Ferring B.V. v. Institute for Specialized Medicine
Claim Number: FA1106001392928
Complainant is Ferring B.V. (“Complainant”), represented by Arne M. Olson, Illinois, USA. Respondent is Institute for Specialized Medicine (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <euflexxainjection.com> and <euflexxainjection.org>, registered with GoDaddy.com, Inc.
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.
Nathalie Dreyfus as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 9, 2011; the National Arbitration Forum received payment on June 10, 2011.
On June 13, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <euflexxainjection.com> and <euflexxainjection.org> 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 June 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 2011 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@euflexxainjection.com and postmaster@euflexxainjection.org. Also on June 14, 2011, 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.
A timely Response was received and determined to be complete on July 6, 2011.
On July 12, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Nathalie Dreyfus as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges that the domain names are identical to Complainant’s EUFLEXXA Trademark and Domain Names. Complainant further alleges
- having prior rights in the EUFLEXXA trademark;
- the domain names incorporate Complainant’s trademark EUFLEXXA in its entirety;
- the addition of the descriptive term “injection” to Complainant’s EUFLEXXA Trademark in the disputed domain name does not mitigate confusion, Respondent’s use of “injection” is descriptive and directly related to Complainant’s pharmaceuticals;
- all domain names are required to have a top-level domain.
Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain names because
- Complainant has never permitted Respondent to use the EUFLEXXA trademark or to use the EUFLEXXA trademark in any domain name or any variation thereof;
- Complainant further asserts that there is no evidence Respondent has ever been commonly known by the term EUFLEXXA or the disputed domain names;
- Respondent has used the domain names to direct Internet users to parking pages of pay-per-click links;
- after Complainant contacted Respondent’s proxy service, the direction of the disputed domain name was changed for a page indicating “Sorry! This site is currently not available”;
- passive holding of domain names is not use in connection with a bona fide offering of goods and services and is not a noncommercial use or fair use pursuant to the Policy;
- the only purpose of Respondent’s disputed domain names are to attract Complainant’s customers to Respondent’s websites to seek a profit.
Complainant also alleges that:
- its rights in the EUFLEXXA trademark predates Respondent’s registration and use of the disputed domain names;
- Respondent registered several domain names including Complainant’s Trademark which creates a presumption of bad faith registration and use to prevent Complainant’s from reflecting its trademark in corresponding domain names;
- Respondent is also not making any active use of the disputed domain name which is also indicative of bad faith pursuant to the Policy;
- Respondent’s only known use of the disputed domain names as websites featuring pay-per-click advertisements which is a use in bad faith under the policy;
- Respondent has not made a legitimate noncommercial or fair use of its multiple domain names, which incorporate Complainant’s EUFLEXXA Trademark in its entirety.
B. Respondent
Respondent alleges that:
- Respondent’s account with Godaddy is cancelled;
- Respondent’s registration for the webnames was cancelled as well;
- although Respondent did own the webnames, Respondent has never used them;
- Respondent thus thinks the case should be closed
Complainants own numerous registrations for the Trademark EUFLEXXA.
The disputed domain names were registered on May 24, 2010.
The verification process conducted by the National Arbitration Forum did not reveal that the domain names are expired or deleted.
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."
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 submitted evidence proving it owns numerous registrations worldwide for its EUFLEXXA mark. Complainant in particular claims to have established its rights in the EUFLEXXA mark by registering that mark with the Unites States Patent and Trademark Office (“USPTO”) (Reg. No. 3,346,569 issued December 4, 2007). Complainant has furnished copies of its trademark certificate for the mark. Therefore, the Panel finds Complainant has established its rights in the EUFLEXXA mark under Policy ¶ 4(a)(i) by registering it with the USPTO. See 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 Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant also claims Respondent’s disputed domain names are confusingly similar to its EUFLEXXA mark. The Panel finds that Respondent’s <euflexxainjection.com> and <euflexxainjection.org> domain names both include the entire mark while adding, what Complainant claims is a term descriptive of its business, “injection.” The Panel finds that the disputed domain names also include the generic top-level domains (“gTLD”) “.com” and “.org.” The Panel finds the inclusion of a descriptive term and a gTLD unable to mitigate a finding of confusing similarity under Policy ¶ 4(a)(i). See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also 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.”).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie case showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainants assert that Respondent is not commonly known by the disputed domain name. Respondent has made no arguments to the contrary. The WHOIS information identifies the registrant of the disputed domain names as “Institute for Specialized Medicine.” Thus, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also 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).
Complainant maintains that neither Respondent’s past nor current use of the disputed domain names constitutes a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant alleges that prior to contacting the privacy company listed in the initial WHOIS information the disputed domain names resolved to a site offering links to third parties unrelated to Complainant in a pay-per-click format.
Complainant contends that since contacting the privacy firm holding Respondent’s information the disputed domain name now resolves to an inactive website. Complainant maintains that failure to make an active use of the disputed domain name also cannot qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. The Panel finds that failing to make an active use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Respondent alleges the domain names in dispute were cancelled. However, the verification of the domain names conducted by the National Arbitration Forum with the registrar of the domain names did not reveal any cancellation of the domain names. The Panel finds that Respondent’s response is not evidence of rights or interest in the domain names pursuant to Policy 4(c).
Complainant contends that Respondent’s prior use of the disputed domain names was for commercial gain constituting bad faith registration and use. Complainant bases its contentions on the allegation that the disputed domain names resolved to a pay-per-click website offering links to third parties unrelated to Complainant. Complainant presumes that Respondent collected click-through fees for each Internet user diverted to the linked sites.
Complainant also contends that the current use of the disputed domain names provides evidence of bad faith use and registration. Complainant asserts that the disputed domain names resolve to an inactive website. The Panel finds that resolving the disputed domain name to an inactive website is affirmative evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ordered that the <euflexxainjection.com> and <euflexxainjection.org> domain names be TRANSFERRED from Respondent to Complainant
Nathalie Dreyfus, Panelist
Dated: July 26, 2011
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