Ferring B.V. and Bio-Technology General (
Claim Number: FA0801001139912
Complainant is Ferring B.V. and Bio-Technology General (
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <euflexxa-canada.com> and <euflexxacanada.com>, registered with Netfirms, 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 January 23, 2008; the National Arbitration Forum received a hard copy of the Complaint January 25, 2008.
On January 25, 2008, Netfirms, Inc. confirmed by e-mail to the National Arbitration Forum that the <euflexxa-canada.com> and <euflexxacanada.com> domain names are registered with Netfirms, Inc. and that Respondent is the current registrant of the names. Netfirms, Inc. verified that Respondent is bound by the Netfirms, 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 February 12, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 3, 2008, 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-canada.com and postmaster@euflexxacanada.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 6, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <euflexxa-canada.com> and <euflexxacanada.com>, are confusingly similar to Complainant’s EUFLEXXA mark.
2. Respondent has no rights to or legitimate interests in the <euflexxa-canada.com> and <euflexxacanada.com> domain names.
3. Respondent registered and used the <euflexxa-canada.com> and <euflexxacanada.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Ferring B.V. and Bio-Technology General (
Respondent registered the <euflexxa-canada.com> and <euflexxacanada.com> domain names November 2, 2006. The disputed domain names do not currently resolve to active websites. Respondent has made two offers to sell the disputed domain names since Complainant filed its initial Complaint.
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."
Given 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 registered the EUFLEXXA mark with the USPTO and the OHIM. By registering the mark, Complainant established rights to the mark pursuant to Policy ¶ 4(a)(i). Complainant’s mark was registered with the OHIM prior to Respondent’s registration of the disputed domain name, thereby showing that Complainant’s rights predated Respondent’s registration. Furthermore, Complainant filed for registration of the EUFLEXXA mark with the USPTO prior to Respondent’s November 2, 2006, registration of the <euflexxa-canada.com> and <euflexxacanada.com> domain names. In Planetary Society v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002), the panel held that the effective date of Complainant’s trademark rights date back to the application’s filing date. Therefore, although only one registration would be necessary to demonstrate rights to the mark under the Policy, the Panel finds that both the USPTO and OHIM trademark registrations establish Complainant’s rights to the EUFLEXXA mark under 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.").
Both the <euflexxa-canada.com>
and <euflexxacanada.com>
domain names contain Complainant’s entire EUFLEXXA mark and differ from
Complainant’s mark only by the addition of the geographic term “
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant has the initial burden of showing that Respondent lacks all rights and legitimate interests in the disputed domain name. Complainant made a prima facie case by asserting that Respondent has neither rights nor legitimate interests in the disputed domain names. The Panel finds that Complainant’s assertion is sufficient under Policy ¶ 4(a)(ii) to shift the burden to Respondent. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); 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).
Respondent did not file a Response to the Complainant and in such circumstances, the Panel is permitted to presume that Respondent does not have any rights to or legitimate interests in the disputed domain names. The panel in Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) concluded that “based on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.” This Panel, however, considers all evidence in the record to determine if the proof suggests that Respondent has any rights or legitimate interests in the euflexxa-canada.com> and <euflexxacanada.com> domain names under Policy ¶ 4(c). See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Complainant contends that it has never authorized, contracted, licensed, or otherwise permitted Respondent to use the EUFLEXX mark. Furthermore, nothing in the WHOIS information suggests that Respondent is commonly known by the disputed domain names. 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 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). Thus, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
The <euflexxa-canada.com> and <euflexxacanada.com> domain names do not currently resolve to active websites. The panel in Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) concluded that the respondent had no rights or legitimate interests where it failed to submit a response to the complaint and had made no use of the domain name in question. Here, Respondent has similarly not actively used the disputed domain names and has presented no explanation for that non-use. Therefore, the Panel finds no evidence that Respondent has rights or legitimate interests under Policy ¶ 4(c)(i) or (iii). See Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where the respondent made no use of the infringing domain names).
Moreover, the Panel finds that Respondent’s offer to sell the disputed domain names demonstrates Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii). In Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003), the panel held that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name. Here also, Respondent’s two offers to sell the <euflexxa-canada.com> and <euflexxacanada.com> domain names contributes to the Panel’s finding that Respondent does not have rights or legitimate interests in the disputed domain names. See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Respondent has made at least two offers to sell the
disputing domain names, thereby evidencing registration and use in bad
faith. In Bank of America Corp. v. Northwestern Free Community Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), the panel found that the “[r]espondent's general
offers of the disputed domain name registration for sale establishes that the
domain name was registered in bad faith under Policy ¶ 4(b)(i).” The Panel here also finds that Respondent’s
offer to sell shows registration and use in bad faith under Policy ¶ 4(b)(i). See CBS Broad. Inc. v.
Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4,
2000) (“There is nothing inherently wrongful in the offer or sale of domain
names, without more, such as to justify a finding of bad faith under the
Policy. However, the fact that domain name registrants may
legitimately and in good faith sell domain names does not imply a right in such
registrants to sell domain names that are identical or confusingly similar to
trademarks or service marks of others without their consent”)
Previous panels have found that non-active use or passive holding of a disputed domain name demonstrates registration and use in bad faith. As a result, Respondent’s failure to actively use the disputed domain names evidences registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See Cruzeiro Licenciamentos Ltda. v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (“Mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
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 <euflexxa-canada.com> and <euflexxacanada.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 18, 2008.
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