WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Amgen Inc. v. Jordan Kemple, Jkemp H / Whoisguard Protected, Whoisguard Inc.
Case No. D2016-0844
1. The Parties
The Complainant is Amgen Inc. of Thousand Oaks, California, United States of America ("United States"), represented by DLA Piper LLP, United States.
The Respondent is Jordan Kemple of Pittsburgh, Pennsylvania, United States / Whoisguard Protected, Whoisguard Inc. of Panama.
2. The Domain Name and Registrar
The disputed domain name <amgenmedical.com> (the "Disputed Domain Name") is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 28, 2016. On April 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 28, 2016, 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 May 4, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on May 4, 2016.
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 May 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 1, 2016.
The Center appointed Lynda M. Braun as the sole panelist in this matter on June 7, 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
Founded in 1980, the Complainant is one of the world's leading biotechnology companies. The Complainant is the owner of several United States trademark registrations for the AMGEN trademark, including Registration No. 1,621,967, registered on November 13, 1990, which trademarks have been in use in commerce since 1989 in connection with pharmaceuticals and pharmaceutical-related services. In addition, the Complainant owns more than one hundred trademark registrations in jurisdictions worldwide for AMGEN and variations thereof, for a variety of pharmaceutical and medical products and services including, but not limited to, its pharmaceuticals, medical devices, and pharmaceutical, medical and biotechnology research and design services (collectively, the "AMGEN Mark").
As a result of the extensive use and promotion of the products and services bearing the AMGEN Mark by the Complainant, the AMGEN Mark has become widely known globally and has enjoyed such distinctiveness and notoriety since long before the Respondent registered the Disputed Domain Name.
The Respondent registered the Disputed Domain Name on March 25, 2016, decades after the Complainant began using its numerous trademark registrations for the AMGEN Mark in the United States and abroad. As of the writing of this decision, the Disputed Domain Name does not resolve to any active website. The Complainant provides screen shots in its Complaint showing that the Disputed Domain Name previously resolved to a website that advertised a smartphone application under the name "Amgen Medical". The consumers who visited the Respondent's website and attempted to download its smartphone application were purportedly directed to the Complainant's smartphone application under the same name. The screenshots were identical to another smartphone application not associated or affiliated with the Respondent.
5. Parties' Contentions
The Complainant contends that:
- The Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
- The Disputed Domain Name was registered and is being used in bad faith.
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 AMGEN Mark based on both longstanding use and its numerous trademark registrations in the United States and abroad. The Disputed Domain Name consists of the AMGEN Mark appended by the descriptive word "medical", followed by the generic Top-Level Domain ("gTLD") ".com".
Numerous UDRP panels have reiterated that the addition of a descriptive or generic word or abbreviation 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; Occidental Chemical Corporation v. Contact Privacy Inc. Customer 0126942866 and Paolo Martin, Oxychem Corporation, WIPO Case No. D2015-1208.
Moreover, the addition of a gTLD such as ".com" in a domain name is technically required. Thus, it is well established that such element may be generally 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 is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. 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 is 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.
In this case, the Panel finds that the Complainant has made out a prima facie case. In particular, the Respondent has not submitted any arguments or evidence to rebut the Complainant's prima facie case and there is no evidence in the record that the Respondent is in any way associated with the Complainant. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its AMGEN Mark. There is no evidence that the Respondent is commonly known by the Disputed Domain Name, nor does the Complainant have any type of business relationship with the Respondent. Moreover, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.
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 registration of a domain name that is confusingly similar to a well-known registered trademark by an entity that has no relationship to that mark may be sufficient evidence of bad faith registration and use. 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 AMGEN Mark.
Second, the Respondent's action of registering the Disputed Domain Name evidences a clear intent to disrupt the Complainant's business by attracting Internet users to the Disputed Domain Name and website to which it previously resolved by creating a likelihood of confusion with the Complainant's AMGEN Mark as to the source, sponsorship, affiliation or endorsement of the Disputed Domain Name. The Respondent's registration and use of the Disputed Domain Name indicates that such registration and use had been done for the specific purpose of trading on the name and reputation of the Complainant and its AMGEN Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847 ("[t]he only plausible explanation for Respondent's actions appears to be an intentional effort to trade upon the fame of Complainant's name and mark for commercial gain" and "[t]hat purpose is a violation of the Policy").
Third, the Respondent knew or should have known of the Complainant's rights in its widely-used AMGEN 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 AMGEN Mark. It therefore strains credulity to believe that the Respondent had not known of the Complainant or its AMGEN 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 the respondent "knew or should have known" of the registration and/or use of the trademark prior to registering the domain name). The Respondent cannot deny that it had knowledge of the Complainant's AMGEN Mark in view of the fact that the Disputed Domain Name initially resolved to a website that advertised a smartphone application under the name "Amgen Medical", which, when downloaded, directed consumers to the Complainant's smartphone application of the same name.
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, <amgenmedical.com>, be transferred to the Complainant.
Lynda M. Braun
Date: June 12, 2016