Genzyme Corporation v. Keyword Marketing, Inc.
Claim Number: FA0706001007979
Complainant is Genzyme Corporation (“Complainant”), represented by Lawrence
R. Robins, of Finnegan, Henderson, Farabow, Garrett &
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwgenzyme.com>, registered with Capitoldomains, Llc.
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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 13, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 14, 2007.
On June 13, 2007, Capitoldomains, Llc confirmed by e-mail to the National Arbitration Forum that the <wwwgenzyme.com> domain name is registered with Capitoldomains, Llc and that Respondent is the current registrant of the name. Capitoldomains, Llc has verified that Respondent is bound by the Capitoldomains, Llc registration agreement and has thereby 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 14, 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 10, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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." 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. Respondent’s <wwwgenzyme.com> domain name is confusingly similar to Complainant’s GENZYME mark.
2. Respondent does not have any rights or legitimate interests in the <wwwgenzyme.com> domain name.
3. Respondent registered and used the <wwwgenzyme.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Genzyme Corporation, is one of the world’s leading biotechnology companies. In conjunction with the provision of these goods and services, Complainant has registered a number of trade and service marks with the United States Patent and Trademark Office (“USPTO”) including the GENZYME mark (Reg. No. 1,291,567 issued August 28, 1984).
Respondent registered the <wwwgenzyme.com> domain name on May 8, 2005. The disputed domain name resolves to a commercial, pay-per-click website featuring sponsored links to 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 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.”).
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.
The Panel finds that Complainant’s registration of the GENZYME mark with the USPTO and subsequent use of the mark for over twenty years sufficiently establishes rights in the mark pursuant to Policy ¶ 4(a)(i). See ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (concluding that the complainant demonstrated its rights in the SPORTSCENTER mark through its valid trademark registrations with the USPTO and similar offices around the world); see also VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”).
Respondent’s disputed domain name contains Complainant’s
mark in its entirety, eliminates the punctuation after “www” and adds the
generic top-level domain (“gTLD”) “.com.”
The Panel finds that the elimination of punctuation and the addition of
a gTLD to an otherwise identical mark makes the disputed domain name
confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Dana
Corp. v. $$$ This Domain Name Is For
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
In scenarios where Complainant has made
a prima facie case in support of its
allegations, the burden shifts to Respondent to set forth tangible evidence
indicating that it has rights or legitimate interests in accordance with Policy
¶ 4(a)(ii). See SEMCO Prods.,
LLC v. dmg world media (
Respondent’s disputed domain name resolves to a commercial search engine providing links to various commercial websites. Respondent presumably receives income from its diversionary use of the disputed domain name registration. The Panel finds that Respondent’s use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use in accordance with Policy ¶ 4(c)(iii). See Royal Bank of Scot. Group plc v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
Complainant asserts that Respondent is not commonly known by the disputed domain name. Respondent’s WHOIS registration information indicates that the registrant of the <wwwgenzyme.com> domain name is “Keyword Marketing, Inc.” In lieu of any evidence on the record suggesting that Respondent is commonly known by the disputed domain name, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent is not commonly known by the <shoredurometer.com> or <shoredurometers.com> domain names where the WHOIS information indicates the registrant of the domain names as “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t,” and no other evidence suggests that the respondent is commonly known by the domain names).
Complainant asserts that Respondent has engaged in typosquatting. Typosquatting occurs when a domain name is registered that attempts to take advantage of common typing errors by siphoning traffic away from the intended website. The Panel finds Respondent has engaged in typosquatting, which evinces a lack of rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain name vis á vis the complainant); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding no rights or legitimate interests where the respondent used the typosquatted <wwwdewalt.com> domain name to divert Internet users to a search engine webpage, and failed to respond to the complaint).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent has been the subject of at least twelve adverse UDRP decisions. A brief sample of those decisions follows: General Mills Inc. v. Keyword Marketing, Inc., FA 921284 (Nat. Arb Forum Mar. 30, 2007); Enterprise Rent-A-Car Company v. Keyword Marketing Inc., FA 918604 (Nat. Arb. Forum Mar. 28. 2007). The Panel finds that Respondent’s previous pattern of being a subject of adverse UDRP decisions suggests registration and use in bad faith pursuant to Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 16, 2000) (finding a bad faith pattern of conduct where the respondent registered many domain names unrelated to its business which infringe on famous marks and websites).
Respondent presumably receives income from its diversionary use of the disputed domain name registration in the form of click-through fees. Further, unsuspecting Internet users expecting to view information related to Complainant’s business may become confused as to the source and affiliation of the resulting websites. The Panel finds that Respondent’s use is evidence of registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”); see also 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)).
The Panel finds that Respondent’s registration of a confusingly similar domain name that appears to take advantage of common typing errors is evidence of registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith); see also Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwgenzyme.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 17, 2007
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