Ferring B.V. and Bio-Technology General (
Claim Number: FA0709001080649
Complainants are Ferring B.V. and Bio-Technology General (
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <euflexxa.net>, <euflexxa.org>, <euflexxa.info> and <euflexxa.biz>, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On September 26, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 16, 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 postmaster@euflexxa.net, postmaster@euflexxa.org, postmaster@euflexxa.info, and postmaster@euflexxa.biz by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 names be transferred from Respondent to Complainant Ferring B.V.
A. Complainants make the following assertions:
1. Respondent’s <euflexxa.net>, <euflexxa.org>, <euflexxa.info> and <euflexxa.biz> domain names are identical to Complainants’ EUFLEXXA mark.
2. Respondent does not have any rights or legitimate interests in the <euflexxa.net>, <euflexxa.org>, <euflexxa.info> and <euflexxa.biz> domain names.
3. Respondent registered and used the <euflexxa.net>, <euflexxa.org>, <euflexxa.info> and <euflexxa.biz> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant operates in the pharmaceutical industry and holds
trademark registrations for the EUFLEXXA mark in numerous jurisdictions
worldwide, including with the Japan Patent Office (“JPO”) (Reg. No. 4,921,334
issue May 25, 2005) and with the Office for Harmonization in the Internal
Markey (OHIM) of the European Economic Community (Reg. No. 00,3919,768 issued
Nov. 4, 2005). Complainant,
Bio-Technology General (
Respondent’s <euflexxa.net> and <euflexxa.biz> domain names
were registered on
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 Complainants’ 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 Complainants 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 Complainants have 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 sufficiently established its rights in the
EUFLEXXA mark under Policy ¶ 4(a)(i) through
registration of the mark with the JPO and OHIM.
See Koninklijke KPN N.V. v.
Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does
not require that the mark be registered in the country in which the respondent
operates; therefore it is sufficient that the complainant can demonstrate a
mark in some jurisdiction); see also KCTS Television Inc. v. Get-on-the-Web Ltd.,
D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the
purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is
registered in a country other than that of the respondent’s place of business).
Respondent’s <euflexxa.net>, <euflexxa.org>, <euflexxa.info>
and <euflexxa.biz> domain names each contain Complainant’s
EUFLEXXA mark in its entirety and then include the generic top level domain
(“gTLD”) “.net,” “.org,” “.info,” or “.biz.”
It is well-established that the inclusion of a gTLD is irrelevant in a
Policy ¶ 4(a)(i) analysis. The Panel finds accordingly that each of the
disputed domain names are identical to Complainant’s
mark. See Busy Body, Inc. v. Fitness
Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition
of the generic top-level domain (gTLD) name
is . . . without legal significance since use of a gTLD is
required of domain name registrants . . . ."); see also Isleworth Land Co. v.
Lost in Space, SA, FA 117330 (Nat. Arb. Forum
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii),
Complainant must first make out a prima
facie case that Respondent has no rights or legitimate interests in the
disputed domain names. See VeriSign Inc. v. VeneSign
Respondent has not submitted a response to the
Complaint. Therefore, the Panel presumes
that Respondent has no rights or legitimate interests in the <euflexxa.net>, <euflexxa.org>, <euflexxa.info>
and <euflexxa.biz> domain names, but will still consider
under the factors listed under Policy ¶ 4(c) all the available evidence in the
record. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Oct. 1, 2002) (“Respondent’s failure to respond means that Respondent has not
presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also CMGI, Inc. v. Reyes, D2000-0572
(WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested
documentation supports a finding for the complainant).
Complainant has never authorized Respondent to use the
EUFLEXXA mark. Additionally, nowhere in Respondent’s
WHOIS information or elsewhere in the record does it indicate that Respondent
is or ever has been commonly known by any of the disputed domain names. As such, the Panel finds that Respondent is
not commonly known by any of the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interest where the respondent was not commonly known by the mark and never
applied for a license or permission from the complainant to use the trademarked
name); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
The disputed domain names each contain Complainant’s mark in
its entirety and the websites that resolve therefrom contain descriptions of
the products sold under the EUFLEXXA mark and links to third-party websites
that offer both Complainant’s products and products in competition with those
offered under Complainant’s mark. The
Panel finds this to be neither a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001)
(stating that the respondent’s use of the complainant’s entire mark in domain
names makes it difficult to infer a legitimate use); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb.
Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the
complainant’s marks to send Internet users to a website which displayed a
series of links, some of which linked to the complainant’s competitors, was not
a bona fide offering of goods or services); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept.
27, 2000) (“The unauthorized providing of information and services under a mark
owned by a third party cannot be said to be the bona fide offering of
goods or services.”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is a known cyber-squatter and there is a
significant history of decisions that have transferred domain names originally
owned by Respondent to a complainant. See Enzyme Corp. v. Carpela, FA
959663 (Nat. Arb. Forum
The websites that resolve from the <euflexxa.net>, <euflexxa.org>, <euflexxa.info>
and <euflexxa.biz> domain names contain descriptions of the
products sold under the EUFLEXXA mark and links to third-party websites that
offer both Complainant’s products and products in competition with those
offered under Complainants’ mark. The
Panel finds this to be further evidence of Respondent’s bad faith registration
and use pursuant to Policy ¶ 4(b)(iii). See
Puckett, Individually v. Miller, D2000-0297 (WIPO
The Panel presumes that these links to competitors of Complainant
financially benefit Respondent through the use of click-through fees. The Panel finds this to be additional
evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v.
Domain Manager, FA 201976 (Nat. Arb. Forum
Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain
name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain
name provided links to Complainant's competitors and Respondent presumably
commercially benefited from the misleading domain name by receiving
‘click-through-fees.’”); 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 concludes that Complainants have 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 <euflexxa.net>, <euflexxa.org>, <euflexxa.info> and <euflexxa.biz> domain names be TRANSFERRED from Respondent to Complainant Ferring, B.V.
Sandra J. Franklin, Panelist
Dated: November 5, 2007
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