Merrell Pharmaceuticals Inc. v. Daniel
Laforge
Claim Number: FA0502000420671
PARTIES
Complainant
is Merrell Pharmaceuticals, Inc. (“Complainant”),
represented by Baila H. Celedonia of Cowan, Liebowitz & Latman, P.C.,
1133 Avenue of the Americas, New York, NY 10036. Respondent is Daniel
Laforge (“Respondent”), 8423 Burger Lane, Stomper Hills, CA 92021.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <buyallegra.us>,
registered with Enom, Inc.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Sandra
Franklin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
14, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 17, 2005.
On
February 15, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <buyallegra.us>
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. registration agreement and has thereby
agreed to resolve domain name disputes brought by third parties in accordance
with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the
“Policy”).
On
February 23, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”) setting a deadline
of March 15, 2005 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules
for usTLD Dispute Resolution Policy (the “Rules”).
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
March 18, 2005, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Sandra
Franklin 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.
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the Policy, the 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
assertions:
1. Respondent’s <buyallegra.us> domain
name is confusingly similar to Complainant’s ALLEGRA mark.
2. Respondent does not have any rights or
legitimate interests in the <buyallegra.us>
domain name.
3. Respondent registered or used the <buyallegra.us> domain name in
bad faith.
B.
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Merrell Pharamaceuticals,
Inc., is a subsidiary of Aventis, Inc., which is one of the U.S. pharmaceutical
companies that is part of Sanofi-Aventis, a leader worldwide in the
pharmaceutical field. Sanofi-Aventis is
the third largest pharmaceutical company worldwide.
Complainant has been selling drugs in the
United States under the trademark, ALLEGRA, since at least August 1996. Complainant holds a registration with the
United States Patent and Trademark Office for the ALLEGRA mark (Reg. No.
2,067,728 issued June 3, 1997).
Complainant’s main website is operated at
the <allegra.com> domain name.
Respondent registered the <buyallegra.us> domain name on
December 12, 2004. Respondent’s domain
name resolves to a website that allows Internet users to order various
pharmaceutical products.
DISCUSSION
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(f), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to Paragraph 14(b) of
the Rules.
Paragraph
4(a) of the Policy requires that Complainant 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 or is being used in bad faith.
Given
the similarity between the Uniform Domain Name Dispute Resolution Policy
(“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as
applicable in rendering its decision.
Identical and/or Confusingly Similar
Complainant has established rights in the
ALLEGRA mark through registration with the United States Patent and Trademark
Office and its use in commerce since 1996.
See Men’s Wearhouse, Inc. v.
Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S.
trademark law, registered marks hold a presumption that they are inherently
distinctive and have acquired secondary meaning.”); see also Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) finding
that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption.
Respondent’s <buyallegra.us> domain name is confusingly similar to the
ALLEGRA mark because the domain name fully incorporates the mark and merely
adds the generic or descriptive term “buy” and the country-code “.us.” The mere additions of the term “buy” and the
country-code “.us” does not significantly distinguish the domain name from the
mark. See Slep-Tone Entm't Corp. v. Sound Choice Disc Jockeys, Inc., FA 93636
(Nat. Arb. Forum Mar. 13, 2000) (“[L]ikelihood of confusion is further
increased by the fact that the Respondent and [Complainant] operate within the
same industry”); see also Arthur Guinness Son & Co. (Dublin) Ltd.
v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) finding confusing
similarity where the domain name in dispute contains the identical mark of
complainant combined with a generic word or term; see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) finding confusing
similarity where respondent’s domain name combines complainant’s mark with a
generic term that has an obvious relationship to complainant’s business; see also Tropar Mfg.
Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) finding that, because
the addition of the country-code “.us” fails to add any distinguishing
characteristic to the domain name, the <tropar.us> domain name is
identical to Complainant’s TROPAR mark.
Therefore, Complainant has established
that the disputed domain name is confusingly similar to Complainant’s mark
under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant has alleged that Respondent
has no rights or legitimate interests in a domain name that contains in its
entirety Complainant’s mark. The burden
shifts to Respondent to show that it does not have rights or legitimate
interests once Complainant establishes a prima facie case pursuant to
Policy ¶ 4(a)(ii). Due to Respondent’s
failure to respond to the Complaint, the Panel will assume that Respondent
lacks rights and legitimate interests in the disputed domain name. See
Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or
legitimate interests in respect of the Domain Name requires the Complainant to
prove a negative. For the purposes of this sub paragraph, however, it is
sufficient for the Complainant to show a prima facie case; the burden of proof
is then shifted on to the shoulders of Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question”); see
also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct.
1, 2002) holding that where complainant has asserted that respondent has no
rights or legitimate interests with respect to the domain name it is incumbent
on respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”; see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) finding that, under certain
circumstances, the mere assertion by complainant that respondent has no rights
or legitimate interests is sufficient to shift the burden of proof to
respondent to demonstrate that such rights or legitimate interests do exist.
