Complainant is Amgen, Inc., United States of America (“United States”), represented by McDermott Will & Emery LLP, United States.
Respondent is Registration Private, Domains By Proxy, LLC, United States / David Howell, United States. 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 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 June 4, 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 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 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. Further to a request from the Parties the proceedings were suspended on July 1, 2019 and were reinstituted on August 29, 2019. The Response due date was re-established as September 7, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 11, 2019.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on September 25, 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, Amgen, Inc., is a global biopharmaceuticals company focused in the areas of cardiovascular disease, oncology, bone health, neuroscience, nephrology, and inflammation. Complainant is the owner of numerous trademark registrations for the AMGEN mark, including United States Registration Number 2,170,735 (registered on July 7, 1998). Complainant owns and uses a primary website located at the domain name to offer and promote its biopharmaceutical goods and services.
Respondent registered the disputed domain name on April 11, 2019. The disputed domain name resolves to a parked page. 5. Parties’ Contentions A. Complainant
Complainant asserts that the disputed domain name is identical or confusingly similar to the AMGEN trademark in which Complainant has rights. Complainant asserts that its AMGEN mark is well-known, and associated with a wide range of biopharmaceutical-related services and goods since as early as 1981. Complainant further asserts extensive common law rights around the world in the AMGEN mark, given its use of the mark in 100 countries, including the United States, and given its investment of millions of dollars in advertisements and promotion around goods and services offered under the mark. Complainant contends that the disputed domain name incorporates Complainant’s AMGEN mark in full. Complainant asserts the addition of the generic Top-Level Domain (“gTLD”) “.doctor” does nothing to alleviate the substantial identity between Complainant’s AMGEN mark and the disputed domain name, but rather exacerbates the substantial identity in light of Complainant’s biopharmaceutical business.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts there is no evidence that Respondent is commonly known as “AMGEN.” Complainant further asserts that “AMGEN” is an arbitrary term coined by Complainant and therefore Respondent could not legitimately choose the disputed domain name without creating a false impression of association with Complainant. Complainant contends that Respondent is not engaged in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name. Complainant further asserts that Respondent is not authorized to register or use Complainant’s AMGEN mark. Complainant asserts there is no affiliation, connection, or association between Complainant and Respondent.
Complainant asserts that the disputed domain name was registered and is being used in bad faith. Complainant contends that given Complainant’s numerous trademark registrations and reputation of the AMGEN trademark, it is not plausible to believe Respondent was unaware of Complainant. Complainant asserts it is not possible to conceive a plausible circumstance of legitimate use. Complainant further asserts Respondent’s passive holding of the disputed domain name constitutes use of the disputed domain name in bad faith.
Accordingly, Complainant has requested that the disputed domain name be transferred to Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(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 was registered and is being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“[…]Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed: a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to formally respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of ownership of the AMGEN mark. With Complainant’s right in the AMGEN mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the gTLD in which it is registered, in this case, “.doctor”) is identical or confusingly similar to Complainant’s mark. See, e.g., B&H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2019-0842.
Here, the disputed domain name is identical to Complainant’s AMGEN mark at the second level. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its right in the AMGEN mark, and in showing that the disputed domain name is identical or confusingly similar to this mark. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in the disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once Complainant makes such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainant. If Respondent fails to come forward with evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the UDRP.
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name:
(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and its well-known AMGEN trademark and that Respondent does not have any rights or legitimate interests in the disputed domain name. The AMGEN mark is widely used and Complainant has spent millions of dollars marketing its goods and service under the AMGEN mark. AMGEN is a fanciful trademark that was coined by Complainant and has no other meaning other than as Complainant’s trademark. Therefore there is no reasonable basis to believe that Respondent could have registered the disputed domain name without knowing about Complainant and its AMGEN mark, and without the intention of creating a false impression of association with Complainant.
Respondent is not authorized to use the AMGEN mark, and is not affiliated to, connected to, or associated with Complainant. Further, Respondent has used the disputed domain name to redirect Internet users to a parked page. This type of use does not constitute a bona fide offering of goods or services or a legitimate noncommercial fair use. See, e.g., Playboy Enterprises International, Inc. v. Tom Baert,WIPO Case No. D2007-0968.
Respondent has failed to submit any evidence demonstrating a right or legitimate interest in the disputed domain name, and therefore Complainant has met its burden in establishing that Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and used the disputed domain name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
Complainant provided ample evidence to show the widespread use and numerous registrations of the AMGEN trademark that long predates the registration of the disputed domain name by Respondent. Therefore, Respondent was likely aware of the AMGEN trademark when it registered the disputed domain name, or knew or should have known that the disputed domain name was identical or confusingly similar to Complainant’s mark. SeeWIPO Overview 3.0, section 3.2.1.; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. Although Complainant presented limited evidence to suggest that any of the specific bad faith factors in Policy paragraph 4(b) are present in this case, given the notoriety of Complainant’s fanciful AMGEN mark, with the mere passive holding of the disputed domain name, and Respondent’s failure to present any countervailing evidence to rebut Complainant’s claims, the Panel can only conclude that the disputed domain name was registered and used in bad faith under paragraph 4(b)(iii) of the Policy. See OVH SAS v. EE, Emre Erim,WIPO Case No. D2012-0330. There is simply no plausible legitimate reason for Respondent to have registered the disputed domain name without any association with or authorization from Complainant. Accordingly, the Panel finds that Complainant succeeds under this 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 Complainant.
Brian J. Winterfeldt
Sole Panelist
Date: October 14, 2019
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