Ranbaxy Laboratories Inc. v. Johnny Carpela
Claim Number: FA0810001231644
Complainant is Ranbaxy Laboratories Inc. (“Complainant”), represented by Lynda
J. Zadra-Symes, of Knobbe Martens Olson & Bear LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <balnetar.com> and <sebulex.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 November 4, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 24, 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 firstname.lastname@example.org and 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.
On December 3, 2008 , pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <balnetar.com> and <sebulex.com> domain names are identical to Complainant’s BALNETAR and SEBULEX marks.
2. Respondent does not have any rights or legitimate interests in the <balnetar.com> or <sebulex.com> domain names.
3. Respondent registered and used the <balnetar.com> and <sebulex.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Laboratories Inc., holds trademark registrations with the United States Patent
and Trademark Office (“USPTO”) for the BALNETAR (Reg. No. 710,474 issued
Respondent registered the <balnetar.com>
domain name on
Respondent has been the respondent is previous cases where
the disputed domain names were transferred to the complainants in those cases
pursuant to the UDRP. See, e.g., Procter & Gamble Pharm., Inc.
v. Johnny Carpela, FA 625591 (Nat. Arb. Forum
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’s registrations of its
BALNETAR and SEBULEX marks with the USPTO are sufficient to establish
Complainant’s rights in the marks pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum
The disputed domain names include Complainant’s marks in
their entirety and add the generic top-level domain (gTLD) “.com.” The addition of the gTLD is irrelevant to a Policy
¶ 4(a)(i) analysis. Therefore, the Panel
finds that the disputed domain names are identical to Complainant’s marks
pursuant to Policy ¶ 4(a)(i). See Pomellato
S.p.A v. Tonetti, D2000-0493 (WIPO
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
The initial burden under Policy ¶ 4(a)(ii) is on Complainant
to prove that Respondent does not have any rights or legitimate interests in
the disputed domain names. Once
Complainant has made a prima facie
case, the burden shifts to Respondent to show that it does have rights or
legitimate interests pursuant to the directions provided in Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires
v. Greenpeace Int’l, D2001-0376 (WIPO
The Panel finds no evidence in the record suggesting that
Respondent is commonly known by either of the disputed domain names. Complainant asserts that Respondent has no
license or agreement with Complainant authorizing Respondent to use the
BALNETAR and SEBULEX marks, and the WHOIS information identifies Respondent as
“Johnny Carpela.” Thus, Respondent has not established rights
or legitimate interests in the disputed domain names under Policy ¶
4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum
The disputed domain names resolve to websites that fraudulently purport to be reference sites for the medications in question. Respondent impersonating Complainant online is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a noncommercial or fair use of the disputed domain names pursuant to Policy ¶ 4(c)(iii). See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
In addition, Respondent is also using the resolving websites
to list links to third-party websites, some of which are Complainant’s
competitors. Respondent’s use of domain
names that are identical to Complainant’s BALNETAR and SEBULEX marks to
redirect Internet users interested in Complainant’s goods to third-party websites
that are both unrelated and in competition with Complainant’s business 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 disputed domain names pursuant to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards,
FA 132439 (Nat. Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has been the respondent in previous UDRP
decisions wherein the disputed domain names were transferred to the respective
complainants in those cases. See, e.g., Procter & Gamble Pharm., Inc.
v. Johnny Carpela, FA 625591 (Nat. Arb. Forum
Respondent is using the disputed domain names, which are identical to
Complainant’s BALNETAR and SEBULEX marks, to redirect Internet users to
Respondent’s website that features links to third-party sites, some of which
compete with Complainant’s business. The
Panel finds that such use constitutes disruption and is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat.
The Panel infers
that Respondent receives click-through fees for diverting Internet users to
third-party websites. Because
Respondent’s domain name is identical to Complainant’s BALNETAR and
SEBULEX marks, Internet users
accessing Respondent’s disputed domain names may become confused as to
Complainant’s affiliation with the resulting website. This confusion will be reinforced by
statements on the resolving website like, “the reference site for Balnetar”
accompanied by advice about how and when to use the medication. See DaimlerChrysler Corp. v. Bargman,
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 <balnetar.com> and <sebulex.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 10, 2008
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