Talecris Biotherapeutics, Inc. v. Marketing Total S.A.
Claim Number: FA0803001169821
Complainant is Talecris Biotherapeutics, Inc. (“Complainant”), represented by Maury
M. Tepper, of Womble Carlyle
Sandridge & Rice, PLLC,
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwtalecrisplasma.com>, registered with Belgiumdomains, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 26, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 27, 2008.
On March 27, 2008, Belgiumdomains, LLC confirmed by e-mail to the National Arbitration Forum that the <wwwtalecrisplasma.com> domain name is registered with Belgiumdomains, LLC and that Respondent is the current registrant of the name. Belgiumdomains, LLC has verified that Respondent is bound by the Belgiumdomains, LLC registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On March 27, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 16, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@wwwtalecrisplasma.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 24, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwwtalecrisplasma.com> domain name is confusingly similar to Complainant’s TALECRIS mark.
2. Respondent does not have any rights or legitimate interests in the <wwwtalecrisplasma.com> domain name.
3. Respondent registered and used the <wwwtalecrisplasma.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Talecris Biotherapeutics, Inc., develops, manufacturers, and markets blood plasma products. Complainant has spent considerable monies and resources on developing its products, which are used for treatment of a variety of health disorders and diseases. Complainant conducts its plasma operations under the TALECRIS mark (Ser. No. 78/551,985 filed January 21, 2005) and the TALECRIS BIOTHERAPEUTICS mark (Reg. No. 3,386,265 issued February 19, 2008, filed January 21, 2005), the latter of which is registered with the United States Patent and Trademark Office (“USPTO”). Complainant also owns and operates the <talecris.com> and <talecrisplasma.com> domain names, which provide information about its products and usages to patients and physicians.
Respondent registered the <wwwtalecrisplasma.com> domain name on May 31, 2007. Respondent is currently using the disputed domain name to resolve to a website that features links and advertisements for third parties, some of which directly compete with Complainant.
Respondent has been the respondent in several other UDRP
proceedings, in which the disputed domain names were transferred to the
respective complainants in those cases. See Starwood Hotels & Resorts Worldwide,
Inc. v. Marketing Total
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Because the effective date of a trademark begins at filing, the Panel finds that Complainant has alleged sufficient rights in the TALECRIS BIOTHERAPEUTICS mark through registration of the mark with the USPTO pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Since Complainant has successfully asserted a prima facie case supporting its
allegations that Respondent lacks rights and legitimate interests in the
disputed domain name, Respondent receives the burden to show that it does have
rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to
Respondent. Respondent’s failure to respond means that Respondent has not
presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by the complainant that the
respondent has no right or legitimate interest is sufficient to shift the
burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist).
Respondent’s <wwwtalecrisplasma.com>
domain name appears to exist solely to divert Internet users to a website that
features third-party advertisements and links, some of which directly compete
with Complainant’s operations. Further,
Respondent presumably receives referral fees from Internet users that follow
these third-party ads or links. Given
this evidence, the Panel finds that such usage fails to constitute a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb.
Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the
complainant’s marks to send Internet users to a website which displayed a
series of links, some of which linked to the complainant’s competitors, was not
a bona fide offering of goods or
services); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent
to divert Internet users seeking Complainant's website to a website of
Respondent and for Respondent's benefit is not a bona fide offering of goods or
services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or
fair use under Policy ¶ 4(c)(iii).”).
There is no evidence in the record to conclude that Respondent is commonly known by the disputed domain name. To wit, the WHOIS domain name registration information lists the registrant as “Marketing Total S.A.,” which does not resemble the disputed domain name. The Panel therefore finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
The Panel finds that Respondent has engaged in
typosquatting, which refers to the practice of registering a disputed domain
name that capitalizes on common Internet user typographical errors, most
commonly through the omission of the period after the prefix “www.” This method matches exactly the case at hand,
in that Respondent also omitted the period after the prefix “www.” The Panel therefore finds that typosquatting
itself demonstrates Respondent’s lack of rights and legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(a)(ii). See RE/MAX Int’l, Inc. v. Seocho, FA 142046 (Nat. Arb. Forum
Feb. 25, 2003) (finding that the respondent has no rights or legitimate interests
in the <wwwremax.com> domain name as it is merely using the complainant’s
mark to earn profit from pop-up advertisements); see also Canadian Tire Corp. v. domain adm’r
no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003)
(finding the respondent lacked rights and legitimate interests in the
<wwwcanadiantire.com> domain name where it used the domain name as a part
of the complainant’s affiliate program in exchange for specified commissions).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has been the respondent in several other UDRP
proceedings, in which the disputed domain names have been transferred to the
respective complainants in those cases. See Starwood Hotels & Resorts Worldwide,
Inc. v. Marketing Total
Respondent’s disputed domain name diverts Internet users
seeking Complainant to a website that offers advertisements directly competing
with Complainant’s plasma operations.
Given Respondent’s presumed material benefit via referral fees, the
Panel finds that Respondent has engaged in bad faith registration and use under
Policy ¶ 4(b)(iii), in that Respondent has disrupted
Complainant’s business. See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July
18, 2000) (finding that the respondent registered the domain name in question
to disrupt the business of the complainant, a competitor of the respondent); see also Travant
Solutions, Inc. v. Cole, FA 203177 (Nat.
Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in
bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of
a competitor of Complainant . . .”).
Respondent registered a
confusingly similar disputed domain name and created a corresponding website
that displays third-party advertisements for profit. These actions likely thwart Internet users
from reaching Complainant’s own websites.
Therefore, the Panel finds that Respondent has engaged in bad faith
registration and use under Policy ¶ 4(b)(iv), in that
Respondent has created a likelihood of confusion as to the source and
affiliation of the disputed domain name and corresponding website for
commercial benefit. See Amazon.com, Inc. v. Shafir, FA
196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the
domain name at issue in direct competition with Complainant, and giving the
impression of being affiliated with or sponsored by Complainant, this
circumstance qualifies as bad faith registration and use of the domain name
pursuant to Policy ¶ 4(b)(iv).”); see
also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003)
(“Registration and use of a domain name that incorporates another's mark with
the intent to deceive Internet users in regard to the source or affiliation of
the domain name is evidence of bad faith.”).
The Panel finds that Respondent’s
usage of typosquatting in its registration of the disputed domain name
constitutes sufficient evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii).
See Sports
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwtalecrisplasma.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
May 1, 2008
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