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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

L. Perrigo Company, Perrigo Pharma International DAC v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Rebecca Jenkins, Merit Pharmaceutical

Case No. D2021-2770

1. The Parties

Complainants are L. Perrigo Company United States of America (“United States” or “US”) and Perrigo Pharma International DAC, Ireland, internally represented.

Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Rebecca Jenkins, Merit Pharmaceutical, United States.

2. The Domain Name and Registrar

The disputed domain name <perrigo-usa.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2021. On August 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 24, 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 Complainants on September 6, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amended Complaint on September 16, 2021.

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 September 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 7, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 4, 2021.

The Center appointed Bradley A. Slutsky as the sole panelist in this matter on November 22, 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

Complainants are part of an international pharmaceutical group that specializes in branded and private label self-care products. Complainants own a number of PERRIGO trademarks in the US and internationally, including US trademark registration number 1773993 with a date of first use of July, 1975, and registered on June 1, 1993. Each Complainant owns various PERRIGO trademarks, with the entity owning the trademarks typically varying by country. According to the evidence submitted in the Annexes to the Complaint, the PERRIGO trademarks in the US are owned by Complainant L Perrigo Company. The disputed domain name was registered on July 13, 2021 and resolved to a parking page containing pay-per-click links related to Complainants’ field of activity or to products of competitors.

5. Parties’ Contentions

A. Complainant

Complainants assert that “[t]he Disputed Domain Name identically reproduces the trademark PERRIGO in first and main position”, and then associates the PERRIGO trademark with the geographic identifier USA. Complainants therefore assert that the disputed domain name is confusingly similar to Complainants’ PERRIGO trademarks, and that the addition of USA “could even make the Internet user believe that the domain name points to the official Perrigo website for the USA.” Complainants attach trademark searches as Annexes to the Complaint, and based on those searches Complainants assert that they are the only entities that own PERRIGO trademarks and that Respondent does not own any PERRIGO trademarks and therefore Respondent has no rights with respect to PERRIGO. Complainants further assert that they have not licensed or authorized Respondent to use the PERRIGO mark, that Respondent is not commonly known by the name or brand PERRIGO, that Respondent’s contact information appears to be falsified, that Respondent used a privacy service to mask Respondent’s identity, that the disputed domain name has pointed to a parking page since its registration, and that in light of these factors Respondent has no rights or legitimate interests in the disputed domain name. Complainants further assert that Respondent registered and is using the disputed domain name in bad faith, in that Respondent used a privacy service to mask Respondent’s identity, Respondent’s contact information allegedly is “fake”, Respondent’s registration information uses the name of a genuine pharmaceutical company which is active in the same field as Complainants but is located at a different address than Respondent’s address, “the Perrigo group was created more than 130 years ago and is now well-established in its field in the United States and worldwide … and owns trademarks PERRIGO all over the world … . Therefore, the Respondent didn’t choose this domain name by chance, he registered it with the knowledge of Perrigo’s activities, reputation and trademarks”, Respondent also is using the disputed domain name for a parking page that contains links to Complainants’ field of activity and also to products of Complainants’ competitors, and Complainants sent emails to Respondent informing Respondent of their rights and requesting that Respondent cancel the disputed domain name, and Respondent never responded. For the foregoing reasons, Complainant’s request that the disputed domain name be transferred to Complainant Perrigo Pharma International DAC.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to paragraph 15(a) of the Rules, a panel in UDRP proceedings “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”.

Under paragraph 4(a) of the Policy, Complainants must prove the following:

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

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

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

A. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, Complainants must show that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which Complainant[s have] rights”.

Complainants’ trademark registrations demonstrate that Complainants have rights in the PERRIGO mark.

The disputed domain name consists of the PERRIGO mark, followed by “-usa”, with the “.com” generic Top-Level Domain (“gTLD”) at the end. Generally, “where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. WIPO Overview of Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. “Where the relevant trademark is recognizable within the disputed 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.” WIPO Overview 3.0, section 1.8. Nor does the addition of the “.com” gTLD prevent a finding of confusing similarity. WIPO Overview 3.0, section 1.11.1 (“The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”).

Accordingly, the Panel finds that the disputed domain name is confusingly similar to a mark in which Complainants have rights, and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Complainants also must demonstrate that Respondent has “no rights or legitimate interests in respect of the domain name”, per paragraph 4(a)(ii) of the Policy.

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent’s] rights or legitimate interests to the [disputed] domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to [Respondent] of the dispute, [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) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the [disputed] domain name, even if [Respondent has] acquired no trademark or service mark rights; or

(iii) [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.” Policy, paragraph 4(c).

There is no evidence that Respondent was making a bona fide use of the disputed domain name before receiving notice of this dispute, or that Respondent has been commonly known by the disputed domain name, or that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. Rather, Complainants assert that Respondent has not used or demonstrated preparation to use the disputed domain name in connection with a bona fide offering of goods or services, but instead has, since inception, used the disputed domain name for a parking page with links to related activity as well as to links of Complainants’ competitors. Complainants also assert that Respondent does not own any PERRIGO trademarks and is known by Merit Pharmaceutical, and therefore Respondent has not been known by PERRIGO and has no rights with respect to PERRIGO. Complainants further assert that they have not licensed or authorized Respondent to use the PERRIGO mark, that Respondent’s contact information appears to be falsified, that Respondent used a privacy service to mask Respondent’s identity, and that the disputed domain is not being used for noncommercial or fair use purposes but instead is being used to confuse consumers into believing that the disputed domain name is the official Perrigo website for the US and to divert consumers to the disputed domain name.

