Complainant is Ivax LLC, United States of America (the “United States”), represented by SILKA AB, Sweden.
Respondent is Contact Privacy Inc. Customer 0161280011, Canada / Name Redacted.1 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2021. On July 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 2, 2021, 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 July 2, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on July 5, 2021. The Center verified that the Complaint together with the amendment to the 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 July 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 26, 2021. The Center appointed Phillip V. Marano as the sole panelist in this matter on August 12, 2021. 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 is a pharmaceutical company that researches, develops, manufactures, and markets pharmaceutical products. Complainant owns a valid and subsisting registration for the IVAX trademark in the United States, registration number 2986008, registered on August 16, 2005. The disputed domain name was registered on March 31, 2021. At the time of this Complaint, the disputed domain name does not resolve to any website content. However, Complainant has provided evidence the disputed domain name was used for a phishing scheme targeting Complainant’s employees and vendors. 5. Parties’ Contentions A. Complainant Complainant asserts ownership of the IVAX trademark and has adduced evidence of a trademark registration in the United States. The disputed domain name is confusingly similar to Complainant’s IVAX trademark, according to Complainant, because it directly incorporates Complainant’s IVAX trademark and adds the word “corporation” it identically matches Complainant’s previous corporate name “Ivax Corporation” before it was changed to “Ivax, LLC”. Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name based on: Respondent’s use of the disputed domain name to impersonate Complainant to perpetrate a phishing scheme targeting Complainant’s employees and vendors; Complainant’s successful suspension of the disputed domain name through the Registrar based on proof of such impersonation and phishing; the lack of any evidence that Respondent is known by the disputed domain name; and the lack of any license or authorization by Complainant for Respondent to use Complainant’s IVAX trademark. Complainant argues that Respondent has registered and used the disputed domain name in bad faith for numerous reasons, including: Respondent’s intentional targeting of Complainant to mimic Complainant’s official corporate company name through registration of the disputed domain name; Respondent’s use of the disputed domain name to impersonate Complainant to perpetrate a phishing scheme targeting Complainant’s employees and vendors; and Respondent’s use of a proxy registration service to increase the difficulty for Complainant to identify Respondent. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings To succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy: ii. Respondent has no rights or legitimate interests in respect of the disputed domain name; and ii. the disputed domain name has been registered and is being used in bad faith. Although Respondent did not reply to Complainant’s contentions, the burden remains with Complainant to establish by a balance of probabilities, or a preponderance of the evidence, all three elements of paragraph 4(a) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3 (“A respondent’s default 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. UDRP panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case, e.g. where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.”); The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064 (“The Respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a)”). A. Identical or Confusingly Similar Ownership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint. WIPO Overview 3.0, section 1.2.1. Complainant submitted evidence that the IVAX trademark has been registered in the United States, nearly two decades before the disputed domain name was registered by Respondent. Thus, the Panel finds that Complainant’s rights in the IVAX trademark have been established pursuant to the first element of the Policy. The only remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s IVAX trademark. In this Complaint, the disputed domain name is confusingly similar to Complainant’s IVAX trademark because, disregarding the “.com” generic Top‑Level Domain (“gTLD”), the trademark is contained in its entirety within the disputed domain name. WIPO Overview 3.0, section 1.7. (“This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name [… I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar[...]”). Also, gTLDs, such as “.com” in the disputed domain name, are generally viewed as a standard registration requirement and are disregarded under the first element. WIPO Overview 3.0, section 1.11. The addition of the term “corporation” to Complainant’s IVAX trademark does not prevent a finding of confusing similarity. See WIPO Overview 3.0, section 1.8 (Additional terms “whether descriptive, geographic, pejorative, meaningless, or otherwise” do not prevent a finding of confusing similarity where the relevant trademark is recognizable within the disputed domain name); see also AT&T Corp. v. WorldclassMedia.com,WIPO Case No. D2000-0553, and OSRAM GmbH v. Cong Ty Co Phan Dau Tu Xay Dung Va Cong Nghe Viet Nam,WIPO Case No. D2017-1583 (“[T]he addition of the letters ‘hbg’ to the trademark OSRAM does not prevent a finding of confusing similarity between the Disputed Domain Name and the said trademark.”). In view of Complainant’s registration of the IVAX trademark, and Respondent’s incorporation of that trademark in its entirety in the disputed domain name, the Panel concludes that Complainant has established the first element of the Policy. B. Rights or Legitimate Interests Complainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden of production on this element to Respondent to come forward with evidence demonstrating such rights or legitimate interests. Where, as in this Complaint, Respondent fails to come forward with any relevant evidence, Complainant is deemed to have satisfied the second element of the Policy. WIPO Overview, section 2.1. It is evident that Respondent, usurping the identity of a former employee of Complainant in the WhoIs details of the disputed domain name, is not commonly known by the disputed domain name or Complainant’s IVAX trademark. Moreover, UDRP panels have categorically held that use of a domain name for illegal activity – including the impersonation of the complainant and other types of fraud – can never confer rights or legitimate interests on a respondent. See WIPO Overview 3.0, section 2.13. See, e.g., Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge,WIPO Case No. D2009-1017 (“Respondent has used the