Complainant is Amgen, Inc., United States of America (“United States”), represented by McDermott Will & Emery LLP, United States of America.
Respondent is Amgen India, AMGEN India Inc., India. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2019. On May 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 29, 2019, 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 May 31, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On June 5, 2019, Complainant filed an amended Complaint.
The Center verified that the Complaint together with 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 June 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 26, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 1, 2019.
On July 16, 2019, the Center appointed Roberto Bianchi as the sole panelist in this matter. 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 global biotechnology company specialized in research, innovation, and treatment in the areas of cardiovascular disease, oncology, bone health, neuroscience, nephrology, and inflammation. Complainant operates in approximately 100 countries, including the United States and Australia, and has approximately 20,000 staff members worldwide.
Complainant owns various trademark registrations for AMGEN in the United States, including the following:
AMGEN, United States Registration No. 1,621,967, registered on November 13, 1990, filed on July 24, 1989, covering various pharmaceutical preparations in International Class 5 (first use in commerce April 1984), and genetic engineering research and development in International Class 42 (first use in commerce January 1, 1981).
AMGEN, United States Registration No. 2,170,735, registered on July 7, 1998, filed on August 7, 1996, covering various pharmaceutical preparations in International Class 5 (first use in commerce 1987).
AMGEN, United States Registration No. 3,226,919, registered on April 10, 2007, filed on October 19, 2005, covering a house mark for a full line of pharmaceuticals and various pharmaceuticals and devices, etcetera, in International Class 5 (first use in commerce April 1984); a reusable device for assisting in removing needle guards, etcetera, in International Class 10 (first use in commerce November 20, 2001); various billing and referral services in International Class 35 (first use in commerce October 4, 2001); administration of patient reimbursement programs in International Class 36 (first use in commerce October 4, 2001); educational services in International Class 41 (first use in commerce October 6, 1997); medical research in International Class 42 (first use in commerce January 1, 1981); patient support services in International Class 44 (first use in commerce March 31, 2002).
AMGEN, United States Registration No. 3,921,146, registered on February 15, 2011, filed on October 19, 2005, covering a house mark for a full line of pharmaceuticals, and various pharmaceutical preparations in International Class 5 (first use in commerce October 1984).
Since July 27, 1990, Complainant owns the domain name , at which it operates its “www.” website.
The Disputed Domain Name was registered on September 14, 2018.
The Disputed Domain Name resolves to a parking web page displaying related links or “sponsored listings”, such as “Sansex Stock Market”, “Pharma Companies”, “India Share Price”, “Price in India”, “Pharma Companies India”, “India Pharma”, “Companies India”, “Companies in India”, “India of Indian”, “Od India Company”. 5. Parties’ Contentions A. Complainant
Complainant contends that the Disputed Domain Name is virtually identical to Complainant’s AMGEN marks, except for the addition of the word “India”, a generic term that does nothing to distinguish the Disputed Domain Name from Complainant’s AMGEN marks. The addition of a Top-Level Domain such as “.com” does nothing to alleviate the substantial identity between Complainant’s marks and the Disputed Domain Name.
Complainant also contends that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. First, there is no evidence that Respondent is commonly known by “amgen”. Instead, Respondent is attempting to defraud others by holding itself out as “Amgen India,” including in its domain name registration. It is alleged by Complainant, that the address provided by Respondent in registering the Disputed Domain Name is not an address of an office of Complainant.
Second, the AMGEN mark is an arbitrary term coined by Complainant and therefore, is not one Respondent “would legitimately choose unless seeking to create an impression of an association with Complainant”. See Sbarro Franchise Co., LLC v. Domain Admin Domain Admin /Burc Caglayan,WIPO Case No. D2016-1837.
Third, Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the Disputed Domain Name, which Respondent has parked and has no content. See, e.g., Leo Vegas Gaming Ltd. v. Claes Bergström,WIPO Case No. D2015-1135 (display of Registrar parking page is not bona fide use).
Fourth, Complainant has never authorized Respondent to register or use Complainant’s AMGEN mark as part of any domain name. There is no affiliation, connection, or association between Respondent and Complainant.
Fifth, Respondent is using the Disputed Domain Name in bad faith, for the reasons set forth below. See N.C.P. Marketing Group, Inc. v. Entredomains, WIPO Case No. D2000-0387(“Bad faith registration and use of domains does not establish rights or legitimate interests in the names.”); Telstra Corp. Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (“Taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name that would not be illegitimate[.]”).
Lastly, Complainant says that the Disputed Domain Name was registered and is being used in bad faith. Complainant owns numerous trademark registrations for AMGEN and domain names containing the word “Amgen,” which were registered before Respondent registered the Disputed Domain Name. Under these circumstances, “it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use” . Telstra Corp. Ltd. v. Nuclear Marshmallows, supra. Given Complainant’s numerous trademark registrations, its domain names, and its reputation in AMGEN, “it is also not plausible to conceive of a plausible circumstance in which the Respondent would have been unaware of [these facts]” at the time Respondent registered the Disputed Domain Name. Respondent has thus registered in bad faith. In light of the above, Respondent’s passive holding of the Disputed Domain Name constitutes use in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
As seen at section 4 above, Complainant has submitted printouts of certificates of trademark registration for the AMGEN mark in the United States. Thus, the Panel is satisfied that Complainant has rights in this mark for purposes of Policy paragraph 4(a)(i).
