WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

STADA Arzneimittel AG and Thornton & Ross Limited v. Contact Privacy Inc. / Asma Haslam, Mezzacorona, Asma Haslam, Ed Karim

Case No. D2021-2524

1. The Parties

The Complainants are STADA Arzneimittel AG, Germany, and Thornton & Ross Limited, United Kingdom (“UK”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America (“United States”).

The Respondent is Contact Privacy Inc., Canada / Asma Haslam, Mezzacorona, United States, Asma Haslam, Ed Karim, United States.

2. The Domain Names and Registrar

The disputed domain names <thorntnoross.com> and <thorntnross.com> are registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2021. On August 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 4, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 6, 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 August 9, 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 August 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 15, 2021.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on October 6, 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 Complainants are manufacturers of pharmaceuticals. Thornton & Ross Limited (the “Second Complainant”) is also a provider of prescription products to the UK’s National Health Services.

The Second Complainant is the owner of the following trademarks (Annex 10 to the Complaint):

- UK Trademark Registration No. UK00001466747 for the word mark THORNTON & ROSS, in classes 3 and 5, filed on June 7, 1991, registered on August 13, 1993, subsequently renewed; and

- UK Trademark Registration No. UK00003400708 for the word & device mark THORNTON & ROSS STADA GROUP OUR MISSION – YOUR HEALTH, in classes 3, 5, 10 and 10, filed on May 20, 2019, registered on September 20, 2019.

The disputed domain names <thorntnoross.com> and <thorntnross.com> were registered on June 28, 2021 and July 15, 2021, respectively, and were used in connection with fraudulent email messages impersonating the Complainant (Annex 6 to the Complaint). Presently, the disputed domain names do not resolve to active webpages.

5. Parties’ Contentions

A. Complainants

The Complainants assert to be part of the STADA pharmaceutical group, a leading manufacturer of high-quality pharmaceuticals that sells its products in approximately 120 countries.

The Complainants claim to have learned about the disputed domain names via their use in connection with phishing activities impersonating the Second Complainant requesting payment of fraudulent invoices (Annex 6 to the Complaint).

The Complainants contend that the disputed domain names are confusingly similar to the THORNTON & ROSS trademark; the suppression of the ampersand and the transposition of the letters “o” and “n” (in the case of <thorntnoross.com>), and the omission of the letter “o” (in the case of <thorntnross.com>), being incapable of preventing a finding of confusing similarity.

As to the absence of rights or legitimate interests, the Complainants argue that:

(i) they have never assigned, granted, licensed, sold, transferred, or in any way authorized anyone to register or use the disputed domain names in any manner or to use the THORNTON & ROSS trademark the manner in which it has been used by the Respondent;

(ii) by using the disputed domain names in connection with a phishing scam to impersonate the Second Complainant by requesting payment of fraudulent invoices (Annex 6 to the Complaint), the Respondent clearly has not used the disputed domain names “in connection with a bona fide offering of goods or services” and, therefore, cannot establish rights or legitimate interests pursuant to paragraph 4(c)(i) of the Policy;

(iii) the Respondent has not been commonly known by the disputed domain names and has never acquired any trademark or service mark rights in either of the disputed domain names; and

(iv) the Respondent is not making any legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain.

As to bad faith registration and use of the disputed domain names, the Complainants assert that the Respondent intentionally registered the disputed domain names so as to falsely impersonate the Complainants by way of sending emails requesting payment of fraudulent invoices (Annex 6 to the Complaint), which demonstrates that the Respondent is intentionally misleading and confusing the public into believing that it is associated or affiliated with the Complainants. Furthermore, the Respondent has used a privacy service to conceal its identity, and there is no good faith use to which either of the disputed domain names may be put.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for this Panel to order the transfer of the disputed domain names to the Complainants:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

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

(iii) the disputed domain names have been registered and are being used in bad faith.

The Complainants must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain names.

As a preliminary matter, the Panel notes that the disputed domain names list different registrant organizations of record. However, noting inter alia the identical registrant name “Asma Haslam” for both disputed domain names, identical nameservers, and related fraudulent use of the disputed domain names, the Panel considers the disputed domain names to be under clear common control of a single entity, Asma Haslam, and accordingly will refer to the singular “Respondent” throughout this Decision.

A. Identical or Confusingly Similar

The Second Complainant has established rights in the THORNTON & ROSS trademark.

The disputed domain names incorporate the relevant part of the Second Complainant’s trademark with the suppression of the ampersand and the transposition of the letters “o” and “n” (in the case of <thorntnoross.com>), and the omission of the letter “o” (in the case of <thorntnross.com>), with the Complainants’ trademark still being clearly recognizable in the disputed domain names.

It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the 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).

The first element of the Policy has therefore been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate a respondent’s rights to or legitimate interests in a domain name. These circumstances are:

(i) before any notice 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 (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it has not acquired trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial 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 Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to or legitimate interests in the disputed domain names. This entitles the Panel to draw any such inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainants to make a prima facie case against the Respondent.

In that sense, the Complainants indeed state that the they have never assigned, granted, licensed, sold, transferred, or in any way authorized anyone to register or use the disputed domain names in any manner or to use the THORNTON & ROSS trademark in the manner in which it has been used by the Respondent.

Also, the lack of evidence as to whether the Respondent is commonly known by the disputed domain names or the absence of any trademarks registered by the Respondent corresponding to the disputed domain names, corroborates with the indication of the absence of any rights or legitimate interests in the disputed domain names.

According to the evidence submitted (Annex 6 to the Complaint), the Respondent has used the disputed domains name to intentionally mislead the Complainants’ costumers by sending emails requesting payment of fraudulent invoices in an attempt to impersonate the Complainants, which cannot be considered as a bona fide offering of goods or services under the Policy and can never confer rights or legitimate interests in the Respondent. See WIPO Overview 3.0, section 2.13.

The Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain names.

C. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

In this case, both the registration and use of the disputed domain names in bad faith can be found in view of the use of the disputed domain names seeking to impersonate the Complainants for fraudulent purposes, as seen above.

Other factors that corroborate the Panel’s finding of bad faith of the Respondent are the use of privacy protection service and the absence of a formal Response by the Respondent.

For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) of the Policy.

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 names <thorntnoross.com> and <thorntnross.com> be transferred to the Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: October 20, 2021