2011, Status: Active.
Respondent, according to the WhoIs information for the disputed domain name, is a resident of the United States and has registered the disputed domain name on February 21, 2018. As of the time of the rendering of this decision, the disputed domain name resolves to a default page at “www.” informing Internet users that: “This domain name has been redirected.”
Complainant has provided copies of various emails dated February 28, 2018 and March 20 and 22, 2018, which were apparently sent by Respondent using an email address under the disputed domain name, namely which pretended to have been sent by Complainant’s CEO in an attempt to request legal services by law firms in referencing false disputes and fabricated documents in order to induce subsequent money transfers by the law firms to the sender of these emails.
Complainant requests that the disputed domain name be transferred to Complainant. 5. Parties’ Contentions A. Complainant
Complainant contends to be a 140 year old global pharmaceutical company which was founded in 1878 and named after its founder Gisaburo Shiono.
Complainant submits that the disputed domain name is identical to Complainant’s SHIONOGI trademark as it incorporates the latter in its entirety with the only difference being the addition of the corporate designation “ltd” and the generic Top-Level-domain (“gTLD”) suffix “.com”.
Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Complainant has no relationship with Respondent and has never authorized it to use the SHIONOGI trademark, (2) there is no evidence that Respondent has used the disputed domain name in connection with a bona fide offering of goods or services, but rather to send emails representing itself to be Complainant’s CEO in order to engage unsuspecting law firms for unauthorized legal work and thereby inducing money transfers by these law firms to third parties trusting in fraudulent cashiers’ checks issued by Respondent and returned unpaid, and (3) Respondent is clearly using the disputed domain name in a commercial and unfair manner and Respondent itself apparently is not known by the disputed domain name, but rather is posing as Complainant’s CEO.
Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since (1) Respondent registered the disputed domain name in the name of Complainant’s CEO and under a postal address in New York, United States, which corresponds with the address of a New York law firm that has never represented Complainant, (2) Respondent has used the disputed domain name to solicit legal services while falsely representing that it is Complainant’s CEO and thereby inducing money transfers by these law firms to third parties trusting in fraudulent cashiers’ checks issued by Respondent and returned unpaid, and (3) Respondent’s attempt to falsely establish a connection with Complainant in order to confuse consumers into contracting with Respondent clearly demonstrates that Respondent knew of Complainant and its SHIONOGI trademark prior to registering the disputed domain name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, the Panel may draw such inferences as are appropriate from Respondent’s failure to submit a Response. A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name is confusingly similar to the SHIONOGI trademark in which Complainant has rights.
The disputed domain name incorporates the SHIONOGI trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see, e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8), that the addition of a generic wording to a trademark in a domain name is normally insufficient, in and of itself, to avoid the finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the term “ltd”, being the corporate designation for a “limited liability company”, does not dispel the confusing similarity arising from the incorporation of Complainant’s SHIONOGI trademark in the disputed domain name.
Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i). B. Rights or Legitimate Interests
The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent has not been authorized to use Complainant’s SHIONOGI trademark, either as domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the term “Shionogi”. Finally, Respondent has neither used the disputed domain name for a bona fide offering of products or services nor for a legitimate noncommercial or fair purpose. On the contrary, Respondent apparently sent fake emails under the disputed domain name impersonating Complainant’s CEO in order to engage unsuspecting law firms for unauthorized legal work and thereby inducing money transfers by these law firms to third parties trusting in fraudulent cashiers’ checks issued by Respondent and returned unpaid.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has not responded, Respondent has not met that burden
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
Using the disputed domain name in a fraudulent manner by sending fake emails in order to engage unsuspecting law firms for unauthorized legal work and thereby inducing money transfers by these law firms to third parties trusting in fraudulent cashiers’ checks issued by Respondent and returned unpaid, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own email communication by creating a likelihood of confusing with Complainant’s SHIONOGI trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s fake emails. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the larger meaning of paragraph 4(b)(iv) of the Policy.
In this context, the Panel further notes that Respondent obviously made use of false contact information when registering the disputed domain name under the full name of Complainant’s CEO. This case of an identity theft alone supports the conclusion of registration and use of the disputed domain name by Respondent in bad faith.
Therefore, the Panel finds that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii). 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 Complainant.
Stephanie G. Hartung
Sole Panelist
Date: June 5, 2018
1 Respondent appears to have used the full name of Complainant’s CEO under a postal address in New York, United States, when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name and contact details of Respondent as listed in the WhoIs for the disputed domain name. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See: ASOS plc. v. Name Redacted,WIPO Case No. D2017-1520; Banco Bradesco S.A. v. FAST-12785241 Attn. B / Name Redacted,WIPO Case No. D2009-1788.
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