Ferring B.V. v. Robert Kurtz
Claim Number: FA1110001412463
Complainant is Ferring B.V. (“Complainant”), represented by Arne M. Olson, Illinois, USA. Respondent is Robert Kurtz (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <menopur.us>, registered with Wild West Domains, Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 20, 2011; the Forum received a hard copy of the Complaint on October 21, 2011.
On October 21, 2011, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <menopur.us> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On November 1, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 21, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 7, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <menopur.us> domain name is identical to Complainant’s MENOPUR mark.
2. Respondent does not have any rights or legitimate interests in the <menopur.us> domain name.
3. Respondent registered and used the <menopur.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ferring B.V., uses its MENOPUR mark in connection with offering pharmaceuticals for the treatment of fertility. Complainant owns trademark registrations for the MENOPUR mark with trademark authorities around the world, including the United States Patent and Trademark Office (“USPTO”), the Canadian Intellectual Property Office (“CIPO”), and the European Union Office for Harmonization in the Internal Market (“OHIM”):
USPTO Reg. No. 2,989,995 registered August 30, 2005;
CIPO Reg. No. TMA753,541 registered November 20, 2009; &
OHIM Reg. No. 008695694 registered April 28, 2010.
Respondent, Robert Kurtz, registered the <menopur.us> domain name on January 29, 2006. The disputed domain name resolves to a website offering information about self-injection and infertility, and includes links to third-party websites not affiliated with Complainant.
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(f), 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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Registration with a trademark authority is sufficient to prove a complainant’s rights in a mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, complainant has met the requirements of [UDRP] ¶ 4(a)(i).”); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the UDRP ¶ 4(a)(i)). Thus, the Panel concludes that Complainant has established rights in its MENOPUR mark pursuant to Policy ¶ 4(a)(i).
Respondent’s <menopur.us> domain name is identical to Complainant’s mark, as the only additional element is the attached country-code top-level domain (“ccTLD”) “.us.” The Panel finds that the addition of the ccTLD is irrelevant in distinguishing between a disputed domain name and a mark. See Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of ‘.us’ to a mark fails to distinguish the domain name from the mark pursuant to the [usTLD] Policy”); see also Mattel, Inc. v. Unknown, FA 490083 (Nat. Arb. Forum July 11, 2005) (“The domain name [<Barbie.us>] is identical to the trademark “Barbie”, as it uses the trademark in its entirety. The only difference is the addition of the country-code ‘us’ which for this purpose is insufficient to distinguish the domain name from the trademark.”). Therefore, the Panel concludes that Respondent’s <menopur.us> domain name is identical to Complainant’s MENOPUR mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <menopur.us> domain name. The burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) when Complainant makes a prima facie case in support of its allegations. The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain name. The Panel will examine the record, however, according to the Policy ¶ 4(c) factors, to determine whether Respondent has rights or legitimate interests in the disputed domain name. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence”); see also Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4,2 008) (“It is well established that, once a complainant has made out of 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 Policy ¶ 4(a)(ii) of the [UDRP].”).
There is no evidence in the record to conclude that Respondent owns any trademarks that reflect the <menopur.us> domain name. Therefore, the Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant states that it has never authorized, contracted, licensed, or otherwise permitted Respondent to use the MENOPUR mark in any way. The WHOIS record, which identifies the registrant as “Robert Kurtz,” does not suggest any association between Respondent and the disputed domain name. The Panel therefore concludes that Respondent is neither commonly known by the <menopur.us> domain name nor possesses rights and legitimate interests according to Policy ¶ 4(c)(iii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant argues that Respondent’s <menopur.us> domain name resolves to a parked website containing pay-per-click advertisements unrelated to Complainant. The screenshot submitted by Complainant, however, shows that Respondent’s resolving website displays information about using Complainant’s product under the title, “Step-by-Step guide to self-injection for women prescribed Menopur.” The resolving website also appears to contain links to third-party websites that are unaffiliated with Complainant’s product. The Panel nevertheless finds that Respondent’s use of the <menopur.us> domain name to display information and links related to Complainant’s product, without authorization by Complainant, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(ii) or Policy ¶ 4(c)(iv). See Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's registration and use of the <gayaol.com> domain name with the intent to divert Internet users to Respondent's website suggests that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to [UDRP] Paragraph 4(a)(ii).”); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of the complainant’s mark “as a portal to suck surfers into a site sponsored by [the respondent] hardly seems legitimate”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <menopur.us> domain name is identical to Complainant’s MENOPUR mark, causing Internet users to be confused as to Complainant’s sponsorship of, and affiliation with, the resolving website. The Panel finds that this likelihood of confusion is increased due to Respondent’s display of information relating to Complainant’s pharmaceutical product. Respondent presumably profits from its operation of the disputed domain name, which also includes third party links. Thus, the Panel finds that Respondent is guilty of both bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under UDRP ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to [UDRP] ¶4(b)(iv).”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <menopur.us> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 13, 2011
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