Pedinol Pharmacal, Inc. v. Johnny Carpela
Claim Number: FA0802001144238
Complainant is Pedinol Pharmacal, Inc. (“Complainant”), represented by Charles
W. Hanor, of Hanor, Lively, Cernyar & Saba, Charles
W. Hanor P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <nalfon.com>, registered with Godaddy.com, Inc.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On February 19, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 10, 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@nalfon.com 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <nalfon.com> domain name is identical to Complainant’s NALFON mark.
2. Respondent does not have any rights or legitimate interests in the <nalfon.com> domain name.
3. Respondent registered and used the <nalfon.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Pedinol Pharmacal, Inc., is a pharmaceutical company which develops, distributes, and sells the product Nalfon, among other things. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 974,831 issued Dec. 18, 1973) for the NALFON mark.
Respondent registered the disputed domain name on
Respondent has also been the respondent in numerous other
UDRP proceedings in which the disputed domain names were transferred from
Respondent to the respective complainants.
See Procter & Gamble Pharm.,
Inc. v. Carpela, FA 625591 (Nat. Arb. Forum Feb. 20, 2006) (transferring the
<actonel.org> domain name to the
complainant); see also Glaxo Grp.
Ltd. v. Carpela, D2005-0202 (WIPO May 6, 2005) (transferring the
<advair.net>, <dermovate.com> and <leukeran.com> domain names
to the complainant); see also Valeant
Pharm. Int’l v. Carpela, D2005-0786 (WIPO Sept. 2, 2005) (transferring the
<cesamet.com>, <eldopaque.com>, <eldoquin.com>,
<kinerese.com>, and <solaquin.com> domain names to the complainant)
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 NALFON
mark with the USPTO establishes its rights under Policy ¶ 4(a)(i). See Trip Network Inc. v.
Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding
that the complainant’s federal trademark registrations for the CHEAPTICKETS and
CHEAPTICKETS.COM marks were adequate to establish its rights in the mark
pursuant to Policy ¶ 4(a)(i)) ; see also 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.").
Respondent’s <nalfon.com> domain name is identical to Complainant’s NALFON mark, as it incorporates the mark in its entirety and adds only the generic top-level domain “.com.” The addition of “.com” is irrelevant when conducting a Policy ¶ 4(a)(i) analysis. Therefore, the Panel finds the disputed domain name identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that the domain name <nike.net> is identical to the complainant’s famous NIKE mark); 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 finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights and legitimate interests in the <nalfon.com> domain name. Complainant has the burden of proof for this allegation pursuant to Policy ¶ 4(a)(ii). Once Complainant has made a prima facie showing, the burden of proof shifts to Respondent. The Panel finds Complainant has met its burden. 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).
Respondent’s failure to respond to the Complaint allows the Panel to assume Respondent has no rights or legitimate interests in the <nalfon.com> domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”). Nonetheless, the Panel will examine the record to determine rights or legitimate interests under Policy ¶ 4(c).
The record contains nothing to suggest Respondent is
commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). Respondent is not
licensed or authorized to use the NALFON mark, and the WHOIS information does
not identify Respondent as being affiliated with the mark. The Panel finds that Respondent has no rights
or legitimate interests in the <nalfon.com>
domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
Respondent is using the <nalfon.com> domain name to divert
Internet users to third-party websites pharmaceutical services in direct
competition with Complainant’s business under the NALFON mark. The Panel presumes that Respondent is using the
disputed domain name for monetary gain by capitalizing on the good reputation
of Complainant’s mark. The Panel finds
this is not a bona fide offering of
goods or services under Policy ¶ 4(c)(i) or a
legitimate non-commercial or fair use under Policy ¶ 4(c)(iii). See Or. State Bar
v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001)
(“Respondent's advertising of legal services and sale of law-related books
under Complainant's name is not a bona fide offering of goods and services
because Respondent is using a mark confusingly similar to the Complainant's to
sell competing goods.”); 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 finds that the Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the <nalfon.com> domain name to align itself with Complainant and provide links to various competing companies. The Panel finds that this use disrupts Complainant’s business and evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See 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); 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).
The Panel finds that Respondent is using the <nalfon.com> domain name to operate a
website that displays various links in direct competition with Complainant’s
business. This action creates a
likelihood of confusion as to Complainant’s sponsorship, source, or
affiliations with the website. The Panel
further finds that Respondent is financially benefiting from this
confusion. Such use constitutes bad
faith registration and use under 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 Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum
Additionally, Respondent has been the respondent in numerous other UDRP proceedings in which the disputed domain names were transferred from Respondent to the respective complainants. See Procter & Gamble Pharm., Inc. v. Carpela, FA 625591 (Nat. Arb. Forum Feb. 20, 2006) (transferring the <actonel.org> domain name to the complainant); see also Glaxo Grp. Ltd. v. Carpela, D2005-0202 (WIPO May 6, 2005) (transferring the <advair.net>, <dermovate.com> and <leukeran.com> domain names to the complainant); see also Valeant Pharm. Int’l v. Carpela, D2005-0786 (WIPO Sept. 2, 2005) (transferring the <cesamet.com>, <eldopaque.com>, <eldoquin.com>, <kinerese.com>, and <solaquin.com> domain names to the complainant). The Panel finds this creates a pattern. This pattern constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered domain names incorporating well-known third party trademarks); see also Nat’l Wildlife Fed’n v. Kang, FA 170519 (Nat. Arb. Forum Sept. 9, 2003) (“Respondent has a history of registering domain names that infringe on other trademark holders' rights; therefore, Respondent's registration and use of the <yourbigbackyard.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name is identical to Complainant's YOUR BIG BACKYARD mark and prevents Complainant from reflecting its mark on-line.”).
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 <nalfon.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: March 26, 2008
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