Lonza Ltd. v phillip decker

WIPO Case No. D2024-4139

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Lonza Ltd. v. phillip decker

Case No. D2024-4139

1. The Parties

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

America (“United States”).

The Respondent is phillip decker, United States.

2. The Domain Names and Registrar

The disputed domain names <lonzagroup-ag.com> and <lonzagroupltd.com> (the “Disputed Domain

Names”) are registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2024,
originally in regard only to the Disputed Domain Name <lonzagroupltd.com>. On October 9, 2024, the
Center transmitted by email to the Registrar a request for registrar verification in connection with that
Disputed Domain Name. On October 8, 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 (“unavailable”) and contact information in the Complaint. The Center sent an email
communication to the Complainant on October 10, 2024, providing the registrant and contact information
disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The
Complainant filed an amended Complaint on October 19, 2024, also requesting the addition of the Disputed
Domain Name <lonzagroup-ag.com> into the current proceeding.

On October 21, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name <lonzagroup-ag.com>. On October 22, 2024, the Registrar transmitted by email to the Center its verification response confirming the registrant and contact information in the amended Complaint.

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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on October 23, 2024. In accordance with the Rules, paragraph
5, the due date for Response was November 12, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on November 13, 2024.

The Center appointed Nicholas Weston as the sole panelist in this matter on November 19, 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 Complainant is part of Lonza Group, a multinational pharmaceutical, biotech, and specialty ingredients
company with revenues exceeding USD 2.1 billion in 2023 in the United States alone. The Complainant
holds a number of registrations for the trademark LONZA, including Sweden Trademark Registration No.
17002, registered on August 16, 1913 and United States Registration No 72346919 registered on April 3,

1973.

The Complainant owns the domain name <lonza.com> which resolves to its main website.

The Respondent registered both of the Disputed Domain Names on September 27, 2024. The Disputed
Domain Name <lonzagroup-ag.com> resolves to an inactive webpage. The Disputed Domain Name
<lonzagroupltd.com> resolves to a Pay Per Click (“PPC”) landing-page displaying sponsored links including

“Investor Financial”, “Biotechnology Company”, and “Pharmaceutical Company”.

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 Names.

Notably, the Complainant cites its trademark registrations in various jurisdictions for the mark LONZA and variations of it, as prima facie evidence of ownership.

The Complainant submits that its rights in that the mark LONZA mark predate the Respondent’s registration of the Disputed Domain Name. It submits that the Disputed Domain Names are confusingly similar to its trademark, because the Disputed Domain Names are comprised of the LONZA trademark and that the addition of the word “group”, together with the company type signifiers “ag” and “ltd” after the trademark in each case, are not sufficient to avoid the confusing similarity.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because none of the circumstances set out in paragraph 4(c) of the Policy apply and “Respondent is not commonly known by the <lonzagroupltd.com> or the <lonzagroup-ag.com> domain name nor does Respondent have any right to use the LONZA marks.” The Complainant also submits that passive use after the “Respondent has incorporated the entirety of Complainant’s company name, Lonza Group Ltd., as well as its Swiss equivalent, Lonza Group AG, into the Disputed Domain Names” does not amount to a bona fide offering of goods or services or fair use under Policy.

Finally, the Complainant alleges that the registration and use of the Disputed Domain Names were, and currently are, in bad faith, contrary to the Policy and the Rules having regard to the prior use and well-known nature of the Complainant’s trademark. It submits that the Complainant was targeted having regard to the prior use and well-known nature of the Complainant’s trademark, and also submits that “panels have

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consistently held that when an unaffiliated entity registers a domain name, which is confusingly similar or

identical to a famous or wide[ly]-known trademark, a presumption of bad faith is inferred”.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

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

(i) that the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii)       that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names;

and
(iii)	that the Disputed Domain Names have been registered and are being used in bad faith.

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 Complainant’s trademark and the Disputed Domain Names. 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. The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark LONZA in different jurisdictions. The requirements of the first element for purposes of the Policy

may be satisfied by a trademark registered in any jurisdiction. WIPO Overview 3.0, section 1.2.1.

Turning to whether the Disputed Domain Names are identical or confusingly similar to the LONZA trademark, the Panel observes that each of the Disputed Domain Names is comprised of: (a) an exact reproduction of the Complainant’s trademark LONZA; (b) with, respectively, the addition of the word “group”; (c) followed by a hyphen in one case; (d) followed by company type signifiers “ag” and “ltd”, respectively; (e) followed by the generic Top-Level Domain (“gTLD”) “.com”.

