The Complainant is Amgen, Inc., United States of America (“United States”), represented by McDermott Will & Emery LLP, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Gabriel Taillefer, Canada. 2. The Domain Name and Registrar
The disputed domain name (the “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 May 28, 2019. On May 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 29, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 4, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 11, 2019.
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 the Respondent of the Complaint, and the proceedings commenced on June 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 9, 2019. The Respondent submitted a communication on June 25, 2019.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on July 12, 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
The Complainant is a global biopharmaceuticals company focused on research, innovation, and treatment in the areas of cardiovascular disease, oncology, bone health, neuroscience, nephrology, and inflammation. The Complainant has offered a wide range of goods and services under the AMGEN mark since as early as 1981. The Complainant operates in approximately 100 countries, including the United States and Australia, and has approximately 20,000 staff members worldwide. Over the years, the 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.
The Complainant is the owner of several trademark registrations for AMGEN for various biopharmaceutical goods and services. Since 1990, the Complainant has owned “”.
According to the Registrar, the Respondent registered the Domain Name on October 22, 2018. At the time of filing the Complaint, and at the time of drafting the Decision, the Domain Name resolved to the Registrar’s parking page. 5. Parties’ Contentions A. Complainant
The Complainant provides evidence of trademark registrations. The Complainant argues that it also has extensive common law rights around the world to the AMGEN® marks, and that the Complainant’s AMGEN mark is an arbitrary term coined by the Complainant. The Domain Name incorporates in full the Complainant’s AMGEN marks. The addition of a generic Top-Level Domain (“gTLD”), “.company”, does nothing to alleviate the substantial identity between the Complainant’s marks and Domain Name.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the Domain Name, and taking into account the Complainant’s trademarks and goodwill, it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the Domain Name. There is no evidence of the Respondent’s 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. The Respondent has parked the Domain Name, and it does not resolve to any content.
The Complainant believes it is evident that the Respondent was aware of the fact that it incorporated a recognized and distinctive trademark. The Respondent’s passive holding of the Domain Name constitutes use of a domain in bad faith. B. Respondent
The Respondent sent the following email to the Center on June 25, 2019:
“Dear arbitrator,
Here is a copy of the email I have sent to Amgen Inc. after receiving their Cease and desist letters on the 7th and 30th of January 2019.
As mentioned in the email, I registered this domain for my upcoming company, it is an abbreviation of “Amour Genereux” which means generous love in French, it is not up yet because it is a work in progress, it is not parked for ads revenues either and it was never registered in bad faith as I had no clue of this corporation prior to their cease and desist emails.
I am open for settlement talks on this matter, should the complainant wish to go down this road my legal counsel will engage talks with them.
Best regards,
Gabriel Taillefer
Mr. Gheorghe Cotos,
After receiving your letter, I thought prudent to obtain legal advice from one of my family members. I was also quite surprised to realize that this five letters domain name was owned and trademarked by a multi-billion dollar corporation. Why such a domain name wasn’t formally registered, thus being available, was the first question that came to my mind? Having no knowledge of the aforementioned corporation, I honestly claim that I had no bad faith or ulterior motivation in purchasing domain name other than to use it for my upcoming company that will produce soaps and other cosmetic products branded Amour Généreux (meaning generous love in French).
I fully understand your point in wanting the domain name back, now that I have a full understanding of the corporation you represent. However, I would like to stress out that on my end, I have been working through setting up my new company and I already incurred expenses related to purchasing that domain name, in addition to branding and designing my upcoming product line.
However, I have no interest to engage in a legal battle with your corporation, my only goal being starting my company and trading my products. This is why to avoid long and expensive legal procedures for both parties, I would be willing to accept any reasonable offer you would present me in order to transfer the domain name back to you”. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark AMGEN.
The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name incorporates the Complainant’s trademark. For the purpose of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the gTLD “.company”; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
The Panel finds that the Domain Name is identical to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Respondent has claimed that he had no knowledge of the Complainant when he registered the Domain Name, and that the Domain Name was registered for his “upcoming company that will produce soaps and other cosmetic products branded Amour Généreux (meaning generous love in French)’”.
With the time passed since the registration of the Domain Name, the Panel would expect some evidence to back the Respondent’s explanation. As there is no such evidence of use or preparation to use, the Panel must conclude that the explanation appears pre-textual and not inherently credible, see WIPO Overview 3.0, section 2.2.
In addition, the Panel notes the nature of the Domain Name which is identical to the trademark AMGEN and carries a high risk of implied affiliation with the Complainant’s trademark. See WIPO Overview 3.0, section 2.5.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Based on the evidence, the Panel finds it is more likely than not that the Respondent was aware of the Complainant when he registered the Domain Name.
The lack of use by the Respondent of the Domain Name does not prevent a finding of bad faith under the doctrine of passive holding, see WIPO Overview 3.0, section 3.3. The Complainant’s trademark is well-known and it is reproduced in its entirety, being the Domain Name identical to it. The Respondent has not provided any evidence of good faith use. The Respondent’s email communication of June 25, 2019 does not provide any reasonable explanation for a different conclusion.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is used in bad faith, within the meaning of paragraph 4(a)(iii) 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 Domain Name, , be transferred to the Complainant.
Mathias Lilleengen
Sole Panelist
Date: July 16, 2019
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