The Complainant is AmerisourceBergen Services Corporation, United States of America (“United States”), represented by Kutak Rock LLP, United States.
The Respondent is Larry Welsh, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2019. On December 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 16, 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 the Complainant on December 18, 2020, 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 December 20, 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 December 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 17, 2020. The Center appointed Lynda M. Braun as the sole panelist in this matter on January 27, 2020. 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 one of the world’s largest pharmaceutical service companies, serving the United States, Canada and selected global markets with a focus on the pharmaceutical supply channel. Servicing both pharmaceutical manufacturers and health care providers, the Complainant was formed by the merger of Bergen Brunswig and AmeriSource in 2001. The Complainant provides drug distribution and related services designed to reduce costs and improve patient outcomes. It distributes a line of brand name and generic pharmaceuticals, over the counter health care products, and home health care supplies and equipment to a wide variety of health care providers. The Complainant is well-known in the health care and pharmaceutical industries. The Complainant is the owner of the following federally registered word mark AMERISOURCEBERGEN in the United States, including, but not limited to: United States Reg. No. 2,609,432, registered on August 20, 2002 in international class 35; United States Reg. No. 4,856,653, registered on November 17, 2015 in international class 39; United States Reg. No. 5,073,848, registered on November 1, 2016 in international class 35; United States Reg. No. 5,186,995, registered on April 18, 2017 in international classes 16. 38, 41, 44 and 45; and United States Reg. No. 5,291,426, registered on September 19, 2017 in international classes 35, 36, 42 and 44 (hereinafter referred to collectively as the “AMERISOURCEBERGEN Mark”). The Complainant owns the domain name The Disputed Domain Name was registered on September 16, 2019. When the Complainant drafted the Complaint in this proceeding, the Disputed Domain Name did not resolve to a standalone website, but rather resolved directly to the Complainant’s official website.1 The Respondent placed orders on the Complainant’s business partner’s web forms for goods or services, listing “procurement@amerisourcebergenus.com” as the Respondent’s email, and the Complainant’s company name as the Respondent’s company, creating the false impression that the Complainant’s business partners were communicating with the Complainant.2 5. Parties’ Contentions A. Complainant The following are the Complainant’s contentions: - the Disputed Domain Name is confusingly similar to the Complainant’s trademark. - the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. - the Disputed Domain Name was registered and is being used in bad faith. - the Complainant seeks the transfer of the Disputed Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding: (i) the Disputed Domain Name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights; and (ii) the 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. A. Identical or Confusingly Similar This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the AMERISOURCEBERGEN Mark. It is uncontroverted that the Complainant has established rights in the AMERISOURCEBERGEN Mark based on its many years of use as well as its registered trademarks for the AMERISOURCEBERGEN Mark in the United States. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot,WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has enforceable rights in the AMERISOURCEBERGEN Mark. The Disputed Domain Name consists of the AMERISOURCEBERGEN Mark in its entirety along with the descriptive term “us”, followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive term. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “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”. Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182. Thus, the Disputed Domain Name is confusingly similar to the Complainant’s AMERISOURCEBERGEN Mark. Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent bears the burden of production to demonstrate rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. There is no evidence in the record suggesting that the Respondent has rights or legitimate interests in the Disputed Domain Name. The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use the Complainant’s AMERISOURCEBERGEN Mark. The Complainant does not have any business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Based on the use made of the Disputed Domain Name, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. On the contrary, the Respondent used the AMERISOURCEBERGEN Mark in the Disputed Domain Name for illegitimate commercial gain. In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case. As such, the Panel determines that the Respondent does not have rights or legitimate interests in the Disputed Domain Name. Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith The Panel finds that, based on the record, the Complainant has demonstrated the Respondent’s bad faith registration and use of the Disputed Domain Name pursuant to paragraph 4(b) of the Policy. First, the Respondent registered and used the Disputed Domain Name in bad faith by creating the false impression that the Complainant owned or was affiliated with the Disputed Domain Name. The Respondent accomplished this by using a false email address, “procurement@amerisourcebergenus.com” to place orders with the Complainant’s business partners so that the business partners would believe that they were communicating with the Complainant. Even if the business partners were to attempt to verify the source of the email by going to the Disputed Domain Name, it would not lead them to a third-party website, but directly to the Complainant’s official website, creating the mistaken and false impression that the Complainant owned or sponsored the Disputed Domain Name. Further, the Respondent knew or should have known of the Complainant’s rights in its AMERISOURCEBERGEN Mark when registering the Disputed Domain Name. The Respondent registered the Disputed Domain Name years after the Complainant first used and obtained its trademark registrations for the AMERISOURCEBERGEN Mark. Based on the use of the AMERISOURCEBERGEN Mark and the Complainant’s federally registered trademarks, it strains credulity to believe that the Respondent had not known of the Complainant or its AMERISOURCEBERGEN Mark when registering the Disputed Domain Name. See Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763 (“a finding of bad faith may be made where the respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the domain name”). In sum, the Panel finds it likely that the Respondent had the Complainant’s AMERISOURCEBERGEN Mark in mind when registering the Disputed Domain Name. Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant. 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 Lynda M. Braun 1 As of the writing of this Decision, however, the Disputed Domain Name resolves to a web page with no substantive content, containing only a statement that indicates that the user has reached the page in error. 2 The Complainant submitted copies of emails between its personnel and business partners in which the Respondent used the aforementioned email address as an exhibit to the Complaint.
Sole Panelist
Date: February 2, 2020
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