Alcon, Inc. and Alcon Laboratories, Inc. and Falcon
Pharmaceuticals, Ltd. v. N/A c/o Fei Fei
Claim Number: FA0910001288172
Complainant is Alcon, Inc. and Alcon Laboratories, Inc. and Falcon
Pharmaceuticals, Ltd. (“Complainant”),
represented by Molly Buck Richard, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <falconpharmaceuticals.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 7, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 8, 2009.
On October 8, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a Publicd confirmed by e-mail to the National Arbitration Forum that the <falconpharmaceuticals.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicd has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicd 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 October 14, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 4, 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@falconpharmaceuticals.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 9, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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 <falconpharmaceuticals.com> domain name is confusingly similar to Complainant’s FALCON mark.
2. Respondent does not have any rights or legitimate interests in the <falconpharmaceuticals.com> domain name.
3. Respondent registered and used the <falconpharmaceuticals.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Alcon, Inc., Alcon Laboratories, Inc., and Falcon Pharmaceuticals, Ltd. join as Complainant. Complainant uses the FALCON mark in association with its marketing and sales of pharmaceutical products. Complainant owns numerous trademark registrations around the world for the FALCON mark, including two with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,973,456 issued May 7, 1996).
Respondent registered the <falconpharmaceuticals.com> domain name on April 13, 2006. Respondent’s WHOIS information displays an offer to sell the disputed domain name and the disputed domain name resolves to a website displaying third-party links to websites offering pharmaceutical products in 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 FALCON mark for purposes of Policy ¶ 4(a)(i) through its trademark
registrations with the USPTO (e.g., Reg. No. 1,973,456 issued May 7,
1996). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May
23, 2006) (finding that where the complainant had submitted evidence of its registration
with the USPTO, “such evidence establishes complainant’s rights in the mark
pursuant to Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc.,
D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that
the mark be registered in the country in which the respondent operates;
therefore it is sufficient that the complainant can demonstrate a mark in some
jurisdiction).
Complainant argues that
Respondent’s <falconpharmaceuticals.com> domain name is confusingly
similar to Complainant’s FALCON mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains
Complainant’s mark in its entirety, adds the term “pharmaceuticals,” and adds
the generic top-level domain (“gTLD”) “.com.”
The Panel finds that the term “pharmaceuticals,” when added to
Complainant’s FALCON mark in the disputed domain name, creates a confusing
similarity between Complainant’s mark and the disputed domain name because the
term “pharmaceuticals” has an obvious relationship to Complainant’s offering of
pharmaceutical products. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007)
(finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the
complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which
is an obvious allusion to complainant’s business.”); see also Vance Int’l, Inc. v. Abend, FA
970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term
“security” to the complainant’s VANCE mark, which described the complainant’s
business, the respondent “very significantly increased” the likelihood of
confusion with the complainant’s mark).
In addition, the
Panel finds that the addition of a gTLD is irrelevant in distinguishing a
disputed domain name from an established mark.
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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007)
(finding that the mere addition of the generic top-level domain “.com” is
insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds that Respondent’s <falconpharmaceuticals.com> domain name is confusingly
similar to Complainant’s FALCON mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent does not have any
rights or legitimate interests in the disputed domain name. Once a prima facie case has been established by Complainant, the burden
then shifts to Respondent to demonstrate its rights or legitimate interests in
the disputed domain name pursuant to Policy ¶ 4(c). The Panel finds that Complainant has adequately
established a prima facie case in
these proceedings. Since Respondent has
failed to respond to the allegations against it, the Panel may assume that
Respondent lacks any rights or legitimate interests in the disputed domain
name. See Intel Corp. v. Macare, FA
660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must
first make a prima facie case that [the] respondent lacks rights and
legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to
show it does have rights or legitimate interests.”); 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 asserts Respondent is not commonly known by the disputed domain name. As proof, Complainant offers the WHOIS information, which lists the registrant as “N/A c/o Fei Fei.” The Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent’s disputed
domain name resolves to a website featuring click-through links and advertisements
for Complainant’s competitors in the pharmaceutical industry. The Panel finds
that Respondent’s use of the disputed
domain name to redirect Internet users to Complainant’s competitors, presumably
for financial gain, does not constitute 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 Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005)
(finding that the respondent’s use of the <expediate.com> domain name to
redirect Internet users to a website featuring links to travel services that
competed with the complainant was 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 also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using
a confusingly similar domain name to divert Internet users to competing
websites does not represent 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)).
In addition, the Panel finds that Respondent lacks rights
and legitimate interests in the <falconpharmaceuticals.com> domain name pursuant to
Policy ¶ 4(a)(ii) due to Respondent’s WHOIS information explicitly displaying
that the disputed domain name is for sale.
See Cruzeiro Licenciamentos Ltda v. Sallen,
D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do
not exist when one holds a domain name primarily for the purpose of marketing
it to the owner of a corresponding trademark); see also Hewlett-Packard Co.
v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum
July 31, 2000) (finding no rights or legitimate interests where the respondent
registered the domain name with the intention of selling its rights).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant presents evidence that
registrant’s WHOIS
information explicitly displays that
the disputed domain name is for sale.
The Panel finds that this demonstrates Respondent’s primary intent to
sell the disputed domain name, which is evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(i). See
Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that “general offers to sell the domain name, even if no certain price
is demanded, are evidence of bad faith”); see also Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat.
Arb. Forum Sept. 30, 2003) (“Respondent's general offer of
the disputed domain name registration for sale establishes that the domain name
was registered in bad faith under Policy ¶ 4(b)(i).”).
Respondent’s <falconpharmaceuticals.com>
domain name resolves to a website that promotes Complainant’s competitors in
the pharmaceutical industry through click-through links. Such an activity clearly disrupts
Complainant’s business, as Internet users seeking Complainant’s products will
be redirected to Complainant’s competitors.
This qualifies as bad faith registration and use under Policy ¶ 4(b)(iii). See
Respondent is using the disputed domain name to intentionally divert
Internet users to the associated website, which displays third-party links to
competing websites. In cases such as
this, the Panel presumes that Respondent is collecting click-through fees and
attempting to profit by creating a likelihood of confusion between
Complainant’s FALCON mark and the confusingly similar disputed domain name. The Panel finds that Respondent’s use of the
disputed domain name is further evidence of 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
The Panel finds that 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 <falconpharmaceuticals.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: November 25, 2009
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