national arbitration forum

 

DECISION

 

Talecris Biotherapeutics, Inc. v. Marketing Total S.A.

Claim Number: FA0803001169821

 

PARTIES

Complainant is Talecris Biotherapeutics, Inc. (“Complainant”), represented by Maury M. Tepper, of Womble Carlyle Sandridge & Rice, PLLC, North Carolina, USA.  Respondent is Marketing Total S.A. (“Respondent”), Saint Kitts and Nevis.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wwwtalecrisplasma.com>, registered with Belgiumdomains, LLC.

 

PANEL

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.

 

Judge Harold Kalina (Ret.)  as Panelist.

 

PROCEDURAL HISTORY

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, Belgiumdomains, LLC confirmed by e-mail to the National Arbitration Forum that the <wwwtalecrisplasma.com> domain name is registered with Belgiumdomains, LLC and that Respondent is the current registrant of the name.  Belgiumdomains, LLC has verified that Respondent is bound by the Belgiumdomains, LLC 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 27, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 16, 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@wwwtalecrisplasma.com 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 Judge Harold Kalina (Ret.) 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <wwwtalecrisplasma.com> domain name is confusingly similar to Complainant’s TALECRIS mark.

 

2.      Respondent does not have any rights or legitimate interests in the <wwwtalecrisplasma.com> domain name.

 

3.      Respondent registered and used the <wwwtalecrisplasma.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Talecris Biotherapeutics, Inc., develops, manufacturers, and markets blood plasma products.  Complainant has spent considerable monies and resources on developing its products, which are used for treatment of a variety of health disorders and diseases.  Complainant conducts its plasma operations under the TALECRIS mark (Ser. No. 78/551,985 filed January 21, 2005) and the TALECRIS BIOTHERAPEUTICS mark (Reg. No. 3,386,265 issued February 19, 2008, filed January 21, 2005), the latter of which is registered with the United States Patent and Trademark Office (“USPTO”).  Complainant also owns and operates the <talecris.com> and <talecrisplasma.com> domain names, which provide information about its products and usages to patients and physicians.

 

Respondent registered the <wwwtalecrisplasma.com> domain name on May 31, 2007.  Respondent is currently using the disputed domain name to resolve to a website that features links and advertisements for third parties, some of which directly compete with Complainant.     

 

Respondent has been the respondent in several other UDRP proceedings, in which the disputed domain names were transferred to the respective complainants in those cases.  See Starwood Hotels & Resorts Worldwide, Inc. v. Marketing Total S.A., D2008-0019 (WIPO Mar. 6, 2008); see also Georgia Power Co. v. Marketing Total S.A., D2007-1048 (WIPO Nov. 26, 2007).

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Because the effective date of a trademark begins at filing, the Panel finds that Complainant has alleged sufficient rights in the TALECRIS BIOTHERAPEUTICS mark through registration of the mark with the USPTO pursuant to Policy ¶ 4(a)(i).  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); 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 Panel finds that Respondent’s <wwwtalecrisplasma.com> domain name is confusingly similar to Complainant’s TALECRIS BIOTHERAPEUTICS mark under Policy ¶ 4(a)(i).  The disputed domain name contains the first word of Complainant’s mark, and replaces the second word with the generic term “plasma,” and adds the prefix “www” without the period which normally follows the prefix, and the generic top-level domain “.com.”  The inclusion of a top-level domain and omission of the period after the prefix “www” is irrelevant for Policy ¶ 4(a)(i) purposes.  Consequently, the addition of the generic word “plasma” will fail to distinguish the disputed domain name, because “plasma” quite plainly describes Complainant’s blood plasma business.  Therefore, the Panel finds that the <wwwtalecrisplasma.com> domain name is confusingly similar to Complainant’s TALECRIS mark under Policy ¶ 4(a)(i).  See 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); see also Dana Corp. v. $$$ This Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002) (finding the respondent's <wwwdana.com> domain name confusingly similar to the complainant's registered DANA mark because the complainant's mark remains the dominant feature); see also Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent’s domain name <marriott-hotel.com> is confusingly similar to the complainant’s MARRIOTT mark); see also Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Since Complainant has successfully asserted a prima facie case supporting its allegations that Respondent lacks rights and legitimate interests in the disputed domain name, Respondent receives the burden to show that it does have rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. 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 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 <wwwtalecrisplasma.com> domain name appears to exist solely to divert Internet users to a website that features third-party advertisements and links, some of which directly compete with Complainant’s operations.  Further, Respondent presumably receives referral fees from Internet users that follow these third-party ads or links.  Given this evidence, the Panel finds that such usage fails to constitute 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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).

 

There is no evidence in the record to conclude that Respondent is commonly known by the disputed domain name.  To wit, the WHOIS domain name registration information lists the registrant as “Marketing Total S.A.,” which does not resemble the disputed domain name.  The Panel therefore finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).  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 Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

 

The Panel finds that Respondent has engaged in typosquatting, which refers to the practice of registering a disputed domain name that capitalizes on common Internet user typographical errors, most commonly through the omission of the period after the prefix “www.”  This method matches exactly the case at hand, in that Respondent also omitted the period after the prefix “www.”  The Panel therefore finds that typosquatting itself demonstrates Respondent’s lack of rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  See RE/MAX Int’l, Inc. v. Seocho, FA 142046 (Nat. Arb. Forum Feb. 25, 2003) (finding that the respondent has no rights or legitimate interests in the <wwwremax.com> domain name as it is merely using the complainant’s mark to earn profit from pop-up advertisements); see also Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent lacked rights and legitimate interests in the <wwwcanadiantire.com> domain name where it used the domain name as a part of the complainant’s affiliate program in exchange for specified commissions).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent has been the respondent in several other UDRP proceedings, in which the disputed domain names have been transferred to the respective complainants in those cases.  See Starwood Hotels & Resorts Worldwide, Inc. v. Marketing Total S.A., D2008-0019 (WIPO Mar. 6, 2008); see also Georgia Power Co. v. Marketing Total S.A., D2007-1048 (WIPO Nov. 26, 2007).  The pattern of registering multiple disputed domain names often deprives complainants from reflecting their respective marks in corresponding domain names.  Therefore, the Panel finds that Respondent’s engagement in a pattern of prevention demonstrates Respondent’s bad faith registration and use of the instant disputed domain name under 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 Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 ((finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”).

 

Respondent’s disputed domain name diverts Internet users seeking Complainant to a website that offers advertisements directly competing with Complainant’s plasma operations.  Given Respondent’s presumed material benefit via referral fees, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii), in that Respondent has disrupted Complainant’s business.  See S. Exposure v. S.  Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of Complainant . . .”).

 

Respondent registered a confusingly similar disputed domain name and created a corresponding website that displays third-party advertisements for profit.  These actions likely thwart Internet users from reaching Complainant’s own websites.  Therefore, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv), in that Respondent has created a likelihood of confusion as to the source and affiliation of the disputed domain name and corresponding website for commercial benefit.  See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“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.”).

 

The Panel finds that Respondent’s usage of typosquatting in its registration of the disputed domain name constitutes sufficient evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Sports Auth. Mich., Inc. v. Skander, FA 135598 (Nat. Arb. Forum Jan. 7, 2002) (stating that “[b]y registering the ‘typosquatted’ domain name in [Complainant’s] affiliate program, Respondent profits on the goodwill of [Complainant’s] protected marks and primary Internet domain names,” which is evidence of bad faith registration and use); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <wwwtalecrisplasma.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Judge Harold Kalina (Ret.), Panelist

May 1, 2008

 

 

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