Talecris Biotherapeutics, Inc. v. Navigation Catalyst Systems, Inc.
Claim Number: FA0803001170019
Complainant is Talecris Biotherapeutics, Inc. (“Complainant”), represented by Maury
M. Tepper, of Womble Carlyle Sandridge & Rice, PLLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <talecrisbenefitsnow.com>, registered with Basic Fusion, Inc.
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.
Honorable Paul A. Dorf (Ret.), as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
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@talecrisbenefitsnow.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 <talecrisbenefitsnow.com> domain name is confusingly similar to Complainant’s TALECRIS DIRECT mark.
2. Respondent does not have any rights or legitimate interests in the <talecrisbenefitsnow.com> domain name.
3. Respondent registered and used the <talecrisbenefitsnow.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Talecris Biotherapeutics, Inc., discovers,
develops, manufactures, and markets blood plasma products. Complainant registered the TALECRIS DIRECT
mark with the United States Patent and Trademark Office (“USPTO”) on
Respondent registered the <talecrisbenefitsnow.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 has registered the TALECRIS DIRECT mark with the
USPTO. In Phoenix Mortgage Corp. v.
Toggas, D2001-0101 (WIPO
The <talecrisbenefitsnow.com>
domain name incorporates the main term of Complainant’s TALECRIS
DIRECT mark and the two generic terms “benefits” and “now.” Complainant contends that the term “talecris”
was coined by Complainant, and there is no other meaning of the term. In Arthur Guinness Son & Co. (
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant has the
initial burden of showing that Respondent lacks all rights and legitimate
interests in the disputed domain name. Once Complainant has established a prima facie case, the burden shifts to Respondent to show that it
has rights or legitimate interests in the disputed domain name. Complainant has asserted that Respondent has
neither rights nor legitimate interests in the <talecrisbenefitsnow.com> domain name, therefore
the Panel finds that Complainant has made a prima
facie case under Policy ¶ 4(a)(ii). The burden then shifts to Respondent. See Compagnie Generale des Matieres Nucleaires
v. Greenpeace Int’l, D2001-0376 (WIPO
Based on Respondent’s failure to respond to the Complaint,
the Panel may presume that Respondent has no rights or legitimate interests in
the <talecrisbenefitsnow.com> domain
name. The panel in Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO
Complainant contends that
Respondent is not commonly known by the <talecrisbenefitsnow.com> domain name. The WHOIS information does not suggest that
Respondent is commonly known by the disputed domain name, and Complainant does
not indicate that it has authorized Respondent to use the mark. Thus, the Panel concludes that Respondent is
not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Hartford Fire Ins. Co. v.
Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding
that the respondent has no rights or legitimate interests in domain names
because it is not commonly known by the complainant’s marks and the respondent
has not used the domain names in connection with a bona fide offering of
goods and services or for a legitimate noncommercial or fair use); see also Gallup, Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum
Moreover, the disputed domain name is being used to redirect
Internet users to the <fundraisingopportunity.org> domain name. The website displays links to fundraising
companies, and is completely unrelated to Complainant’s business. In Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003), the panel held that “[d]iverting customers, who
are looking for products relating to the famous SEIKO mark, to a website unrelated
to the mark is not a bona fide offering of goods or services under Policy ¶
4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶
4(c)(iii).” Here, the Panel also
finds that redirecting Internet users to an unrelated website is not 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 Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“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).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has been previously ordered by a panel to
transfer disputed domain names incorporating another’s mark; that decision
involved the transfer of 35 domain names.
See mVisible
Techs., Inc. v. Navigation Catalyst Systems, Inc., D2007-1141 (WIPO
Furthermore, Respondent
is using the <talecrisbenefitsnow.com>
domain name to redirect Internet users to a website unrelated to
Complainant’s business. The Panel may
infer that Respondent is commercially benefiting from the goodwill associated
with the TALECRIS DIRECT mark, and that Respondent’s use of the disputed domain
name is capable of creating confusion as to the source or sponsorship of the
website that resolves from the <talecrisbenefitsnow.com>
domain name. The Panel finds
that Respondent’s use of the disputed domain name is evidence of registration
and use in bad faith under Policy ¶ 4(b)(iv). See Bank of Am. Corp. v.
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 <talecrisbenefitsnow.com> domain name TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: May 7, 2008
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