Lonza Ltd. v Lonza Lonza, Lonza Greenwood, LLC

WIPO Case No. D2024-2860

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Lonza Ltd. v. Lonza Lonza, Lonza Greenwood, LLC

Case No. D2024-2860

1. The Parties

The Complainant is Lonza Ltd., Switzerland, represented by Greer, Burns and Crain, Ltd., United States of

America (“United States”).

The Respondent is Lonza Lonza, Lonza Greenwood, LLC, United States.

2. The Domain Name and Registrar

The disputed domain name <hire-lonza.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2024. On July 15, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 15, 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 (REDACTED FOR PRIVACY) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 16, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.

The Center verified that 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 8, 2024. In accordance with the Rules, paragraph 5,
the due date for Response was August 28, 2024. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on August 30, 2024.

The Center sent an email communication to the Complainant on September 6, 2024, requesting to clarify the
Mutual Jurisdiction for the Complaint. The Complainant filed an amended Complaint on September 12,

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2024. On September 12, 2024, the Center sent an email communication to the Respondent, attaching the
amended Complaint and asking whether the Respondent wished to participate in the proceeding. The

Respondent did not submit any response.

The Center appointed Willem J. H. Leppink as the sole panelist in this matter on September 24, 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

The following facts are undisputed.

The Complainant is part of the Lonza Group Ltd and a large company providing manufacturing services to the pharmaceutical, biotech, and specialty ingredients markets.

The Complainant is the owner of a large portfolio of registrations in well over thirty jurisdictions for its LONZA mark, including, but not limited to the following trademark registrations:

- United States trademark registration LONZA (word) with number 956,300 registered on April 3, 1973, for goods and services in class 5;

- United States trademark registration LONZA (word/stylized) with number 4,639,815 registered on

November 18, 2014, for goods and services in classes 1, 2, 5;

- United States trademark registration LONZA (word) with number 4,483,125 registered on February 18, 2014, for goods and services in classes 9, 35, 42.

The trademark registrations are hereinafter also referred to – in singular – as the “LONZA mark”.

The Complainant is also the registrant of the domain name <lonza.com>, which resolves to the company, what it stands for as a company, and what it is offering.

All mentioned trademark registrations predate the registration of the disputed domain name on July 1, 2024. The disputed domain name did not resolve to an active website, but to a parked page with an announcement that there is a website in the making. Before the notification of the Complaint was sent to the Respondent,

the disputed domain name resolved to a similar parked page mentioning that the site was unavailable.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends the following.

The Complainant is considered one of the world’s leading suppliers to the pharmaceutical and biotech market.

The Complainant has continuously used the LONZA mark for a wide range of goods and services, including pharmaceutical and medicinal preparations and various chemical substances since 1955. The Complainant

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incorporates the LONZA mark as part of its company name. The LONZA mark is distinctive, and closely
identified with the Complainant and represents substantial valuable goodwill.

The disputed domain name is confusingly similar to the LONZA mark. The disputed domain name incorporates the LONZA mark in its entirety, with the mere addition of the term “hire” and the generic Top-Level Domain (“gTLD”) “.com”. The addition of the descriptive term “hire” does not change the overall impression and does not make the disputed domain name any less confusingly similar to the LONZA mark.

The Respondent has no rights or legitimate interests in the disputed domain name. Notably, there is no evidence that the Respondent is commonly known by the disputed domain name. Also, the Complainant has not authorized, by license or otherwise the Respondent to use the LONZA mark. Further, the Respondent’s actions in connection with the disputed domain cannot be considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. The Respondent is appropriating the LONZA mark and is not using the disputed domain name in connection with an active website.

The Respondent has engaged in bad faith. The Respondent must have been aware of the Complainant and its trademarks. The Respondent registered the disputed domain name primarily for the purpose of creating a likelihood of confusion with the LONZA mark as to the source, sponsorship, affiliation or endorsement. As

such, bad faith can be reasonably inferred.

B. Respondent

The Respondent did not reply to the 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 the 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 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 LONZA 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.

Although the addition of other terms here, “hire-”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

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

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

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

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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 the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the 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 notes that the Respondent has provided registrant details naming itself as “Lonza Lonza, Lonza Greenwood, LLC”. However, the Panel further notes that there is no evidence that the Respondent is actually commonly known by the disputed domain name or a name associated with the disputed domain name. In this regard, the Complainant confirms that it is the only registered company with that name. Taking into consideration the broader circumstances of this case, the Panel finds it more likely than not that the Respondent chose that name in order to falsely suggest an affiliation with the Complainant or a subsidiary of the Complainant. Absent contrary evidence from the Respondent, such name choice is not indicative of any rights or legitimate interests in the disputed domain name, nor is the passive holding of the disputed domain name.

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

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] 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

respondent’s] website or location or of a product or service on [the respondent’s] web site or location” is

evidence of registration and use in bad faith.

In the present case, given the notoriety of the Complainant and its trademarks and lack of a response, the
Panel finds on balance that the Respondent had the Complainant and the LONZA mark in mind when
registering the disputed domain name, likely in an attempt to impersonate the Complainant and its official
“hiring” website.

Panels have held that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the LONZA mark, and the composition of the disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

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 <hire-lonza.com> be transferred to the Complainant.

/Willem J. H. Leppink/
Willem J. H. Leppink
Sole Panelist
Date: October 3, 2024