Roche Therapeutics Inc. v. Williams Shorell
Claim Number: FA1607001684961
Complainant is Roche Therapeutics Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Williams Shorell (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <boniva.top>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 22, 2016; the Forum received payment on July 25, 2016.
On July 23, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <boniva.top> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.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 July 25, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 15, 2016 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@boniva.top. Also on July 25, 2016, 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 technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 22, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 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 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
i) Complainant owns the BONIVA mark through registration with the United States Patent and Trademark Office ("USPTO") (Reg. No. 2,931,724, registered Mar. 8, 2005). Complainant uses the BONIVA mark in connection with pharmaceutical preparation for the prevention and treatment of osteoporosis and other bone diseases. The <boniva.top> domain name is identical to the BONIVA mark.
ii) Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not affiliated with Complainant, and there is no evidence that Respondent has been commonly known by the disputed domain name. Respondent is not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. Respondent uses the disputed domain name to redirect Internet users to <safecanadianrx.com> where Complainant’s products are sold along with other pharmaceutical products.
iii) Respondent registered and is using the <boniva.top> domain name in bad faith. Respondent registered the disputed domain name with at least actual knowledge of Complainant and its rights in the BONIVA mark. Respondent is using the BONIVA mark to intentionally attract users for commercial gain through confusion, which warrants a finding of bad faith pursuant to Policy ¶ 4(b)(iv). Respondent has registered numerous “.top” domain names which infringe on the trademark rights of third parties. Respondent’s numerous “.top” registrations constitute bad faith under Policy ¶ 4(b)(ii). Respondent’s false/misleading WHOIS information indicates bad faith registration and use per Policy ¶ 4(a)(iii).
B. Respondent
Respondent did not submit a response for consideration in this proceeding. The Panel notes the <boniva.top> domain name was registered on March 12, 2016.
Complainant established that it had rights in the mark contained in the disputed domain name. The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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 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.
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 (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.”).
Complainant claims ownership of the BONIVA mark through registration with the USPTO (Reg. No. 2,931,724, registered Mar. 8, 2005). A valid USPTO registration establishes Policy ¶ 4(a)(i) rights in mark. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i).).
Complainant asserts Respondent’s <boniva.top> domain name is identical to the BONIVA mark. The addition of a generic top level domain to a mark does not differentiate the domain from said mark under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Ohno, FA 511\463 (Forum Aug. 23, 2005) (holding that the <reebok.net> domain name was identical to the complainant’s REEBOK mark because it fully incorporates the mark and merely adds a generic top-level domain). The Panel finds that Complainant has established the requirements under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent 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 argues that Respondent has no rights or legitimate interests in the disputed domain names. To begin, Complainant asserts that Respondent is not commonly known by the disputed domain name, nor do they have permission to use the BONIVA mark. According to the publicly available WHOIS information regarding the disputed domain name, listing “Williams Shorell” as the registrant of record. The Panel agrees based on the WHOIS information, Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). 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).
Complainant asserts that Respondent’s lack of rights or legitimate interests in the <boniva.top> domain name is evidenced by Respondent’s failure to use the domain name in connection with a bona fide offering of goods or services and failure to make a legitimate noncommercial or fair use of the disputed domain name. Complainant alleges that Respondent’s disputed domain name diverts Internet users to a commercial website, on which Respondent promotes and offers for sale Complainant’s products as well as competing products. Complainant states that by offering Complainant’s products under Complainant’s mark, Respondent attempts to appear to be affiliated or sponsored by Complainant. Panels have found that respondents who create a false sense of affiliation to sell a complainant’s products lack a bona fide offering of goods or services or a legitimate noncommercial or fair use. See G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because the respondent is using the infringing domain name to sell prescription drugs, the panel could infer that the respondent is using the complainant’s mark to attract Internet users to its website for commercial benefit). Complainant proceeds to go through a step by step analysis of the factors laid out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The Oki Data factors are used to determine if a respondent’s use of a complainant’s trademark can be deemed bona fide despite being identical/confusingly similar. The case is most often cited by respondents as a shield. Complainant states it is performing the analysis in anticipation of Respondent raising a defense.
Complainant states that Respondent fails the first (respondent must actually be offering the goods of the complainant) second (the respondent must use the website to sell only the trademarked goods of the complainant), and third (the website of the respondent must accurately disclose the registrant’s relationship with the trademark owner) prongs of the Oki Data test.
In light of the Complainant's exhibits in support of its argument, the Panel agrees that the Respondent fails at least the first, second, and third prongs of the Oki Data test. Accordingly, the Panel finds that Respondent’s disputed domain name fails to establish either 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).
Complainant argues that Respondent registered and used the disputed <boniva.top> domain name in bad faith. To begin, Complainant argues that Respondent registered and uses the disputed domain name with actual knowledge of Complainant and its rights in the BONIVA mark, in light of the manner of use of the disputed domain name, and the fame of Complainant's mark in the United States of America where Respondent domiciles. This Panel infers, due to the fame of the Complainant's mark and the manner of use of the disputed domain name mimicking Complainant's website, that Respondent was aware of the Complainant's trademark BONIVA at the time of registration of the disputed domain name. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“. . . [T]he Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Further, Complainant argues that Respondent is using the BONIVA mark to intentionally attract users for commercial gain through confusion, which warrants a finding of bad faith pursuant to Policy ¶ 4(b)(iv). Complainant argues that Respondent is using the <boniva.top> domain name to redirect Internet users to a third party online pharmacy where Complainant’s products are purportedly sold, where Respondent presumably profits through the sale of such goods or otherwise through advertising or affiliate compensation. Panels have found such behavior to evince bad faith under Policy ¶ 4(b)(iv). See generally Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”). See H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion). Therefore, this Panel agrees that Respondent has registered and used the <boniva.top> domain name in bad faith according to the language of Policy ¶ 4(b)(iv).
Complainant contends that Respondent has registered numerous “.top” domain names. Complainant has performed a reverse WHOIS search of Respondent’s email address and has asserted that these domains infringe on the trademark rights of third parties. Complainant also contends that Respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). This Panel finds that Respondent's registrations of numerous “.top” domain names infringing on the trademark rights of third parties constitute a pattern of bad faith registration and use under Policy ¶ 4(b)(ii).
See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)).
Given the circumstances above, it is needless to consider Complainant's other allegations, and the Panel finds that Complainant has established the requirements under 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 <boniva.top> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: August 30, 2016
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