The Complainant is Penumbra, Inc., United States (“United States”), represented by Shartsis Friese LLP, United States.
The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Dean Bailey, Penumbra, Inc., 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 December 16, 2021. On December 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 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 the Complainant on December 29, 2021, 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 31, 2021.
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 January 17, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2022.
The Center appointed William F. Hamilton as the sole panelist in this matter on February 28, 2022. 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 United States company that manufactures and sells medical devices. The Complainant is the owner of the trademark PENUMBRA (the “Mark”) which is registered by itself or as a component of a larger compose trademarks in numerous jurisdictions around the world, including with the United States Patent and Trademark Office, the earliest of which was Registration No. 3678273 registered on September 8, 2009.
The Complainant owns the domain name
The disputed domain name was registered on November 4, 2021. The disputed domain name resolves by redirection to the Complainant’s website.
During November and December 2021, fraudulent purchase orders we placed with Apple, Inc. using the Complainant’s address and contact information for computer products that were shipped to a California, United States address not associated with the Complainant. The orders were placed by a person using the email address [...]@penumbramedical.com. The Complainant received an invoice from Apple for these fraudulent purchases.
5. Parties’ Contentions A. ComplainantThe Complainant asserts the disputed domain name is confusingly similar to the Mark because the disputed domain name is composed by merely dropping the distinctive image from the Mark and adding the word “medical”.
The Complainant asserts that the Complainant never authorized the Respondent to use the disputed domain name, that the Respondent is not generally known by the disputed domain name, and that the Respondent has never engaged in any bona fide commercial activity in connection with the disputed domain name.
The Complainant asserts that the Respondent registered and used the disputed domain name in bad faith as part of a criminal scheme to impersonate the Complainant and to commit fraud.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s Mark.
The disputed domain name is composed by merely dropping the distinctive image from the Mark adding the word “medical” to the Mark. A domain name which distinctive features of a complainant’s registered mark is sufficient to establish confusingly similarity for the purposes of the Policy when, as here, the Mark is a clearly recognizable within the disputed domain name notwithstanding the addition of a descriptive term as a suffix or minor character changes. Here the visual impact of the Mark in the disputed domain name is apparent and obvious. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (“where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographic, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”); Regeneron Pharmaceuticals, Inc. v. Registration Private, Domains by Proxy, LLC / Regeneron Careers,WIPO Case No. D2017-0013; Bombas LLC v. Domain Administrator, See PrivacyGuardian.org / Maryellen J Dillard, Maryellen Dillard,WIPO Case No. D2021-0609.
The generic Top-Level Domain (“gTLD”) of the disputed domain name, in this case “.com”, is disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement. See WIPO Overview 3.0, section 1.11.1; Monster Energy Company, a Delaware Corporation v. J.H.M. den Ouden,WIPO Case No. D2016-1759; International Business Machines Corporation v. Sledge, Inc. / Frank Sledge,WIPO Case No. D2014-0581.
The Complainant has met its burden under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe Complainant has specifically disavowed providing the Respondent with permission to use the disputed domain name or the Mark. The Respondent is not affiliated with the Complainant in any way and does not have any business relationship with the Complainant. There is no evidence that the Respondent has conducted any bona fide business under the disputed domain name or is commonly known by the disputed domain name. Compagnie de Saint Gobain v. Com-Union Corp.,WIPO Case No. D2000-0020.
The Complainant has thus established a prima facie case in its favor, which shifts the burden of production on this point to the Respondent. The Respondent, however, has failed to come forth with any evidence showing any rights or legitimate interests in the disputed domain name.
Furthermore, the nature of the disputed domain name, which highly resembles the Mark carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1. Indeed, the addition of the word “medical” to the word component of the Mark when creating the disputed domain name creates an enhances likelihood of implied affiliation. Moreover, is its apparent from the evidence submitted, see Annex 5 to the Complainant, that the disputed domain name is being used in connection with a fraudulent scheme.
The facts and circumstances presented to the Panel demonstrate that the Respondent does not have any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithThe Panel finds the disputed domain name was registered and is being used in bad faith.
A simple Internet search, normally undertaken before registering a domain name, would have disclosed the Complainant’s Mark. The fact that the disputed domain name redirects to the Complainant’s official website compels the conclusion that the actual Respondent was aware of the Complainant’s Mark when registering the disputed domain name.
Use of a domain name incorporating a trademark by an unauthorized third party to redirect Internet users to either a complainant’s or a competitor’s website is strong evidence of bad faith under paragraph 4(b)(iv) of the Policy. WIPO Overview 3.0, section 3.1.4.
On the evidence presented by the Complainant in Annex 5, it is apparent that the disputed domain name has been used in connection with a fraudulent scheme tricking a company into shipping product to the Respondent while mistakenly believing the suppler is dealing with the Complainant. Utilization of a disputed domain name in such a scheme is paradigmatic bad faith registration and use. Pfizer Inc. v. Sarthak Kapoor, WIPO Case No. D2019-0292; Desko Gmbh v. Mustafa Mashari,WIPO Case No. D2015-0817.
7. DecisionFor 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
William F. Hamilton
Sole Panelist
Date: March 14, 2022