Bayer Schering Pharma AG v.
knightleyinc
Claim Number: FA1003001312390
PARTIES
Complainant is Bayer Schering Pharma AG, (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <buyyasminonline.us>, registered with
Godaddy.com,
Inc.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on March 10, 2010;
the Forum received a hard copy of the Complaint on March 11, 2010.
On March 10, 2010, Godaddy.com, Inc. confirmed by e-mail to the
Forum that the <buyyasminonline.us> domain name is registered with Godaddy.com,
Inc. and that Respondent is the current registrant of the name. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, 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 March 12, 2010, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 1, 2010 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, the Forum transmitted to
the parties a Notification of Respondent Default.
On April 7, 2010, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Honorable Karl V. Fink
(Ret.) 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. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent
to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <buyyasminonline.us> domain name is confusingly similar to Complainant’s YASMIN mark.
2.
Respondent does not have any rights or
legitimate interests in the <buyyasminonline.us>
domain name.
3.
Respondent registered and used the <buyyasminonline.us> domain name in
bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Bayer Schering Pharma AG, is a
global provider of health care, nutrition and of medical products comprising
350 companies and 106,000 employees worldwide.
Complainant owns numerous trademark registrations worldwide for its
YASMIN mark. Complainant specifically
notes its trademark registration with the United States Patent and Trademark
Office (“USPTO”) for its YASMIN mark (e.g.,
Reg. No. 2,177,963 issued on August 4, 1998).
Respondent, knightleycyinc c/o P Knightley,
registered the <buyyasminonline.us>
domain name on January 13, 2010.
Respondent’s disputed domain name resolves to an online pharmacy that
displays and gives information for both Complainant’s products and the products
of Complainant’s competitors.
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 the 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. 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 the 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 the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights; and
(2) the 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
The Panel finds that Complainant has established rights in its YASMIN mark for purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO (e.g., Reg. No. 2,177,963 issued on August 4, 1998) as well as Complainant’s trademark registrations with other governmental authorities worldwide. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of [UDRP] ¶ 4(a)(i).”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Complainant argues that the <buyyasminonline.us> domain name is confusingly similar to its YASMIN mark because the disputed domain name contains the YASMIN mark wholly, with the addition of the generic terms “buy” and “online,” and the county-code-top-level domain (“ccTLD”) “.us.” Complainant contends that the addition of generic terms to its mark does not distinguish the disputed domain name from its YASMIN mark. The Panel finds that the <buyyasminonline.us> domain name is confusingly similar under Policy ¶ 4(a)(i) because the addition of two generic terms to Complainant’s mark are not distinctive from Complainant’s YASMIN mark. The Panel further finds that the addition of the ccTLD “.us” is not relevant under Policy ¶ 4(a)(i). See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); see also Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); see also Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the Policy”). Therefore, the Panel finds that Respondent’s <buyyasminonline.us> domain name is confusingly similar to Complainant’s YASMIN mark under Policy ¶ 4(a)(i).
The Panel finds
that Policy ¶ 4(a)(i).
Rights
or Legitimate Interests
Complainant alleges that Respondent does not have any rights or legitimate interests in the <buyyasminonline.us> domain name. Complainant is required to make a prima facie case in support of these allegations. After Complainant has produced a prima facie case the burden of proof shifts to Respondent to show why they have rights or interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under [UDRP] ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the [UDRP].”). The Panel finds that the Complainant has produced a prima facie case. Due to the Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the disputed domain name. The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). 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).
The Panel finds that there is no evidence on record that shows that Respondent owns a service mark or trademark for the <buyyasminonline.us> domain name. Accordingly, the Panel finds that Respondent lacks rights and legitimate interests in the <buyyasminonline.us> domain name under Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant submits that it has not
granted Respondent permission to use its YASMIN mark, nor should Respondent be
considered as being commonly known as the disputed domain name. The WHOIS information for the <buyyasminonline.us> domain name lists “P Knightley c/o knightleyinc”
as the registrant of the domain name.
Respondent has not come forward with any evidence showing that it is
commonly known by the disputed domain name.
Therefore, the Panel finds that Respondent lacks rights and legitimate
interests in the <buyyasminonline.us> domain
name pursuant to Policy ¶ 4(c)(iii). See Coppertown
Drive-Thru Sys., LLC v.
Snowden, FA 715089 (Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name); see also
Complainant further argues that
Respondent’s use of the disputed domain shows that Respondent lacks rights and
legitimate interests in the disputed domain name. Respondent’s <buyyasminonline.us> domain name resolves to a website that offers
pharmaceutical products for sale. Included
for sale are the goods of Complainant’s competitors, as well as Complainant’s
goods. The Panel finds that the above
use of the disputed domain name by Respondent 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 pursuant to Policy ¶ 4(c)(iv). See Nike,
Inc. v. Dias, FA 135016 (Nat. Arb. Forum
Jan. 7, 2002) (finding no bona fide offering of goods or services where
the respondent used the complainant’s mark without authorization to attract
Internet users to its website, which offered both the complainant’s products
and those of the complainant’s competitors); see also Nat’l Collegiate
Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that
domain names used to sell the complainant’s goods without the complainant’s
authority, as well as others’ goods, is not bona fide use); see also Ultimate
Elecs., Inc. v. Nichols, FA 195683 (Nat.
Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain
name (and Complainant’s mark) to sell products in competition with Complainant
demonstrates neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the name”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration
and Use in Bad Faith
Complainant argues that Respondent’s use of
the disputed domain name to display the products of Complainant’s competitors
and Complainant results in a disruption to its business. The Panel finds that Respondent’s use of the
confusingly similar <buyyasminonline.us> domain name to sell the products of
Complainant and Complainant’s competitors is evidence of bad faith under Policy
¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23,
2000) (transferring the <fossilwatch.com> domain name from the
respondent, a watch dealer not otherwise authorized to sell the complainant’s
goods, to the complainant); see also Caterpillar Inc. v. Vine,
FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the
disputed domain names in order to gain customers and to disrupt Complainant's
business of authorizing dealers to sell its CATERPILLAR equipment.”); see also
Complainant contends that Respondent’s use of the confusingly similar <buyyasminonline.us> domain name to attract Internet users to Respondent’s website where it sells the products of Complainant and Complainant’s competitors is evidence of registration and use in bad faith. The Panel finds it is well established that a Respondent using a domain name that fully incorporates the mark of Complainant to market and sell the products of Complainant’s competitors and those of Complainant is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to UDRP ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); see also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <buyyasminonline.us> domain name be TRANSFERRED from Respondent to Complainant.
Karl V. Fink (Ret.), Panelist
Dated: April 21, 2010
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