national arbitration forum

 

DECISION

 

Talecris Biotherapeutics, Inc. v. Click Cons. Ltd

Claim Number: FA0803001169941

 

PARTIES

Complainant is Talecris Biotherapeutics, Inc. (“Complainant”), represented by Maury M. Tepper, of Womble Carlyle Sandridge & Rice, PLLC, North Carolina, USA.  Respondent is Click Cons. Ltd (“Respondent”), Nassau, Bahamas.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <talecrisplasmaresource.com>, registered with Domaindoorman, 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.

 

Louis E. Condon 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, Domaindoorman, LLC confirmed by e-mail to the National Arbitration Forum that the <talecrisplasmaresource.com> domain name is registered with Domaindoorman, LLC and that Respondent is the current registrant of the name.  Domaindoorman, LLC has verified that Respondent is bound by the Domaindoorman, 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 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 postmaster@talecrisplasmaresource.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 25, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 <talecrisplasmaresource.com> domain name is confusingly similar to Complainant’s TALECRIS DIRECT and TALECRIS BIOTHERAPEUTICS marks.

 

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

 

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

 

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

 

FINDINGS

Complainant, Talecris Biotherapeutics, Inc., is in the business of pharmaceutical prepartions for use in treating blood disorders.  Complainant uses the TALECRIS DIRECT and TALECRIS BIOTHERAPEUTICS marks in accordance with this business and registered the marks with the United States Patent and Trademark Office (“USPTO”) on July 24, 2007 (Reg. No. 3,269,859 filed Jan. 21, 2005) and February 19, 2008 (Reg. No. 3,386,265 filed Oct. 30, 2005) respectively.  Additionally, Complainant operates two websites featuring information about its products at the <talecris.com> and <talecrisplasma.com> domain names both registered in 2005.

 

Respondent’s <talecrisplasmaresource.com> domain name, which it registered on June 6, 2007, resolves to a parked page displaying hyperlinks of Complainant’s competitors.  Additionally, Respondent has been the respondent in several UDRP proceedings in which the disputed domain names were transferred from Respondent to the complainants in those cases.  See Shaw Indus. Group, Inc. v. Click Cons. Ltd., D2006-1422 (WIPO Jan. 3, 2007) (transferring the <shawfloorcovering.com> and <shawflooringcoverings.com> domain name to the complainant); see also Paragon Gifts Holdings, Inc. v. Click Cons. Ltd., D2007-0304 (WIPO Apr. 19, 2007) (transferring the <theparagongifts.com> domain name to the complainant); see also Lumber Liquidators, Inc. v. Click Cons. Ltd., D2007-1846 (WIPO Jan. 29, 2008) (transferring the <lumberliquidators.com> domain name to the complainant).

 

 

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

 

The Panel finds that Complainant’s initial filing and registration of the TALECRIS DIRECT and TALECRIS BIOTHERAPEUTICS marks with the USPTO are sufficient evidence of Complainant’s rights under Policy ¶ 4(a)(i).  Moreover, the Panel finds the effective dates of Complainant’s trademark rights are the initial filing dates of January 21, 2005 and August 30, 2005, respectively, which predate the registration of the disputed domain name by approximately two years.  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).

 

Furthermore, the Panel finds that Respondent’s <talecrisplasmaresource.com> domain name is confusingly similar to Complainant’s TALECRIS DIRECT and TALECRIS BIOTHERAPEUTICS marks under Policy ¶ 4(a)(i) as it contains Complainant’s distinct component, the word “Talecris”, with the addition of the generic phrase “plasma resource,” which has an obvious relation to Complainant’s business of offering blood plasma products and serving as a resource for those products.  The addition of a generic top-level domain “.com” is irrelevant in the evaluation of the disputed domain name.  Accordingly, the Panel finds that Respondent’s <talecrisplasmaresource.com> domain name is confusingly similar to Complainant’s TALECRIS DIRECT and TALECRIS BIOTHERAPEUTICS marks under Policy ¶ 4(a)(i).  See Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names <caterpillarparts.com> and <caterpillarspares.com> were confusingly similar to the registered trademarks CATERPILLAR and CATERPILLER DESIGN because “the idea suggested by the disputed domain names and the registered trademarks is that the goods or services offered in association with [the] domain name are manufactured by or sold by the Complainant or one of the Complainants [sic] approved distributors. The disputed trademarks contain one distinct component, the word Caterpillar”); see generally 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); see also 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 . . . ."). 

