Elan Coporation PLC v. PabloPalermao
Claim Number: FA0711001110714
Complainant is Elan Corporation PLC (“Complainant”), represented by Sanjiv
D. Sarwate, of Pattishall, McAuliffe, Newbury, Hilliard
& Geraldson LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <elanpharm.com>, <elanpharmaceutical.com> and <elanpharmacuticals.com>, registered with Moniker Online Services, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 16, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 19, 2007.
On November 21, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <elanpharm.com>, <elanpharmaceutical.com> and <elanpharmacuticals.com> domain names are registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the names. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 December 4, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 26, 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@elanpharm.com, postmaster@elanpharmaceutical.com, and postmaster@elanpharmacuticals.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 29, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <elanpharm.com>, <elanpharmaceutical.com> and <elanpharmacuticals.com> domain names are confusingly similar to Complainant’s ELAN mark.
2. Respondent does not have any rights or legitimate interests in the <elanpharm.com>, <elanpharmaceutical.com> and <elanpharmacuticals.com> domain names.
3. Respondent registered and used the <elanpharm.com>, <elanpharmaceutical.com> and <elanpharmacuticals.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns numerous registrations worldwide for the ELAN mark in connection with a line of pharmaceutical products and drug formation services, including with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,982,548 issued August 9, 2005 filed March 5, 2002).
Respondent’s <elanpharm.com>, <elanpharmaceutical.com> and <elanpharmacuticals.com> domain names were all registered on November 4, 2004. All three disputed domain names resolve to a links pages, displaying links to various third-parties, many of which are related to the pharmaceutical industry and some of which offer products and services in direct competition with those offered under Complainant’s mark.
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.
Complainant has sufficiently established its rights in the
ELAN mark through registration with the USPTO dating back to the filing date of
the registration 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 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); see also
Planetary Soc’y v. Rosillo,
D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of
Complainant’s trademark rights date back to the application’s filing date).
The disputed domain names all completely incorporate
Complainant’s ELAN mark, and then include the term “pharm” or “pharmaceutical”
or “pharmacuticals,” which are all associated with the general term
“pharmaceuticals,” that describes the industry in which Complainant’s mark is
used. The term “pharmacuticals” is a
close misspelling of the general term “pharmaceuticals.” Finally, all three disputed domain names also
include the generic top-level domain (“gTLD”) “.com.” First, the Panel finds that the close
misspelling of the word “pharmaceuticals” does not sever the association the <elanpharmacuticals.com> domain name has with the word
“pharmaceuticals.” Second, the inclusion
of words closely associated with “pharmaceuticals” does not distinguish the
disputed domain names because “pharmaceuticals” has an obvious relationship
with Complainant’s business and describes the market in which Complainant’s
mark is used. Third, it is
well-established that the inclusion of a gTLD is not relevant to a Policy ¶ 4(a)(i)
analysis. For all of the aforementioned
reasons, the Panel finds that the three disputed domain names are all
confusingly similar to Complainant’s ELAN mark pursuant to Policy ¶
4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat.
Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding
letters to words, a respondent does not create a distinct mark but nevertheless
renders the domain name confusingly similar to the complainant’s marks); see also Space Imaging LLC v.
Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the respondent’s domain name combines the complainant’s mark
with a generic term that has an obvious relationship to the complainant’s
business); 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 concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(i), Complainant must first establish a prima facie case that Respondent has no
rights or legitimate interests in the disputed domain names. See VeriSign
Inc. v. VeneSign
Respondent has failed to reply to the Complaint. Therefore, the Panel presumes that Respondent
has no rights or legitimate interests in the disputed domain names, but will
nonetheless examine the record in light of the factors listed under Policy ¶
4(c). 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
Pavillion Agency, Inc. v. Greenhouse
Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’
failure to respond can be construed as an admission that they have no
legitimate interest in the domain names).
Nowhere in Respondent’s WHOIS information does it indicate
that Respondent is or ever was commonly known by any of the disputed domain
names. Additionally, Complainant has not
granted Respondent permission or authorization to use Complainant’s ELAN mark
in any way. As a result, the Panel finds
that Respondent is not commonly known by any of the disputed domain names
pursuant to Policy ¶ 4(c)(ii). 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
Policy ¶ 4(c)(ii) does not apply); see
also 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).
The disputed domain names resolve to websites containing
series of links, many of which redirect Internet users to various third-parties
who operate in the pharmaceutical industry.
Some of these third-parties offer products and services in direct competition
with those offered under Complainant’s mark.
The Panel finds this use 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 ¶
(c)(iii). See 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); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb.
Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain
name to redirect Internet users to a financial services website, which competed
with the complainant, was not a bona fide offering of goods or
services).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
The three disputed domain names were all registered by
Respondent on the same day. The Panel
finds that this one instance of registration of multiple domain names all
confusingly similar to Complainant’s mark is sufficient to establish a pattern
of registering infringing domain names and thus evidence of Respondent’s bad
faith registration and use of the disputed domain names pursuant to Policy ¶
4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8,
2000) (finding that one instance of registration of several infringing domain
names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012
(WIPO Feb. 9, 2005) (finding that the
respondent’s registration of the <epa-photo.com>, <epaphoto.com>
and <epaphotos.com> domain names was sufficient to constitute a pattern
pursuant to Policy ¶ 4(b)(ii)).
Furthermore, all three of the disputed domain names resolve
to websites containing various links to third-parties, some of whom offer
products and services in direct competition with those offered under
Complainant’s mark. The Panel finds this
use to be for the purpose of disrupting Complainant’s business and consequently
additional evidence of Respondent’s bad faith registration and use pursuant to
Policy ¶ 4(b)(iii). See Disney
Enters., Inc. v. Noel, FA 198805 (Nat.
Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly
similar to Complainant's mark to divert Internet users to a competitor's
website. It is a reasonable inference that Respondent's purpose of registration
and use was to either disrupt or create confusion for Complainant's business in
bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding the respondent acted in bad faith by attracting
Internet users to a website that competes with the complainant’s business).
Finally, the Panel presumes that Respondent is financially
benefiting from the use of such various links to competitors and related
third-parties on the websites that resolve from the disputed domain names
through the use of “click-through fees.”
The Panel finds this commercial benefit from the confusing similarity of
the disputed domain names with Complainant marks to be further evidence of
Respondent’s bad faith registration and use 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 Complainant has 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 <elanpharm.com>, <elanpharmaceutical.com> and <elanpharmacuticals.com> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: January 9, 2008
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