Abbott GmbH & Co. KG and Abbott Laboratories v. Private Whois Service
Claim Number: FA0912001299338
Complainant is Abbott GmbH & Co. KG and Abbott
Laboratories (“Complainant”),
represented by Molly Buck Richard, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <meridia.com>, registered with Internet.Bs Corp.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 16, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 17, 2009.
On December 17, 2009, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <meridia.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 December 22, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 11, 2010 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@meridia.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 21, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <meridia.com> domain name is identical to Complainant’s MERIDIA mark.
2. Respondent does not have any rights or legitimate interests in the <meridia.com> domain name.
3. Respondent registered and used the <meridia.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Abbott GmbH
& Co. KG and Abbott Laboratories, holds a trademark registration with the
United States Patent and Trademark Office (“USPTO”) for the MERIDIA mark (Reg.
No. 2,106719 issued October 21, 1997) in connection with a pharmaceutical
weight loss drug.
Respondent, Private Whois
Service, acquired the <meridia.com>
domain name on December 4,
2009. The disputed domain name
previously resolved to a website featuring third-party links which directly
competed with Complainant’s business.
The disputed domain name currently resolves to a website featuring
information on
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 asserts rights in its MERIDIA mark through its
holding of a trademark registration for the MERIDIA mark with the USPTO (Reg.
No. 2,106719 issued October 21, 1997). The Panel finds that Complainant has
established rights in the MERIDIA mark under Policy ¶ 4(a)(i) through its
trademark registration 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 Renaissance Hotel Holdings, Inc. v.
Renaissance
Complainant argues that
Respondent’s <meridia.com> domain
name is identical to Complainant’s MERIDIA mark pursuant to Policy ¶
4(a)(i). Respondent’s disputed domain
name contains Complainant’s MERIDIA mark in its entirety and adds the generic
top-level domain (“gTLD”) “.com.” The
Panel finds that the addition of a gTLD does not distinguish a disputed domain
name from a mark. See Abt Elecs.,
Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also
finds that Respondent’s <abt.com> domain
name is identical to Complainant’s ABT mark since addition of a generic
top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i)
analysis.”); see also Snow Fun, Inc. v. O'Connor, FA 96578
(Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name
<termquote.com> is identical to the complainant’s TERMQUOTE mark). Therefore, pursuant to Policy ¶ 4(a)(i), the Panel finds that Respondent’s <meridia.com> domain name is identical to Complainant’s MERIDIA mark.
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or
legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts
to Respondent to prove it has rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint,
the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has
failed to submit a Response to these proceedings. See Swedish Match UK Ltd. v.
Admin, Domain, FA 873137 (Nat.
Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the
burden then shifts to the respondent to demonstrate its rights or legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must
first make a prima facie case that the respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before
the burden shifts to the respondent to show that it does have rights or
legitimate interests in a domain name).
Nevertheless, the Panel will examine the record to determine if
Respondent has rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(c)(ii).
The WHOIS information does not indicate that the registrant is commonly known by the disputed domain name. Complainant alleges that Respondent is not affiliated with Complainant in any way and is not licensed by Complainant to use its mark. Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. Without evidence in the record to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Respondent previously used the <meridia.com> domain name to operate a website that displayed third-party links to businesses that directly competed with Complainant. The Panel finds that this is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 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)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
Respondent’s current use of the <meridia.com> domain name displays information related to
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s previous use of the disputed domain name to link Internet users to a website featuring third-party links which are in competition with Complainant constitutes a disruption of Complainant’s business and constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See 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)(iii) 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); see also 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)).
The Panel finds that Respondent’s previous use of the
disputed domain name to intentionally attract Internet users attempting to
access Complainant’s goods and services and redirect them to the disputed
domain name and profit through the receipt of click-through fees is evidence of
bad faith pursuant to Policy ¶ 4(b)(iv). See
Respondent’s disputed domain name incorporates the entirety of Complainant’s mark leading to confusion regarding the sponsorship of the disputed domain name. Thus, the Panel infers bad faith registration and use in Complainant’s present use of the disputed domain name as well. See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (the panel inferred bad faith use of "cellularonechina.com", because the domain name included Complainant’s entire trademark. In light of Cellular One’s trademark registrations and applications, "it is not possible to conceive of a plausible circumstance in which Respondent could legitimately use the domain name."); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).
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 <meridia.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Date: February 3, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration ForuM