Ferring B.V. and
Bio-Technology General (
Claim Number: FA0709001080654
PARTIES
Complainant is Ferring B.V. and Bio-Technology General (
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <euflexxa.us>, registered with GoDaddy.com,
Inc.
PANEL
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.
Judge Ralph Yachnin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “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 in compliance with Paragraph 2(a) of the Rules for usTLD Dispute
Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On
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. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <euflexxa.us> domain name is identical to Complainant’s EUFLEXXA mark.
2.
Respondent does not have any rights or
legitimate interests in the <euflexxa.us>
domain name.
3.
Respondent registered and used the <euflexxa.us> domain name in bad
faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Bio-Technology General (
Respondent registered the <euflexxa.us> domain name on
DISCUSSION
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 the 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 (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 the 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 the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered or is
being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical and/or Confusingly Similar
Complainant asserts rights in the EUFLEXXA mark by virtue of its various trademark registrations, including its registrations with the OHIM and the TIP. The Panel finds that these registrations sufficiently establish Complainant’s rights in the EUFLEXXA mark pursuant to Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the UDRP 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).
Respondent’s <euflexxa.us> domain name is
identical to Complainant’s EUFLEXXA mark, as it incorporates the exact mark and
merely adds the country-code top-level domain (“ccTLD”) “.us.” As a top-level domain is a required element
of all domain names, Respondent’s addition of a ccTLD to Complainant’s mark
does not render the disputed domain name distinct from the mark. Therefore, the Panel finds that the <euflexxa.us> domain name is
identical to Complainant’s EUFLEXXA mark pursuant to Policy ¶ 4(a)(i). See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum
Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails
to add any distinguishing characteristic to the domain name, the
<tropar.us> domain name is identical to the complainant’s TROPAR mark); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat.
Arb. Forum
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant has the initial burden of proving that Respondent lacks rights and legitimate interests in the <euflexxa.us> domain name. Once Complainant has made a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests. In the present case, the Panel finds that Complainant has established a prima facie case under the Policy. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Based on
Respondent’s failure to answer the Complaint, the Panel presumes that
Respondent lacks rights and legitimate interests in the disputed domain
name. See 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); see also Law Soc’y of Hong Kong v. Domain Strategy,
Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not
obligated to participate in a domain name dispute . . . but the failure to
participate leaves a respondent vulnerable to the inferences that flow
naturally from the assertions of the complainant and the tribunal will accept
as established assertions by the complainant that are not unreasonable.”). Nevertheless, the Panel will still examine
the record to determine if Respondent has rights or legitimate interests under
Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the <euflexxa.us> domain name, which indicates a lack of rights and legitimate interests under Policy ¶ 4(c)(iii). The Panel agrees with this assertion, as Respondent’s WHOIS information indicates that Respondent is “Johnny Carpela,” and there is nothing further in the record to suggest that Respondent is known by the disputed domain name. Moreover, Complainant has not permitted Respondent to use its EUFLEXXA mark for any purpose, and there is no evidence that Respondent owns or is the beneficiary of a trademark reflected in the disputed domain name. The Panel finds that Respondent is not commonly known by the <euflexxa.us> domain name and, thus, lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(i) and (iii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that [UDRP] Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Respondent’s <euflexxa.us> domain name resolves to a website that gives unauthorized information about Complainant’s Euflexxa products and features links to pharmaceutical websites in competition with Complainant. The Panel presumes that Respondent earns click-through fees when Internet users click on these links. The Panel finds that this does not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under [UDRP] Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under [UDRP] Policy ¶ 4(c)(iii).”); 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).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Complainant further alleges that Respondent registered and is using the <euflexxa.us> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). Respondent’s website that resolves from the disputed domain name contains links to Complainant’s competitors in the pharmaceutical business. The Panel finds that such use constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use under Policy ¶ 4(b)(iii). See Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in bad faith, pursuant to [UDRP] Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of Complainant . . .”); see also 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).
Furthermore, as
mentioned previously, the Panel presumes that Respondent benefits commercially
from its website at the <euflexxa.us>
domain name, which is identical to Complainant’s EUFLEXXA mark. Respondent is thus capitalizing on the
likelihood that Internet users, presumably seeking information about
Complainant’s products, will be confused as to Complainant’s affiliation with the
disputed domain name. This is further
evidence of Respondent’s bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat.
Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that
incorporates another's mark with the intent to deceive Internet users in regard
to the source or affiliation of the domain name is evidence of bad faith.”); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Complainant having established all three
elements required under the usTLD Policy, the Panel concludes that relief shall
be GRANTED.
Accordingly, it is Ordered that the <euflexxa.us> domain name be TRANSFERRED from Respondent to
Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 5, 2007
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