Allergan, Inc. v. Stacey Zimmerman
Claim Number: FA1009001346207
Complainant is Allergan, Inc. ("Complainant"), represented by Kenneth L. Wilton of Seyfarth Shaw, LLP, California, USA. Respondent is Stacey Zimmerman ("Respondent"), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <buylatisseonline.com> and <buylumigan.com>, registered with GoDaddy.com, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 14, 2010, and the National Arbitration Forum received payment on September 15, 2010.
On September 22, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <buylatisseonline.com> and <buylumigan.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 28, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 18, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@buylatisseonline.com and postmaster@buylumigan.com. Also on September 28, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 27, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is a developer, manufacturer and seller of pharmaceutical, ophthalmic, and dermatological products.
Complainant owns a trademark registration with the United States Patent and Trademark Office ("USPTO") for its LATISSE mark (Reg. No. 3,620,623, issued May 12, 2009).
Complainant also owns trademark registrations for its LUMIGAN mark with the USPTO (including Reg. No. 2,494,680, issued October 2, 2001) and with the Canadian Intellectual Property Office (“CIPO”) (including Reg. No. TMA575951, issued February 19, 2003).
Respondent registered the <buylatisseonline.com> and <buylumigan.com> domain names on July 1, 2009.
Respondent once used the disputed domain names to resolve to a website that displayed information about Complainant’s products with third-party links to an online pharmacy located at <4rx.com> that sold generic versions of Complainant’s branded products.
Respondent currently uses the disputed domain names to resolve to a website located at <buybimatoprostonline.com> that features third-party links to various websites, including <4rx.com>, that operate in competition with the business of Complainant.
Respondent’s <buylatisseonline.com> domain name is confusingly similar to Complainant’s LATISSE mark.
Respondent’s <buylumigan.com> domain name is confusingly similar to Complainant’s LUMIGAN mark.
Respondent is not commonly known by either of the contested domain names, nor has Complainant granted Respondent permission to use its marks in any way.
Respondent does not have any rights to or legitimate interests in either of the domain names <buylatisseonline.com> and <buylumigan.com>.
Respondent registered and uses the <buylatisseonline.com> and <buylumigan.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to trademarks in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) Each of the same domain names was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has presented sufficient evidence to establish rights in its LATISSE and LUMIGAN marks under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO and CIPO. See, for example, Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).
See also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding that a 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 Policy ¶ 4(a)(i).”); further see Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a complainant can demonstrate rights in a mark in some jurisdiction).
The <buylatisseonline.com> domain name is confusingly similar to Complainant’s LATISSE mark because the domain name contains the mark in its entirety while adding the generic terms “buy” and “online” and the generic top-level domain (“gTLD”) “.com.” See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that a respondent’s domain names were confusingly similar to a complainant’s GOOGLE mark where that respondent merely added common terms such as “buy” or “gear” to the end); see also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding that the <broadcomonline.com> domain name is confusingly similar to a complainant’s BROADCOM mark); further see Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007):
The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.
For the same reasons, the <buylumigan.com> domain name is confusingly similar to Complainant’s LUMIGAN mark because the domain name contains the entire LUMIGAN mark while merely adding the generic term “buy” and the gTLD “.com.”
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not possess rights to or legitimate interests in the <buylatisseonline.com> and <buylumigan.com> domain names under Policy ¶ 4(a)(ii). Complainant is required to produce a prima facie case in support of these allegations. Once Complainant has produced such a prima facie case, the burden shifts to Respondent to prove that it does possess rights to or legitimate interests in the disputed domain names. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if a complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have rights to or legitimate interests in a domain name).
Complainant has established a prima facie case that Respondent lacks rights to or legitimate interests in the <buylatisseonline.com> and <buylumigan.com> domain names, while Respondent has failed to respond to the Complaint filed in these proceedings. We are therefore free to infer that Respondent lacks rights to and legitimate interests in the disputed domain names. 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 Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000):
[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.
Nonetheless, we will analyze the evidence of record, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain names which are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by either of the contested domain names, nor has Complainant granted Respondent permission to use its marks in any way. Moreover, the WHOIS information for each domain name identifies the registrant only as “Stacey Zimmerman,” which does not resemble either of the domain names. Therefore, we must conclude that Respondent is not commonly known by the disputed domain names so as to have demonstrated that it has rights to or legitimate interests in either of them under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights to or legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it was commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its registered mark).
We also observe that Complainant contends, without objection from Respondent, that the disputed domain names previously resolved to a website that displayed information about Complainant’s product lines, and that Respondent’s previous use of the domain names <buylatisseonline.com> and <buylumigan.com> included advertisements and links to an online pharmacy that sells generic versions of Complainant’s products, presumably for commercial gain. This is not a use of the domains in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that a respondent’s use of domain names confusingly similar to a complainant’s WAL-MART mark to divert Internet users seeking a complainant’s goods and services to websites competing with the business of that complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (holding that a respondent’s use of disputed domain names to market limousine services competing with the business of a complainant was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), where that respondent was appropriating a complainant’s CAREY mark in order to profit from the mark).
There is no dispute as to Complainant’s assertion that Respondent currently uses the disputed domain names to resolve to a website located at <buybimatoprostonline.com> that features third-party links to various websites, including <4rx.com>, that operate in competition with the business of Complainant. Respondent’s current use of the disputed domain name also fails to constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc., supra; see also Carey Int’l, Inc., supra.
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s uses of the contested domain names have diverted Internet users who are seeking Complainant’s products to the products and services of an online pharmacy that sells generic versions of Complainant’s products. This use of domain names which are confusingly similar to Complainant’s marks constitutes a disruption of Complainant’s business. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a contested domain name to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use of the domain under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007):
This Panel concludes that by redirecting Internet users seeking information on Complainant’s …[business]…to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Respondent’s currently resolving website features Google advertisements to various commercial websites, presumably for financial gain. Such commercial use is evidence of Respondent’s bad faith registration and use of the contested domain names Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that a respondent’s use of the <arizonashuttle.net> domain name, which contained a complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to that respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where a respondent used a domain name for commercial gain to attract users to the website of a direct business competitor of that complainant within the meaning of Policy ¶ 4(b)(iv)).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <buylatisseonline.com> and <buylumigan.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 15, 2010
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