 

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

 

Rights or Legitimate Interests

 

After Complainant makes a prima facie case that Respondent does not have rights or legitimate interests in the <talecrisplasmaresource.com> domain name, the burden of proof shifts to Respondent under Policy ¶ 4(a)(ii).  Failure by Respondent to respond, furthers the presumption that it has no rights or legitimate interests in the disputed domain name.  The Panel finds that Complainant has established a prima facie case but chooses to examine all the evidence before making a final determination with regards to Policy ¶ 4(c).  See 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 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 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.”).    

 

Respondent is using the <talecrisplasmaresource.com> domain name to display hyperlinks to a parked page with a list of third-party websites, some of which are in direct competition with Complainant.  The Panel infers that Respondent is using the disputed domain name to earn click-through fees, and thus finds that Respondent has not made 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).  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 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).     

 

Additionally, Respondent’s WHOIS information does not indicate that Respondent is commonly known by the <talecrisplasmaresource.com> domain name and there is no other evidence in the record to suggest that Respondent is commonly known by the disputed domain name.  Moreover, Complainant asserts that Respondent is not authorized to use Complainant’s TALECRIS DIRECT or TALECRIS BIOTHERAPEUTICS marks and that Respondent is not associated with Complainant in any way.  In Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) the panel found that the respondent did not have rights in a domain name when the respondent was not known by the mark.  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

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

 

 

 

Registration and Use in Bad Faith

 

The Panel finds that Respondent’s disputed domain name is capable of creating a likelihood of confusion as to Complainant’s sponsorship and affiliation with the disputed domain name and corresponding resolving website due to Respondent using the distinct Talecris component of Complainant’s marks.  Moreover, the Panel finds that Respondent receives click-through fees for the hyperlinks displayed on the website that resolves from the <talecrisplasmaresource.com> domain name based on the undisputed evidence presented by Complainant.  Such commercial benefit constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also 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.’”).

 

Furthermore, the Panel finds that Respondent is using the <talecrisplasmaresource.com> domain name to redirect Internet users to a website that contains third-party hyperlinks, some of which are in direct competition with Complainant.  Such use constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use under Policy ¶ 4(b)(iii).  See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); 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). 

 

Finally, the Panel finds that Respondent has a pattern of “cybersquatting.”  Respondent has been a party to at least 10 other proceedings under the UDRP resulting in the transfer of the disputed domain names.  See Shaw Indus. Group, Inc. v. Click Cons. Ltd., D2006-1422 (WIPO Jan. 3, 2007) (transferring the <shawfloorcovering.com> and <shawflooringcoverings.com> domain name to the complainant); see also Paragon Gifts Holdings, Inc. v. Click Cons. Ltd., D2007-0304 (WIPO Apr. 19, 2007) (transferring the <theparagongifts.com> domain name to the complainant); see also Lumber Liquidators, Inc. v. Click Cons. Ltd., D2007-1846 (WIPO Jan. 29, 2008) (transferring the <lumberliquidators.com> domain name to the complainant).  Respondent has shown a history of preventing trademark owners from reflecting their marks in domain names and thus evidences bad faith in its registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(ii).  See Société Air France v. Mert, D2004-0759 (WIPO Dec. 3, 2004) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the complainant provided evidence of a pattern of registration of “numerous other domain names” by the respondent); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting). 

 

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

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

 

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

 

 

 

 

Louis E. Condon, Panelist

Dated:  May 8, 2008

 

 

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