Abbott Laboratories and Kos
Pharmaceuticals, Inc v. Hintechsys Technologies
Claim Number: FA0807001218415
PARTIES
Complainant is Abbott Laboratories and Kos
Pharmaceuticals, Inc. (“Complainant”),
represented by Molly Buck Richard, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <simcorpill.com>, <simcorcholesterolpill.com>,
<simcorhome.com>, <simcorpharma.com>,
registered with Godaddy.com, Inc.
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.
Paul M. DeCicco as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 31, 2008; the
National Arbitration Forum received a hard copy of the Complaint on August 1, 2008.
On August 1, 2008, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <simcorpill.com>, <simcorcholesterolpill.com>,
<simcorhome.com>, <simcorpharma.com> domain
names are registered with Godaddy.com, Inc.
and that the Respondent is the current registrant of the names. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, 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”).
On August 5, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of August 25, 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@simcorpill.com, postmaster@simcorcholesterolpill.com, postmaster@simcorhome.com, and postmaster@simcorpharma.com by e-mail.
A Response was received on August 25,
2008; however, the Response was not received in hard copy as required under
ICANN Rule 5(a).
On September 4, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Paul M. DeCicco as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant contends as follows:
Abbott Laboratories is a global health care company that is a
recognized leader in researching and developing medicines, laboratory
diagnostics, and other technologies for improving and managing health. Abbott has an established Internet presence
at <abbott.com>.
Abbott is the owner of numerous proprietary trademarks in connection
with pharmaceuticals, nutrition products, medical devices, information in the
field of medicine and healthcare, and other related goods and services. Additionally, Abbott is a leader in
cholesterol-lowering products through its subsidiary entity, Kos
Pharmaceuticals, Inc. One of these
products is SIMCOR, which is a registered trademark with the United States
Patent and Trademark Office under Registration No. 3,123,955 which issued on
August 1, 2006. A copy of the
registration certificate is attached hereto as Exhibit B. Abbott’s primary website to provide online
information about SIMCOR is located at <simcortablets.com>.
Abbott’s SIMCOR medication was approved by the Food and Drug
Administration (“FDA”) and on February 15, 2008, Abbott issued a press release
which was distributed around the world relating to this approval for
SIMCOR. On February 16, 2008, the day
after this FDA approval announcement, the Respondent registered each of the
four disputed domain names, all of which contain the registered SIMCOR
mark.
The domain names <simcorpill.com>, <simcorcholesterolpill.com>, <simcorhome.com> and <simcorpharma.com> are confusingly similar to Complainant’s SIMCOR mark. The mark was registered as a trademark long before Respondent registered the disputed domain names. Respondent’s registration of the four disputed domain names also came several months after Complainant registered its own <simcortablets.com> domain name.
Respondent’s domain names <simcorpill.com>, <simcorcholesterolpill.com>, <simcorhome.com> and <simcorpharma.com> incorporate Complainant’s SIMCOR trademark in its entirety, along with the generic or descriptive terms “pill”, “cholesterolpill”, “home” and “pharma”, and the most common URL suffix “.com.” The mere addition of a generic or descriptive term to a trademark does nothing to avoid confusing similarity to that mark. Thus, the mere addition of the generic or descriptive terms to the SIMCOR mark in the domain names does nothing to avoid confusing similarity. In fact, use of these terms is likely to aggravate confusion because consumers looking for information relating to Complainants’ Simcor medication may easily type in any of the disputed domain names for such information. Likewise, the mere addition of the generic top-level domain “.com” does not negate the confusing similarity between Respondent’s domain names and Complainant’s mark.
Consumers who encounter a website located at the at-issue domain names are highly likely to believe that the site is sponsored by or affiliated with Complainant; therefore, the domain names are confusingly similar to Complainant’s registered trademark.
Respondent is not commonly known by the names <simcorpill.com>, <simcorcholesterolpill.com>, <simcorhome.com> and <simcorpharma.com>, nor has Respondent used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
The WHOIS records for the at-issue domain names do not indicate that Respondent is commonly known by any of the domain names. Rather, the Registrant is listed as “Hintechsys Technologies”. Thus, the WHOIS records on their face fail to establish that the Registrant has any legitimate rights in the domain name pursuant to Policy ¶4(c)(ii).
