ViroPharma Incorporated v. Transure Enterprise Ltd c/o
Host Master
Claim Number: FA0907001276246
Complainant is ViroPharma Incorporated (“Complainant”), represented by Anita
B. Polott, of Morgan, Lewis & Bockius LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <viropharm.com>, registered with Above, 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 29, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 29, 2009.
On July 29, 2009, Above, Inc. confirmed by e-mail to the National Arbitration Forum that the <viropharm.com> domain name is registered with Above, Inc. and that Respondent is the current registrant of the name. Above, Inc. has verified that Respondent is bound by the Above, 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 August 5, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 25, 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@viropharm.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 1, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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 <viropharm.com> domain name is confusingly similar to Complainant’s VIROPHARMA mark.
2. Respondent does not have any rights or legitimate interests in the <viropharm.com> domain name.
3. Respondent registered and used the <viropharm.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, ViroPharma Incorporated, operates a biotechnology and pharmaceutical company under its VIROPHARMA mark. Complainant has registered its VIROPHARMA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,459,907 issued June 12, 2001).
Respondent registered the disputed domain name on March 26, 2009. The disputed domain name resolves to a website that displays links to commercial websites related to the biotechnology and pharmaceutical industries.
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 of its mark with the USPTO on June 12, 2001 (Reg. No. 2,459,907). The registration of a mark with a federal trademark authority has commonly been held to fulfill the requirements of establishing rights in a mark under Policy ¶ 4(a)(i). Thus, the Panel finds Complainant’s registration of its VIROPHARMA mark with the USPTO sufficiently evidences Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”).
The disputed domain name contains Complainant’s VIROPHARMA
mark, eliminating the last “a” in the mark and adding the generic top-level
domain “.com.” Complainant asserts these
alterations are not distinct enough to prevent a finding of confusing
similarity between the disputed domain name and the mark. The Panel agrees, finding that the deletion
of a letter and the addition of a generic top-level domain do not distinguish
this disputed domain name from Complainant’s VIROPHARMA mark, rendering them
confusingly similar under Policy ¶ 4(a)(i). See State
Farm Mut. Auto. Ins. Co. v. Try Harder &
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or
legitimate interests in the disputed domain name. Complainant is required to produce a prima facie case in support of its
allegations and then the burden shifts to Respondent to prove it possesses
rights or legitimate interests in the disputed domain name. The Panel finds Complainant has adequately
established a prima facie case. Due to Respondent’s failure to respond to
these proceedings, the Panel may assume Respondent does not possess rights or
legitimate interests in the disputed domain name. The Panel, however, will examine the record
to determine whether Respondent possesses rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(c).
See 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).”); see also Am.
Express Co. v. Fang Suhendro, FA 129120
(Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's
failure to respond, it is presumed that Respondent lacks all rights and
legitimate interests in the disputed domain name.”).
Complainant has provided evidence in the form of a screenshot illustrating the website resolving from the disputed domain name, which contains links to competitive third-party pharmaceutical and biotechnology websites. The Panel finds Respondent’s use of the disputed domain name to display links to Complainant’s competitors is 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 Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
Complainant asserts Respondent is not commonly known by the disputed domain name. Complainant points to the WHOIS information which lists Respondent as “Transure Enterprise Ltd c/o Host Master” as evidence Respondent is not commonly known by the <viropharm.com> domain name. The Panel finds, based on the WHOIS information and lack of evidence contradicting the WHOIS information that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Additionally, Complainant asserts Respondent lacks rights and legitimate interests in the disputed domain name because Respondent has engaged in the typosquatting. Typosquatting is the practice of registering domain names that replicate another’s mark with some sort of typographical alteration. In this case, Respondent’s disputed domain name replicates Complainant’s VIROPHARMA mark with the omission of the last “a” in the mark. The Panel finds Respondent has engaged in typosquatting, which is evidence Respondent lacks rights and legitimate interest in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”); see also Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends Respondent registered and is using the
disputed domain name to disrupt Complainant’s business by directing Internet
users interested in Complainant to a website that displays links to third-party
biotechnology and pharmaceutical websites.
The Panel finds Respondent is disrupting Complainant’s business, which
is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith
registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the
disputed domain name to operate a commercial search engine with links to the
complainant’s competitors); see
also
Furthermore, Complainant contends Respondent is receiving compensation in the form of click-through fees by displaying links to third-party competitive biotechnology and pharmaceutical companies on the website resolving from the confusingly similar disputed domain name. The Panel finds Respondent presumably receives compensation for its use of the disputed domain name and that Respondent is intending to create a likelihood of confusion as to Complainant’s affiliation with the website for commercial gain. The Panel finds Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see also Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to Respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).
Also, as established before, Respondent has engaged in the practice of typosquatting through its registration of the disputed domain name. The Panel finds typosquatting in and of itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)).
The Panel finds 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 <viropharm.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: September 15, 2009
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