IDEXX Laboratories, Inc. v.
Claim Number: FA0809001223922
PARTIES
Complainant is IDEXX Laboratories, Inc. (“Complainant”), represented by Joel
D. Leviton, of Fish & Richardson P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <idexxlabs.com>, registered with Compana, LLC.
PANEL
The undersigned, Daniel B. Banks, Jr., as Panelist, 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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 9, 2008; the
National Arbitration Forum received a hard copy of the Complaint on September 10, 2008.
On September 11, 2008, Compana, LLC confirmed by e-mail to the
National Arbitration Forum that the <idexxlabs.com> domain name is
registered with Compana, LLC and that the
Respondent is the current registrant of the name. Compana, LLC
has verified that Respondent is bound by the Compana,
LLC 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 September 15, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of October 6, 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@idexxlabs.com by
e-mail.
A timely Response was received and determined to be complete on October 6, 2008.
On October 15, 2009, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Daniel B. Banks, Jr., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
IDEXX Laboratories (“IDEXX”) is a leading developer of products and services for veterinary, food, and water applications with a primary business focus on pet health. IDEXX develops and sells a variety of products and services for veterinary use such as diagnostic test kits, pharmaceuticals, laboratory equipment, and laboratory services. IDEXX began use of its distinctive IDEXX mark in at least as early as 1988 and has used the mark continuously since then in connection with a variety of veterinary-related goods and services. IDEXX also uses other marks containing the distinctive IDEXX designation in connection with veterinary-related products and services including the marks IDEXX VETLAB and IDEXX-DIRECT.
In addition to its longstanding common law rights in its IDEXX marks, IDEXX also owns a number of federal registrations for marks comprised of or containing the distinctive IDEXX designation.
Knowing of IDEXX’s exclusive rights in its distinctive IDEXX mark, Respondent Texas International Property Associates – NA NA (“Respondent”) registered the idexxlabs.com domain name in bad faith to capitalize on the goodwill associated with IDEXX’s well-known and federally registered marks.
The disputed domain name is identical and/or confusingly similar to Complainant’s mark. Respondent registered the idexxlabs.com domain name, which wholly incorporates the distinctive IDEXX mark and combines it with the generic term “labs.” “Labs” is obvious shorthand for laboratories, a term found in IDEXX’s company name – IDEXX Laboratories, Inc. Combining the IDEXX mark with a generic term that relates to IDEXX renders the idexxlabs.com domain name confusingly similar to the IDEXX Marks.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not used the idexxlabs.com domain name in connection with a bona fide offering of goods or services; Respondent is not making a noncommercial fair use of the domain name; and Respondent has never been known as or referred to as “IDEXX Labs” or “idexxlabs.com.”
Respondent registered and is using the disputed domain name in bad faith. Respondent has engaged in a pattern of registering domain names containing the trademarks of others to profit from such trademarks and to prevent trademark owners from reflecting their marks in domain names. Registering multiple domain names containing the trademarks of others constitutes bad faith registration and use.
Using a domain name comprised of
another’s mark for the purpose of providing links to third party commercial
websites constitutes bad faith.
Respondent is in the business of generating click-through revenue by
creating a likelihood of confusion with the trademarks of others. When an Internet user visits the www.idexxlabs.com
website, he or she encounters photographs of domestic pets and the
“idexxlabs.com” designation prominently featured at the top of the
website. The www.idexxlabs.com website
also contains links to information about IDEXX, such as job listings at the company.
Respondent
registered the idexxlabs.com domain name in 2005, long after IDEXX adopted,
first used, and federally registered its IDEXX mark. Given the distinctiveness of the IDEXX mark,
and the fact that Respondent coupled the IDEXX mark with the term “labs,” it is
beyond question that Respondent was aware of IDEXX when it registered the
idexxlabs.com domain name. “Registration
of a domain name that is confusingly similar to a mark, despite knowledge of
the mark holder’s rights, is evidence of bad faith registration pursuant to
Policy ¶ 4(a)(iii).” Thus, Respondent
registered and is using the idexxlabs.com domain name in bad faith.
B. Respondent
Respondent agrees to the relief requested by the Complainant and will, upon order of the Panel, do so. This is not an admission to the three elements of 4(a) of the policy but rather an offer of “unilateral consent to transfer” as prior Panels have deemed it. Therefore, Respondent requests that the Panel order the immediate transfer of the disputed domain name.
FINDINGS
Respondent consents to transfer the <idexxlabs.com> domain name
to Complainant. However, after the
initiation of this proceeding, the registrar, Compana, LLC, placed a hold on Respondent’s account and therefore
Respondent cannot transfer the disputed domain name while this proceeding is
pending.
The
Panel finds that Complainant has not implicitly consented in its Complaint
to the transfer of the <idexxlabs.com> domain
name without a decision on the
merits by the Panel. The
“consent-to-transfer” approach is but one way for cybersquatters to avoid
adverse findings against them. In Graebel Van
Lines, Inc. v.
