Cubist Pharmaceuticals, Inc. v. Gregory Stea
Claim Number: FA1403001550388
Complainant is Cubist Pharmaceuticals, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Gregory Stea (“Respond-ent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cubist-intl.com>, registered with ENOM, INC.
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 electron-ically on March 24, 2014; the National Arbitration Forum received payment on March 28, 2014.
On March 25, 2014, ENOM, INC. confirmed by e-mail message addressed to the National Arbitration Forum that the <cubist-intl.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, INC. registra-tion agreement and has thereby agreed to resolve domain disputes brought by third parties in accord-ance with ICANN’s Uniform Domain Name Dispute Res-olution Policy (the “Policy”).
On March 28, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 17, 2014 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 bil-ling contacts, and to postmaster@cubist-intl.com. Also on March 28, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 techni-cal, 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 21, 2014, 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 Not-ices, 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 pharmaceutical company focused on the research, development, and commercialization of pharmaceuticals products that address unmet medical needs in acute care.
Complainant is the holder of a registration, on file with the United States Patent and Trademark Office (“USPTO”) for the CUBIST trademark and service mark (Registry No. 2,125,875, registered August 19, 1993).
Respondent registered the <cubist-intl.com> domain name on or about February 14, 2014.
The <cubist-intl.com> domain name is confusingly similar to Complainant’s CUBIST mark.
Respondent has not been commonly known by the disputed domain name.
Respondent both registered and uses the CUBIST mark without Complainant’s consent.
Respondent has used the disputed domain name to send e-mails to various IT hardware suppliers in an attempt to impersonate Complainant and to defraud such suppliers.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent knew of Complainant and its rights in the CUBIST mark when it reg-istered the disputed domain name.
Respondent registered and uses the disputed domain name 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 and service mark 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 representa-tions 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 Verti-cal 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 reason-able 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 CUBIST trademark and service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trade-mark authority, the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that a UDRP complainant had est-ablished rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through regis-tration of the mark with the USPTO).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <cubist-intl.com> domain name is confusingly similar to Complainant’s CUBIST trademark and service mark. The domain name contains the entire mark, with the addition of a hyphen and the generic term “intl” (a common abbreviation for “international,” which describes an aspect of Complainant’s business), plus the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save the domain name from the realm of confusing similarity under the standards of the Policy. See 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)).
See also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding, under Policy ¶ 4(a)(i), that the addition of the generic term “collection” to a UDRP Complainant’s HARRY POTTER mark in creating a domain name failed to distinguish the domain name from the mark).
Finally, see Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (finding that the addition of the generic Top Level Domain (“gTLD”) “.com” to the mark of another in forming a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
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 re-spondent 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 out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine 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 asserts, and Respondent does not deny,
that Respondent has not been commonly known by the <cubist-intl.com> domain name, and that Respondent both registered and uses the CUBIST mark without Complainant’s consent. Moreover, the pertinent WHOIS information identifies the registrant of the disputed domain name only as “Gregory Stea,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel there finding, based on the WHOIS information and other evidence in the record, that a respondent was not commonly known by the domain name <cigaraficionada.com> and so failed to show that it had rights to or legitimate interests in that domain name as provided in Policy ¶ 4(c)(ii).
We next observe that Complainant contends, without objection from Respondent, that Respondent has used the <cubist-intl.com> domain name to send e-mails to various IT hardware suppliers in an attempt to impersonate Complainant and to defraud such suppliers. The Panel notes that Respondent’s disputed domain name resolves to a website that is similar in appearance to Complainant’s own website. In the circumstances here presented, we may comfortably presume that Respondent has sought to profit from this employment of the domain name. Such a use of the domain name is neither a bona fide offering of goods or ser-vices under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007):
Because respondent in this case is also attempting to pass itself off as complainant, presumably for financial gain, the Panel finds the respondent is not using the …domain name for 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).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent has used the contested <cubist-intl.com> domain name, which is confusingly similar to Complainant’s CUBIST trademark and service mark, without Complainant consent to profit by perpetrating a fraud upon Internet users as alleged in the Complaint. Under Policy ¶ 4(b)(iv), this use stands as proof of bad faith in the registration and use of the domain name. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003), the panel finding, under Policy ¶ 4(b)(iv), that a disputed domain name was registered and used in bad faith where a respondent employ-ed it to host a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill sur-rounding the AIG mark.”
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the CUBIST trademark and service mark when it registered the <cubist-intl.com> domain name. This is independent proof of bad faith in the registration of the domain name. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where a respondent was "well-aware of” a UDRP complainant's YAHOO! mark at the time of its registration of a confus-ingly similar domain name).
The Panel thus 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 <cubist-intl.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 5, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page