domain name to pretend that it is the Complainant and in particular to create false emails pretending that they are genuine emails coming from the Complainant and one of its senior executives”). See also The Commissioners for HM Revenue and Customs v. Name Redacted,WIPO Case No. D2017-0501 (“In addition, the disputed domain names […] have had their web hosting suspended as a result of fraudulent activities. This is evidence of bad faith registration and use of the disputed domain names.”) Here, Complainant has proffered ample direct evidence that Respondent is engaged in illegal activity as part of a fraudulent email phishing scheme. Specifically, Complainant provided fraudulent emails, a credit application, and a purchase order sent by Respondent through an email address associated with the disputed domain name, which impersonated a former employee of Complainant in an attempt to defraud money from the recipients. In view of Complainant’s ample direct evidence that Respondent has used the disputed domain name in furtherance of an illegal email phishing scheme, and in the absence of any response from Respondent, the Panel concludes that Complainant has established the second element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy proscribes the following non-exhaustive circumstances as evidence of bad faith registration and use of the disputed domain name: i. circumstances indicating that Respondent has registered or Respondent has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out of pocket costs directly related to the disputed domain name; or ii. Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or iii. Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or iv. by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. UDRP panels have categorically held that registration and use of a domain name for illegal activity – including impersonation, phishing, passing off, and other types of fraud – is manifestly considered evidence of bad faith within paragraph 4(b)(iv) of the Policy. WIPO Overview 3.0, section 3.1.4. Wrongful use of others’ trademarks to fraudulently induce money or information from unsuspecting and unwary Internet users, by using the disputed domain name for phishing activity, is considered quintessential abusive registration of the disputed domain name under the Policy. See CareerBuilder, LLC v. Stephen Baker,WIPO Case No. D2005-0251; The Boots Company, PLC v. The programmer adviser,WIPO Case No. D2009-1383. See, e.g., WSI Holdings Ltd. v. WSI House,WIPO Case No. D2004-1089 (“Respondent appears to be engaged in ‘phishing’ for mistaken potential employees of the Complainant […] Respondent (1) has adopted a confusingly similar domain name, (2) it has used the trade dress of the Complainant’s website, and (3) it has sought to attract users to its site by creating confusion between its site and the Complainant’s. It has clearly engaged in activity which fulfils the bad faith requirements of Paragraph 4(b)(iv) of the Policy.”) See, e.g., Go Daddy Operating Company, LLC v. Wu Yanmei,WIPO Case No. D2015-0177 (emails sent by the respondent from domain names using the complainant’s trademark in an attempt to obtain complainant's customer information was held to be use of the disputed domain name for a phishing scheme and consequently bad faith under the Policy); AB Electrolux v. Piotr Pardo,WIPO Case No. D2017-0368 (engaging in fraudulent email phishing activities through unauthorized use of a trademark for obtaining data or deriving information is construed as bad faith under the Policy). As already addressed by the Panel with respect to the second element of the Policy, Complainant has proffered ample direct evidence that Respondent is engaged in illegal activity as part of a fraudulent email phishing scheme, including copies of fraudulent emails, a credit application, and a purchase order sent by Respondent through an email address associated with the disputed domain name. Furthermore, where it appears that a respondent employs a privacy or proxy service merely to avoid being notified of a UDRP proceeding filed against it, UDRP panels tend to find that this supports an inference of bad faith. See WIPO Overview 3.0, section 3.6. Use of a privacy or proxy registration service to shield a respondent’s identity and elude or frustrate enforcement efforts by a legitimate complainant demonstrates bad-faith use and registration of a disputed domain name. See Fifth Third Bancorp v. Secure Whois Information Service,WIPO Case No. D2006-0696 (the use of a proxy registration service to avoid disclosing the identity of the real party in interest is also consistent with an inference of bad faith when combined with other evidence of evasive, illegal, or irresponsible conduct). In this Complaint, Respondent’s use of proxy registration services of Contact Privacy Inc. Customer 0161280011 resulted in obfuscation of Respondent’s identity in furtherance of Respondent’s illegal activity, which was more likely than not Respondent’s intended result. Finally, the use of false registration data in connection with a disputed domain name further supports a finding of bad faith registration and use in this Complaint. See, e.g., Action Instruments, Inc. v. Technology Associates,WIPO Case No. D2003-0024 (Providing false contact information violates paragraph 2 of the Policy, which requires a registrant to represent that the statements it “made in [its] Registration Agreement are complete and accurate.” Maintaining that false contact information in the WHOIS records (which can easily be updated at any time) after registration constitutes bad faith use of the domain name because it prevents a putative complainant from identifying the registrant and investigating the legitimacy of the registration.”); Royal Bank of Scotland Group v. Stealth Commerce v. a.k.a. Telmex Management Services, Inc.,WIPO Case No. D2002-0155; Home Director, Inc. v. HomeDirector,WIPO Case No. D2000-0111. Respondent clearly used fraudulent contact information to register the disputed domain name, misappropriating the name of a former employee of Complainant in furtherance of Respondent’s illegal phishing scheme. In view of Respondent’s attempted impersonation of Complainant, Respondent’s illegal email phishing scheme, Respondent’s use of a proxy registration service to obfuscate its identity and illegal activity, and Respondent’s use of false registration data in furtherance of its illegal phishing scheme, the Panel concludes that Complainant has established 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 Phillip V. Marano 1 Respondent appears to have used the name of a former employee of Complainant when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST‑12785241 Attn. Bradescourgente.net / Name Redacted,WIPO Case No. D2009-1788.
i. the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights;
Sole Panelist
Date: August 24, 2021
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