Baxter International Inc. v. WebContents, Inc.
Claim Number: FA0604000679475
Complainant is Baxter International Inc. (“Complainant”), One Baxter Parkway, Deerfield, IL 60015. Respondent is WebContents, Inc. (“Respondent”), 106 West Calendar Court: Suite 141, LaGrange, IL 60525.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <extraneal.com>, registered with Dotster.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 13, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 13, 2006.
On April 13, 2006, Dotster confirmed by e-mail to the National Arbitration Forum that the <extraneal.com> domain name is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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 April 24, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 15, 2006 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@extraneal.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 19, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 <extraneal.com> domain name is identical to Complainant’s EXTRANEAL mark.
2. Respondent does not have any rights or legitimate interests in the <extraneal.com> domain name.
3. Respondent registered and used the <extraneal.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Baxter International Inc. holds a trademark registration for the EXTRANEAL mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,843,444) in connection with its medical company. Complainant’s EXTRANEAL mark was filed with the USPTO on March 8, 2001 and was registered on May 18, 2004.
Respondent registered the <extraneal.com> domain name on September 28, 2003. Respondent’s domain name has never resolved to an active website nor is it presently resolving to an active website.
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. 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 (Nat. Arb. 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.”).
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 EXTRANEAL mark by registering the mark with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”). Respondent registered the <extraneal.com> domain name before the issuance of Complainant’s mark by the USPTO. However, the filing date of Complainant’s EXTRANEAL mark predates Respondent’s registration of the <extraneal.com> domain name. The Panel finds that Complainant’s rights in the EXTRANEAL mark date back to its filing date of March 8, 2001. Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of the complainant’s trademark rights date back to the application’s filing date).
The <extraneal.com> domain name is identical to Complainant’s EXTRANEAL mark pursuant to Policy ¶ 4(a)(i) because it contains Complainant’s mark in its entirety and merely adds the generic top-level domain “.com.” In Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000), the panel found that <pomellato.com> was identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant. See Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to the complainant’s TERMQUOTE mark). In this case, the Panel finds that the addition of a generic top-level domain is insufficient to overcome the identical aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant claims that Respondent lacks rights to and legitimate interests in the <extraneal.com> domain name. Once Complainant establishes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it has rights to or legitimate interests to the disputed domain name pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interest in the <extraneal.com> domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). However, the panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
According to the WHOIS registry, Respondent has
registered the domain name under “WebContents, Inc,” and there is no evidence
in the record to suggest that Respondent is commonly known by the <extraneal.com>
domain name. It follows that Respondent
has not established rights or legitimate interests in the <extraneal.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Gallup, Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark); see also Wells Fargo & Co.
v. Onlyne Corp. Services11, Inc., FA
198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information
for the disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any
derivation.”).
Complainant asserts
without contention that Respondent’s <extraneal.com> domain
name, which is identical to Complainant’s EXTRANEAL mark, has never resolved to
an active website. Since Respondent has
not used the disputed domain name for any purpose since registering it on
September 28, 2003 and has not provided evidence of any demonstrable
preparations to use the disputed domain name, the Panel finds that Respondent
has not used the disputed domain name 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 Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13,
2000) (finding no rights or legitimate interests where the respondent failed to
submit a response to the complaint and had made no use of the domain name in
question); see also TMP Int’l, Inc. v. Baker
Enters., FA 204112 (Nat. Arb. Forum Dec.
6, 2003) (“[T]he Panel concludes that Respondent's passive holding of the
domain name does not establish rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii).”).
The Panel finds that
Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent has never used the <extraneal.com> domain name since registering it on September 28, 2003. It follows that Respondent’s passive holding of the disputed domain name constitutes bad faith registration under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <extraneal.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: May 31, 2006
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