Abbott Laboratories and Abbott Diabetes Care, Inc. v. Keyword Marketing, Inc.
Claim Number: FA0803001157276
Complainant is Abbott Laboratories and Abbott Diabeters Care, Inc. (collectively,
“Complainant”), represented by Molly Buck Richard, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <freestyleglucosemeter.com>, registered with Belgiumdomains, LLC.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On March 11, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 31, 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@freestyleglucosemeter.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 <freestyleglucosemeter.com> domain name is confusingly similar to Complainant’s FREESTYLE mark.
2. Respondent does not have any rights or legitimate interests in the <freestyleglucosemeter.com> domain name.
3. Respondent registered and used the <freestyleglucosemeter.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is comprised of Abbott Laboratories and its
subsidiary Abbott Diabetes Care, Inc.
Complainant provides a variety of medical goods and services. As part of this business, Complainant offers
glucose meters under its FREESTYLE mark.
Complainant first registered its FREESTYLE mark with the United States
Patent and Trademark Office (“USPTO”) on
Respondent registered the <freestyleglucosemeter.com>
domain name 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 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 registered its FREESTYLE mark with the
USPTO. The Panel finds this sufficiently
establishes Complainant’s rights in its FREESTYLE mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Inertia 3D, FA 1118154 (Nat. Arb. Forum Jan. 18, 2008) (“Complainant asserts rights in the mark through its registration of the
mark with the United States Patent and Trademark Office. This registration
sufficiently establishes Complainant’s rights in the mark pursuant to Policy ¶
4(a)(i).”); see also Men’s Wearhouse, Inc. v.
Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
Respondent’s <freestyleglucosemeter.com> domain name contains Complainant’s FREESTYLE mark with the addition of the descriptive phrase “glucose meter,” which describes one of the products Complainant offers under its FREESTYLE mark, and therefore does not make the domain name sufficiently different from Complainant’s mark within the meaning of Policy ¶ 4(a)(i). See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); 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).
Moreover, the generic top-level (“gTLD”) “.com,” is not relevant in evaluating whether a disputed domain name is confusingly similar to a mark.
Therefore, the Panel finds Respondent’s <freestyleglucosemeter.com> domain name is confusingly similar to Complainant’s FREESTYLE mark pursuant to Policy ¶ 4(a)(i).
Complainant has alleged Respondent does not possess rights
or legitimate interests in the disputed domain name. Complainant must present a prima facie case to support these
allegations before the burden shifts to Respondent to prove it does have rights
or legitimate interests in the disputed domain name. The Panel finds Complainant has presented an
adequate prima facie case to support
its allegations and the Respondent has failed to respond to these
proceedings. Therefore, the Panel may
conclude Respondent does not possess rights or legitimate interests in the
disputed domain name. 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 Broadcom Corp. v. Ibecom PLC,
FA 361190 (Nat. Arb. Forum
Respondent’s <freestyleglucosemeter.com> domain name resolves to a website which displays links to medical products and services that directly compete with Complainant’s business. The Panel finds this use is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).
Also, Respondent does not appear to be commonly known by the
<freestyleglucosemeter.com>
domain name. The WHOIS information
indicates Respondent is identified as “Keyword Marketing, Inc.” Additionally, the record does not indicate
Respondent sought or was granted authorization to use Complainant’s FREESTYLE
mark. Therefore, the Panel find
Respondent is not commonly known by the <freestyleglucosemeter.com>
domain name 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 Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s website resolving from the disputed domain name
displays links to third-party websites which directly compete with
Complainant’s business. The Panel finds
Respondent’s use constitutes disruption and is evidence of 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 H-D Michigan
Inc. v. Buell, FA 1106640
(Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites
that list links to competitors of Complainant, evidence that Respondent intends
to disrupt Complainant’s business, a further indication of bad faith pursuant
to Policy ¶ 4(b)(iii).”).
Respondent is using the website resolving from its
confusingly similar disputed domain name to display links to medical products
and services which compete with Complainant’s business. Respondent presumably receives compensation
for this use. Additionally, Respondent’s
use of Complainant’s FREESTYLE mark creates a likelihood of confusion regarding
the affiliation of Complainant with the third-party websites. The Panel finds this is an attempt by Respondent
to profit from the goodwill associated with Complainant’s mark. Therefore, the Panel finds Respondent’s
actions constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
The Panel finds 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 <freestyleglucosemeter.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: April 16, 2008
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