Abbott Laboratories v. Bilgi Gumus
Claim Number: FA1810001813579
Complainant is Abbott Laboratories (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Bilgi Gumus (“Respondent”), Antalya, Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <similacmama.com>, registered with GoDaddy.com, LLC.
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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on October 25, 2018; the Forum received payment on October 25, 2018.
On October 26, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <similacmama.com> domain name (the “Domain Name”) is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 October 26, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of November 15, 2018 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@similacmama.com. Also on October 26, 2018, 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 November 19, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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
Complainant is a global healthcare company that offers a diverse range of nutritional, diagnostic and medical products. For the past 90 years, Complainant has produced and marketed an infant formula product under the brand name SIMILAC. It asserts rights in the SIMILAC mark based on registration with various trademark authorities all over the world, including the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,645,112, registered July 3, 2001). Respondent’s Domain Name is confusingly similar to Complainant’s SIMILAC mark, as it incorporates Complainant’s mark in its entirety, merely adding the descriptive term “mama” and a “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not commonly known by the Domain Name. It is not an authorized dealer of Complainant’s products, nor has Complainant authorized Respondent to use the SIMILAC mark in any manner. Additionally, Respondent’s use of the Domain Name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the Domain Name to pass off as Complainant and it purports to offer Complainant’s products without Complainant’s authorization.
Respondent registered and is using the Domain Name in bad faith. Respondent had actual knowledge of Complainant’s rights in the SIMILAC mark prior to registering and subsequently using the Domain Name. Respondent disrupts Complainant’s business by impersonating Complainant and attracting Internet traffic intended for Complainant to Respondent’s web site. Finally, Respondent has engaged in a pattern of bad faith registrations of domain names related to infant nutrition products, having experienced a number of past adverse UDRP decisions.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 provides that in order to obtain an order cancelling or transferring a domain name, Complainant must prove each of the following three elements:
(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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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.”).
The Panel finds as follows with respect to the matters at issue in this proceeding.
Complainant registered the SIMILAC mark with various trademark authorities throughout the world, including the USPTO (Registration No. 2,645,112, registered July 3, 2001). See, Complaint Exhibit C. Registration of a mark with governmental trademark authorities is sufficient to establish a complainant’s rights in that mark for the purposes of Policy ¶ 4(a)(i). Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”).
Respondent’s Domain Name is confusingly similar to the SIMILAC mark. It incorporates the mark in its entirety, merely adding the descriptive term “mama” (Turkish for “baby food”) and the gTLD “.com.” These changes are not sufficient to distinguish the Domain Name from Complainant’s registered mark for the purposes of Policy ¶ 4(a)(i). YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark), Colin LeMahieu v. NANO DARK, FA 1786065 (Forum June 9, 2018) (finding that the addition of a generic term and the generic top-level domain “.com” insufficient to differentiate the <nanodark.com> domain name from the NANO mark).
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the SIMILAC mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to respondent of the dispute, respondent has used or has made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) respondent (as an individual, business or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) it is not commonly known by the Domain Name, (ii) it is not affiliated with, is not an authorized distributor of Complainant’s products, and does not have permission from Complainant to use the SIMILAC mark, and (iii) it is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because the name resolves to a web site that impersonates and passes itself off as the web site of Complainant. These allegations are supported by competent evidence.
According to the WHOIS report submitted as Exhibit A to the Complaint, the registrant of the Domain Name is “Bilgi Gumus.” This name bears no resemblance to the Domain Name. UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name).
Complainant states that Respondent is not affiliated with it in any way, that it is not an authorized distributor or vendor of Complainant’s products, and that it has never licensed or authorized Respondent to use its SIMILAC mark in any way. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complaint Exhibit E is a screenshot of the web site resolving from the Domain Name. The text is written in Turkish. It prominently features a picture of a container labelled “Similac” and the name “Similac” appears elsewhere on the site. The appearance of the container, which also bears a logo design exactly the same as that used by Complainant, and the font used for the printed material at Respondent’s web site have the same look and feel as the container and printed material on Complainant’s Turkish web site for its Similac product. See, Complaint Exhibit F. It would be impossible for a person not familiar with Complainant’s own web site to tell that Respondent’s web site is not Complainant’s. Using a domain name to pass off as a complainant and promote unauthorized sales of goods that may or may not be genuine complainant products does not qualify as a bona fide offering of goods and services within the meaning of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). iFinex Inc. v. Yuri Hefetz / Genie-Solution, FA 1789385 (Forum July 9, 2018) (holding that the respondent’s mimicking the complainant’s website in order to cause existing or potential customers to falsely believe they are setting up a new account with the complainant is prima facie evidence of the respondent’s lack of rights and legitimate interests in the disputed domain name); see also Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name;
(ii) respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct;
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of respondent’s web site or location or of a product of service on respondent’s web site or location.
The evidence of Respondent’s use of the Domain Name discussed above in connection with the rights or legitimate interests analysis also supports a finding of bad faith use and registration. In light of the world-wide fame and notoriety of the SIMILAC mark, and the close similarity between that mark and Complainant’s SIMILAC web site on the one hand, and Respondent’s Domain Name and web site on the other, it is obvious that Respondent had actual knowledge of Complainant’s rights in the mark when it registered the Domain Name in May of 2009. See, Complaint Exhibit A for registration date. The Policy recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldwcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and registering a confusingly similar domain name with actual knowledge of a complainant’s mark has often been held to be evidence of bad faith. Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Respondent’s Domain Name, which consists of Complainant’s mark and the Turkish word for baby food, and the web site which resolves from it, are by design intended to deceive Internet users into believing that Respondent’s web site is Complainant’s. As Respondent is selling infant formula from its web site, it is clearly a competitor of Complainant. Its actions thus fit squarely within the examples of bad faith registration and use articulated in Policy ¶¶ 4(b)(iii) and (iv). H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (Forum Dec. 22, 2014) (“As mentioned above, Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii).”), Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”), and Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (determining that the respondent’s offering of counterfeit versions of the complainant’s software 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 and thus demonstrates bad faith per Policy ¶ 4(b)(iv)).
Finally, it appears that Respondent has engaged in a pattern of bad faith registration and use of domain names, as it has accumulated a string of adverse UDRP decisions for conduct very similar to that present in this case. The Complaint lists several past UDRP cases in support of its contentions, including Nutricia International B.V. v. Hasan Bilgi Gumus, D2018-0253 (WIPO April 4, 2018) (finding that this same Respondent engaged in bad faith where he registered multiple domain names such as <bebelacmama.com> and <milupamama.net> and used them to offer Complainant’s products in Turkey without authorization), Nutricia International B.V. v. Bilgi Gumus, D2013-1392 (WIPO Sept. 17, 2013) (finding that this same Respondent engaged in bad faith where he registered <aptamil2.com> where APTAMIL was a baby nutritional product), and Montero Gıda Sanayi Ve Ticaret Anonim Şirketi v. Hasan Bilgi Gumus, D2018-0134 (WIPO Apr. 23, 2018) (finding this same Respondent engaged in bad faith where he registered <evolviamama.com> where EVOLVIA was a baby nutritional product). Again, considering the nonexclusive nature of Policy ¶ 4(b), this pattern of conduct has been held in and of itself to be evidence of bad faith registration and use. Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <similacmama.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
November 21, 2018
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