Respondent is using the <buyallegra.us> domain name to
redirect Internet users to a site that allows Internet users to order various
pharmaceutical products, including those offered by Complainant. Respondent’s use of a domain name that is
confusingly similar to Complainant’s ALLEGRA mark to redirect users interested
in Complainant’s products to a commercial website that offers identical
pharmaceutical products is not a use in connection with a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(ii) or a legitimate noncommercial
or fair use of the domain name pursuant to Policy ¶ 4(c)(iv). See
eBay Inc. v. Sunho Hong, D2000-1633 (WIPO Jan. 18, 2001) stating
that the "use of complainant’s entire mark in infringing domain names
makes it difficult to infer a legitimate use"; see also G.D. Searle & Co. v. Pelham, FA 117911 (Nat.
Arb. Forum Sept. 19, 2002) finding that because respondent is using the
infringing domain name to sell prescription drugs it can be inferred that
respondent is opportunistically using complainant’s mark in order to attract
Internet users to its website; see
also G.D. Searle & Co. v. Mahoney, FA 112559 (Nat. Arb. Forum
June 12, 2002) finding Respondent’s use of the disputed domain name to solicit
pharmaceutical orders without a license or authorization from Complainant does
not constitute a bona fide offering of goods or services under UDRP ¶ 4(c)(i).
Moreover, Respondent has offered no
evidence and there is no proof in the record suggesting that Respondent is
commonly known by the <buyallegra.us>
domain name or that Respondent has rights in the ALLEGRA mark. Thus, Respondent has not established rights
or legitimate interests in the disputed domain name pursuant to UDRP ¶¶
4(c)(ii). See Tercent Inc.
v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that UDRP ¶ 4(c)(ii)
does not apply; see also Gallup
Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) finding that respondent does not have
rights in a domain name when respondent is not known by the mark; see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) finding no rights or legitimate interests where respondent was not
commonly known by the mark and never applied for a license or permission from
complainant to use the trademarked name.
Therefore, Complainant has established
Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Respondent is using the disputed domain
name to advertise and sell pharmacy products.
Complainant’s business is a subsidiary of the third largest
pharmaceutical company worldwide. The
Panel finds that, by creating confusion around Complainant’s mark, Respondent
is attempting to disrupt the business of a competitor. Respondent’s use of Complainant’s mark to
sell goods similar to Complainant’s goods and services is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) finding respondent acted in bad faith by attracting
Internet users to a website that competes with complainant’s business; see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000)
transferring the <fossilwatch.com> domain name from respondent, a watch
dealer not otherwise authorized to sell complainant’s goods, to complainant; see also Nokia Corp. v. Uday Lakhani, D2000-0833 (WIPO Oct. 19, 2000)
transferring <nokias.com> from respondent cellular phone dealer to
complainant.
Complainant’s registration of its ALLEGRA
mark with the United States Patent and Trademark Office put Respondent on
constructive notice of Complainant’s rights in its mark. In addition, Respondent must have known about
Complainant’s mark because the link between the pharmaceutical content on the
website and Complainant’s business is apparent. Thus, the Panel concludes that Respondent acted in bad faith
pursuant to Policy ¶ 4(a)(iii) when it registered the <buyallegra.us> domain name because it had constructive
knowledge of Complainant’s ALLEGRA mark prior to registering the disputed
domain name. See Samsonite Corp. v.
Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) finding that
evidence of bad faith includes actual or constructive knowledge of a commonly
known mark at the time of registration; see
also Exxon Mobil Corp. v.
Fisher, D2000-1412 (WIPO Dec. 18. 2000) finding that respondent had actual
and constructive knowledge of Complainant’s EXXON mark given the worldwide
prominence of the mark and thus respondent registered the domain name in bad
faith; see also Orange Glo Int’l v.
Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s
OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof”); see
also Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002)
finding that because the link between complainant’s mark and the content
advertised on respondent’s website was obvious, respondent “must have known
about the complainant’s mark when it registered the subject domain name”.
Respondent’s <buyallegra.us> domain name diverts Internet users wishing to
search under Complainant’s well-known mark to Respondent’s commercial website
through the use of a domain name confusingly similar to Complainant’s
mark. Respondent’s practice of
diversion, motivated by commercial gain, through use of a confusingly similar
domain name, evidences bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Computerized Sec.
Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) finding that
respondent’s use of the <saflock.com> domain name to offer goods
competing with complainant’s illustrates respondent’s bad faith registration
and use of the domain name, evidence of bad faith registration and use pursuant
to Policy 4(b)(iv); see also TM Acquisition Corp. v. Carroll, FA
97035 (Nat. Arb. Forum May 14, 2001) finding bad faith where respondent used
the domain name, for commercial gain, to intentionally attract users to a
direct competitor of complainant; see
also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat.
Arb. Forum Nov. 21, 2002) finding that respondent registered and used the
domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because respondent was
using the confusingly similar domain name to attract Internet users to its
commercial website.
Complainant has established Policy ¶
4(a)(iii).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <buyallegra.us> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: March 31, 2005
Click Here to
return to the main Domain Decisions Page.
Click
Here to return to our Home Page