Ferring B.V. v. adam hollis
Claim Number: FA1604001670617
Complainant is Ferring B.V. (“Complainant”), represented by Arne M. Olson, Illinois, USA. Respondent is adam hollis (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <uk-ferring.com>, registered with GoDaddy.com, LLC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 14, 2016; the Forum received payment on April 15, 2016.
On April 15, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <uk-ferring.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 April 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 11, 2016 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@uk-ferring.com. Also on April 21, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On May 16, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 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 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 name be transferred from Respondent to Complainant.
A. Complainant’s Contentions
1. Complainant uses the FERRING mark in connection with its pharmaceuticals business. Complainant has registered the FERRING mark with the Danish Patent and Trademark Office (“DPTO”) (e.g., Reg. No. VR 1983 01626, registered May 27, 1983), which establishes rights in the mark. See Compl., at Attached Annex 3. Respondent’s <uk-ferring.com> domain name is confusingly similar to the FERRING mark as it incorporates the mark in its entirety, and the only additions are the geographic term “uk,” a hyphen, and the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests in the <uk-ferring.com> domain name. Respondent is not commonly known by the disputed domain name. Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <uk-ferring.com> domain name. Rather, Respondent is engaging in inactive holding of the disputed domain name. See Compl., at Attached Annex 2. Respondent is attempting to pass itself off as an agent of Complainant by means of its WHOIS information, and adoption of an email suffix (adam.hollis@uk-ferring.com) in order to fraudulently take advantage of Complainant’s mark. See Compl., at Attached Annex 5, Ex. A.
3. Respondent registered and used the disputed domain name in bad faith. Respondent deliberately provided misleading WHOIS registration in order to fraudulently acquire travel services. This use by Respondent constitutes bad faith registration and use. Complainant argues that Respondent had actual knowledge of Complainant's rights in the FERRING mark.
B. Respondent’s Contentions
1. Respondent did not submit a response.
1. Respondent’s <uk-ferring.com> domain name is confusingly similar to Complainant’s FERRING mark.
2. Respondent does not have any rights or legitimate interests in the <uk-ferring.com> domain name.
3. Respondent registered and used the <uk-ferring.com> domain name 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."
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(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 (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.”).
Complainant uses the FERRING mark in connection with its pharmaceuticals business. Complainant claims it has registered the FERRING mark with the DPTO (e.g., Reg. No. VR 1983 01626, registered May 27, 1983), which it contends establishes rights in the mark. See Compl., at Attached Annex 3. Panels have found registration with a valid trademark agency to be sufficient to establish rights in a mark, even where the respondent operates in a different country. See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) (finding, “Registration of a mark with a governmental authority (or, in this case, multiple governmental authorities) is sufficient to establish rights in the mark for purposes of Policy ¶4(a)(i)”). Therefore, the Panel sees that Complainant has demonstrated rights in the FERRING mark pursuant to Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <uk-ferring.com> domain name is confusingly similar to the FERRING mark as it incorporates the mark in its entirety, and the only additions are the geographic term “uk,” a hyphen, and the gTLD “.com.” Panels have found such alterations to marks to be insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Hess Corp. v. GR, FA 770909 (Forum Sept. 19, 2006) (finding that the respondent’s <hess-uk.com> domain name was confusingly similar to the complainant’s HESS mark, as the mere addition of “uk” and a hyphen failed to sufficiently differentiate the disputed domain name from the registered mark); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (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.”). The Panel therefore agrees that Respondent’s <uk-ferring.com> domain name is confusingly similar to the FERRING mark 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 (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 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie 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”).
Complainant argues that Respondent has no rights or legitimate interests in the <uk-ferring.com> domain name. First, Complainant asserts that Respondent is not commonly known by the disputed domain name. The Panel sees that the WHOIS information regarding the disputed domain name lists “Adam Hollis” as registrant. Complainant also asserts that it has not given Respondent permission to use its FERRING mark. Respondent has not submitted a response in this proceeding. Therefore, in light of the available evidence, the Panel agrees that there is no basis to find Respondent commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Further, Complainant argues that Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <uk-ferring.com> domain name. Rather, Complainant contends that the domain name directs to a website displaying “404. That’s an error. The requested URL / was not found on this server. That’s all we know.” See Compl., at Attached Annex 2. Panels have found inactive holding of a domain name with no demonstrable preparations for use not to constitutes a bona fide offering of goods or services pursuant to Policy ¶¶ 4(c)(i) and (iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (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).”). Therefore, the Panel agrees that Respondent’s failure to make an active use of the <uk-ferring.com> domain name constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant further argues that Respondent is attempting to pass itself off as Complainant by means of its WHOIS information in order to fraudulently take advantage of Complainant’s mark. Complainant contends that “Adam Hollis” is the name of an employee of Complainant, who is not associated with the domain name and does not know who purchased it. See Compl., at Attached Annex 5. Complainant contends that Respondent used the name Adam Hollis and the email address “adam.hollis@uk-ferring.com” with the signature block listing “FERRING Pharmaceuticals UK” in order to fraudulently secure travel arrangements under the Adam Hollis persona. See Compl., at Attached Annex 5, Ex. A. Complainant contends that the travel agency Uniglobe contacted Complainant after Respondent’s attempt to secure travel arrangements to find out whether Respondent actually was an agent of Complainant. Complainant alleges that Respondent’s activities constituted fraud by misleading the travel agency with incorrect WHOIS and other contact information. Id. The Panel finds misleading WHOIS information and contact information to constitute Respondent is passing itself off as Complainant in furtherance of a fraudulent scheme, and finds such use not to constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant argues that Respondent deliberately provided misleading WHOIS information to fraudulently acquire travel services by posing as Complainant. Complainant contends that “Adam Hollis” is the name of an employee of Complainant, who is not associated with the domain name and does not know who purchased it. See Compl., at Attached Annex 5. Complainant contends that Respondent used the name Adam Hollis and the email address “adam.hollis@uk-ferring.com” with the signature block listing “FERRING Pharmaceuticals UK” in order to fraudulently secure travel arrangements under the Adam Hollis persona. See Compl., at Attached Annex 5, Ex. A. Panels have found bad faith registration and use where the respondent provides false contact information when registering the disputed domain name. See Dell Inc. v. Catherine Barger, FA1502001605282 (Forum March 23, 2015) (holding that because the respondent appeared to have taken the name “Catherine Barger” from a New Jersey obituary and then used this as a false name, the respondent had registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii)). Therefore, the Panel agrees that Respondent’s registration of the <uk-ferring.com> domain name constitutes bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent had actual and knowledge of Complainant's rights in the FERRING mark. Complainant argues that Respondent’s adoption of an email format similar to that used by Complainant and the persona of an employee of Complainant indicate that Respondent had actual knowledge of Complainant's mark and rights. The Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <uk-ferring.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 27, 2016
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