These allegations make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, which Respondent has not rebutted. See, e.g., LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138 (“It is clear that no license or authorization of any kind has been provided by Complainant to Respondents to use any of its trademarks or to apply for or use any domain name incorporating those marks. […] Thus, it is clear that no bona fide or legitimate use of the domain names could be claimed by Respondents.”); WIPO Overview 3.0, section 2.9 (“panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”).

In addition, the Panel finds that the nature of the disputed domain name carries a risk of implied affiliation with the Complainant. See section 2.5.1 of the WIPO Overview 3.0.

Accordingly, the record supports a conclusion that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Complainants also bear the burden of establishing that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):

“[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that [Respondent has] registered or [Respondent has] acquired the [disputed] domain name primarily for the purpose of selling, renting, or otherwise transferring the [disputed] domain name registration to [C]omplainant[s] who [are] the owner[s] of the trademark or service mark or to a competitor of … Complainant[s], for valuable consideration in excess of [Respondent’s] documented out‑of‑pocket costs directly related to the [disputed] domain name; or

(ii) [Respondent has] registered the [disputed] domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct; or

(iii) [Respondent has] registered the [disputed] domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the [disputed] domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] website or other online location, by creating a likelihood of confusion with Complainant[s’] mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] website or location or of a product or service on [Respondent’s] website or location.”

“Given that the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to Complainant’s trademark would also satisfy Complainant’s burden.” WIPO Overview 3.0, section 3.1.

Complainants assert that Respondent registered and is using the disputed domain name in bad faith by using a privacy service to mask Respondent’s identity, providing “fake” contact information, using the name of a genuine pharmaceutical company which is active in the same field as Complainants (but is located at a different address than Respondent’s address), registering the disputed domain name with knowledge of Complainants’ trademarks, using the disputed domain name for a parking page that contains links to Complainants’ field of activity and to products of Complainants’ competitors, and failing to respond to Complainants’ emails concerning Respondent’s use of the disputed domain name.
The registration and use of a domain name that is known to be confusingly similar to another party’s trademark for a pay-per-click website is evidence of bad faith under paragraph 4(b)(iv) of the Policy. Caliber Home Loans, Inc. v. Domains By Proxy, LLC / Patrick Scott, WIPO Case No. D2018-0524 (“What is clear is that the Respondent (a) was well aware of the Complainant’s mark, which the Respondent emulated in the email as well as in the Domain Name itself, and (b) traded on the Complainant’s reputation to attract Internet users to a portal that offered both competing and related financial services, presumably for commercial gain. This is very like the example cited in the Policy, paragraph 4(b)(iv), and certainly amounts to bad faith for Policy purposes, as does allowing the current use of the Domain Name for a PPC advertising portal.”); WIPO Overview 3.0, section 3.5 (“Particularly with respect to ‘automatically’ generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name”).

Collectively, the other factors cited by Complainant also are evidence of bad faith. WIPO Overview 3.0, section 3.6 (“Panels additionally view the provision of false contact information (or an additional privacy or proxy service) underlying a privacy or proxy service as an indication of bad faith. … Panels have also viewed a respondent’s use of a privacy or proxy service which is known to block or intentionally delay disclosure of the identity of the actual underlying registrant as an indication of bad faith.”); WIPO Overview 3.0, section 3.1.1 (“If on the other hand circumstances indicate that the respondent’s intent in registering the disputed domain name was in fact to profit in some fashion from or otherwise exploit the complainant’s trademark, panels will find bad faith on the part of the respondent. While panel assessment remains fact-specific, generally speaking such circumstances, alone or together, include: (i) the respondent’s likely knowledge of the complainant’s rights, … (iv) website content targeting the complainant’s trademark, e.g., through links to the complainant’s competitors”); International Business Machines Corporation v. Laohu Liu, WIPO Case No. D2020-1650 (“First, there is no evidence of any active use of the disputed domain name apart from displaying ‘related links’ on a standard webpage provided by the registrar, presumably generating click-through income. … Second, Complainant is a famous company, well-known worldwide as a provider of products and services in the field of information technology. Third, since Respondent was never authorized or licensed to use Complainant’s IBM famous mark, there is no conceivable use of the disputed domain name that would not be in bad faith. Fourth, Respondent failed to reply to Complainant’s cease and desist letter dated April 13, 2020. Fifth, Respondent failed to respond to the Complaint or to provide any explanation whatsoever in this proceeding. Sixth, at the moment of registering the disputed domain name, Respondent presumably provided a false or incomplete address, in violation of its duties under the domain name registration agreement. … Given all these facts and circumstances, the Panel finds that the disputed domain name was registered and is being used in bad faith.”); Omega Pharma Innovation & Development NV v. Kyoung S Park, WIPO Case No. D2020-0849.

Accordingly, the Panel finds that the record supports a conclusion that the disputed domain name has been registered and is being used in bad faith, and that paragraph 4(a)(iii) of the Policy is satisfied.

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, <perrigo-usa.com>, be transferred to Complainant Perrigo Pharma International DAC.

Bradley A. Slutsky
Sole Panelist
Date: December 6, 2021

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