Ferring Pharmaceuticals, Inc. v. Shangyi Wu
Claim Number: FA0812001240127
Complainant is Ferring Pharmaceuticals, Inc. (“Complainant”), represented by Arne
M. Olson, of Olson & Cepuritis, Ltd.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <prosed.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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 29, 2008; the National Arbitration Forum received a hard copy of the Complaint on December 30, 2008.
On December 29, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <prosed.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. 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 January 2, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 22, 2009 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 by e-mail.
A timely Response was received and determined to be complete on January 26, 2009.
On January 30, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The <prosed.com> domain name was originally owned by Complainant and its predecessor in interest; however, the registration of this domain name was inadvertently allowed to lapse, and the domain name was thereafter registered by Respondent.
Respondent’s domain name <prosed.com> is confusingly similar to Complainant’s PROSED trademark.
Complainant has never authorized, contracted, licensed or otherwise permitted Respondent in any way to use its registered trademark for any domain name incorporating PROSED or any variation thereof.
Respondent has not been commonly known by the name PROSED.
Respondent has not been using the domain name in connection with a bona fide offering of goods or services.
The web site resolving from the disputed domain name is a generic “parking” page provided by a domain name registrar.
The same page also claims that “This domain is for sale!” and provides a link to a site where Internet users can bid to purchase the domain.
Respondent has no legitimate right to or legal interest in the disputed domain name.
Respondent is relying on the goodwill associated with Complainant’s PROSED mark to attract Internet users to its website for the purpose of acquiring commercial gain from related advertisements, which use constitutes bad faith registration and use of the domain.
Respondent recently purchased the contested domain name in an on-line auction without knowing that it was associated with a registered trademark.
Respondent is “willing to transfer the domain name registration to Complainant.”
Paragraph 4(a) of the Policy requires that, in the ordinary course, Complainant must prove each of the following to obtain from a Panel an order that a domain name be transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Notwithstanding the foregoing, 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.”
Further, Policy ¶ 3(a) provides for
the transfer of a domain name registration upon the written instructions of the
parties to a UDRP proceeding without the need for otherwise required findings
and conclusions (see Malev Hungarian
Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat. Ar. Forum
Respondent’s written Response to the Complaint does not contest the material allegations of the Complaint, and, in particular it does not contest Complainant’s request that the disputed domain name be transferred to Complainant. Rather the Response expresses Respondent’s consent to such a transfer. Thus the parties have effectively agreed in writing to a transfer of the subject domain name from Respondent to Complainant without the need for further proceedings.
It is therefore Ordered that the <prosed.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 5, 2009
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