The Complainant is Zef Scientific, Inc., United States of America (“United States”), represented by Moore Ruddell LLP, United States.
The Respondent is VRX LABS, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2021. On September 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 13, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 the Respondent of the Complaint, and the proceedings commenced on September 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 13, 2021.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on October 17, 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 BackgroundThe Complainant is a corporation established in May 2005 under the laws of the State of Massachusetts, United States and headquartered in San Diego, California, United States, with affiliates in Canada, India, and Morocco. The Complainant services and repairs mass spectrometry laboratory equipment worldwide. Its services are advertised at trade shows as well as on Google and “www.labx.com”, an online laboratory equipment marketplace. The Complainant reports United States annual sales in excess of USD 10 million. The Complainant operates a website at “www.zefsci.com”, a domain name it first registered in 2005 (the “Complainant’s website”), with linked social media sites on LinkedIn and Instagram. The Panel notes media references to the Complainant, such as a profile of the Complainant among the “50 Most Trustworthy Companies of the Year 2019” in The Silicon Review. The Complainant’s website and social media sites advertise its participation at trade shows and industry events such as those sponsored by the American Society for Mass Spectrometry (ASMS), displaying the Complainant’s ZEFSCI acronym based on its name and a design logo featuring that acronym.
The Complainant refers to the ZEFSCI mark, although there is no evidence of a trademark registration. The Complainant apparently intends to refer to common law trademark rights. These are not mentioned on the Complainant’s website, and there is no “TM” symbol accompanying the ZEFSCI acronym or logo as presented on the website. However, the Panel notes that screenshots of the Complainant’s website available through the Internet Archive’s Wayback Machine from 2006 onward show that the Complainant has consistently displayed the ZEFSCI word mark and design logo on its website over the years.
The Registrar reports that the Domain Name was registered on April 29, 2021 by the Respondent VRX Labs, showing an address in Long Beach, California, United States. VRX Labs operates a website at “www.vrxlabs.com”, where it describes its business as testing cannabis products for the California Department of Cannabis Control. The website of the California Bureau of Cannabis Control shows that VRX Labs is the trade name of 8 Lane Investments Inc., a California corporation licensed by the Bureau. Notably, the Respondent’s postal address is not the same as the one shown in the registration of the Domain Name, and its email and telephone numbers are not given as the contact details for the Domain Name registrant. Instead, the Domain Name registration lists a telephone number with an area code in the State of Colorado and a Gmail email address. It does not appear that the Domain Name has ever redirected to the VRX Labs website or that the Domain Name has been used as a website by VRX Labs. Thus, it is likely that VRX Labs did not actually register the Domain Name and the registration details provided to the Registrar are falsely attributed to VRX Labs. The term “Respondent” is used hereafter in this Decision to refer to the unknown party or parties that registered and control the use of the Domain Name.
The Domain Name differs by one letter from the domain name used for the Complainant’s website: the letter “l” is substituted for the letter “i”, which is hard to distinguish visually, especially in an email address. It does not appear that the Domain Name has ever been associated with an active website. Instead, shortly after the Domain Name was registered on April 29, 2021, it was used as an email domain for two fraudulent emails sent to one of the Complainant’s customers on April 30 and May 4, 2021. These emails impersonated an actual employee in the Complainant’s billing department and sought to change the bank account to which payments were to be sent. Fortunately, the customer alerted the Complainant’s employee by asking for confirmation of the requested change.
5. Parties’ Contentions A. ComplainantThe Complainant asserts that the Domain Name is confusingly similar to its ZEFSCI mark, differing by a single letter, and that the Respondent has no permission to use its mark. The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name, given that there is no associated website and that the Domain Name has been used only for fraudulent emails impersonating an employee of the Complainant. The Complainant relies on the same facts to establish the Respondent’s bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A. Identical or Confusingly SimilarThe first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant did little to demonstrate the alleged well known character within its industry of its claimed common law trademark rights beyond the bald assertion that the “Complainant’s mark is well known throughout the pharmaceutical, environmental, food, forensics, diagnostics, chemical research, energy and academia industries”. This is not sufficient to establish common law rights in an unregistered mark. As summarized in WIPO Overview 3.0, section 1.3:
“To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. […]
conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning.”
However, as noted above, the Panel finds that there is persuasive evidence that the Complainant has used the acronym ZEFSCI in its business, alone and as the prominent textual element of a design logo, since at least 2006, and that it has advertised and established a reputation under this mark in the United States and internationally in a defined “market niche” (id.) for servicing LCMS (liquid chromatography–mass spectrometry) laboratory equipment. The Panel finds, therefore, that the Complainant likely has protectable common law rights in the ZEFSCI mark and concludes that it has standing to maintain a UDRP Complaint, satisfying the first element of the Complaint, as the Domain Name is confusingly similar to the ZEFSCI mark.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy gives non-exclusive examples of instances in which a respondent may establish rights or legitimate interests in a domain name, by demonstrating any of the following:
(i) before any notice to it of the dispute, 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; or
(ii) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.
The Complainant has established trademark rights, a lack of permissive use, and fraudulent use by the Respondent. The Respondent has not come forward to assert rights or legitimate interests in the Domain Name. The Panel finds that there are no evident rights or legitimate interests on the part of the Respondent and that the Complainant prevails on the second element of the Complaint.
C. Registered and Used in Bad FaithThe Policy, paragraph 4(b), furnishes a list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”. These are expressly non-exhaustive examples, however, and other trademark abusive or illegitimate conduct may demonstrate bad faith. See WIPO Overview 3.0, section 3.4 (“Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution.”). The Respondent in this case was clearly aware of the Complainant, registered a Domain Name nearly identical to the Complainant’s distinctive mark, and within days of registering the Domain Name used it for emails sent to a customer of the Complainant, under the name of one of the Complainant’s actual employees, in an effort to divert payments from the customer. The Respondent’s provision of false registration details and its failure to respond to the Complaint provide further support for the inference of bad faith.
The Panel finds that this course of conduct reflects bad faith in the registration and use of the Domain Name within the meaning of the Policy and concludes that the Complainant has established the third element of the Complaint.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain name,
W. Scott Blackmer
Sole Panelist
Date: October 31, 2021