Complainant is Edwards Lifesciences Corporation, United States of America (“United States”), represented by Sheppard Mullin Richter & Hampton LLP, United States.
Respondents are Registration Private, Domains By Proxy, LLC, United States / Margaret Brisch, United States and Name Redacted1 . 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2020. On July 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 28, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 29, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to amend the Complaint adding the Registrar-disclosed registrants as formal Respondents and provide relevant arguments or evidence demonstrating that all named Respondents are, in fact, the same entity and/or that all domain names are under common control; and/or file a separate complaint. Complainant filed an amended Complaint on July 29, 2020. 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 Respondents of the Complaint, and the proceedings commenced on August 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 23, 2020. On August 23, 2020, the Center received an email communication form a third-party claiming unauthorized use of its identity in relation to the The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on September 3, 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 Complainant and its subsidiaries develop and market medical products in more than 100 countries and have over 12,800 employees. The Wall Street Journal recognized Complainant as one of “Management Top 250,” ranking Complainant 25 out of 820 and one of eight “All Stars” for across-the-board rankings. Complainant owns the EDWARDS trademark (the “EDWARDS Mark” or “Complainant’s Mark”), and has used the mark since at least as early as 1966 in connection with its medical products and services. Complainant owns various trademark registrations for the EDWARDS Mark in the United States, including registration number 4,477,045 (registered on February 4, 2014). Complainant also owns and operates the domain name The disputed domain names Complainant argues that the disputed domain names are identical or confusingly similar to its EDWARDS Mark because they reproduce identically and entirely the EDWARDS mark. Complainant argues that the inclusion of the descriptive terms “science” or “sciences” in the disputed domain names, respectively, does not preclude a finding of confusing similarity. Complainant also contends that Respondents have no rights or legitimate interests in or to the disputed domain names. According to Complainant, Respondents have never been commonly known by the disputed domain names, that Complainant has not licensed Respondents the right to use Complainant’s Mark, and that Respondents are not otherwise authorized to act on Complainant’s behalf. Furthermore, Complainant argues that Respondents’ use of the disputed domain names to perpetrate phishing fraud cannot be considered a bona fide offering of goods and services. Complainant also contends that the disputed domain names were registered and used in bad faith. Complainant argues that Respondents must have had actual knowledge of Complainant’s rights in the EDWARDS Mark given the complete incorporation of the EDWARDS mark in the disputed domain names and Respondents’ attempt to impersonate a number of Complainant’s employees and executives to conduct a fraudulent scheme to obtain private and highly confidential personal information from individuals interested in working for Complainant. Moreover, Complainant asserts that Respondent’s bad faith conduct is manifestly shown in their use of the disputed domain names to perpetrate phishing fraud. B. Respondent Respondents did not reply substantively to Complainant’s contentions. The only response received was from Respondent Name Redacted, where it claimed that it did not register any of the disputed domain names and that the only contact information associated with it that is correct is the physical address. Respondent Name Redacted asserted that the email addresses and phone number attributed to it are not under its control. 6. Discussion and Findings 6.1. Preliminary Issue: Consolidation of Respondents Paragraph 3(c) of the Policy states that a complaint “may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.” Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that “[w]here a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.” Complainant here showed ample evidence that both disputed domain names are part of a single fraudulent enterprise whereby Respondent poses as employees for Complainant who are searching for prospective job candidates in order to steal sensitive information from individuals looking for employment with Complainant. Therefore, consolidation of the Complaint against both of the individuals named as Respondents is appropriate in this proceeding, as there appears to actually be a single Respondent who is using these multiple identities as the named registrants of the disputed domain names. 6.2. Substantive Issues Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the disputed domain names are 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 names; and (iii) the disputed domain names were registered and are being used in bad faith. Furthermore, section 4.3 of the WIPO Overview 3.0 states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? 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, even though Respondent has failed to address Complainant’s contentions, 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 nationally registered trademark registration constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the EDWARDS Mark through its United States registrations. With Complainant’s rights in the EDWARDS Mark established, the remaining question under the first element of the Policy is whether the disputed domain names (typically disregarding the Top-Level Domain (“TLD”) in which each domain name is registered) are identical or confusingly similar to Complainant’s Mark. Here, Complainant’s EDWARDS Mark is fully incorporated in both disputed domain names. Furthermore, the inclusion of the descriptive terms “science” or “sciences” in the disputed domain names does nothing to prevent a finding of confusing similarity under the first element. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain names are confusingly similar to Complainant’s EDWARDS trademark. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the 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. Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain names. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that it has never authorized, licensed or permitted Respondent to use the EDWARDS Mark in any way. Complainant has also asserted that Respondent is not commonly known by the disputed domain names. As shown in evidence submitted by Complainant, the disputed domain names were used to impersonate certain employees or executives working for Complainant to perpetrate a fraudulent scheme to obtain highly sensitive personal information from individuals interested in obtaining employment with Complainant. These activities cannot be considered bona fide offerings of goods or services nor legitimate noncommercial or fair uses under the Policy. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; WIPO Overview 3.0, section 2.13.1, and section 2.5.1. Indeed, the use of a domain name for illegal activity, including phishing and fraud, can never confer rights or legitimate interests on a respondent. See, e.g., Wikimedia Foundation, Inc. v. Nanci Nette, Name Management Group, Case No. D2018-0717; WIPO Overview 3.0, section 2.13.1. Respondent has failed to rebut Complainant’s allegations and evidence, and therefore, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain names within the meaning of Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith In this case, bad faith can be found in the registration and use of the disputed domain names. Complainant provided ample evidence to show the widespread use and numerous registrations of the EDWARDS Mark that long predates Respondent’s registration of the disputed domain names. Complainant also provided ample evidence showing that Respondent was impersonating specific employees currently working for Complainant to conduct a fraudulent phishing scheme. Therefore, Respondent was undoubtedly aware of Complainant and its rights in the EDWARDS Mark when they registered the disputed domain names. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. The use of the disputed domain name to conduct an apparent fraudulent scheme to collect Internet users’ personal data via email addresses impersonating certain employees and executives working for Complainant is the type of illegal activity that is manifestly considered evidence of bad faith under the Policy. See WIPO Overview 3.0, section 3.1.4; Wikimedia Foundation, Inc., supra. Therefore, Respondent’s registration and use of the disputed domain names not only clearly indicate full knowledge of Complainant’s EDWARDS Mark, but also an attempt to misleadingly divert consumers for Respondent’s own commercial gain in some manner through its fraudulent activities. See Policy, paragraph 4(b)(iv). For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain names were 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 names Brian J. Winterfeldt 1 Respondent appears to have used the name of a third party when registering the disputed domain name
Sole Panelist
Date: September 14, 2020
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