WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eli Lilly and Company v. Lilly Careers
Case No. D2016-0641
1. The Parties
The Complainant is Eli Lilly and Company of Indianapolis, Indiana, United States of America ("United States"), represented by Faegre Baker Daniels, LLP of Indianapolis, Indiana, United States.
The Respondent is Lilly Careers of Indianapolis, Indiana, United States.
2. The Domain Name and Registrar
The disputed domain name <lillycareers.org> (the "Disputed Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 4, 2016. On April 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 5, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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 April 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 1, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 2, 2016.
The Center appointed Lynda M. Braun as the sole panelist in this matter on May 9, 2016. 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
The Complainant is a United States global pharmaceutical company that has been in operation for almost 140 years. The Complainant first began using the LILLY trademark (the "LILLY Mark") in commerce in the United States as early as February 1, 1895. The Complainant filed for registration of the LILLY Mark with the United States Patent & Trademark Office on December 7, 1981 and it was registered on February 8, 1983 in connection with medicines, pharmaceutical preparations and drugs. To date, the Complainant has obtained 219 registrations for the LILLY Mark covering more than 142 countries around the world in connection with a variety of goods and services. The Complainant's headquarters are located in Indianapolis, Indiana, where the Respondent is also located, according to the WhoIs results for the Disputed Domain Name.
The Complainant has operated a website at "www.lilly.com" since May 10, 1991, when it registered the <lilly.com> domain name. The website provides detailed information about the company and the pharmaceutical products it has developed.
The Respondent registered the Disputed Domain Name on February 15, 2016, long after the Complainant began to use the LILLY Mark. The Disputed Domain Name, which is passively held, resolves to an Internet error page.
The Respondent uses the Disputed Domain Name to send fraudulent emails from an outgoing email server containing the Disputed Domain Name as an email suffix. The Respondent sends these emails to job boards and recruiting websites such as "www.glassdoor.com" and to job-seeking individuals, claiming to be from the Complainant's Human Resources Department, and inviting job applicants to conduct online interviews. Subsequently, the Respondent asks the applicants to provide personal and/or financial information, such as copies of passports and birth certificates, as well as social security and bank account numbers, before offering them a position.
On March 15, 2016, the Complainant's attorney sent a letter to the Respondent by email, informing the Respondent of the Complainant's rights in the LILLY Mark and demanding that the Respondent cease the use of the Disputed Domain Name and transfer it to the Complainant. The Complainant's attorney did not receive a response.
5. Parties' Contentions
The following are the Complainant's contentions:
- The Disputed Domain Name is confusingly similar to the Complainant's trademark.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Disputed Domain Name was registered and is being used in bad faith.
- The Respondent is using the Disputed Domain Name as part of a phishing scheme to deceive job-seekers into believing that the Complainant's Human Resources Department is inviting them to apply for a job.
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):
(i) The Disputed 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 Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the LILLY Mark based on both longstanding use and its numerous trademark registrations. The Disputed Domain Name <lillycareers.org> consists of the LILLY Mark appended by the generic word "careers", and followed by the generic Top-Level Domain ("gTLD") ".org".
Numerous UDRP panels have reiterated that the addition of a descriptive or generic word to a trademark is insufficient to avoid confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; Hoffman-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923; Nintendo of America, Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434; Weight Watchers International Inc. v. Kevin Anthony, WIPO Case No. D2011-2067.
Moreover, the addition of a gTLD such as ".org" in a domain name may be technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant may make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its LILLY Mark. The Complainant does not have any type of business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Panel finds that the Respondent was improperly using the Disputed Domain Name for commercial gain. The Respondent has been using the Disputed Domain Name as part of a phishing scheme. In this phishing scheme, the Respondent sends emails to job applicants using the Disputed Domain Name as an email suffix to create the impression that the emails are being sent by the Complainant's Human Resources Department in order to fraudulently induce them to provide personal and financial information. Such a phishing scheme cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Disputed Domain Name. See CMA CGM v. Diana Smith, WIPO Case No. D2015-1774.
In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any evidence to rebut the Complainant's prima facie case.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent's bad faith registration and use of the Disputed Domain Name pursuant to paragraph 4(a)(iii) of the Policy.
First, the Respondent's phishing scheme to email job-seeking individuals fraudulent job offers purporting to come from the Complainant, and to collect the personal and financial information of such individuals, evidences a clear intent to disrupt the Complainant's business, deceive individuals, and trade off the Complainant's goodwill by creating an unauthorized association between the Respondent and the Complainant's LILLY Mark. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552. Such conduct is emblematic of the Respondent's bad faith registration and use of the Disputed Domain Name. See Petróleo Brasileiro S.A. - Petrobras v. AK Bright, WIPO Case No. D2013-2063 (considering the reputation of the complainant and the emails sent by the respondent using the complainant's trademark, the respondent is held to have registered and used the disputed domain name in bad faith).
Numerous UDRP panels have found that email-based phishing schemes that use a complainant's trademark in the disputed domain name are evidence of bad faith. See, e.g., DeLaval Holding AB v. Registration Private, Domains By Proxy LLL / Craig Kennedy, WIPO Case No. D2015-2135; CMA CGM v. Diana Smith, WIPO Case No. D2015-1774.
Second, the registration of a domain name that is confusingly similar to a registered trademark by an entity that has no relationship to that mark may be sufficient evidence of opportunistic bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith). Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to create a likelihood of confusion with the Complainant's LILLY Mark.
Third, the Respondent knew or should have known of the Complainant's rights in its widely-used LILLY Mark when registering the Disputed Domain Name. The Respondent registered the Disputed Domain Name decades after the Complainant first used and obtained its numerous trademark registrations for the LILLY Mark and the Respondent is apparently located in Indianapolis, Indiana, the same city as the Complainant. It therefore strains credulity to believe that the Respondent had not known of the Complainant or its LILLY Mark when registering the Disputed Domain Name. See Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763 (a finding of bad faith may be made where Respondent "knew or should have known" of the registration and/or use of the trademark prior to registering the domain name).
Fourth, that the Disputed Domain Name is passively held does not prevent a finding of bad faith. It has long been held in UDRP decisions that the passive holding of a domain name that incorporates a well-known trademark without a legitimate Internet purpose may indicate that the disputed domain name is being used in bad faith under paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Finally, the Respondent's bad faith can be inferred from its lack of reply to the cease and desist letter sent by the Complainant's counsel prior to commencing this proceeding. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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 <lillycareers.org> be transferred to the Complainant.
Lynda M. Braun
Date: May 13, 2016