Merial v. The Nollinger Group, Inc.
Claim Number: FA1203001433797
Complainant is Merial (“Complainant”), represented by Mari-Elise Taube of Stites & Harbison, PLLC, Virginia, USA. Respondent is The Nollinger Group, Inc. (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <frontlinekit.com>, registered with GoDaddy.com.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 9, 2012; the National Arbitration Forum received payment on March 9, 2012.
On March 14, 2012, GoDaddy.com confirmed by e-mail message addressed to the National Arbitration Forum that the <frontlinekit.com> domain name is regis-tered with GoDaddy.com and that Respondent is the current registrant of that domain name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 March 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 5, 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@frontlinekit.com. Also on March 16, 2012, 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 April 19, 2012, pursuant to Complainant's request to have the dispute decid-ed by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a leading animal health company that produces pharmaceutical products for livestock, pets and wildlife.
Complainant owns rights in the FRONTLINE trademark, which it began using in 1994 in connection with the marketing of its flea and tick control products.
Complainant holds a registration, on file with the United States Patent and Trade-mark Office (USPTO), for the FRONTLINE trademark, Reg. No. 2,049,456, registered April 1, 1997.
Respondent has no rights with regard to Complainant’s FRONTLINE trademark.
Respondent registered the disputed <frontlinekit.com> domain name on October 30, 2009.
Respondent uses the website resolving from the <frontlinekit.com> domain name to resell Complainant’s products in altered form in infringing packaging.
Respondent’s <frontlinekit.com> domain name is confusingly similar to Com-plainant’s FRONTLINE mark.
Respondent has not been commonly known by the disputed domain name.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent benefits commercially by creating confusion among Internet users as to the possibility of Complainant’s affiliation with the disputed domain name.
Respondent’s registration and use of the disputed domain name disrupts Com-plainant’s business and is done in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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."
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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed represent-ations 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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in the FRONTLINE trademark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that a complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006):
Complainant has established rights in the … mark through registration of the mark with the USPTO.
Respondent’s <frontlinekit.com> domain name is confusingly similar to Com-plainant’s FRONTLINE trademark. The only differences between the mark and the disputed domain name are the addition to the mark of the descriptive term “kit” and the generic top-level domain (“gTLD”) “.com.” These alterations of the mark in forming the domain name fail to distinguish the domain from the mark under the standards of Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described a complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish a respondent’s domain name <duracellbatteries.com> from a complainant’s DURACELL mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the addition of the generic top-level domain “.com” was insufficient to differentiate a disputed domain name from a mark under Policy ¶ 4(a)(i)).
Therefore, the panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the <frontlinekit.com> domain name, and Respondent has no rights with regard to Complainant’s FRONTLINE mark. Moreover, the pertinent WHOIS information identifies the registrant of the disputed domain name only as “The Nollinger Group, Inc.,” which does not resemble the <frontlinekit.com> domain name. On this record, we conclude that Respondent has not been commonly known by the <frontlinekit.com> domain name so as to have demonstrated that it has rights to or legitimate interests in that domain for purposes of Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that a respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names, and so had no rights to or legitimate interests in those domain names under Policy ¶ 4(c)(ii), where there was no evidence in the record to suggest that that respondent was commonly known by those domain names); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding, based on the evidence of record, that a respondent was not commonly known by the <thirteen.com> domain name, and so had no rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii)).
We next observe that Complainant asserts, without objection from Respondent, that Respondent’s <frontlinekit.com> domain name resolves to a website that sells altered versions of Complainant’s flea and tick control products, and that Respondent benefits commercially from this activity. This is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See, for example, Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003); to the same effect, see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the disputed domain name to market altered versions of Complainant’s products, as alleged in the Complaint, disrupts Complainant’s business. This is evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(iii). See, for example, Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000); see also Wall v. Silva, FA 105899 (Nat. Arb. Forum Apr. 29, 2002) (find-ing that the use of a domain name identical to a complainant’s mark to sell that complainant’s artwork constituted bad faith disruption under Policy ¶ 4(b)(iii)).
Moreover, it is evident that Respondent has registered and uses the contested <frontlinekit.com> domain name to benefit commercially by creating confusion among Internet users as to the possibility of Complainant’s affiliation with the website resolving from the domain name. This is evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iv). See Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”); see also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent used a disputed domain name which was confusingly similar to a complainant’s mark to sell that complainant’s products by misleading Internet users into believing that that respondent was affiliated with that complainant).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <frontlinekit.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 3, 2012
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