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
That reflects the opinion of the Panel in this case. The facts of this case clearly indicate that there is intentional bad faith registration and use of the disputed domain name. The panel therefore finds as follows:
1 – The disputed domain name is identical and/or confusingly similar to Complainant’s mark.
2 – The Respondent has no rights or legitimate interests in the disputed domain name.
3 – The Domain name was registered and is being used in bad faith.
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.
Complainant has rights in the IDEXX mark through its
registration with the United States Patent and Trademark Office (“USPTO”) (Reg.
No. 1,550,647 issued August 8, 1989). See Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861
(Nat. Arb. Forum Sept. 16, 2002) (“Under
Respondent’s <idexxlabs.com> mark is confusingly similar to Complainant’s IDEXX
mark pursuant to Policy ¶ 4(a)(i).
Respondent’s disputed domain name contains Complainant’s mark in its
entirety, adds the generic term “labs,” and adds the generic top-level domain
(“gTLD”) “.com.” The addition of a
generic term with an obvious relationship to Complainant to an established mark
fails to create the requisite distinctiveness needed to prevent the disputed
domain name from being confusingly similar to the mark. See
Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22,
2000) (finding confusing similarity where the respondent’s domain name combines
the complainant’s mark with a generic term that has an obvious relationship to
the complainant’s business); see also
L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14,
2000) (finding that combining the generic word “shop” with the complainant’s
registered mark “llbean” does not circumvent the complainant’s rights in the
mark nor avoid the confusing similarity aspect of the ICANN Policy). In addition, the Panel may find that the
addition of a gTLD is irrelevant in distinguishing a disputed domain name from
a registered mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25,
2000) (finding that the top level of the domain name such as “.net” or “.com”
does not affect the domain name for the purpose of determining whether it is
identical or confusingly similar).
Therefore, pursuant to Policy ¶ 4(a)(i), the Panel may find that
Respondent’s <idexxlabs.com> domain
name is confusingly similar to Complainant’s IDEXX mark.
Complainant has made a prima facie case in support of its allegations, therefore the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent lacks all
rights and legitimate interests in the <idexxlabs.com> domain name pursuant to Policy ¶ 4(a)(ii). Respondents
disputed domain name resolves to a website offering third-party links to
Complainant’s competitors and is clearly related to pets. This
use of an allegedly confusingly similar domain name is neither a bona fide offering of goods and services
pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys.,
Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s
appropriation of [Complainant’s] SAFLOK mark to market products that compete
with Complainant’s goods does not constitute a bona fide offering of goods and
services.”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is
not using the disputed domain name in connection with a bona fide offering of
goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”).
Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). Respondent’s WHOIS information lists Respondent as “Texas International Property Associates – NA NA.” The Panel may find that the WHOIS information provides no affirmative evidence that Respondent is commonly known by the <idexxlabs.com> domain name pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
The facts of this case leave no doubt in the
mind of this panel that Respondent intentionally registered and used the disputed
domain name in bad faith. When an Internet user visits the <indexxlabs.com> website, he or she encounters photographs of
domestic pets and the “indexxlabs.com” designation prominently featured at the
top of the website. The website contains
links to a variety of commercial websites including those that sell pet
pharmaceuticals and pet supplies and are in competition with the
Complainant. The website also contains
links to information about INDEXX, such as job listings at the company. The combination of pet-related content and
information about INDEXX falsely suggests that INDEXX is associated with the
website. The Panel assumes that Respondent earns click-through fees for each
misguided Internet user. Respondent’s use of a confusingly similar disputed
domain name for the purpose of commercially benefiting is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See
Perot Sys. Corp. v. Perot.net,
FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain
name in question is obviously connected with the complainant’s well-known
marks, thus creating a likelihood of confusion strictly for commercial gain); see also Gardens
Alive, Inc. v. D&S Linx, FA 203126
(Nat. Arb. Forum Nov. 20, 2003) (“Respondent registered and used the
<my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii)
and (iv) because Respondent is using a domain name that is confusingly similar
to the MYSEASONS mark for commercial benefit by diverting Internet users to the
<thumbgreen.com> website, which sells competing goods and services.”).
In addition, Respondent’s use of the disputed domain name
to offer third-party links which compete with Complainant is further evidence
of bad faith. Use of a registered domain
name used primarily to disrupt the business of a competitor demonstrates bad
faith registration and use pursuant to Policy ¶ 4(b)(iii). See
Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6,
2003) (“Respondent registered and used the domain name in bad faith, pursuant
to Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of
Complainant . . .”); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb.
Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar
to Complainant's mark to divert Internet users to a competitor's website. It is
a reasonable inference that Respondent's purpose of registration and use was to
either disrupt or create confusion for Complainant's business in bad faith
pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Lastly, Complainant offers evidence of Respondent’s
documented history of registering domain names containing the registered
trademarks of others. See Skyhawke Technologies, LLC v.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <idexxlabs.com> domain name be TRANSFERRED
from Respondent to Complainant.
Daniel B. Banks, Jr., Panelist
Dated: October 28, 2008
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