WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

TherapeuticsMD, Inc. v. DomainsByProxy.com/Name Redacted

Case No. D2020-1535

1. The Parties

Complainant is TherapeuticsMD, Inc., United States of America, represented by Hackler Daghighian Martino & Novak, United States of America.

Respondent is DomainsByProxy.com/Name Redacted, United States of America.

2. The Domain Name and Registrar

The disputed domain name <therapeuticmd.com> is registered with Wild West Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2020. On June 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 15, 2020, 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 Complainant on June 15, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 18, 2020.

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 June 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2020. On July 7, 2020, the Center received a communication from the person named as Respondent, as further discussed in Section 5, herein. The Center informed the parties of this communication. As no substantive response was received, the Center notified the Parties that it would continue to panel appointment, pursuant to paragraph 6 of the Rules.

The Center appointed Lorelei Ritchie as the sole panelist in this matter on August 11, 2020. 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

Complainant is a pharmaceutical company based in the United States. Since at least 2014, Complainant has operated under the trade name THERAPEUTICSMD. In this regard, Complainant offers consumers both

FDA-approved products, and dietary and nutritional supplements, primarily in the field of women’s health and reproductive care.

Complainant owns several registrations for its THERAPEUTICSMD mark. These include United States Registration No. 4,580,454 (registered August 5, 2014) and European Union Registration No. 013048871 (registered November 26, 2014).

Complainant additionally holds the registration for the domain name <therapeuticsmd.com> Complainant uses the URL associated with this domain name to inform prospective consumers about its products and services.

The disputed domain name, <therapeuticmd.com>, was registered on May 13, 2020. Although it appears to resolve to a currently inactive webpage, Respondent has used an email address associated with the disputed domain name to engage in potentially fraudulent behavior whereby Respondent posed as an official human resources representative of Complainant, and sought to obtain sensitive personal and financial information from prospective job applicants of Complainant. Respondent has no affiliation with Complainant. Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby.

5. Parties’ Contentions

A. Complainant

Complainant contends that (i) the disputed domain name, <therapeuticmd.com>, is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.

In particular, Complainant contends that its registered THERAPEUTICSMD mark is widely recognized in women’s healthcare, and that Respondent has engaged in a phishing scheme. In this regard, Complainant alleges that Respondent has merely used the disputed domain name, which differs from Complainant’s mark only by the insignificant deletion of the letter “s”, to set up an email account meant to confuse potential job applicants of Complainant into providing Respondent their sensitive personal and financial information. Complainant further contends that Respondent has no rights or legitimate interest in the domain name registration or use of the disputed domain name. Rather, Complainant contends that Respondent has acted in bad faith in sending out fraudulent emails, when Respondent was clearly aware of Complainant’s rights in the THERAPEUTICSMD mark.

B. Respondents

The person listed as Respondent filed a formal reply in this proceeding, denying knowledge of the domain name registration and/or use, and stating more specifically:

Respondent denies any factual allegation in Complainant’s complaint that Respondent registered and/or used any domain name, included the disputed one. Put simply, a third-party pretending to be Respondent registered and used the disputed domain name, using only publicly available information (her name and address). Respondent did not register the disputed domain name, did not use the disputed domain name, and the contact information listed in the registration for Respondent is incorrect except her name and physical address. She was in fact unaware of this scheme or the existance of the disputed domain name until receiving the letter via postal mail.

Respondent has never used or accessed any of the email addresses listed in the Complaint or in the domain registration, and has no ability to access those email addresses currently. Instead, as described to Respondent by Complainant, some unidentified third-party fraudulently used Respondent’s name and physical address to register the disputed domain name, doing so with email addresses to which Respondent does not have access and has never used, and used the disputed domain name and corresponding email addresses as part of a fraudulent scheme targeting job seekers, all without Respondent’s permission or knowledge. As such Respondent is not claiming any rights to or legitimate interest in the disputed domain name. Respondent agrees with Complainant that the conduct of this third-party, fraudulently posing as Respondent and carrying out the horrendous acts against Complainant and would-be job seekers is abhorrent. Respondent requests that the domain name be transferred to Complainant as Respondent has no interest in the disputed domain name.

This was the only response that the Center received regarding Complainant’s contentions.

6. Discussion and Findings

Preliminary Matter: Respondent Identity

Given the above-quoted claims by the individual confirmed by the Registrar as the registrant, the Panel finds it appropriate not to record that person’s name in the decision.¹

A. Identical or Confusingly Similar

This Panel must determine whether the disputed domain name, <therapeuticmd.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name is almost identical to Complainant’s registered trademark, THERAPEUTICSMD, with only the deletion of the letter “s” between the terms “therapeutics” and “md”.

The mere addition or deletion of the letter “s” in the registration and use of a registered trademark has been found by UDRP panelists to be a common, and illicit, form of typosquatting that does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, ESH Strategies Branding, LLC v. Kumpol Sawaengkarn, WIPO Case No. D2011-0843 (transferring <extendedstaysamerica.com>; Crown Trophy, Inc. v. PrivacyProtect.org / Pluto Domain Services Private Limited, WIPO Case No. D2009-0061 (transferring <crowntrophies.com>); Halcyon Yarn, Inc. v. Henry Chan, WIPO Case No. D2004-0336 (transferring <halcyonyarns.com>). The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.

Respondent did not submit a reply to the Complaint, however. Rather, as mentioned in Section 4 of this Panel’s decision, Respondent has used an email account associated with the disputed domain name to engage in fraudulent behavior whereby Respondent has merely used the disputed domain name to set up email accounts in an apparent phishing scheme. Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interest in the disputed domain name, which Respondent has not rebutted.

C. Registered and Used in Bad Faith

There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, although the disputed domain name resolves to an inactive web page, Respondent has used the disputed domain name to set up an email account in a manner apparently calculated to confuse potential job applicants of Complainant into providing Respondent their sensitive personal and financial information.

Hence, Respondent is trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain.

Given the nature of the use for a fraud scheme, and the disputed domain name, which incorporates a close approximation of Complainant’s registered THERAPEUTICSMD mark, the Panel finds that despite the passive website use, Respondent registered and used the disputed domain name with knowledge of Complainant’s prior rights, thereby evidencing bad faith. SeeWIPO Overview 3.0, Section 3.3, which notes that the “non-use of a domain name” does not necessarily negate a finding of bad faith, but rather, that a panel must examine “the totality of the circumstances.”

Overall, the Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

7. Decision

For all 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, <therapeuticmd.com>, be transferred to Complainant.

Lorelei Ritchie
Sole Panelist
Dated: August 28, 2020

¹ The Respondent appears to have used the name of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published given the circumstances. See e.g., Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.