Advancis Pharmaceutical Corporation v.
Gary Lam
Claim
Number: FA0503000440165
Complainant is Advancis Pharmaceutical Corporation (“Complainant”),
represented by Ryan C. Compton, of DLA Piper Rudnick Gray Cary US LLP, 1200 Nineteenth Street NW, Washington, DC 20036-2412. Respondent
is Gary Lam (“Respondent”), 2/f
Yally Industrial Building, 6 Yip Fat Street, Wong Chuk Hang, Hong Kong, SAR of
China
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <keflex.com>, registered with Brandon
Gray Internet Services, Inc. d/b/a Namejuice.
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.
James
A. Crary as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
11, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 14, 2005.
On
March 14, 2005, Brandon Gray Internet Services, Inc. d/b/a Namejuice confirmed
by e-mail to the National Arbitration Forum that the domain name <keflex.com>
is registered with Brandon Gray Internet Services, Inc. d/b/a Namejuice and
that Respondent is the current registrant of the name. Brandon Gray Internet
Services, Inc. d/b/a Namejuice has verified that Respondent is bound by the Brandon
Gray Internet Services, Inc. d/b/a Namejuice registration agreement and has
thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
March 16, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 5, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@keflex.com by e-mail.
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
April 11, 2005 pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed James A. Crary
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 for Uniform Domain Name
Dispute Resolution Policy (the "Rules") "to employ reasonably
available means calculated to achieve actual notice to Respondent." 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 makes the following assertions:
1. Respondent’s <keflex.com>
domain name is identical to Complainant’s KEFLEX mark.
2. Respondent does not have any rights or
legitimate interests in the <keflex.com> domain name.
3. Respondent registered and used the <keflex.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Advancis Pharmaceutical Corporation, is a pharmaceutical company focused on the
development and commercialization of “pulsatile” drug products that fulfill
unmet medical needs in the treatment of infectious diseases. Since 1968,
Complainant has used the KEFLEX mark continuously in commerce. Complainant has
registered the KEFLEX mark with the United States Patent and Trademark Office
(“USPTO”) (Reg. No. 881,598 issued on December 2, 1969).
Respondent
registered the <keflex.com> domain name on May 18, 2004.
Respondent’s domain name resolves to a website that features links offering
competing pharmaceuticals. Previous UDRP proceedings have found that Respondent
engaged in a similar pattern of registering domain names featuring another’s
mark, and using them to misdirect consumers for commercial gain. See Goodman
v. Lam, D2004-0785 (WIPO Nov. 30, 2004); see also Cox Holdings, Inc. v.
Lam, D2004-0931 (WIPO Dec. 30, 2004); see also Yahoo Inc! Inc. v. Lam,
D2004-0896 (WIPO Dec. 30, 2004); see also TM Acquisition Corp. v. Lam,
FA 280499 (Nat. Arb. Forum Jul. 9, 2004).
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(e), 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 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.
Complainant has
established rights in the KEFLEX mark through registration of the mark with the
USPTO and through continuous use of the mark in commerce since 1968. See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the United States Patent and Trademark Office
creates a presumption of rights in a mark); see
also 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.”).
Respondent’s <keflex.com>
domain name is identical to Complainant’s KEFLEX mark. The mere addition of
the generic top-level domain “.com” is not enough to distinguish Respondent’s
domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(iii). See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition
of a top-level domain is irrelevant when establishing whether or not a mark is
identical or confusingly similar, because top-level domains are a required
element of every domain name.”); see also
Kioti Tractor Div. v. O’Bryan Implement Sales, FA
210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's
domain name, <kioti.com>, is identical to Complainant's KIOTI mark
because adding a top-level domain name is irrelevant for purposes of Policy ¶
4(a)(i).”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent
failed to respond to the Complaint. Thus, the Panel may accept all reasonable
allegations and assertions set forth by the Complainant as true and accurate. See Desotec
N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that
failing to respond allows a presumption that the complainant’s allegations are
true unless clearly contradicted by the evidence); 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
asserted that Respondent has no rights or legitimate interests in the disputed
domain name, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may interpret Respondent’s failure to respond
as evidence that Respondents lacks rights and legitimate interests in the <keflex.com>
domain name pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response. The
respondent has failed to invoke any circumstance, which could demonstrate any
rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
Respondent is using the <keflex.com> domain name,
which is identical to Complainant’s KEFLEX mark, to operate a website that
features links to a variety of websites, including pharmaceutical related sites
offering products in competition with Complainant. Such competing use is not a
use in connection with 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). See Ticketmaster
Corp. v. DiscoverNet, Inc.,
D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where
the Respondent generated commercial gain by intentionally and misleadingly
diverting users away from the complainant's site to a competing website); see also N. Coast Med., Inc. v. Allegro Med.,
FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no rights or legitimate
interests in a domain name that diverted Internet users to the respondent’s
competing website through the use of Complainant’s mark).
Furthermore,
nothing in the record indicates that Respondent is commonly known by the <keflex.com>
domain name or is authorized to register domain names featuring
Complainant’s KEFLEX mark. Thus, the Panel concludes that Respondents lacks
rights and legitimate interests in the disputed domain name pursuant to Policy
¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interests where the respondent was
not commonly known by the mark and never applied for a license or permission
from the complainant to use the trademarked name); see also Tercent Inc. v. Lee 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 Policy ¶ 4(c)(ii) does not apply).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <keflex.com> domain name, which is identical to
Complainant’s KEFLEX mark to
operate a website that features links to a variety of websites, including
pharmaceutical related sites offering products in competition with Complainant.
The Panel finds that such competing use constitutes disruption and is evidence
that Respondent registered and used the disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18,
2000) (finding the respondent acted in bad faith by attracting Internet users
to a website that competes with the complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June
12, 2000) (finding that the respondent has diverted business from the
complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii).
Additionally,
the Panel infers that Respondent receives click-through fees for diverting
Internet users to competing websites. Since Respondent is using a domain name
which is identical to the Complainant’s mark, consumers searching for
Complainant online who access Respondent’s domain name may become confused as
to Complainant’s affiliation with the resulting website. Thus, Respondent’s
commercial use of the <keflex.com> domain name constitutes bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan,
FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent
profits from its diversionary use of the complainant's mark when the domain
name resolves to commercial websites and the respondent fails to contest the
complaint, it may be concluded that the respondent is using the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13,
2000) (finding bad faith where the respondent attracted users to a website
sponsored by the respondent and created confusion with the complainant’s mark
as to the source, sponsorship, or affiliation of that website).
Furthermore,
respondent registered the <keflex.com> domain name with actual or
constructive knowledge of Complainant’s KEFLEX mark due to Complainant’s
registration of the mark with the USPTO and Complainant’s long established
history of use of the mark in commerce. Moreover, the Panel infers that
Respondent registered the domain name with actual knowledge of Complainant’s
mark due to the obvious connection between the content advertised on
Respondent’s website and Complainant’s business. Registration of a domain name
identical to a mark, despite actual or constructive knowledge of another’s
rights in a mark, is evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii). 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 Orange Glo Int’l
v. Jeff 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 G.D. Searle & Co. v.
24-7-Commerce.com, FA 114707 (Nat. Arb. Forum July 31, 2002) (finding that
“[i]t is evident that Respondent knew of Complainant’s rights in the CELEBREX
mark” since Complainant’s CELEBREX mark is a fanciful term, and Respondent uses
the mark in conjunction with marks of Complainant’s competitors).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <keflex.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Crary, Panelist
Dated:
April 25, 2005
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