It is well established that the gTLD used as part of a domain name is generally disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11.1. The relevant comparison to be made is with the second-level portion of each of the two Disputed Domain Names, specifically: “lonzagroup-ag” and “lonzagroupltd”, respectively.

The Panel finds the entirety of the mark is reproduced within each of the Disputed Domain Names and is recognizable in each of the Disputed Domain Names. Accordingly, each Disputed Domain Names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of the word “group”, a hyphen in one case, and the company type signifiers “ag” and “ltd” may bear on assessment of the second and third elements, the Panel finds the addition of these elements do not prevent a finding of confusing similarity between the Disputed Domain Names 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.

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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 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 Disputed Domain Names (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 Names. 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 Names such as those
enumerated in the Policy or otherwise.

The Panel notes the evidence that the Disputed Domain Name <lonzagroup-ag.com> resolves to an inactive webpage, which is supported by the Complainant’s evidence, and finds that this does not represent a bona fide offering of goods or services, or a legitimate noncommercial or fair use, also noting the substantial reputation and goodwill of the Complainant’s mark and capacity to mislead Internet users. See also WIPO Overview 3.0, section 2.5.1.

The Panel also notes the evidence that the Disputed Domain Name <lonzagroupltd.com> resolves to a PPC landing page, with links associated with the Complainant’s activity, and finds that this does not represent a bona fide offering of goods or services, or a legitimate noncommercial or fair use, given the evidenced reputation and goodwill of the Complainant’s mark and capacity to mislead Internet users. See also WIPO Overview 3.0, section 2.9.

The Panel finds the second element of the Policy has been established for all of the Disputed Domain

Names.

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.

In the present case, the Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Names in bad faith.

On the issue of registration, taking into account the composition of the Disputed Domain Names and the well-known nature of the Complainant’s trademark, the Panel is satisfied that the Respondent knew of and targeted the Complainant’s trademark LONZA when it registered the Disputed Domain Names.

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This Panel finds that there is no reason for the Respondent to have registered the Disputed Domain Names
other than to trade off the reputation and goodwill of the Complainant’s well-known trademark. WIPO
Overview 3.0, section 3.1.4.

Further, a gap of several years between registration of a complainant’s trademark and respondent’s registration of a disputed domain name (containing the trademark) can indicate bad faith registration. In this case, the Respondent registered the Disputed Domain Names some 50 years after the Complainant established registered trademark rights in the LONZA mark.

On the issue of use, the Complainant’s evidence is that the Disputed Domain Name <lonzagroup-ag.com> does not currently resolve to an active website.

Panels have found that the non-use of a domain name 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 Complainant’s well-known trademark, and the composition of the Disputed Domain Name

<lonzagroup-ag.com>, and finds that in the circumstances of this case the passive holding of that Disputed
Domain Name does not prevent a finding of bad faith under the Policy.

The Complainant’s evidence is also that the Disputed Domain Name <lonzagroupltd.com> resolves to a PPC landing page displaying sponsored links including “Investor Financial”, “Biotechnology Company”, and “Pharmaceutical Company”. Targeting of this nature is a common example of bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions. WIPO Overview 3.0, sections 3.1.4 and 3.2.1. The Respondent has not come forward to rebut the Complainant’s allegations or offer any alternative explanation.

The Panel also notes the risk that the Disputed Domain Names may be used to link to websites that offer pharmaceuticals for sale, or information in relation to pharmaceuticals. In line with prior UDRP panel decisions, the Panel finds that the obvious danger of online consumers being afforded inaccurate, incomplete or misleading information about medical products, services, and applications and the probable diversion of actual sales reinforces the Respondent’s bad faith (see Lilly ICOS LLC v. Tudor Burden, Burden Marketing, WIPO Case No. D2004-0794; Roche Products Inc. v. Michael Robert, WIPO Case No. D2008-1155).

The Panel finds that the Complainant has established the third element of the Policy.

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 Names <lonzagroup-ag.com> and <lonzagroupltd.com> be transferred to the Complainant.

/Nicholas Weston/
Nicholas Weston
Sole Panelist
Date: November 27, 2024