national
arbitration forum
DECISION
Abbott Laboratories v. Speedy Web
Claim Number: FA0701000887814
PARTIES
Complainant is Abbott Laboratories (“Complainant”), represented by Kristy
Mothersbaugh, of Richard Law Group,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <vicodines.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
PANEL
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.
Bruce E. Meyerson as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On January 15, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 5, 2007 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@vicodines.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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.
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 <vicodines.com> domain name is identical to Complainant’s VICODIN ES mark.
2. Respondent does not have any rights or legitimate interests in the <vicodines.com> domain name.
3. Respondent registered and used the <vicodines.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Abbott
Laboratories, is a global health care company whose products include
pharmaceutical, nutritional, and medical device products. Complainant is also a leader in scientific
research and innovation of such products.
In connection with one of its pharmaceutical products, Complainant has
registered the VICODIN ES mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 1,399,182 issued July 1, 1986).
Respondent registered the <vicodines.com>
domain name on
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(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.
Identical and/or Confusingly Similar
Complainant has established rights in the VICODIN ES mark
pursuant to Policy ¶
4(a)(i) through its registration of the mark with the USPTO. See
Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum
The <vicodines.com>
domain name fully incorporates Complainant’s VICODIN ES mark and simply
eliminates the space between the terms and adds the generic top-level domain
“.com.” As these alterations are purely
functional and largely irrelevant to Policy ¶ 4(a)(i) analysis, the Panel finds
the mark and disputed domain name to be identical according to Policy ¶
4(a)(i). See
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant alleges that Respondent has no rights or
legitimate interests in the <vicodines.com>
domain name. Complainant has the intitial burden of proof
in asserting that Respondent has no rights or legitimate interests in the
domain name. Once Complainant makes a prima facie case under Policy ¶ 4(a)(ii), the burden then
shifts to Respondent to show that it does have rights or legitimate
interests. See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding
that once the complainant asserts that the respondent has no rights or
legitimate interests with respect to the domain, the burden shifts to the
respondent to provide “concrete evidence that it has rights to or legitimate
interests in the domain name at issue”); see
also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO
Nov. 28, 2000) (the mere assertion by the complainant that the respondent has
no right or legitimate interest is sufficient to shift the burden of proof to
the respondent to demonstrate that such a right or legitimate interest does
exist).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the
disputed domain name. See 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.”).
Nevertheless, the Panel will examine the record to determine if
Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent is using the <vicodines.com> domain name, which is identical to Complainant’s VICODIN
ES mark, to divert
Internet users to websites containing information about Complainant’s
products, competing products, and unrelated businesses, products, and services. Moreover, by using the disputed domain name
to display information about Complainant’s products, Respondent is capitalizing
on consumer confusion and redirecting Internet users to other commercial web
sites. Such use of the disputed domain
name does not constitute a bona fide offering of
goods and services pursuant to Policy ¶ 4(c)(i), or a legitmate noncommercial or fair use of
the domain name pursuant to Policy ¶ 4(c)(iii). See
Complainant asserts that
Respondent is not authorized to use a website which incorporates Complainant’s VICODIN
ES mark. Furthermore,
Respondent’s WHOIS information does not suggest that Respondent is commonly
known by the <vicodines.com> domain name. Therefore, the Panel finds that Respondent is
not commonly known by the disputed domain name under 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 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.
Registration and Use in Bad Faith
Respondent is using the <vicodines.com> domain name to operate a website that displays various links to third-party sites, some of which offer information on purchasing VICODIN products and competing pharmaceuticals. The Panel infers that Respondent earns click-through revenues for each consumer it diverts to these third-party websites. Assuming this inference is correct, Respondent is taking commercial advantage of the confusing similarity between Respondent’s domain name and Complainant’s mark, and profiting from the goodwill associated with Complainant’s mark in bad faith pursuant to Policy ¶ 4(b)(iv). See Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of the <compaq-broker.com> domain name to sell the complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to Policy ¶ 4(b)(iv)”); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
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 <vicodines.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 16, 2007
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