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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PharmaZell GmbH v. Fred Bingo

Case No. D2021-1564

1. The Parties

The Complainant is PharmaZell GmbH, Germany, represented by SNP Schlawien Partnerschaft mbB, Germany.

The Respondent is Fred Bingo, Italy.

2. The Domain Name and Registrar

The disputed domain name <pharmzell.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2021. On May 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 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 May 21, 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 amendment to the Complaint on May 21, 2021.

The Center verified that the Complaint, together with the amendment to 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 June 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 30, 2021.

The Center appointed Mihaela Maravela as the sole panelist in this matter on July 9, 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 Background

The Complainant is German registered company that manufactures active ingredients for the production of pharmaceutical products and sells them worldwide under the registered trademark PHARMAZELL.

The Complainant is the exclusive owner of a number of registered trademarks for PHARMAZELL, including the International trademark registration No. 1115289 for PHARMAZELL registered on February 25, 2012. The Complainant owns the domain name <pharmazell.com> that it uses as an official website.

The disputed domain name was registered on March 2, 2021, and does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is almost identical to the Complainant's trademark PHARMAZELL and the Complainant’s domain name <pharmazell.com>, as the only difference is that the second "a" is missing in the disputed domain name.

With respect to the second element, the Complainant argues that it has not granted the Respondent any license to use the disputed domain name. The Respondent used the disputed domain name for fraud, resulting in a damage of EUR 284,683.36.

As regards the third element, the Complainant argues that the Respondent registered the disputed domain name to commit fraud. The Complainant alleges that the Respondent pretended to be one of the Complainant’s employees in some correspondence from the disputed domain name with one of the Complainant’s customers regarding a large-volume goods order. The Respondent used the disputed domain to provide to the Complainant’s customer a false bank payment information where the respective customer made the payment of an amount of EUR 284,683.36. The fraudulent emails did not reach the Complainant's employees.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Notwithstanding the fact that no Response has been filed, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.

“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”, paragraph 15(a) of the Rules.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has proved its rights over the PHARMAZELL trademark.

The disputed domain name consists of the obvious misspelling of the PHARMAZELL trademark of the Complainant, with the removal of the second letter “a” in the disputed domain name. This misspelling in the disputed domain name, also referred as typosquatting, does not prevent a finding of confusing similarity, as the trademark is recognizable in the disputed domain name. Section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

It is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.com”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark. See section 1.11 of the WIPO Overview 3.0.

This Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, […] 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

In the present case, the Complainant has established a prima facie case that it holds rights over the trademark PHARMAZELL and claims that it has not granted the Respondent any license to use the disputed domain name.

There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services or that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. Rather, according to the unrebutted evidence put forward by the Complainant, the Respondent used the disputed domain name for scamming activities and such activity cannot amount to a fair use of the disputed domain name by the Respondent. See section 2.13 of the WIPO Overview 3.0.

Also, there is no evidence that the Respondent is commonly known by the disputed domain name.

By not replying to the Complainant’s contentions, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. Accordingly, the Panel gives prevalence to the Complainant’s affirmation that it has not granted the Respondent any license to use the disputed domain name.

The Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

To fulfill the third requirement of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.

The disputed domain name was registered many years after the Complainant has obtained registration of its PHARMAZELL trademark. The disputed domain name consists of a misspelling of the Complainant’s trademark. The email sent from the disputed domain name uses the name of one of the Complainant’s employees. Under these circumstances, it is most likely that the Respondent was aware of the Complainant’s trademark at the registration of the disputed domain name and sought to take advantage of the PHARMAZELL trademark.

Furthermore, according to the unrebutted evidence submitted by the Complainant, the Respondent used the disputed domain name shortly after registration to pass off as one of the Complainant’s employees, apparently as part of a phishing scam. Given such evidence, the Panel agrees with previous UDRP decisions that “the Respondent’s fraudulent use of the disputed domain name, which began almost immediately after its registration, confirms the possibility that the disputed domain name was registered to conduct a ‘social engineering’ attack or other type of scam”. For such reasons, the Panel finds that the Respondent must have been fully aware of the Complainant’s trademarks and activities when it registered the disputed domain name. See, e.g., Virgin Enterprises Limited v. Vincent Battista, WIPO Case No. D2018‑1416.

As regards the use of the disputed domain name, the fact that the website at which the disputed domain name resolves is inactive does not preclude a finding of bad faith, nor does it detract from the Respondent’s bad faith. “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” (section 3.3 of the WIPO Overview 3.0).

The Complainant argues that the Respondent is using the disputed domain name to impersonate the identity of an employee of the Complainant for purposes of sending emails to the Complainant’s customers claiming and apparently obtaining a large amount of money based on a pending invoice. The evidence put forward by the Complainant in this respect has not been rebutted by the Respondent. The use of a domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers and employees constitutes bad faith on the side of the Respondent (section 3.4 of the WIPO Overview 3.0).

In the Panel’s view, these circumstances represent evidence of registration and use in bad faith of the disputed domain name. The Respondents failed to bring evidence as to the contrary. Consequently, the Panel concludes that the condition of paragraph 4(a)(iii) of the Policy is fulfilled.

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, <pharmzell.com>, be transferred to the Complainant.

Mihaela Maravela
Sole Panelist
Date: July 23, 2021

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