Ferring B.V. v. IT Company
Claim Number: FA1106001392935
Complainant is Ferring B.V. (“Complainant”), represented by Arne M. Olson, Illinois, USA. Respondent is IT Company (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue is <buy-euflexxa.com>, registered with GoDaddy.com, Inc.
The domain name at issue is <buy-euflexxa.net>, registered with Rebel.com Corp.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 9, 2011; the National Arbitration Forum received payment on June 10, 2011.
On June 10, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <buy-euflexxa.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 14, 2011, Rebel.com Corp. confirmed by e-mail to the National Arbitration Forum that the <buy-euflexxa.net> domain name is registered with Rebel.com Corp. and that Respondent is the current registrant of the name. Rebel.com Corp. has verified that Respondent is bound by the Rebel.com Corp. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 20, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@buy-euflexxa.com and postmaster@buy-euflexxa.net. Also on June 20, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 13, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <buy-euflexxa.com> and <buy-euflexxa.net> domain names are confusingly similar to Complainant’s EUFLEXXA mark.
2. Respondent does not have any rights or legitimate interests in the <buy-euflexxa.com> and <buy-euflexxa.net> domain names.
3. Respondent registered and used the <buy-euflexxa.com> and <buy-euflexxa.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ferring B.V., owns the EUFLEXXA mark. Complainant registered the EUFLEXXA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,346,569 issued December 4, 2007) as well as with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA696,385 issued September 13, 2007). Complainant uses the EUFLEXXA mark in connection with its sale of pharmaceutical preparations and substances, much of which can be operated online.
Respondent, IT Company, registered the <buy-euflexxa.com> and <buy-euflexxa.net> domain names on December 12, 2010. The <buy-euflexxa.com> domain name resolves to an online pharmacy in competition with Complainant. The prior use of the <buy-euflexxa.net> domain name resolves to a site which displays unrelated pay-per-click advertisements. The <buy-euflexxa.net> domain name currently resolves to an inactive website.
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.
Complainant contends that it has established rights in the EUFLEXXA mark through registration with a federal trademark authority. Panels have previously found that the registration of a trademark is sufficient for a complainant to demonstrate established rights in a mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”). Complainant has provided the Panel with evidence of trademark registrations for the EUFLEXXA mark in Complainant’s jurisdiction with the USPTO (Reg. No. 3,346,569 issued December 4, 2007) and Respondent’s jurisdiction with the CIPO (Reg. No. TMA696,385 issued September 13, 2007). The Panel thus finds that Complainant has established rights in the EUFLEXXA mark pursuant to Policy ¶ 4(a)(i).
Complainant next contends that the disputed domain names are confusingly similar to its mark. The addition of a generic top-level domain (“gTLD”) is insufficient to allay confusion. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Additionally, the addition of a hyphen fails to distinguish a domain name from a mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Lastly, the addition of a generic term does not distinguish a mark from the infringing domain name. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end). Respondent has added the “.com” and “.net” gTLDs to the disputed domain names as well as a hyphen and the generic term “buy” to both domain names. Therefore, the Panel finds that Respondent has not adequately distinguished the disputed domain names from Complainant’s mark so as to negate confusing similarity under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent has neither rights nor legitimate interests in the <buy-euflexxa.com> and <buy-euflexxa.net> domain names. Once a complainant has made a prima facie case in support of its claims, the burden shifts to the respondent to contradict them. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). Because of Respondent’s lack of a response to the Complaint, the Panel may assume that Complainant’s allegations are correct. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation supports a finding for the complainant). The Panel finds that Complainant has made a prima facie case and will review the record to determine if Respondent has rights or legitimate interests in the <buy-euflexxa.com> and <buy-euflexxa.net> domain names.
The WHOIS information for a disputed domain name, along with other information available on the record, allows panels to determine whether a respondent is commonly known by a disputed domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response). Complainant has not authorized, contracted, licensed, or otherwise permitted Respondent to use the EUFLEXXA mark. Additionally, the WHOIS information for the disputed domain names fails to provide the Panel with any evidence of association between Respondent and the disputed domain names beyond their registration. Given this evidence, the Panel finds that Respondent is not commonly known by the <buy-euflexxa.com> and <buy-euflexxa.net> domain names under Policy ¶ 4(c)(ii).
The use of a disputed domain name to market products in competition with those which Complainant provides is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). The <buy-euflexxa.com> domain name resolves to an online pharmacy. The products sold through the domain name are in direct competition which those which Complainant provides. The Panel finds that Respondent’s use of a confusingly similar domain name to offer goods in competition with Complainant is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Respondent’s <buy-euflexxa.net> domain name previously resolved to a website which displayed pay-per-click advertisements which were unrelated to Complainant’s business. Panels have found this type of use of a disputed domain name to be a demonstration of a lack of rights and legitimate interests. See Summit Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). The Panel finds that Respondent’s prior utilization of the <buy-euflexxa.net> domain name is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The inactive holding of a website further demonstrates a lack of rights or legitimate interests in a disputed domain name. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”). The current use of the <buy-euflexxa.net> domain name is the resolution to an inactive site. The Panel finds that Respondent’s failure to actively use the <buy-euflexxa.net> domain name is neither a protected bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied all components of Policy ¶ 4(a)(ii).
Respondent’s <buy-euflexxa.com> domain name resolves to an online pharmacy that sells products similar to those which Complainant sells. The use of a confusingly similar domain name to intentionally divert Internet users away from a complainant’s website and instead direct them to a respondent’s competing website is evidence of bad faith registration and use of the domain name. See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Respondent, a competitor of Complainant, has registered and uses the <buy-euflexxa.com> domain name in order to divert Internet users from Complainant’s website to its own website. By doing this, Respondent minimizes Complainant’s predicted consumer base. Therefore, the Panel finds that Respondent has registered and uses the <buy-euflexxa.com> domain name in such a way which disrupts Complainant’s business and constitutes bad faith under Policy ¶ 4(b)(iii).
The use of a disputed domain name due to the attraction for commercial gain through the sale of a respondent’s goods is evidence of bad faith registration and use. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark). Respondent is using the <buy-euflexxa.com> domain name to sell its own pharmaceutical products. Thus, Respondent will have registered a confusingly similar domain name to boost its potential sales. The Panel therefore finds that Respondent registered and uses the <buy-euflexxa.com> domain name in bad faith by intentionally attracting confused Internet users for commercial gain under Policy ¶ 4(b)(iv).
Additionally, panels have found that the attraction for commercial gain as evidence of bad faith also covers the registration and use of a confusingly similar domain name to display pay-per-click websites which are unrelated to the complainant’s business. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)). Respondent’s <buy-euflexxa.net> domain name was previously used to display links to various, unrelated, third-party websites. These links operated as pay-per-click links for which Respondent received compensation for Internet traffic which clicked through them. Therefore, the Panel finds that the attempt to commercially gain by creating confusion led Respondent to register and use the <buy-euflexxa.net> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Lastly, Complainant contends that Respondent’s current inactive use of the <buy-euflexxa.net> domain name is evidence of bad faith. The registration and use of a domain name which resolves to an inactive page is evidence of bad faith. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith). Respondent has allowed the <buy-euflexxa.net> domain name to remain inactive. Therefore, the Panel finds that the <buy-euflexxa.net> domain name was registered and used in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) is met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <buy-euflexxa.com>, <buy-euflexxa.net> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 26, 2011
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