Axcan Pharma Inc. v. BWI Domain Manager c/o Domain Manager
Claim Number: FA0807001217153
Complainant is Axcan Pharma Inc. (“Complainant”), represented by Me
Marcel Naud, of Leger Robic Richard, L.L.P,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <canasa.com>, registered with Rebel.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 24, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 25, 2008.
On July 28, 2008, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <canasa.com> domain name is registered with Rebel.com and that Respondent is the current registrant of the name. Rebel.com has verified that Respondent is bound by the Rebel.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 August
6, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 26, 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@canasa.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 3, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <canasa.com> domain name is identical to Complainant’s CANASA mark.
2. Respondent does not have any rights or legitimate interests in the <canasa.com> domain name.
3. Respondent registered and used the <canasa.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Axca Pharma Inc., is a leading pharmaceutical
company based in
The <canasa.com> domain name was registered by Respondent, BWI Domain Manager, on September 19, 2005, and currently resolves to a parked page containing many hyperlinks, some of which compete with Complainant’s pharmaceutical business.
Complainant has identified six prior UDRP cases in which Respondent was ordered by the panels to transfer infringing domain names to the respective complainants in those cases. See, e.g., AMFM Inc. v. BWI Domain Manager, FA 1084750 (Nat. Arb. Forum Nov. 20, 2007); see also AARP v. BWI Domain Manager, FA 1094042 (Nat. Arb. Forum Nov. 26, 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 evidenced numerous trademark registrations with various governmental authorities for the CANASA mark. These trademark registrations confer rights in the CANASA mark to Complainant pursuant to Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <canasa.com>
domain name contains Complainant’s CANASA mark in its entirety, unchanged, and
merely adds the generic top-level domain “.com.” Top-level domains are required of all domain names,
so this change is insignificant pursuant to the Policy. Therefore, the Panel affirms that the <canasa.com> domain name is identical
to Complainant’s CANASA mark in accordance with Policy ¶ 4(a)(i). See 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); see also Jerry Damson, Inc. v.
Accordingly, the requirements of Policy ¶ 4(a)(i) have thus been
satisfied.
Complainant alleges that Respondent does not have rights or legitimate interests in the <canasa.com> domain name. 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), which shifts the burden to Respondent to demonstrate that it does have rights or legitimate interests. 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). 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).
Complainant asserts that there is no evidence in the record indicating that Respondent has been commonly known by the <canasa.com> domain name. The WHOIS information identifies Respondent as “BWI Domain Manager,” and the Panel can find no other evidence in the record that is pertinent to this element of the Policy. Therefore, the Panel agrees with Complainant’s assertion and finds that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent is using the <canasa.com> domain name to operate a parked page. Many of the posted hyperlinks promote Complainant’s competitors and their rival pharmaceutical products. Complainant alleges that Respondent derives revenue from the parking service for each redirected Internet user, and the Panel finds this allegation probable considering the manner in which domain name parking arrangements are established, as explained by Complainant in the Complaint. This leads the Panel to conclude that Respondent’s use of the <canasa.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 Lockheed Martin Corp. v. Extraordinary Things LLC, FA 1117826 (Nat. Arb. Forum Jan. 23, 2008) (finding the respondent’s use of the disputed domain name to establish a parked page advertising services in competition with the complainant’s business, where respondent received click-through fees, did not constitute 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 MEDIATIS S.A. v. Packalo S.A.RL. Cyberger & Stan Virgiliu, D2007-0312 (WIPO June 12, 2007) (“The website to which the domain name resolved, although active, only consisted in a parking page, hosted by Sedo and containing sponsored links to competitors of the Complainant. This use does not qualify as a bona fide offering of goods or services. Neither does it qualify as a non-commercial or fair use of the domain name.”).
Based on this analysis, the Panel finds that Policy ¶
4(a)(ii) has been satisfied.
Complainant noted six previous UDRP cases in which
Respondent was ordered by the panels to transfer infringing domain names to the
respective complainants in those cases. See, e.g., AMFM Inc. v. BWI Domain Manager, FA 1084750 (Nat. Arb. Forum Nov.
20, 2007); see also AARP v. BWI Domain
Manager, FA 1094042 (Nat. Arb. Forum Nov. 26, 2007). Complainant argues that this constitutes a
pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). The Panel agrees and makes this
conclusion. See Westcoast Contempo
Fashions Ltd. v.
With respect to this case, Complainant alleges that
Respondent registered the <canasa.com>
domain name for the primary purpose of disrupting Complainant’s business in
violation of Policy ¶ 4(b)(iii). Indeed,
the hyperlinks on the parked website resolving from the disputed domain name
are likely to divert Internet users to the websites of Complainant’s
competitors. Therefore, the Panel finds
that Respondent’s registration and use of the <canasa.com> domain name constitutes bad faith pursuant
to Policy ¶ 4(b)(iii). See David Hall Rare Coins v.
Complainant also argues at
length that it suffers from “initial interest confusion” because Internet
users, and Complainant’s potential customers, are confused as to the content
posted on the website resolving from Respondent’s <canasa.com>
domain name. Specifically, customers are
likely to believe that Complainant is the source of this content since the
disputed domain name contains Complainant’s CANASA mark in its entirety. The Panel believes this is a situation where
Respondent is profiting off the goodwill associated with Complainant’s mark by
accruing click-through fees for each redirected and confused Internet
user. These circumstances support a
finding of 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
The Panel finds this evidence more than sufficient to
conclude 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 <canasa.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: September 17, 2008
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