Allergan, Inc. v. Domain Discreet
Claim Number: FA1012001364960
Complainant is Allergan, Inc. (“Complainant”), represented by Kenneth L. Wilton of Seyfarth Shaw, LLP, California, USA. Respondent is Domain Discreet (“Respondent”), Portugal.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lapbandsurgeryflorida.com>, registered with Register.com.
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 23, 2010; the National Arbitration Forum received payment on December 27, 2010.
On December 28, 2010, Register.com confirmed by e-mail to the National Arbitration Forum that the <lapbandsurgeryflorida.com> domain name is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 4, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 24, 2011 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@lapbandsurgeryflorida.com. Also on January 4, 2011, 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 January 26, 2011, 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <lapbandsurgeryflorida.com> domain name is confusingly similar to Complainant’s LAP-BAND mark.
2. Respondent does not have any rights or legitimate interests in the <lapbandsurgeryflorida.com> domain name.
3. Respondent registered and used the <lapbandsurgeryflorida.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Allergan, Inc., is engaged in the development, manufacture, sale and advertising of an extensive array of pharmaceutical, ophthalmic and dermatological products. Since 1993, Complainant and its predecessor-in-interest have marketed a laparoscopic gastric banding device and related services for the treatment of severe obesity. Complainant owns a trademark registration with United States Patent and Trademark Office (“USPTO”) for the LAP-BAND mark, referring to the laparoscopic gastric banding device (Reg. No. 1,937,093 issued November 21, 1995).
Respondent, Domain Discreet, registered the <lapbandsurgeryflorida.com> domain name on January 9, 2010. The disputed domain name resolves to a website that advertises the “medically supervised metabolism and weight management services” provided by Boca Health, a metabolism and weight loss center that does not offer for sale the LAP-BAND system and that is not certified or trained to perform the LAP-BAND system procedure.
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 owns a USPTO trademark registration for the LAP-BAND mark, referring to the laparoscopic gastric banding device (Reg. No. 1,937,093 issued November 21, 1995). The Panel finds that a USPTO trademark registration is sufficient to establish Complainant’s rights in the LAP-BAND mark pursuant to Policy ¶ 4(a)(i), regardless of the country of Respondent’s business or residence. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant alleges that Respondent’s <lapbandsurgeryflorida.com> is confusingly similar to Complainant’s LAP-BAND mark because the disputed domain name makes only the following minor changes to Complainant’s mark: it deletes the hyphen, adds the descriptive and geographic terms “surgery” and “florida,” and appends the generic top-level domain “.com.” The Panel finds that adding descriptive or geographic terms to Complainant’s mark does nothing to change the character of the disputed domain name to prevent confusing similarity. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). The Panel also finds that the deletion of the hyphen and the addition of the gTLD are of no consequence and nevertheless render the disputed domain name confusingly similar to Complainant’s mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to the complainant's mark). The Panel finds that Respondent’s <lapbandsurgeryflorida.com> domain name is confusingly similar to Complainant’s LAP-BAND mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name. According to the requirements of Policy ¶ 4(a)(ii), Complainant must establish a prima facie case against Respondent before the burden shifts to Respondent to demonstrate its rights and legitimate interests in the disputed domain name. In the instant proceedings, the Panel finds that a sufficient prima facie case has been made, to which Respondent has failed to respond. Accordingly, the Panel finds that it is warranted in making any adverse inferences resulting from Complainant’s Complaint and assuming that Respondent’s silence signals a lack of rights and legitimate interests. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondent’s failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations in the complaint.”). Notwithstanding Respondent’s silence, however, the Panel elects to consider all the available evidence presented in light of Policy ¶ 4(c) factors to determine if Respondent possesses any rights and legitimate interests in the disputed domain name.
Complainant argues that it has never licensed or authorized Respondent to use the LAP-BAND mark. The WHOIS information for the <lapbandsurgeryflorida.com> domain name does not reflect that Respondent is commonly known by the disputed domain name. The Panel accordingly finds that Respondent has no rights and legitimate interests in the <lapbandsurgeryflorida.com> domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Complainant asserts that Respondent uses the <lapbandsurgeryflorida.com> domain name to divert users away from information pertaining to Complainant’s LAP-BAND products and services and toward a website advertising the products and services provided by Boca Health. The Panel finds that this intentional diversion while using Complainant’s mark is not consistent with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See eBay Inc. v. Hong D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent uses the <lapbandsurgeryflorida.com> domain name to attract Internet users seeking information on Complainant’s products and services, create confusion as their expectations, and then divert them to an unrelated website that advertises the metabolism and weight-loss services of Boca Health. Complainant also argues that bad faith can be shown by an admission that the <lapbandsurgeryflorida.com> was intentionally registered to divert traffic away from Complainant and to Respondent. Complainant asserts that in its communications with Boca Health about the disputed domain name, Boca Health admitted that it intentionally chose the <lapbandsurgeryflorida.com> domain name to divert Internet users to Boca Health’s website. Complainant argues, and the Panel agrees, that such a scheme shows bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“[T]he Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lapbandsurgeryflorida.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: February 7, 2011
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