Abbott GmbH &
Claim Number: FA1004001317715
Complainant is Abbott GmbH & Co. KG (“Complainant”), represented by James
F. Struthers, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <myreductil.com>, registered with Eurodns S.A.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 6, 2010.
On April
7, 2010, Eurodns
On April 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 27, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@myreductil.com. Also on April 7, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 3, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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" through submission of a Written Notice, as defined in Rule 1. 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 <myreductil.com> domain name is identical to Complainant’s REDUCTIL mark.
2. Respondent does not have any rights or legitimate interests in the <myreductil.com> domain name.
3. Respondent registered and used the <myreductil.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant,
Abbott GmbH &
Respondent, My Reductil, registered the <myreductil.com> domain name on September 5, 2008. Respondent’s disputed domain name resolves to a website that contains Complainant’s mark and logo, and displays replicas of Complainant’s product images related to its mark. Respondent’s disputed domain name also displays links to Respondent’s official website, which offers products that compete 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.
Complainant asserts it has rights in its mark due to its
registration of its REDUCTIL mark with the UKIPO
(Reg. No. 1,560,719 issued November 4, 1994).
The Panel finds that this UKIPO registration
is sufficient to establish Complainant’s rights in the mark pursuant to Policy
¶ 4(a)(i). See The
Royal Bank of Scot. Group plc, Direct Line Ins. plc, & Privilege Ins. Co.
Ltd. v. Demand Domains, c/o C.S.C., FA 714952 (Nat. Arb. Forum August
2, 2006) (holding that registration of the PRIVILEGE mark with the
Complainant asserts that Respondent’s <myreductil.com> domain name is
confusingly similar to Complainant’s REDUCTIL mark. Respondent’s disputed
domain name merely adds the generic term “my” and the generic top-level domain
“.com” to Complainant’s mark. The Panel finds that these alterations are
insufficient to distinguish the disputed domain name from Complainant’s mark.
Therefore, the Panel finds Respondent’s <myreductil.com>
domain name is confusingly similar to Complainant’s REDUCTIL mark pursuant to
Policy ¶ 4(a)(i). See
NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000)
(finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT
as a prominent part thereof, is confusingly similar to the Complainant’s trade
name and trademark NIIT”); see also AOL LLC v. iTech Ent, LLC, FA
726227 (Nat. Arb. Forum July 21, 2006) (finding that the
<theotheraol.com> and <theotheraol.net> domain names were
confusingly similar to the AOL mark, as the addition of common terms to a mark
does not distinguish the domain names from the mark); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb.
Forum Apr. 30, 2007) (“The additions of generic words … and a gTLD renders the
disputed domain name confusingly similar to Complainant’s mark pursuant to
Policy ¶ 4(a)(i).”); see also Abt Elecs.,
Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also
finds that … [the] addition of a generic top-level domain (“gTLD”) is
irrelevant when conducting a Policy ¶ 4(a)(i)
analysis.”).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the <myreductil.com> domain name. Once Complainant has made a prima facie case in support of this allegation, the burden to establish that Respondent has rights or legitimate interests in the disputed domain name shifts to the Respondent, pursuant to Policy ¶ 4(a)(ii). Based on the allegations made in the Complaint, the Panel finds Complainant has established a prima facie case, thus shifting the burden to the Respondent. Since Respondent has not responded to the Complaint, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c). See 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 Policy.”); see also G.D. Searle v Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“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).”).
Complainant asserts Respondent is not licensed or otherwise authorized to use the REDUCTIL mark. The WHOIS information for the <myreductil.com> domain name identifies “My Reductil” as the registrant. Although Respondent appears to be commonly known by the disputed domain name, Respondent has not offered evidence, nor is there evidence in the record, that Respondent is commonly known by the disputed domain name. Without affirmative evidence, the Panel finds that Respondent appears to be but is not commonly known by the disputed domain name and, therefore, lacks rights and legitimate interests in the <myreductil.com> domain name under Policy ¶ 4(c)(ii). See Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’ However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.”); see also Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).
Complainant alleges that Respondent’s <myreductil.com> domain name resolves to a website that links to Respondent’s official website, which offers products that compete with Complainant. The Panel finds that Respondent’s use of the disputed domain name is not 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 Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
Complainant asserts that Respondent’s disputed domain name resolves to a website that contains Complainant’s mark and logo, and displays replicas of Complainant’s product images related to its mark. The Panel finds that Respondent is attempting to pass itself off as Complainant, which does not reflect Respondent’s rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Complainant contends that Respondent is using the <myreductil.com> domain name to redirect Internet users to Respondent’s official website, which offers products that compete with Complainant under its REDUCTIL mark. The Panel finds Respondent’s registration and use of the disputed domain name to direct Internet users to a website in direct competition with Complainant constitutes a disruption of Complainant’s business and qualifies as bad faith registration ad use pursuant to Policy ¶ 4 (b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); see also Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion).
Complainant further contends that Internet users, searching for Complainant’s products related to its REDUCTIL mark, may become confused as to Complainant’s sponsorship or affiliation with the disputed domain name and resolving website. Complainant asserts that the disputed domain name resolves to a website that contains Complainant’s mark and logo, and displays replicas of Complainant’s product images related to its mark. Respondent allegedly attempts to profit from this confusion through its product sales. Therefore, the Panel finds Respondent’s use of the <myreductil.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”); 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)).
Finally, Complainant contends that Respondent is using the <myreductil.com> domain name to pass itself
off as Complainant by resolving to a website that contains Complainant’s mark
and logo, and displays replicas of Complainant’s product images related to its
mark. The Panel finds Respondent’s attempt to pass itself off as Complainant
constitutes bad faith and registration pursuant to Policy ¶ 4(a)(iii). See Monsanto Co. v.
Decepticons, FA 101536
(Nat. Arb. Forum Dec. 18, 2001) (finding that the
respondent's use of <monsantos.com> to misrepresent itself as the
complainant and to provide misleading information to the public
supported a finding of bad faith); see also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat.
Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only
registered Complainant’s famous TARGET mark, but “reproduced . . .
Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red
bull’s eye [at the domain name] . . . to a point of being indistinguishable
from the original.”).
The Panel finds that Policy ¶ 4(a)(iii) is 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 <myreductil.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: May 5, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum