Vivus, Inc. v. Siarhei Ilyin
Claim Number: FA1112001421523
Complainant is Vivus, Inc. (“Complainant”), represented by John C. Nishi of Dickinson Wright, PLLC, Michigan, USA. Respondent is Siarhei Ilyin (“Respondent”), Belarus.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <buy-qnexa.net>, registered with Center of Ukrainian Internet Names.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 27, 2011; the National Arbitration Forum received payment on December 27, 2011. The Complaint was submitted in both Russian and English.
On January 4, 2012, Center of Ukrainian Internet Names confirmed by e-mail to the National Arbitration Forum that the <buy-qnexa.net> domain name is registered with Center of Ukrainian Internet Names and that Respondent is the current registrant of the name. Center of Ukrainian Internet Names has verified that Respondent is bound by the Center of Ukrainian Internet Names 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 January 9, 2012, the Forum served the Russian language Complaint and all Annexes, including a Russian language Written Notice of the Complaint, setting a deadline of January 30, 2012 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-qnexa.net. Also on January 9, 2012, the Russian language 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 February 2, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Russian language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <buy-qnexa.net> domain name is confusingly similar to Complainant’s QNEXA mark.
2. Respondent does not have any rights or legitimate interests in the <buy-qnexa.net> domain name.
3. Respondent registered and used the <buy-qnexa.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Vivus, Inc. is a biopharmaceutical company that develops therapies for conditions including obesity, diabetes, and obstructive sleep apnea. Vivus is developing QNEXA, a pharmaceutical product for the treatment of obesity. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its QNEXA mark (Reg. No. 3,703,656 registered October 27, 2009).
Respondent, Siarihei Ilyin, registered the disputed domain name <buy-qnexa.net> on August 28, 2010. The disputed domain name resolves to a website that purports to have information regarding the QNEXA product and attempts to gain personal information from visitors to the 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 asserts rights in its QNEXA mark through its registration of the QNEXA mark with the USPTO (Reg. No. 3,703,656 registered October 27, 2009). The Panel finds that Complainant’s registration of its QNEXA mark with the USPTO is satisfactory evidence of Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)). The Panel also finds that trademark registration is not required to be in the country where Respondent resides or operates for the purposes of Policy ¶ 4(a)(i). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).
Complainant argues that Respondent’s <buy-qnexa.net> domain name is confusingly similar to Complainant’s QNEXA mark. Respondent’s disputed domain name uses Complainant’s mark in its entire form and adds the generic word “buy,” a hyphen, and the generic top-level domain (“gTLD”) “.net.” The Panel finds that adding a generic term and a hyphen does not adequately distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the addition of a hyphen between terms of a registered mark did not differentiate the <p-zero.org> domain name from the P ZERO mark under Policy ¶ 4(a)(i)). The Panel further finds that adding the gTLD “.net” to a mark is irrelevant for the purpose of Policy ¶ 4(a)(i). See Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”); 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). Therefore, under Policy ¶ 4(a)(i), the Panel concludes that Respondent’s <buy-qnexa.net> domain name is confusingly similar to Complainant’s QNEXA mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant establishes a prima facie case in support of its allegations, Policy ¶ 4(a)(ii) requires that the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name. 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 Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Panel concludes that Complainant has established a prima facie case. Due to Respondent’s failure to reply to these proceedings, the Panel may assume that Respondent does not have any rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”). However, the Panel will examine the record to determine whether or not Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the disputed domain name and does not have rights to use the mark. The WHOIS information lists “Siarhei Ilyin” as the registrant of the disputed domain name. There being no evidence in the record that Respondent is commonly known by the disputed domain name, the Panel concludes that Respondent has no rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii). 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 Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant argues that Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(iii), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant contends that the resolving website displays Complainant’s QNEXA mark prominently and is designed to mimic Complainant’s website. The text, graphics, and other material appearing on Respondent’s website are copied directly from Complainant’s website, giving it the appearance of actually belonging to Complainant. Further, Complainant contends that the website attempts to fraudulently obtain personal information of Internet visitors through a “Contact Us” page. The Panel finds that Respondent’s effort to pass itself off as Complainant and operate a “phishing” scheme does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name) ; see also Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name to redirect “Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients,” is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s <buy-qnexa.net> domain name attempts to pass itself off as Complainant by taking content directly from Complainant’s website, displaying Complainant’s mark prominently, and using Complainant’s text and graphics to mimic Complainant’s website. Complainant asserts that Respondent replicates Complainant’s website in this way to gain information from consumers as part of a phishing scheme. Complainant alleges that the disputed domain name causes confusion between the QNEXA mark, and presumably Respondent gains advertising revenue as a result. The Panel finds that Respondent’s efforts to intentionally attract Internet traffic to the resolving website and create confusion as part of its phishing scheme for its own personal gain reveals bad faith registration and use under Policy ¶ 4(b)(iv). See Tower Labs. Ltd. v. Seltzer, FA 791325 (Nat. Arb. Forum Oct. 16, 2006) (concluding that the respondent registered and was using the <bromoseltzer.com> domain name in bad faith because it displayed a logo similar to the complainant’s BROMO SELTZER mark, which was likely to confuse the public as to the source of the material exhibited at the respondent’s website); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that the respondent registered and used the domain name in bad faith because it redirected Internet users to a website that imitated the complainant’s website and was used to fraudulently acquire personal information from the complainant’s potential associates).
Complainant argues that Respondent had actual knowledge of Complainant's rights in the QNEXA mark. Complainant argues that the content posted on Respondent's resolving website was copied directly from Complainant’s website, including product information and related content, which shows that Respondent had actual knowledge of Complainant's mark and rights. The Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
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-qnexa.net> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 14, 2012
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