ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Amgen, Inc. v. Daniel Lopez Case No. D2024-1278 1. The Parties Complainant is Amgen, Inc., United States of America, represented by Snell & Wilmer, LLP, United States of America. Respondent is Daniel Lopez, United States of America (“United States”). 2. The Domain Name and Registrar The disputed domain name
is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2024. On March 26, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 27, 2024, 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 (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to Complainant on April 3, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 3, 2024. 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 Respondent of the Complaint, and the proceedings commenced on April 16, 2024. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 8, 2024.
page 2 The Center appointed Clark W. Lackert as the sole panelist in this matter on May 28, 2024. 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 This Complaint is based on Complainant’s famous and registered trademark AMGEN in the United States and elsewhere. Complainant is a global biopharmaceuticals leader focused on research, innovation, and treatment in the areas of cardiovascular disease, oncology, bone health, neuroscience, nephrology, and inflammation. Complainant has offered a wide variety of goods and services under its AMGEN marks since as early as 1981. Complainant’s AMGEN-branded goods and services are advertised and sold on a global scale. Complainant operates in approximately 100 countries, including the United States, China, and Hong Kong, China, and employs over 20,000 people worldwide. In 2022, Complainant earned over USD 25 billion in worldwide revenue from its AMGEN-branded goods and services. Over the years, Complainant has invested heavily in advertising and promoting its goods and services under its AMGEN marks throughout the United States and around the world. As a result, Complainant’s AMGEN marks have acquired goodwill and recognition, and the public associates AMGEN-branded goods and services exclusively with Complainant. Complainant owns common law rights around the world in its AMGEN marks due to extensive use. Additionally, Complainant owns numerous registrations worldwide for its AMGEN marks and formatives thereof, many of which were issued decades ago and the earliest of which was registered in 1990. A few of these registrations are as follows: Jurisdiction Registration Number Registration Date United States 1,621,967 November 13, 1990 WIPO 893,256 February 9, 2006 European Union Intellectual Property Office 000064170 March 4, 2002 Canada 723,927 July 22, 1994 Japan 2,540,285 May 31, 1993 Additionally, Complainant has registered domain names incorporating its AMGEN trademark including on July 27, 1990, and on June 8, 2011. The disputed domain name was registered on January 27, 2024. The disputed domain name resolves to an inactive webpage but it has been used to send fraudulent emails. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name which is identical or confusingly similar to Complainant’s AMGEN trademark together with a descriptive term “careers”. Respondent has no rights or legitimate interests in the trademark AMGEN or the disputed domain name , and Respondent had registered the disputed domain name in bad faith leading to misdirected web traffic and illegal use of its domain name to mislead potential employees of Complainant that this is the correct location for information on “careers” at Amgen. The disputed domain name incorporates in full Complainant’s AMGEN marks. The addition of the term “careers” does not reduce the substantial identity between Complainant’s AMGEN marks and the disputed domain name . See Bayer AG v. Melissa Solis, et al., WIPO Case No. D2022-4127, finding the addition of term “career” to the complainant’s trademark BAYER does not prevent a finding of confusing similarity between the disputed domain name and complainant’s mark. “It is the general view among UDRP panels that where the relevant trademark is recognizable within the disputed
page 3 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 of the UDRP.” Similarly, the addition of a hyphen between the terms “careers” and “amgen” does not reduce the substantial identity between Complainant’s AMGEN marks and the disputed domain name . The addition of a generic Top-Level Domain (“gTLD”) such as “.com” to Complainant’s AMGEN marks also does not reduce the substantial identity between Complainant’s marks and the disputed domain name . See, e.g., Pomellato S.p.A v. Tonetti, WIPO Case No. D2000-0493, finding the domain name identical to complainant’s mark because the addition of .com to the POMELLATO mark is not relevant to a Policy Paragraph 4(a)(i) analysis. There is no evidence that Respondent is commonly known by Amgen, Careers-Amgen, or Amgen Careers. Complainant has not authorized Respondent to register or use Complainant’s AMGEN marks. There is no affiliation, connection, or association between Respondent and Complainant. The use of the disputed domain name , which resolves to an inactive webpage and to send emails to pose as Complainant’s talent acquisition and recruiting director, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Subsea 7 Limited v. James Huntley, WIPO Case No. D2023-2481 “The use that has taken place of the Disputed Domain Name, as already set out, involves the Disputed Domain Name resolving to an inactive website and being used to impersonate the CEO of the Complainant. Panels have categorically held that the use of a domain name for illegal activity (e.g., phishing, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.” WIPO Overview 3.0, Section 2.13. Given Complainant’s exclusive use of the AMGEN marks for decades, tens of billions of USD in worldwide annual revenues for goods and services sold under those marks, dozens of international trademark registrations and formatives thereof, and the AMGEN brand’s reputation as among the most famous biopharmaceutical brands in the world, “it is . . . not plausible to conceive of a plausible circumstance in which the Respondent would have been unaware of [these facts]” at the time Respondent registered . Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Respondent has thus registered the disputed domain name in bad faith to misdirect web traffic and pursue illegal consumer fraud. See Johnson & Johnson v. Daniel Wistbacka, WIPO Case No. D2017-0709, finding bad faith registration where “the integral reproduction of [complainant’s trademark] within the disputed domain name can hardly be the result of coincidence”). B. Respondent Respondent did not reply to t Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The Panel finds the first element of the Policy has been established.
page 4 B. Rights or Legitimate Interests Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The illegal and fraudulent use of a domain name to mislead consumers into believing that Respondent was sponsored by or connected with Complainant is prima facie evidence of bad faith use and registration. See, e.g., Ropes & Gray LLP v. Onso Onso, WIPO Case No. D2019-0823 concerning the domain name . As the panel stated: “Moreover, the use of the domain name to illegally spoof and phish existing clients of the Complainant into believing that they are authorized to receive funds on behalf of client is a violation of Policy, paragraph 4(b)(iv). See also Caffitaly System S.p.A. v. WhoisGuard Protected, WhoisGuard, Inc. / Organization: Winsomgroup, Robert Hills, WIPO Case No. D2018-2804, and WIPO Overview 3.0, Section 3.1.4. As the Panel stated therein: “Complainant provided evidence that the disputed domain name was used to create fraudulent email addresses, which were then used the very same day the disputed domain name was registered to commit fraud, in an attempt to have one of Complainant’s clients transfer money into a foreign bank account. In accordance with section 3.1.4 of WIPO Overview 3.0, the use of a domain name for fraudulent activities is considered evidence of bad faith.” Here, Respondent has used the disputed domain name to pose as Complainant to deceive the public. Moreover, the registration of a domain name that copies a widely known mark indicates an intent to target that mark to promote misdirection of Internet traffic, evidence of bad faith. See, e.g., The Dow Chemical Company v. dowchemical eva_hwang@21cn.com +86.7508126859, WIPO Case No. D2008-1078, finding registered in bad faith in view of the “widely known trademarks” of the complainant; see also IDR Solutions Ltd. v. Whois Privacy Corp., WIPO Case No. D2016-2156, evidence of third party recognition of complainant’s JPEDAL mark supported conclusion that was registered in bad faith. As WIPO Overview 3.0, section 3.1.4 states: “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.” Panels have held that the use of a domain name for illegal activity, here, illegal impersonation/passing off of Respondent for Complainant with fraudulent email using the disputed domain name constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. The Panel finds that the Complainant has established the third element of the Policy.
page 5 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 be transferred to Complainant. /Clark W. Lackert/ Clark W. Lackert Sole Panelist Date: June 10, 2024
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