Talecris Biotherapeutics, Inc. v. Joseph Ellis
Claim Number: FA0803001169804
Complainant is Talecris Biotherapeutics, Inc. (“Complainant”), represented by Maury
M. Tepper, III, of Womble Carlyle Sandridge & Rice, PLLC,
North Carolina, USA. Respondent
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mytalecris.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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 26, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 27, 2008.
On March 27, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <mytalecris.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 March 28, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 17, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 24, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant discovers, develops, manufactures, and markets blood plasma products.
Complainant coined the TALECRIS mark, which it has used in commerce to market its products since prior to 2005.
Complainant has made substantial financial investments in advertising its products under the TALECRIS mark.
Complainant filed for registration of the TALECRIS trademark with the United States Patent and Trademark Office on January 21, 2005 (Ser. Nos. 78551985 and 78552024), which applications remain pending.
Complainant owns the domain names <talecris.com> and <talecrisplasma.com>, by which it distributes information about its products and their proper use worldwide.
Respondent registered the <mytalecris.com> domain name on February 9, 2007.
Respondent has been using the disputed domain name to display links to a variety of websites through a pay-per-click website.
Respondent’s <mytalecris.com> domain name is confusingly similar to Complainant’s TALECRIS mark.
Respondent is not commonly known by the TALECRIS mark.
Respondent does not have any rights to or legitimate interests in the <mytalecris.com> domain name.
Respondent’s use of the disputed domain name is capable of creating confusion as to the source, sponsorship, affiliation, or endorsement of the website that resolves from the disputed domain name.
Respondent benefits commercially from its exploitation of the goodwill associated with the TALECRIS trademark.
Respondent registered and uses the <mytalecris.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Although Complainant has filed with the USPTO an application for registration of its TALECRIS mark, the mark is not yet so registered. This is not a barrier to the capacity of Complainant to establish rights in the mark for purposes of the Policy. This is because common law rights in a mark are enough to invoke the protections of the Policy. See, for example, Stadshypotek Bank AB v. Customer Service, D2003-0342 (WIPO June 19, 2003):
[T]he Complainant can assert trademark rights when the Panel can conclude from the circumstances of the case and the evidence brought to its knowledge that the Complainant is the holder of a distinctive designation for a certain category of products or services.
Particularly in light of Respondent’s complete failure to counter the allegations of the Complaint, we are persuaded that Complainant has adequately made out a case for common law rights in its TALECRIS mark. We turn, then, to the companion question of confusing similarity as between the mark and the competing domain name.
As to this issue, the <mytalecris.com>
domain name incorporates Complainant’s mark in its entirety, and merely adds
the generic term “my.” In NIIT Ltd.
v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) a panel found
that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a
prominent part thereof, is confusingly similar to the Complainant’s trade name
and trademark NIIT.” We concur that the
addition of the generic term “my” to a complainant’s registered mark does not
sufficiently distinguish a competing domain name from that mark. See Arthur Guinness Son & Co. (
Respondent’s domain name has added to it the generic top-level domain (“gTLD”) “.com”. Because all domain names are required to have a top-level domain, the addition of the gTLD “.com” to Respondent’s domain name does not distinguish the domain name from the competing mark for the purposes of confusing similarity analysis. See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000):
[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .
Therefore, we conclude that the <mytalecris.com> domain name is confusingly similar to the TALECRIS mark pursuant to Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant has the initial burden of demonstrating that Respondent has no rights to or legitimate interests in the disputed domain name. Once Complainant makes out a prima facie case, the burden shifts to Respondent to show that it does have rights to or legitimate interests in the disputed domain. See, for example, Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.
See also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, once a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain name, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Complainant has made out a prima facie case under Policy ¶ 4(a)(ii). The burden therefore shifts to Respondent to show that it does have rights to or legitimate interests in the <mytalecris.com> domain name. And, because Respondent has failed to respond to the Complaint, we may presume that Respondent lacks such rights or interests. 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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000), where a panel found that a respondent’s failure to respond to a complaint filed under the Policy allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence.
We will nonetheless consider the evidence of record to determine if there is any basis for concluding that Respondent has rights or legitimate interests under Policy ¶ 4(c).
We first note in this connection that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the mark. Indeed the pertinent WHOIS information does not indicate that Respondent is commonly known by the mark, and Complainant has not indicated that it authorized Respondent to use its TALECRIS DIRECT mark. Therefore, we conclude that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have rights in a domain name where that respondent is not known by the mark).
We also observe that there is no dispute that Respondent is using the <mytalecris.com> domain name to display links to a variety of websites unrelated to Complainant’s business. A panel in Golden Bear International, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) held that:
Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
We reach the same conclusion on the record before us. To the same effect, see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent’s use of the disputed
domain name is capable of creating confusion as to the source, sponsorship,
affiliation, or endorsement of the website that resolves from the disputed
domain name. Respondent does not deny this assertion. Neither does Respondent deny Complainant’s
further allegation that Respondent benefits commercially from the goodwill associated
with the TALECRIS mark. We therefore conclude
that Respondent’s use of the <mytalecris.com>
domain name as alleged evidences registration and use in bad faith under Policy
¶ 4(b)(iv). See
Bank of Am. Corp. v.
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.
In addition, it appears that Respondent registered the <mytalecris.com> domain name with at least constructive knowledge of Complainant’s rights in the TALECRIS trademark by virtue of Complainant’s prior registration of that mark with the United States Patent and Trademark Office. Registration of a confusingly similar domain name despite such constructive knowledge is, without more, evidence of bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <mytalecris.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 29, 2008
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