WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Osmotica Pharmaceutical US LLC v. Domain Administrator d/b/a privacy.cloudns.net, Cloud DNS Ltd

Case No. DCO2020-0008

1. The Parties

Complainant is Osmotica Pharmaceutical US LLC, United States of America (“United States”), represented by Ropes & Gray LLP, United States.

Respondent is Domain Administrator d/b/a privacy.cloudns.net, Cloud DNS Ltd, Bulgaria.

2. The Domain Name and Registrar

The disputed domain name <osmotica.co> 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 February 7, 2020. On February 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 11, 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 February 24, 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 February 28, 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 March 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 26, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 27, 2020.

The Center appointed Stephanie G. Hartung as the sole panelist in this matter on April 7, 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 company organized under the laws of the United States, which belongs to the pharmaceutical OSMOTICA group of companies and focuses on developing, manufacturing and commercializing specialty pharmaceutical products.

Complainant has demonstrated to enjoy, through the OSMOTICA group of companies, registered trademark rights in its company name and brand “Osmotica Pharmaceutical” with protection for the United States as follows:

- Word mark OSMOTICA PHARMACEUTICAL, United States Patent and Trademark Office (“USPTO”), registration number: 3,545,986, registration date: December 16, 2008, status: active;
- Word/device mark OSMOTICA PHARMACEUTICAL, USPTO, registration number: 3,498,217, registration date: September 9, 2008, status: active.

Moreover, Complainant has documented to maintain since many years through the domain name <osmotica.com> an active Internet presence under “www.osmotica.com” where Complainant promotes its pharmaceutical products and related services.

Respondent, according to the WhoIs information for the disputed domain name, is a domain name administration company with legal domicile in Bulgaria which registered the disputed domain name on November 23, 2019. By the time of the rendering of this Decision, the disputed domain name does not redirect to any valid content on the Internet. Complainant, however, has evidenced that, at some point before the filing of the Complaint, e.g., on January 6, 2020, the disputed domain name was used to send phishing emails promoting fraudulent job listings for positions with Complainant in an attempt to defraud Complainant’s customers in order to get access to sensitive personal information such as direct deposit details.

Complainant requests that the disputed domain name be transferred to Complainant.

5. Parties’ Contentions

A. Complainant

Complainant contends that the OSMOTICA group of companies started its business back in 1986 and has used the name “Osmotica” since at least as early as 2000, today being well known by its registered OSMOTICA PHARMACEUTICAL trademark. Complainant’s employees (nearly 400) use the principal domain name <osmotica.com> as email addresses.

Complainant submits that the disputed domain name is confusingly similar to Complainant’s OSMOTICA PHARMACEUTICAL trademark as it simply differs therefrom by the subtraction of the merely descriptive term “pharmaceutical”. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Respondent registered it long after Complainant and the Osmotica group of companies registered and commenced use of the OSMOTICA PHARMACEUTICAL trademark, and (2) there is no relationship or affiliation between Complainant and Respondent giving rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating Complainant’s OSMOTICA PHARMACEUTICAL trademark. Finally, Complainant argues that Respondent has registered and is using the disputed domain name in bad faith since (1) Respondent did so without Complainant’s authorization and long after Complainant commenced use of its OSMOTICA PHARMACEUTICAL trademark, and (2) by sending phishing emails using the disputed domain name, Respondent’s clear intent was to mislead or to deceive Complainant’s current and prospective clients, and/or to tarnish Complainant’s trademark and reputation.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:

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

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

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

Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent's failure to submit a Response as it considers appropriate.

A. Identical or Confusingly Similar

The Panel concludes that the disputed domain name <osmotica.co> is confusingly similar to the OSMOTICA PHARMACEUTICAL trademark in which Complainant has rights.

The disputed domain name incorporates at least the distinctive part of Complainant’s trademark, namely OSMOTICA, in its entirety. It has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7), that in cases 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 the first element under the UDRP. Accordingly, the fact that the disputed domain name includes the most distinctive feature of Complainant’s OSMOTICA PHARMACEUTICAL trademark is not at all inconsistent with such finding of confusing similarity. Finally, it has been held in many UDRP decisions and has become a consensus view among UDRP panelists (see WIPO Overview 3.0, section 1.11), that the applicable Top-Level Domain (“TLD”) in a domain name, here the country-code TLD “.co”, is generally viewed as merely a standard registration requirement and as such is disregarded under the first element test.

Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.

Respondent obviously has not been authorized to use Complainant’s OSMOTICA PHARMACEUTICAL trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with e.g., the term “Osmotica” on its own. Finally, Respondent used the disputed domain name to send phishing emails promoting fraudulent job listings for positions with Complainant in an attempt to defraud third parties in order to get access to sensitive personal information such as direct deposit details, obviously doing so in an attempt to induce those individuals into making financial transactions to Respondent’s illegitimate advantage. Such use of the disputed domain name neither qualifies as bona fide nor as legitimate noncommercial or fair within the meaning of the Policy.

Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has defaulted, it has not met that burden.

Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.

C. Registered and Used in Bad Faith

The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.

The circumstances to this case leave no doubt that Respondent was fully aware of Complainant’s rights in the OSMOTICA PHARMACEUTICAL trademark when registering the disputed domain name and that the latter clearly is directed thereto. Using the disputed domain name to send phishing emails promoting fraudulent job listings for positions with Complainant in an attempt to defraud third parties in order to get access to sensitive personal information such as direct deposit details, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own email communication by creating a likelihood of confusion with Complainant’s OSMOTICA PHARMACEUTICAL trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s fake emails. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the larger meaning of paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).

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 <osmotica.co> be transferred to Complainant.

Stephanie G. Hartung
Sole Panelist
Date: April 20, 2020