Moreover, Respondent is using Complainant’s SIMCOR mark to exploit the fact that Complainant’s customers and potential customers may assume that a website located at a domain name incorporating the SIMCOR trademark is affiliated with or sponsored by Complainant. The <simcorpill.com>, <simcorcholesterolpill.com>, and <simcorpharma.com> domain names resolve to websites that feature advertisements for third parties unrelated to Complainant, for which Respondent presumably receives “pay-per-click” revenue. Respondent’s use of <simcorhome.com> merely directs to a list of computer commands, which would be confusing to a user looking for information on Complainant’s SIMCOR product.
The use of a domain name that is confusingly similar to Complainant’s trademark to attract computer users to Respondent’s own commercial website is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). Use of a trademark in a domain name to direct users to a website that features revenue-generating third party advertisements does not constitute a legitimate noncommercial or fair use of the domain name or a bona fide offering of goods or services under Policy ¶ 4(c).
Moreover, Respondent has styled the look of the websites at <simcorpill.com> and <simcorcholesterolpill.com> to resemble that of a corporate website, much like Complainant’s official SIMCOR website. These two websites feature the SIMCOR mark, information concerning cholesterol and SIMCOR’S cholesterol-lowering capabilities, and information culled from Complainant’s press release regarding the FDA’s approval of SIMCOR. The <simcorpill.com> website even has SIMCOR dosing information and a contact form to “phish” information from online consumers. On all four of the websites, Respondent has done nothing to disclaim any relationship with Complainant, or to dispel any possible suggestion that it is Complainant, or that it might be an official website of Complainant. Such conduct cannot be considered a bona fide offering of goods or services, and it certainly does not demonstrate a fair use of the domain name.
Complainant, as the owner of the SIMCOR trademark, has not licensed this use of its mark or otherwise authorized the Respondent to use any of the SIMCOR Marks for any purpose. Complainant and Respondent do not have any relationship or affiliation with one another.
Respondent has registered and used the <simcorpill.com>, <simcorcholesterolpill.com>, <simcorhome.com> and <simcorpharma.com> domain names in bad faith. There is significant evidence that Respondent was aware of (and no doubt planned to capitalize upon) Complainant’s rights in and use of the SIMCOR Mark when it registered and used the four at-issue domain names. The fact that Respondent registered several domain names incorporating Complainant’s Mark is indicative of its bad faith. The timing of Respondent’s registration of the names is also evidence of bad faith; as mentioned previously, Respondent registered the four at-issue domain names one day after Complainant’s press release regarding the FDA’s approval of the SIMCOR product was widely distributed. Complainant’s SIMCOR mark was in use and had been registered as a trademark for approximately two years prior to Respondent’s registration of each of the four disputed domain names. Respondent’s registration of the four domain names also came several months after Complainant registered its own <simcortablets.com> domain name.
The domain names incorporate terms that describe or would be reasonably affiliated with Complainant’s SIMCOR product. The website content at <simcorpill.com> and <simcorcholesterolpill.com> show Respondent’s obvious knowledge of Complainant’s SIMCOR product and its uses. Respondent clearly registered the disputed domain names with knowledge of Complainant’s rights, which is evidence of bad faith registration and use with regard to Policy ¶ 4(a)(iii). Based upon this mountain of evidence, one could easily infer that Respondent knew of Complainant’s ownership of the SIMCOR mark and that Respondent acted in bad faith by registering domain names that include a mark it knew or should have known was the proprietary property of another.
Respondent is using the domain names to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s SIMCOR Mark as to the source, sponsorship, affiliation, or endorsement of its websites. As noted above, Respondent has styled its websites without mentioning its complete lack of affiliation with Complainant, thereby creating a high likelihood of confusion in the marketplace. Internet users are likely to believe that the websites at Respondent’s domain names are affiliated with, sponsored by, or endorsed by Complainant, or are Complainant’s official website. Respondent is thus taking advantage of the likelihood that users will confuse the source of the disputed domain name as being affiliated with Complainant, which amounts to a bad faith use and registration of the domain names under the Policy.
In addition, it appears that Respondent is profiting from traffic directed to the websites at the at-issue domain name websites through pay-per-click advertising revenues, in which case Respondent would be deriving commercial gain based on consumer recognition and interest in Complainant’s SIMCOR product. Respondent’s use of Complainant’s mark to imply a relationship where none exists for its own commercial gain shows bad faith under Policy ¶ 4(b)(iv).
