NATIONAL ARBITRATION FORUM

 

DECISION

 

Bayer Schering Pharma AG v. knightleyinc

Claim Number: FA1003001312390

 

PARTIES

Complainant is Bayer Schering Pharma AG, (“Complainant”), Germany, represented by Torsten Bettinger, of Patent-und Rechtsanwälte Bettinger Schneider Schramm.  Respondent is knightleyinc (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <buyyasminonline.us>, registered with Godaddy.com, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 10, 2010; the Forum received a hard copy of the Complaint on March 11, 2010.

 

On March 10, 2010, Godaddy.com, Inc. confirmed by e-mail to the Forum that the <buyyasminonline.us> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name.  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 the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On March 12, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 1, 2010 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

Having received no Response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

 

On April 7, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

1.      Respondent’s <buyyasminonline.us> domain name is confusingly similar to Complainant’s YASMIN mark.

 

2.      Respondent does not have any rights or legitimate interests in the <buyyasminonline.us> domain name.

 

3.      Respondent registered and used the <buyyasminonline.us> domain name in bad faith.

 

B. Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Bayer Schering Pharma AG, is a global provider of health care, nutrition and of medical products comprising 350 companies and 106,000 employees worldwide.  Complainant owns numerous trademark registrations worldwide for its YASMIN mark.  Complainant specifically notes its trademark registration with the United States Patent and Trademark Office (“USPTO”) for its YASMIN mark (e.g., Reg. No. 2,177,963 issued on August 4, 1998).

 

Respondent, knightleycyinc c/o P Knightley, registered the <buyyasminonline.us> domain name on January 13, 2010.  Respondent’s disputed domain name resolves to an online pharmacy that displays and gives information for both Complainant’s products and the products of Complainant’s competitors.

 

DISCUSSION

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 the Complainant's undisputed representations pursuant to Paragraphs 5(f), 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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has established rights in its YASMIN mark for purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO (e.g., Reg. No. 2,177,963 issued on August 4, 1998) as well as Complainant’s trademark registrations with other governmental authorities worldwide.  See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of [UDRP] ¶ 4(a)(i).”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).

 

Complainant argues that the <buyyasminonline.us> domain name is confusingly similar to its YASMIN mark because the disputed domain name contains the YASMIN mark wholly, with the addition of the generic terms “buy” and “online,” and the county-code-top-level domain (“ccTLD”) “.us.”  Complainant contends that the addition of generic terms to its mark does not distinguish the disputed domain name from its YASMIN mark.  The Panel finds that the <buyyasminonline.us> domain name is confusingly similar under Policy ¶ 4(a)(i) because the addition of two generic terms to Complainant’s mark are not distinctive from Complainant’s YASMIN mark.  The Panel further finds that the addition of the ccTLD “.us” is not relevant under Policy ¶ 4(a)(i).  See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); see also Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); see also Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the Policy”).  Therefore, the Panel finds that Respondent’s <buyyasminonline.us> domain name is confusingly similar to Complainant’s YASMIN mark under Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i).          

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent does not have any rights or legitimate interests in the <buyyasminonline.us> domain name.  Complainant is required to make a prima facie case in support of these allegations.  After Complainant has produced a prima facie case the burden of proof shifts to Respondent to show why they have rights or 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 [UDRP] ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also 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 [UDRP].”).  The Panel finds that the Complainant has produced a prima facie case.  Due to the Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any 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 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.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond).

 

The Panel finds that there is no evidence on record that shows that Respondent owns a service mark or trademark for the <buyyasminonline.us> domain name.  Accordingly, the Panel finds that Respondent lacks rights and legitimate interests in the <buyyasminonline.us> domain name under Policy ¶ 4(c)(i).  See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).

 

Complainant submits that it has not granted Respondent permission to use its YASMIN mark, nor should Respondent be considered as being commonly known as the disputed domain name.  The WHOIS information for the <buyyasminonline.us> domain name lists “P Knightley c/o knightleyinc” as the registrant of the domain name.  Respondent has not come forward with any evidence showing that it is commonly known by the disputed domain name.  Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the <buyyasminonline.us> domain name pursuant to Policy ¶ 4(c)(iii).  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).

 

Complainant further argues that Respondent’s use of the disputed domain shows that Respondent lacks rights and legitimate interests in the disputed domain name.  Respondent’s <buyyasminonline.us> domain name resolves to a website that offers pharmaceutical products for sale.  Included for sale are the goods of Complainant’s competitors, as well as Complainant’s goods.  The Panel finds that the above use of the disputed domain name by Respondent is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv).  See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.      

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent’s use of the disputed domain name to display the products of Complainant’s competitors and Complainant results in a disruption to its business.  The Panel finds that Respondent’s use of the confusingly similar <buyyasminonline.us> domain name to sell the products of Complainant and Complainant’s competitors is evidence of bad faith under Policy ¶ 4(b)(iii).  See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).  

 

Complainant contends that Respondent’s use of the confusingly similar <buyyasminonline.us> domain name to attract Internet users to Respondent’s website where it sells the products of Complainant and Complainant’s competitors is evidence of registration and use in bad faith.  The Panel finds it is well established that a Respondent using a domain name that fully incorporates the mark of Complainant to market and sell the products of Complainant’s competitors and those of Complainant is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to UDRP ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); see also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.      

 

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <buyyasminonline.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Karl V. Fink (Ret.), Panelist

Dated: April 21, 2010

 

 

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