Elan Corporation plc v. Unitedeurope Consulting
Claim Number: FA0807001216440
Complainant is Elan Corporation plc (“Complainant”), represented by Sanjiv D. Sarwate, of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is Unitedeurope Consulting (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <verelan.com>, registered with Korea Information Certificate Authority, Inc. d/b/a Domainca.com.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 18, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 21, 2008. The Complaint was submitted in both Korean and English.
On July 22, 2008, Korea Information Certificate Authority, Inc. d/b/a Domainca.com confirmed by e-mail to the National Arbitration Forum that the <verelan.com> domain name is registered with Korea Information Certificate Authority, Inc. d/b/a Domainca.com and that Respondent is the current registrant of the name. Korea Information Certificate Authority, Inc. d/b/a Domainca.com has verified that Respondent is bound by the Korea Information Certificate Authority, Inc. d/b/a Domainca.com 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 July 28, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 18, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent in both English and Korean 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@verelan.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 22, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <verelan.com> domain name is identical to Complainant’s VERELAN mark.
2. Respondent does not have any rights or legitimate interests in the <verelan.com> domain name.
3. Respondent registered and used the <verelan.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Elan Corporation plc, is a pharmaceutical company that uses that VERELAN mark in connection with preparations for the treatment of hypertension. Complainant has registered the VERELAN mark with the Republic of Korea (Reg. No. 185,382 issued December 14, 1989) and the United States Patent and Trademark Office (Reg. No. 1,551,582 issued August 15, 1989) as well as other governmental trademark authorities.
Respondent, Unitedeurope Consulting, registered the <verelan.com> domain name on May 19, 2001, and uses it to post hyperlinks advertising pharmaceutical companies offering products that compete with Complainant’s business. The <verelan.com> domain name’s resolving website also contains a link offering to sell the disputed domain name.
In its Complaint, Complainant notes that Respondent has been ordered by at least two previous UDRP panels to transfer infringing domain names to the respective complainants in those cases. See Homer TLC, Inc. v. Unitedeurope Consulting, FA 1110103 (Nat. Arb. Forum Feb. 8, 2008); see also Nokia Corp. v. Unitedeurope Consulting, FA 926596 (Nat. Arb. Forum Apr. 13, 2007).
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’s Korean and U.S. trademark registrations
evidenced in the Complaint sufficiently establish Complainant’s rights in the
VERELAN mark pursuant to Policy ¶ 4(a)(i).
See Morgan Stanley v. Fitz-James (CT2341-RSC) Cititrust Group Ltd.,
FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (“The Panel finds from a
preponderance of the evidence that Complainant has registered its mark with
national trademark authorities. The
Panel has determined that such registrations present a prima facie case of Complainant’s rights in the mark for purposes
of Policy ¶ 4(a)(i).”); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007)
(finding that a trademark registration adequately demonstrates a complainant’s
rights in a mark under Policy ¶ 4(a)(i)).
Respondent’s <verelan.com> domain name contains Complainant’s VERELAN mark in its entirety without any changes except for the addition of the generic top-level domain “.com” Top-level domains are required of all domain names, so this change is considered irrelevant for purposes of the Policy. Therefore, Respondent’s <verelan.com> domain name is identical to Complainant’s VERELAN mark pursuant to Policy ¶ 4(a)(i). See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also W. Union Holdings, Inc. v. XYZ, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance).
The Panel finds that Complainant has satisfied the
requirements of Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have rights or legitimate interests in the <verelan.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii). Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
According to Complainant, Respondent is not commonly known as VERELAN, and has not been granted any license or permission to use the mark in a disputed domain name. The WHOIS information identifies Respondent as “Unitedeurope Consulting,” and the Panel can find no evidence anywhere in the record suggesting that Respondent is commonly known by the <verelan.com> domain name. Therefore, the Panel finds that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent is using the <verelan.com>
domain name to display a list of hyperlinks advertising pharmaceutical
companies that sell products similar to those offered by Complainant. Respondent presumably receives referral or
click-through fees for each redirected Internet user that clicks on one of
these links. Respondent is attempting to
profit off the goodwill associated with Complainant’s VERELAN mark by promoting
Complainant’s competitors, and such use of the <verelan.com> domain name constitutes 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). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum
Feb. 21, 2007) (holding that using an identical or confusingly similar domain
name to earn click-through fees via sponsored links to a complainant’s
competitors 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)); see also Bond & Co. Jewelers, Inc.
v. Tex. Int’l Prop. Assocs., FA
937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the use of an identical or
confusingly similar domain name to operate a website displaying links to
competing goods and services was not 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)).
The Panel also notes that Respondent
has openly offered to sell the <verelan.com> domain
name. This apparent willingness to
dispose of the disputed domain name further supports a finding that Respondent
lacks rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v. Hyun-Jun
Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under
the circumstances, the respondent’s apparent willingness to dispose of its
rights in the disputed domain name suggested that it lacked rights or
legitimate interests in the domain name); see
also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000)
(finding the respondent’s conduct purporting to sell the domain name suggests
it has no legitimate use).
The Panel finds that
Complainant has satsfied the requirements of Policy ¶ 4(a)(ii).
First, Respondent’s offer to sell the <verelan.com> domain name is evidence
of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty.
Access, FA 180704 (Nat. Arb. Forum Sept.
30, 2003) (“Respondent's general offer of the disputed domain name registration
for sale establishes that the domain name was registered in bad faith under
Policy ¶ 4(b)(i).”); see also Am.
Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that “general offers to sell the domain name, even if no certain price
is demanded, are evidence of bad faith”).
Additionally, Respondent has been ordered by previous UDRP panels to transfer infringing domain names to the respective complainants in those cases. See Homer TLC, Inc. v. Unitedeurope Consulting, FA 1110103 (Nat. Arb. Forum Feb. 8, 2008); see also Nokia Corp. v. Unitedeurope Consulting, FA 926596 (Nat. Arb. Forum Apr. 13, 2007). This demonstrates a pattern of bad faith registration and use as described in Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); 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 is using the <verelan.com>
domain name to advertise pharmaceutical companies that sell products that
compete with Complainant’s business.
Therefore, the Panel finds that Respondent registered and is using the <verelan.com> domain name in bad
faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt.
Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the
respondent registered and used the disputed domain name in bad faith pursuant to
Policy ¶ 4(b)(iii) when the disputed domain name resolved to a website that
displayed commercial links to the websites of the complainant’s competitors in
the financial services industry); see
also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding
bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a
respondent used the disputed domain name to operate a commercial search engine
with links to the complainant’s competitors).
Finally, Respondent’s use of the <verelan.com> domain name, which is identical to Complainant’s VERELAN mark, is likely to confuse customers into believing that Complainant is the source or sponsor of the advertised content on the resolving website. Respondent is using the goodwill associated with Complainant’s VERELAN mark to attract Internet users to Respondent’s website, and earn referral or click-through fees in the process. Respondent’s attempt to commercially gain from this likelihood of confusion demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website that resolved from the disputed domain name); see also BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”).
For these reasons, the Panel finds that Complainant has
satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <verelan.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 4, 2008
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