The addition of third-party advertising on Respondent’s websites is injurious to Complainant’s reputation and erodes the public’s trust in Complainant as a source for safe medical products and trustworthy research. Respondent’s use of Complainant’s mark to attract traffic to its websites amounts to a disruption of Complainant’s business under Policy ¶ 4(b)(iii). These opportunistic acts by Respondent, calculated as a free ride on Complainant’s Mark, have the effect of disrupting Complainant’s business.
Respondent has clearly registered
and is using the domain names <simcorpill.com>,
<simcorcholesterolpill.com>, <simcorhome.com> and
<simcorpharma.com> in bad faith.
B. Respondent
Respondent contends through an email to the National Arbitration Forum
as follows:
Hello,
Sorry for the late response.
I planed to promote just simcor information on my sites, if there is [sic] issues with this domain name www.simcorpill.com, www.simcorcholesterolpill.com, www.simcorhome.com, www.simcorpharma.com I am ready to transfer these domain name.
Thanks and Regards
Deepak
FINDINGS
Complainant has trademark rights in the mark
SIMCOR. Each of the four at-issue domain
names is confusingly similar to the Complainant’s SIMCOR mark.
Respondent has agreed that the at-issue
domain names may be transferred to the Complainant.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
As a procedural matter,
Respondent’s emailed Response is technically defective because the dispute
resolution provider did not receive a hard copy. See
Rules ¶5(b). In such cases a panel may decide whether or not to consider an
electronic submission. Concerning the
instant case the Panel sees no compelling reason to disregard the emailed
Response since the lack of a hard copy works no apparent prejudice on
Complainant. Furthermore, in its terse emailed Response the Respondent consents to
the requested relief thereby disposing of the case as discussed in more detail
below. See J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628
(Nat. Arb. Forum Oct. 17, 2003) (finding that where the respondent submitted a
timely response electronically, but failed to submit a hard copy of the
response on time, “[t]he Panel is of the view that
given the technical nature of the breach and the need to resolve the real
dispute between the parties that this submission should be allowed and given
due weight”). See also, Homrich, Inc. v. Akm Rahman
a/k/a A Rahman FA 0807001213608 (August 26, 2008).
A panel may
grant a complainant’s requested relief without needing to fully consider the
merits under Policy 4(a) where, such as here, a respondent consents to the
requested relief and the complainant demonstrates that it has rights in
the at-issue domain names pursuant to Policy ¶4(a)(i).
This Panel disagrees with the proposition that even
though a respondent consents to transferring an at-issue domain name, a
substantive review may be required. See Graebel
Van Lines, Inc. v.
As this Panel recently held in Homrich,
Inc. v. Rahman a/k/a A Rahman,:
Judicial economy and the [underlying] purpose of the UDRP demand
expeditious and economical resolution of UDRP disputes. A respondent that consents to requested
relief avoids having to expend the time and resources necessary to
respond. Furthermore, having consented
to the relief requested, the respondent’s pleadings will normally not offer a
substantive defense.
***
Importantly, the singularly narrow task before this Panel is to
determine whether or not the requested relief should be granted, denied or
dismissed.
The remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be
limited to requiring the cancellation of [the] domain name or the
transfer of [the] domain name registration to the complainant.
Policy ¶ 4(i) (emphasis
added).
A panel’s only purpose in rendering substantive Paragraph 4(a) findings
is relegated to that end, and that end alone. What amounts to advisory opinions
are not authorized by the Policy, Rules, or otherwise. Therefore, when a respondent consents to a
complainant’s requested relief and that complainant has rights in the at-issue
domain name(s), then only under particular circumstance that call into question
the validity of the respondent’s consent, or for similar other good cause,
might a panel need to proceed to consider the merits of the complaint via
further analysis under Paragraph 4(a).
Such circumstances are not present in the instant dispute, and so the
requested relief must be granted.
FA 1213608 (Nat. Arb. Forum August 26, 2008).
DECISION
Having established that Complainant has an interest in each of the
at-issue domain names and that Respondent consents to the requested relief, the
Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <simcorpill.com>, <simcorcholesterolpill.com>,
<simcorhome.com>, <simcorpharma.com> domain
names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 18, 2008
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