BioDelivery Sciences International, Inc. v. HLK Enterprises, Inc. c/o Domain Admin
Claim Number: FA0804001175189
Complainant is BioDelivery Sciences International, Inc. (“Complainant”), represented by Maury
M. Tepper, of Womble Carlyle Sandridge & Rice, PLLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bdsi.com>, registered with Enom, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 3, 2008; the National Arbitration Forum received a hard copy of the Complaint on April 4, 2008.
On April 4, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <bdsi.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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").
9, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 29, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 6, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bdsi.com> domain name is identical to Complainant’s BDSI mark.
2. Respondent does not have any rights or legitimate interests in the <bdsi.com> domain name.
3. Respondent registered and used the <bdsi.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, BioDelivery Science International, Inc. is a specialty pharmaceutical company with extensive medical goods and services. Complainant asserts common law rights in the BDSI mark based on its showing of continuous use in commerce for over 10 years. Complainant is publicly traded on NASDAQ under the BDSI mark. Complainant has recently filed a trademark registration with the United States Patent and Trademark Office (“USPTO”) (Ser. No. 77/439,196 filed April 3, 2008). Additionally, Complainant maintains a website at the <bdsinternational.com> domain name.
Respondent registered the disputed domain name on June 26, 2003. The <bdsi.com> domain name currently resolves to a website displaying unrelated third-party links.
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 asserts common law rights in the BDSI mark. Common law rights, if shown, are sufficient
to establish rights under Policy ¶ 4(a)(i).
See SeekAmerica Networks Inc. v.
Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not
require that the complainant's trademark or service mark be registered by a
government authority or agency for such rights to exist); see also
However, the Panel finds Complainant has failed to show sufficient evidence to establish secondary meaning in the mark. The Panel finds that this insufficient showing of secondary meaning fails to show common law rights in the BDSI mark under Policy ¶ 4(a)(i). See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (“Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions.”); see also Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products).
The Panel finds that Complainant failed to satisfy Policy ¶ 4(a)(i).
The Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to establish rights in the mark. Therefore, the Panel may decline to analyze the other two elements of the Policy ¶ 4(a). See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)). However, the Panel will continue the analysis under Policy ¶¶ 4(a)(ii) & (iii) before making a final determination.
Complainant asserts that Respondent lacks rights and
legitimate interests in the <bdsi.com> domain name.
However, based on the fact that the disputed domain name and
Complainant’s mark contain only four letters that could stand for many things
unrelated to Complainant’s business, the Panel finds that Respondent’s use of
the disputed domain name as a portal website is a showing of rights or
legitimate interests under Policy ¶ 4(a)(ii).
See Louis Vuitton
The Panel finds that Complainant has failed to satisfied Policy ¶ 4(a)(ii).
As discussed in the previous section, the disputed domain name and the asserted mark are comprised of generic and common terms. The four letters that create the asserted mark and the disputed domain name could stand for many things that do not interfere with Complainant’s business. Therefore, bad faith registration and use of the disputed domain name pursuant Policy ¶ 4(a)(iii) has not been proven. See Canned Foods, Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (holding that, where the domain name is comprised of a generic term, it is difficult to conclude that there was a deliberate attempt to confuse on behalf of the respondent, and stating that “[i]t is precisely because generic words are incapable of distinguishing one provider from another that trademark protection is denied them”); see also Franklin Mint Fed. Credit Union v. GNO, Inc., FA 860527 (Nat. Arb. Forum Feb. 23, 2007) (finding no bad faith registration and use of the <fmcu.com> domain name because it was a four-letter abbreviation for many things, and the respondent was in the business of registering generic four-letter domain names).
The Panel finds that Complainant has failed to satisfied Policy ¶ 4(a)(iii).
Having failed to established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Tyrus R. Atkinson, Jr., Panelist
Dated: May 19, 2008
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