Ferring B.V. v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1303001489067
Complainant is Ferring B.V. (“Complainant”), represented by Arne M. Olson, Illinois, USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <pentasacheap.com>, <pentasarectalfoamonline.com>, and <discountpentasaenema.com>, registered with INTERNET.BS CORP.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 8, 2013; the National Arbitration Forum received payment on March 11, 2013.
On March 12, 2013, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <pentasacheap.com>, <pentasarectalfoamonline.com>, and <discountpentasaenema.com> domain names are registered with INTERNET.BS CORP. and that Respondent is the current registrant of the names. INTERNET.BS CORP. has verified that Respondent is bound by the INTERNET.BS CORP. 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 March 18, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 8, 2013 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@pentasacheap.com, postmaster@pentasarectalfoamonline.com, and postmaster@discountpentasaenema.com. Also on March 18, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 April 16, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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" 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
i. There is no evidence that Respondent has ever been commonly known by the term “PENTASA,” or by the disputed domain names.
ii. The only purpose of the disputed domain names is to use Complainant’s PENTASA trademark to attract Complainant’s customers to its domain names and seek a profit by directing them to an online pharmacy that competes with Complainant.
i. The disputed domain names all resolve to sites that sell goods in direct competition with Complainant’s pharmaceuticals sold under the PENTASA trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Ferring B.V., owns the PENTASA mark for pharmaceutical preparations for the treatment of autoimmune diseases and pharmaceutical preparations and substances for use in the field of gastroenterology. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the PENTASA mark (e.g., Reg. No. 1,279,563, registered May 29, 1984). Complainant also owns a trademark registration with Panama’s Ministry of Commerce and Industries for the PENTASA mark (Reg. No. 052540, registered June 24, 1991).
Respondent, Fundacion Private Whois / Domain Administrator, registered all of the disputed domain names on the same day, August 17, 2010. The disputed domain names all resolve to sites that sell goods in direct competition with Complainant’s pharmaceuticals sold under the PENTASA trademark.
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.
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.”).
The Panel finds that Complainant’s registration of the PENTASA mark with Panama’s Ministry of Commerce and Industries and the USPTO satisfies Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
Complainant asserts that Respondent’s <pentasacheap.com>, <pentasarectalfoamonline.com>, and <discountpentasaenema.com> domain names are confusingly similar to the PENTASA trademark as the addition of the descriptive or generic terms “cheap,” “rectal foam,” “online,” “discount,” and “enema” does not allay confusion. Complainant claims that the PENTASA mark is used in association with a pharmaceutical used to treat and control the symptoms of inflammatory bowel disease, and can be delivered in the form of an enema or suppository. Respondent’s addition of generic or descriptive terms does not negate confusing similarity under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The addition of the gTLD “.com” does not sufficiently distinguish the disputed domain names from Complainant’s PENTASA trademark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Thus, the Panel finds that Respondent’s <pentasacheap.com>, <pentasarectalfoamonline.com>, and <discountpentasaenema.com> domain names are confusingly similar to Complainant’s PENTASA trademark under Policy ¶ 4(a)(i).
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).
Complainant asserts that there is no evidence that Respondent has ever been commonly known by the term “PENTASA,” or by the disputed domain names. The WHOIS information identifies “Fundacion Private Whois / Domain Administrator” as the registrant of the domain names. Complainant argues that it has never authorized, contracted, licensed, or otherwise permitted Respondent to use the PENTASA trademark, or to use this trademark in any domain name or any variation thereof. The Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). 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).
Complainant contends that Respondent’s only purpose of the disputed domain names is to use Complainant’s PENTASA trademark to attract Complainant’s customers to its domain names and seek a profit by directing them to an online pharmacy that competes with Complainant. Complainant claims that its customers who stumble upon the disputed domain names will mistakenly believe that the content on the website is endorsed, sponsored or otherwise affiliated with Complainant because of the use of Complainant’s PENTASA trademark. The Panel finds that Respondent’s use of the disputed domain names to direct Internet users to a competing pharmaceutical website is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant asserts that the disputed domain names all resolve to sites that sell goods in direct competition with Complainant’s pharmaceuticals sold under the PENTASA trademark. Complainant argues that the unauthorized use entices users to click on a link directed to an online pharmacy where pharmaceutical products are sold and marketed in competition with Complainant’s goods. Complainant claims that when Internet users arrive at the websites associated with the disputed domain names, they may purchase the pharmaceuticals from Respondent instead of Complainant. Therefore, the Panel finds that Respondent’s competing use of the disputed domain names disrupts Complainant’s business, showing bad faith use and registration under Policy ¶ 4(b)(iii). See Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pentasacheap.com>, <pentasarectalfoamonline.com>, and <discountpentasaenema.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 1, 2013
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