Complainant is Amgen, Inc., United States of America (“USA”), represented by McDermott Will & Emery LLP, Washington, D.C., USA.
Respondent is Contact Privacy Inc. Customer 1244155679, Canada / Henry Rodriguez, Bemis Company, Inc., USA. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Google LLC (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 30, 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 June 6, 2019 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 June 6, 2019.
The Center verified that the Complaint together with 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 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 2, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 10, 2019.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on July 17, 2019. 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 states that it is “a global biopharmaceuticals leader focused on research, innovation, and treatment in the areas of cardiovascular disease, oncology, bone health, neuroscience, nephrology, and inflammation”; that it “has offered a wide range of goods and services under the AMGEN® mark since as early as 1981”; that it “operates in approximately 100 countries, including the United States of America and Australia, and has approximately 20,000 staff members worldwide”; and that it “Complainant has invested many millions of dollars advertising and promoting its goods and services under the AMGEN® mark throughout the United States and the world. Complainant owns extensive common law rights around the world to the AMGEN® marks”. These marks are referred to herein as the “AMGEN Trademark”.
Complainant states, and provides evidence to support, that it is the owner of multiple registrations for the AMGEN Trademark, including U.S. Reg. No. 1,621,967 for AMGEN (registered November 13, 1990); U.S. Reg. No. 2,170,735 for AMGEN (registered July 7, 1998); U.S. Reg. No. 3,226,919 (registered April 10, 2007); and U.S. Reg. No. 3,921,146 (registered February 15, 2011).
The Disputed Domain Name was registered on March 16, 2019, and is not being used in connection with an active website. 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the AMGEN Trademark because it “is virtually identical to Complainant’s AMGEN® marks, except for the addition of ‘ltd.’” and “[t]he addition of a generic term does nothing to distinguish Respondent’s domain from Complainant’s AMGEN® marks”.
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “there is no evidence that Respondent is commonly known by AMGEN®”; “Complainant’s AMGEN® mark is an arbitrary term coined by Complainant and is therefore not one Respondent; “would legitimately choose unless seeking to create an impression of an association with Complainant” (internal punctuation and citation omitted); “Respondent’s parking of the Domain Name is not a use of a domain name in connection with a bona fide offering of goods or services”; “Complainant has never authorized Respondent to register or use Complainant’s AMGEN® mark as part of any domain name”; “[t]here is no affiliation, connection, or association between Respondent and Complainant”; and “Respondent does not have rights or legitimate interests in because Respondent is using that domain in bad faith.”
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “Complainant owns numerous trademark registrations for AMGEN® and domains containing the word ‘Amgen,’ which registered before Respondent registered the domain,” so therefore “it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use ” (internal punctuation and citation omitted); “[g]iven 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 ” (internal punctuation and citation omitted); and “[i]n light of the above circumstances, Respondent’s passive holding of the domain constitutes use of a domain in bad faith”. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (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. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registration cited by Complainant, it is apparent that Complainant has rights in and to the AMGEN Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the AMGEN Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “amgenltd”) because “[t]he applicable Top-Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.
The Disputed Domain Name contains the AMGEN Trademark in its entirety, adding only the descriptive term “ltd” (an abbreviation for “limited”). As set forth in section 1.8 of WIPO Overview 3.0, “[w]here 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”.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “there is no evidence that Respondent is commonly known by AMGEN®”; “Complainant’s AMGEN® mark is an arbitrary term coined by Complainant and is therefore not one Respondent; “would legitimately choose unless seeking to create an impression of an association with Complainant” (internal punctuation and citation omitted); “Respondent’s parking of the Domain Name is not a use of a domain name in connection with a bona fide offering of goods or services”; “Complainant has never authorized Respondent to register or use Complainant’s AMGEN® mark as part of any domain name”; “[t]here is no affiliation, connection, or association between Respondent and Complainant”; and “Respondent does not have rights or legitimate interests in because Respondent is using that domain in bad faith.”
WIPO Overview 3.0, section 2.1, states: “[W]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’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 registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b). However, the factors listed above are, as the Policy itself states, “without limitation”.
As set forth in section 3.3 of WIPO Overview 3.0 (citing Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003):
“From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding.
While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
Here, it is obvious that the AMGEN Trademark is highly distinctive, given its long and widespread use; Respondent has not submitted a response; Respondent initially used a privacy service to conceal its true identity; and it is implausible that the Disputed Domain Name could be put to any good faith use.
Accordingly, the Panel finds that Complainant has proven the third element 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.
Douglas M. Isenberg
Sole Panelist
Date: July 23, 2019
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