The Panel notes that in the Disputed Domain Name the AMGEN mark is incorporated in its entirety, with the addition of the geographic term “India”. In the view of the Panel, such an addition does nothing to prevent a finding of confusing similarity, see also Advance Magazine Publishers Inc. v. Vanilla Limited/ Domain Finance Ltd. / Minakumari Periasany,WIPO Case No. D2004-1068 (holding that the addition of a geographic modifier such as in does not in any way remove or dilute the likely confusion that arises from the registration of the domain name). See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”) The addition of the generic Top-Level Domain, being a technical requirement of a domain name registration, is disregarded when assessing the first element of the Policy.
The Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s mark AMGEN. B. Rights or Legitimate Interests
Complainant says it has never authorized Respondent to register or use Complainant’s AMGEN mark in a domain name, and that it has no affiliation, connection, or association with Respondent.
The Panel agrees with Complainant that there is no evidence on the case file that Respondent is commonly known by “Amgen” or “Amgen India”. While according to the relevant WhoIs data reported by the Registrar to the Center, the registrant of the Disputed Domain Name is “Amgen India, Amgen India Inc”, there is no evidence that any such company exists in India. In fact, the Panel under its general powers under Rules paragraph 10(a), could not find any company under this name after searching on the companies’ database of the Ministry of Corporate Affairs of the Government of India.1
The Panel considers that “being commonly known” requires concrete evidence, which does not appear to exist in this case. See WIPO Overview 3.0, section 2.3 (“How would a respondent show that it is commonly known by the domain name or a name corresponding to the domain name? … Mere assertions that a respondent is commonly known by the domain name will not suffice; respondents are expected to produce concrete credible evidence…..”). Therefore, Policy paragraph 4(c)(ii) does not apply.
In addition, Respondent failed to contest Complainant’s allegations that “Respondent is attempting to defraud others by holding itself out as ‘Amgen India’, including in its domain name registration” and that “the address provided by Respondent in registering the Disputed Domain Name is not an address of an office of Complainant”.
Complainant also contends that the AMGEN mark is an arbitrary term coined by Complainant and therefore, is not one Respondent would legitimately choose unless seeking to create an impression of an association with Complainant.
The Panel also observes that the Disputed Domain Name resolves to a parking web page displaying “related links” or “sponsored listings”, such as “Sansex Stock Market”, “Pharma Companies”, “India Share Price”, “Price in India”, “Pharma Companies India”, “India Pharma”, “Companies India”, “Companies in India”, “India of Indian”, “Of India Company”. Some of these links resolve to various websites, unrelated to Complainant, apparently belonging to businesses marketing pharmaceutical products, i.e. to competitors of Complainant. At the bottom of this parked webpage, there is a legend stating, “The Sponsored Listings displayed above are served automatically by a third party. Neither Parkingcrew nor the domain owner maintain any relationship with the advertisers”.
In this regard, the Panel considers that several of the links appearing on the website at the Disputed Domain Name relate to pharmaceutical companies or businesses. In the view of the Panel, Respondent by posting these links is capitalizing on Complainant’s mark. This is neither a bona fide offering of goods or services under Policy paragraph 4(c)(i) nor a legitimate noncommercial or fair use of the Disputed Domain Name under Policy paragraph 4(c)(iii). See WIPO overview 3.0, section 2.9 (“Do ‘parked’ pages comprising pay-per-click links support respondent rights or legitimate interests? Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.”).
Complainant has thus succeeded in raising a prima facie case that Respondent lacks rights and legitimate interests in the Disputed Domain Name. Since Respondent failed to present any reasons or explanation for its registration and use of the Disputed Domain Name as described, the Panel concludes that Respondent has no rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
The Panel notes that Complainant first used its AMGEN mark in commerce in 1981, and that this mark was first registered almost three decades before the registration of the Disputed Domain Name. See section 4 above. This strongly suggests that at the time of registration of the Disputed Domain Name, Respondent was fully aware of and targeted Complainant, its AMGEN mark, products and services. In the circumstances of this case, this means that such registration was in bad faith.
As seen above, the Disputed Domain Name is being used to post “sponsored listings” some of which relate to pharmaceutical companies and/or marketers of products in the field of activity of Complainant. This suggests that Respondent is seeking to extract click-through income from the attempts made by Internet users searching for Complainant in India. By using the Disputed Domain Name in this manner, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online locations, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or locations or of products or services on its website or locations. Under Policy paragraph 4(b)(iv), this is a circumstance of registration and use of the Disputed Domain Name in bad faith.
The Panel finds that the Disputed Domain Name was registered and is being used in bad faith. 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.
Roberto Bianchi
Sole Panelist
Date: July 30, 2019
1 See WIPO Overview 3.0, section 4.8 (“May a panel perform independent research in assessing the case merits? Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name, consulting historical resources such as the Internet Archive in order to obtain an indication of how a domain name may have been used in the relevant past, reviewing dictionaries or encyclopedias (e.g., Wikipedia), or accessing trademark registration databases.”)
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