Amgen, Inc. v Daniel Lopez

WIPO Case No. D2024-1278

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Amgen, Inc. v. Daniel Lopez

Case No. D2024-1278

1. The Parties

Complainant is Amgen, Inc., United States of America, represented by Snell & Wilmer, LLP, United States of

America.

Respondent is Daniel Lopez, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <careers-amgen.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 March 25, 2024. On March 26, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 27, 2024, 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 (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to Complainant on April 3, 2024, 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 April 3, 2024.

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 April 16, 2024. In accordance with the Rules, paragraph 5, the due
date for Response was May 6, 2024. Respondent did not submit any response. Accordingly, the Center
notified Respondent’s default on May 8, 2024.

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The Center appointed Clark W. Lackert as the sole panelist in this matter on May 28, 2024. 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

This Complaint is based on Complainant’s famous and registered trademark AMGEN in the United States and elsewhere. Complainant is a global biopharmaceuticals leader focused on research, innovation, and treatment in the areas of cardiovascular disease, oncology, bone health, neuroscience, nephrology, and

inflammation. Complainant has offered a wide variety of goods and services under its AMGEN marks since as early as 1981. Complainant’s AMGEN-branded goods and services are advertised and sold on a global scale. Complainant operates in approximately 100 countries, including the United States, China, and Hong Kong, China, and employs over 20,000 people worldwide. In 2022, Complainant earned over USD 25 billion
in worldwide revenue from its AMGEN-branded goods and services.

Over the years, Complainant has invested heavily in advertising and promoting its goods and services under its AMGEN marks throughout the United States and around the world. As a result, Complainant’s AMGEN marks have acquired goodwill and recognition, and the public associates AMGEN-branded goods and services exclusively with Complainant. Complainant owns common law rights around the world in its AMGEN marks due to extensive use. Additionally, Complainant owns numerous registrations worldwide for its AMGEN marks and formatives thereof, many of which were issued decades ago and the earliest of which was registered in 1990. A few of these registrations are as follows:

Jurisdiction	Registration Number	Registration Date
United States	1,621,967	November 13, 1990
WIPO	893,256	February 9, 2006
European Union Intellectual Property Office	000064170	March 4, 2002
Canada	723,927	July 22, 1994
Japan	2,540,285	May 31, 1993

Additionally, Complainant has registered domain names incorporating its AMGEN trademark including
<amgen.com> on July 27, 1990, and <amgencareers.com> on June 8, 2011. The disputed domain

name was registered on January 27, 2024. The disputed domain name resolves to an inactive

webpage but it has been used to send fraudulent emails.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name <careers-amgen.com> which is identical or confusingly similar to Complainant’s AMGEN trademark together with a descriptive term “careers”. Respondent has no rights or legitimate interests in the trademark AMGEN or the disputed domain name <careers-amgen.com>, and Respondent had registered the disputed domain name in bad faith leading to misdirected web traffic and illegal use of its domain name to mislead potential employees of Complainant that this is the correct location for information on “careers” at Amgen.

The disputed domain name <careers-amgen.com> incorporates in full Complainant’s AMGEN marks. The addition of the term “careers” does not reduce the substantial identity between Complainant’s AMGEN marks and the disputed domain name <careers-amgen.com>. See Bayer AG v. Melissa Solis, et al., WIPO Case No. D2022-4127, finding the addition of term “career” to the complainant’s trademark BAYER does not prevent a finding of confusing similarity between the disputed domain name and complainant’s mark. “It is the general view among UDRP panels that where the relevant trademark is recognizable within the disputed

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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 of the UDRP.” Similarly,
the addition of a hyphen between the terms “careers” and “amgen” does not reduce the substantial identity

between Complainant’s AMGEN marks and the disputed domain name <careers-amgen.com>.

The addition of a generic Top-Level Domain (“gTLD”) such as “.com” to Complainant’s AMGEN marks also
does not reduce the substantial identity between Complainant’s marks and the disputed domain name
<careers-amgen.com>. See, e.g., Pomellato S.p.A v. Tonetti, WIPO Case No. D2000-0493, finding the
domain name <pomellato.com> identical to complainant’s mark because the addition of .com to the
POMELLATO mark is not relevant to a Policy Paragraph 4(a)(i) analysis.

