Biovail Laboratories International SRL v. Richard Koch
Claim Number: FA0809001225360
Complainant is Biovail Laboratories International SRL (“Complainant”), represented by James
R. Menker, of Holley & Menker, P.A.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ativan.com>, registered with Godaddy.com, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On September 23, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 14, 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.
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 <ativan.com> domain name is identical to Complainant’s ATIVAN mark.
2. Respondent does not have any rights or legitimate interests in the <ativan.com> domain name.
3. Respondent registered and used the <ativan.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant markets a medicinal preparation that is widely
prescribed for the treatment of anxiety disorders under the ATIVAN mark. Complainant registered the ATIVAN mark with
the United States Patent and Trademark Office (“USPTO”) on
Respondent registered the <ativan.com>
domain name on
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.
The Panel finds that Complainant has established rights in
the ATIVAN mark for purposes of Policy ¶ 4(a)(i) through its trademark
registration with the USPTO. 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 Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum
Complainant contends that
Respondent’s <ativan.com> domain
name is identical to its ATIVAN mark. The <ativan.com> domain name differs from Complainant’s mark only in that
the generic top-level domain (gTLD) “.com” has been added to the mark. Under Policy ¶ 4(a)(i), the addition of a
gTLD is irrelevant when considering whether a domain name is identical to a
mark. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev.,
FA 204063 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <ativan.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See 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); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Complainant contends that Respondent is not commonly known
by the <ativan.com>
domain name nor has it ever been the owner or licensee of the ATIVAN mark. The WHOIS record for the disputed domain name
lists Respondent as “Richard Koch.” Additionally, Respondent has failed to show
any evidence contrary to Complainant’s contentions. Because Respondent is not known by any
variant on the ATIVAN mark and there is no evidence contrary to Complainant’s
contentions, the Panel finds that Respondent is not commonly known by the <ativan.com> domain name pursuant to Policy ¶ 4(c)(ii). See
Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interest where the respondent was not commonly known by the mark and never
applied for a license or permission from the complainant to use the trademarked
name); see also
RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum
Internet users who access the <ativan.com> domain name are redirected by Respondent to websites where generic pharmaceuticals are sold as if they were the brand name equivalents marketed by both Complainant and Complainant’s competitors. On top of that unlicensed commercial use of the ATIVAN mark, Complainant contends that Respondent commercially benefits from these links through the receipt of “click-through” fees. The Panel finds that Respondent’s use of the <ativan.com> domain name is 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 Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the disputed domain name to divert Internet customers from Complainant’s website to Respondent’s websites that resolve from the disputed domain name, through the confusion caused by the identicality of the ATIVAN mark and the <ativan.com> domain name. Complainant also contends that Respondent intended to disrupt Complainant’s business by diverting confused customers to Respondent’s websites, where Respondent is competing with Complainant by selling the generic versions of the brand name pharmaceuticals sold by Complainant. The Panel finds that the disruption of Complainant’s business is evidence of Respondent’s registration and use of the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also Clear Channel Commc’ns, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding evidence of bad faith use and registration where the respondent and the complainant both operated in the highly regulated field of radio broadcasting and the respondent registered a domain name incorporating the complainant’s call letters).
Complainant also contends that the click-through fees that Respondent receives from the third-party advertisements allow Respondent to gain commercially from this diversion. The Panel finds that this is an intentional use of the disputed domain name for commercial gain through a likelihood of confusion with Complainant’s mark, and so, pursuant to Policy ¶ 4(b)(iv), this use is also evidence of Respondent’s registration and use in bad faith. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”).
The Panel finds 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 <ativan.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 4, 2008
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