Thermo Fisher Scientific Inc. v. Domain Park Limited c/o hostmaster hostmaster
Claim Number: FA0901001244080
Complainant is Thermo Fisher Scientific Inc. (“Complainant”), represented by John H. Weber, of Baker & Hostetler LLP, Washington, D.C., USA. Respondent is Domain Park Limited c/o hostmaster hostmaster (“Respondent”), Samoa.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <thermosci.com>, registered with Rebel.com.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 22, 2009; the National Arbitration Forum received a hard copy of the Complaint on January 23, 2009.
On January 23, 2009, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <thermosci.com> domain name is registered with Rebel.com and that Respondent is the current registrant of the name. Rebel.com has verified that Respondent is bound by the Rebel.com 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 28, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 17, 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 postmaster@thermosci.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 24, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <thermosci.com> domain name is confusingly similar to Complainant’s THERMO SCIENTIFIC mark.
2. Respondent does not have any rights or legitimate interests in the <thermosci.com> domain name.
3. Respondent registered and used the <thermosci.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Thermo Fisher Scientific Inc., holds a registration of the THERMO SCIENTIFIC mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,529,359 issued November 4, 2008) in connection with its laboratory equipment business. Complainant filed for the registration of the THERMO SCIENTIFIC mark on June 30, 2006.
Respondent registered the <thermosci.com> domain name on July 11, 2007. The disputed domain name resolves to a website displaying links to third-party websites that are either unrelated or in direct competition with Complainant.
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 THERMO SCIENTIFIC mark pursuant to Policy ¶ 4(a)(i) via its registration of
the mark with the USPTO. The Panel also
finds that Complainant’s rights in the mark date back to the filing date with
the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007)
(“As the [complainant’s] mark is registered with the USPTO, [the] complainant
has met the requirements of Policy ¶ 4(a)(i).”); see also Hershey Co. v. Reaves,
FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights
in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the
trademark application and predate [the] respondent’s registration”).
The <thermosci.com> domain name contains the entire first word of Complainant’s mark, an abbreviation of the second word, and the generic top-level domain (gTLD) “.com.” The Panel finds that the changes made to the THERMO SCIENTIFIC mark to create the <thermosci.com> domain name result in the domain name being confusingly similar to the mark pursuant to Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated).
The Panel finds that Complainants has satisfied Policy ¶
4(a)(i).
Pursuant to Policy
¶ 4(a)(ii), Complainant must first establish a prima facie case that
Respondent has no rights or legitimate interests in the disputed domain
name. If the Panel finds that
Complainant’s allegations establish such a prima facie case, the burden
shifts to Respondent to show that it does indeed have rights or legitimate
interests in the disputed domain name pursuant to the guidelines in Policy ¶
4(c). Since no response was submitted in
this case, the Panel may presume that Respondent has no rights or legitimate
interests in the disputed domain name. The
Panel finds that Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no
rights or legitimate interests in the <thermosci.com> domain name
pursuant to Policy ¶ 4(a)(ii). However, the Panel will still examine the
record in consideration of the factors listed in Policy ¶ 4(c). See Domtar, Inc. v. Theriault.,
FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a
complainant has made out a prima facie case
in support of its allegations, the burden shifts to respondent to show that it
does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the
Policy.”); see also G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission
constitutes a prima facie case under the Policy, the burden effectively
shifts to Respondent. Respondent’s failure to respond means that Respondent has
not presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”).
There is no evidence in the record to suggest that
Respondent is commonly known by the <thermosci.com> domain
name. Complainant asserts it has not
granted Respondent any license to use its THERMO SCIENTIFIC mark, and the WHOIS
information associated with the domain name registration lists Respondent as
“Domain Park Limited c/o hostmaster hostmaster.” Also, Respondent has not submitted any
evidence that it is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent
has not established rights or legitimate interests in the disputed domain name
under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that the respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the WHOIS
information, suggesting that the respondent was commonly known by the disputed
domain name); see
also St. Lawrence Univ. v.
Nextnet Tech, FA 881234 (Nat.
Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate
interests in a disputed domain name where there was no evidence in the record
indicating that the respondent was commonly known by the disputed domain name).
The disputed domain name is being used to direct Internet
users to a parking website with a list of links to third-party websites that
presumably generate referral fees for Respondent. Using a domain name that is confusingly
similar to Complainant’s mark to direct Internet users to a commercial list of
links is neither a bona fide offering
of goods or services nor a legitimate noncommercial or fair use. Therefore, the Panel finds Respondent does
not have any rights or legitimate interests in the disputed domain name
pursuant to Policy ¶¶ 4(c)(i) or (iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Computer Doctor Franchise Sys.,
Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding
that the respondent’s website, which is blank but for links to other websites,
is not a legitimate use of the domain names).
The Panel finds that Complainants has satisfied Policy ¶ 4(a)(ii).
Respondent is using the <thermosci.com> domain
name to resolve to a website that contains links for third-party websites. Some of these third parties directly compete
with Complainant. The Panel finds
Respondent is using the <thermosci.com> domain name to divert
Internet users to Complainant’s competitors.
This is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12,
2000) (finding that the respondent has diverted business from the complainant
to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns,
D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and
used the domain name <eebay.com> in bad faith where the respondent has
used the domain name to promote competing auction sites).
The website that resolves from the <thermosci.com>
domain name displays advertisements and links to sites that are both related
and unrelated to Complainant’s THERMO SCIENTIFIC mark. The Panel infers that Respondent receives
pay-per-click fees for these links and advertisements. Since the disputed domain name is confusingly
similar to Complainant’s mark, Internet users are likely to become confused as
to Complainant’s affiliation or sponsorship of the disputed domain name and
resolving website. Respondent is seeking
to profit from this confusion by hosting pay-per-click advertising on the
resolving website. The Panel finds this
is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iv). See 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.”); see also Philip Morris Inc. v.
r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s
registration of an infringing domain name to redirect Internet users to banner
advertisements constituted bad faith use of the domain name).
The Panel finds that Complainants 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 <thermosci.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 10, 2009
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