Ranbaxy Laboratories Inc. v. Cook Creative Domain Limited
Claim Number: FA0902001247232
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 name at issue are <exelderm.com> and <lachydrin.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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 11, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 13, 2009.
On February 12, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <exelderm.com> and <lachydrin.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. 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 February 13, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 5, 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@exelderm.com and postmaster@lachydrin.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 11, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 <exelderm.com> domain name is identical to Complainant’s EXELDERM mark. Respondent’s <lachydrin.com> domain name is identical to Complainant’s LAC-HYDRIN mark.
2. Respondent does not have any rights or legitimate interests in the <exelderm.com> and <lachydrin.com> domain names.
3. Respondent registered and used the <exelderm.com> and <lachydrin.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ranbaxy Laboratories Inc., is a pharmaceutical company. Complainant owns the EXELDERM and LAC-HYDRIN marks, under which it markets two respective lines of its pharmaceutical products. EXELDERM is used to market a topical solution and LAC-HYDRIN is used to market a medicated lotion. Complainant’s predecessor registered the EXELDERM (Reg. No. 1,206,693 issued August 31, 1982) and LAC-HYDRIN (Reg. No. 1,257,361 issued November 15, 1983) marks with the United States Patent and Trademark Office (“USPTO”). Complainant was assigned the EXELDERM and LAC-HYDRIN marks on May 24, 2007.
Respondent registered the disputed domain names on February 13, 2002. Respondent’s disputed domain names resolve to websites that display click-through advertisements for Complainant’s competitors as well as a search engine, Respondent presumably profits from these activities in the form of referral fees.
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.
Complainant has provided evidence of the registration and
assignment of its EXELDERM and LAC-HYDRIN marks with the USPTO. The Panel finds this is sufficient evidence
to confer Complainant’s rights in the EXELDERM and LAC-HYDRIN marks pursuant to
Policy ¶ 4(a)(i).
Complainant maintains that the <exelderm.com> domain name is identical to Complainant’s EXELDERM mark, and <lachydrin.com> domain name is identical to Complainant’s LAC-HYDRIN mark. Complainant asserts the disputed domain names contain Complainant’s marks in their entirety with the addition of the generic top-level domain “.com” to both, and the deletion of a hyphen in one of the disputed domain names. The Panel finds that both the addition or deletion of a hyphen and the addition of a generic top-level domain are irrelevant when conducting a Policy ¶ 4(a)(i) analysis because they do not substantially alter the nature of the disputed domain name when compared to the mark. Therefore, the Panel finds Respondent’s <exelderm.com> and <lachydrin.com> domain names are identical to Complainant’s EXELDERM and LAC-HYDRIN marks, respectively, under Policy ¶ 4(a)(i). See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not possess rights or legitimate interests in the disputed domain names. Complainant must present a prima facie case to support these allegations before the burden shifts to Respondent to prove it does have rights or legitimate interests in the disputed domain names. The Panel finds Complainant has presented an adequate prima facie case to support its allegations and Respondent has failed to respond to these proceedings. Therefore, the Panel may conclude Respondent does not possess rights or legitimate interests in the disputed domain names. The Panel, however, will examine the record and determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). See 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”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Complainant contends Respondent is not commonly known by the
disputed domain names. Respondent is
listed in the WHOIS information as “Cook Creative Domain Limited,” and
Complainant asserts it has not authorized Respondent to use its EXELDERM or
LAC-HYDRIN marks. Therefore, the Panel
finds Respondent is not commonly known by the disputed domain names under
Policy ¶ 4(c)(ii).
See
Respondent’s disputed domain names resolve to a website that displays pay-per-click links for competing pharmaceutical companies, as well as a commercial search engine. The Panel finds Respondent’s uses of the disputed domain names are not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be 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 pursuant to Policy ¶ 4(c)(iii)).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed domain names to display links to third-party websites that compete with Complainant’s pharmaceutical business. The Panel finds Respondent’s actions constitute disruption of Complainant’s business, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent presumably receives compensation in the form of referral fees for its use of the identical disputed domain names. The Panel finds Respondent’s uses are an attempt to profit from the goodwill Complainant has established in its EXELDERM and LAC-HYDRIN marks. The Panel finds this is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <exelderm.com> and <lachydrin.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: March 25, 2009
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