Genzyme Corporation v.
Claim Number: FA0706001007978
Complainant is Genzyme Corporation (“Complainant”), represented by Lawrence
R Robins of Finnegan, Henderson, Farabow, Garrett &
Dunner, L.L.P., 55 Cambridge Parkway, Cambridge, MA 02142, USA. Respondent is Belize Domain WHOIS Service Lt (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <genzymecorp.com>, registered with Intercosmos Media Group, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically June 13, 2007; the National Arbitration Forum received a hard copy of the Complaint June 14, 2007.
On June 14, 2007, Intercosmos Media Group, Inc. confirmed by e-mail to the National Arbitration Forum that the <genzymecorp.com> domain name is registered with Intercosmos Media Group, Inc. and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. verified that Respondent is bound by the Intercosmos Media Group, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 15, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 5, 2007, by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 11, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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." 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The disputed domain name that Respondent registered, <genzymecorp.com>, is confusingly similar to Complainant’s GENZYME mark.
2. Respondent has no rights to or legitimate interests in the <genzymecorp.com> domain name.
3. Respondent registered and used the <genzymecorp.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Genzyme Corporation, holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the GENZYME mark (e.g., Reg. No. 1,291,567 issued August 28, 1984 and Reg. No. 1,859,429 issued October 25, 1994). Complainant has used the GENZYME mark in connection with the development and sale of its biotechnology services and goods, which operate to improve the lives of people living with serious debilitating diseases. This includes treatments for cardiovascular disease, cancer, immune-mediated disease, kidney disease and others. Complainant also employs over 9,000 employees in more than 70 locations in 30 countries worldwide, all under the GENZYME mark, and earns revenues of around $3.2 billion. Complainant registered the <genzyme.com> domain name, which it uses in connection with the advertisement and sale of its goods and services under the GENZYME mark.
Respondent registered the <genzymecorp.com> domain name July 11, 2005. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website featuring a commercial pay-per-click website that contains search categories, which display “sponsored results” links for various commercial websites.
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 will draw such inferences as the Panel 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 Complainant to 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 established using extrinsic proof in this
proceeding that it has rights in the GENZYME mark under Policy ¶ 4(a)(i)
through registration of the mark with the USPTO. See SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his
trademark registration [with the USPTO] establishes Complainant’s rights in the
mark pursuant to Policy ¶ 4(a)(i).”); see also Victoria's Secret Stores Brand Mgmt., Inc. v.
Machuszek, FA 945052 (Nat. Arb.
Forum May 7, 2007) (finding “that Complainant has established rights in the
The disputed <genzymecorp.com> domain name is confusingly similar to Complainant’s GENZYME mark as it uses the mark in its entirety and simply adds the word “corp” and the generic top-level domain (“gTLD”) “.com” to the mark. First, the addition of a generic business description such as “corp,” which is merely the abbreviation for the word corporation, does not distinguish the domain name from the mark, particularly in this case because Complainant is a corporation. The Panel finds that the addition of the word “corp” is not a distinguishing feature sufficient to negate a finding of confusing similarity under Policy ¶ 4(a)(i). See Marriott Int’l, Inc. v. Wayne L. Nicewarner, FA 99692 (Nat. Arb. Forum Nov. 1, 2001) (finding that “the addition of the abbreviation for the word ‘corporation’… does not prevent the [domain names] from being confusingly similar to said mark. ‘Marriottcorp’ and ‘Marriottcorps’ are clearly confusingly similar to the mark MARRIOTT.”); see also PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does not by adding the common descriptive or generic terms ‘corp,’ ‘corporation’ and ‘2000’ following ‘PGE,’ create new or different marks in which it has rights or legitimate interests, nor does it alter the underlying [PG&E] mark held by Complainant”).
Secondly, the addition of a gTLD such as “.com” to a mark is irrelevant to determining whether a domain name is confusingly similar to a mark under Policy ¶ 4(a)(i). See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has rights to and legitimate
interests in the mark contained in its entirety within the disputed domain
name. Complainant contends that
Respondent has no such rights to or legitimate interests in the <genzymecorp.com> domain name. Complainant’s assertion establishes a prima facie case, which shifts the burden to Respondent to prove that it has rights
or legitimate interests in the disputed domain name under Policy ¶
The Panel assumes that Respondent does not have any rights or legitimate interests in the <genzymecorp.com> domain name here because Respondent failed to respond to the Complaint. 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 Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). However, the Panel will consider all available evidence before determining whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant asserts that Respondent is using the <genzymecorp.com> domain name to redirect Internet users to Respondent’s website, which contains search categories listing links to third-party commercial websites for the profit of Respondent through pay-per-click fees. The Panel finds that Respondent’s use of the website to earn pay-per-click revenue by offering links to third-party websites is not a use in connection with 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 WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
Finally, Respondent does not offer evidence and no proof in the record indicates that Respondent is commonly known by the <genzymecorp.com> domain name. Respondent’s WHOIS information identifies Respondent as “Belize Domain WHOIS Service Lt.” As such, the Panel finds that Respondent has not offered evidence sufficient to satisfy Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent acted in bad faith in registering and using a domain name containing Complainant’s protected mark. Respondent has registered and is using the <genzymecorp.com> domain name, which is confusingly similar to Complainant’s GENZYME mark, to redirect Internet users to Respondent’s website displaying links by category to third-party websites. The Panel finds that Respondent’s registration and use of the disputed domain name to display links to third-party commercial websites constitutes disruption under Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent is using the <genzymecorp.com> domain name to redirect Internet users to Respondent’s website displaying categories of links from which Respondent earns pay-per-click fees. The Panel finds that Internet users seeking Complainant’s goods under the GENZYME mark may become confused as to Complainant’s affiliation with the <genzymecorp.com> domain name. Respondent is profiting from this confusion by earning pay-per-click revenue. The Panel finds that Respondent’s use of the website to profit from the confusion of Internet users seeking Complainant’s website is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <genzymecorp.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 25, 2007.
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