There is no evidence that Respondent is commonly known by Amgen, Careers-Amgen, or Amgen Careers. Complainant has not authorized Respondent to register or use Complainant’s AMGEN marks. There is no affiliation, connection, or association between Respondent and Complainant.

The use of the disputed domain name <careers-amgen.com>, which resolves to an inactive webpage and to send emails to pose as Complainant’s talent acquisition and recruiting director, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Subsea 7 Limited

v. James HuntleyD2023-2481

, WIPO Case No. “The use that has taken place of the Disputed Domain used to impersonate the CEO of the Complainant. Panels have categorically held that the use of a domain name for illegal activity (e.g., phishing, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.” WIPO Overview 3.0, Section 2.13.

Johnson & Johnson v. Daniel Wistbacka, WIPO Case No. D2017-0709, finding bad faith registration where “the integral reproduction of [complainant’s trademark] within the disputed domain name can hardly be the result of coincidence”).

Given Complainant’s exclusive use of the AMGEN marks for decades, tens of billions of USD in worldwide and pursue illegal consumer fraud. See
annual revenues for goods and services sold under those marks, dozens of international trademark
registrations and formatives thereof, and the AMGEN brand’s reputation as among the most famous
biopharmaceutical brands in the world, “it is . . . not plausible to conceive of a plausible circumstance in
which the Respondent would have been unaware of [these facts]” at the time Respondent registered

<careers-amgen.com>. Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No.

B. Respondent

Respondent did not reply to t Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

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

Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain name.
Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.7.

The Panel finds the first element of the Policy has been established.

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B. Rights or Legitimate Interests

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The illegal and fraudulent use of a domain name to mislead consumers into believing that Respondent was sponsored by or connected with Complainant is prima facie evidence of bad faith use and registration. See, e.g., Ropes & Gray LLP v. Onso Onso, WIPO Case No. D2019-0823 concerning the domain name

<ropegrays.com>. As the panel stated: “Moreover, the use of the domain name to illegally spoof and phish existing clients of the Complainant into believing that they are authorized to receive funds on behalf of client is a violation of Policy, paragraph 4(b)(iv). See also Caffitaly System S.p.A. v. WhoisGuard Protected,
WhoisGuard, Inc. / Organization: Winsomgroup, Robert Hills, WIPO Case No. D2018-2804, and WIPO
Overview 3.0, Section 3.1.4. As the Panel stated therein: “Complainant provided evidence that the disputed
domain name <caffitialy.com> was used to create fraudulent email addresses, which were then used the
very same day the disputed domain name was registered to commit fraud, in an attempt to have one of
Complainant’s clients transfer money into a foreign bank account. In accordance with section 3.1.4 of WIPO
Overview 3.0, the use of a domain name for fraudulent activities is considered evidence of bad faith.” Here,
Respondent has used the disputed domain name to pose as Complainant to deceive the public.

Moreover, the registration of a domain name that copies a widely known mark indicates an intent to target that mark to promote misdirection of Internet traffic, evidence of bad faith. See, e.g., The Dow Chemical Company v. dowchemical [email protected] +86.7508126859, WIPO Case No. D2008-1078, finding <dowaychemical.com> registered in bad faith in view of the “widely known trademarks” of the complainant; see also IDR Solutions Ltd. v. Whois Privacy Corp., WIPO Case No. D2016-2156, evidence of third party recognition of complainant’s JPEDAL mark supported conclusion that <jpedal.org> was registered in bad faith. As WIPO Overview 3.0, section 3.1.4 states: “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.”

Panels have held that the use of a domain name for illegal activity, here, illegal impersonation/passing off of and use of the disputed domain name constitutes bad faith under the Policy.

Respondent for Complainant with fraudulent email using the disputed domain name constitutes bad faith.
The Panel finds that the Complainant has established the third element of the Policy.

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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 <careers-amgen.com> be transferred to Complainant.

/Clark W. Lackert/
Clark W. Lackert
Sole Panelist
Date: June 10, 2024