Abbott Laboratories v. Eric Williams
Claim Number: FA1012001365310
Complainant is Abbott Laboratories (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Eric Williams (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <similacsite.info>, registered with Godaddy.com Inc.
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 December 29, 2010; the National Arbitration Forum received payment on January 7, 2011.
On January 11, 2011, Godaddy.Com Inc. confirmed by e-mail to the National Arbitration Forum that the <similacsite.info> 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 3, 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@similacsite.info. Also on January 14, 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 February 7, 2011, 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 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 <similacsite.info> domain name is confusingly similar to Complainant’s SIMILAC mark.
2. Respondent does not have any rights or legitimate interests in the <similacsite.info> domain name.
3. Respondent registered and used the <similacsite.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Abbott Laboratories, owns the SIMILAC mark and uses the mark in association with the production, distribution, and sale of nutritional products for infants and related products. Complainant holds numerous trademark registrations for its SIMILAC mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 227,046 issued April 26, 1927).
Respondent, Eric Williams, registered the <similacsite.info> domain name on December 16, 2009. The disputed domain name resolves to a directory website which features a number of sponsored links, some of which directly compete with Complainant’s business in infant nutritional products.
Respondent has prior UDRP proceedings that resulted in a finding of bad faith against Respondent and transfer of the disputed domain names to the complainant. See Victoria’s Secret Stores Brand Management, Inc. v. Eric Williams, FA 1334555 (Nat. Arb. Forum Aug. 29, 2010); see also Seiko Epson Corp. and Epson Am., Inc. v. Eric Williams, FA 1290715 (Nat. Arb. Forum Dec. 21, 2009).
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 contends that it has demonstrated rights in its SIMILAC mark. Previously, panels have held that a complainant can establish rights in a mark through federal trademark registration. 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 Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). Here, Complainant holds multiple trademark registrations for its SIMILAC mark with the USPTO (e.g. Reg. No. 227,046 issued Apr. 26, 1927). Therefore, the Panel finds that Complainant has established rights in its SIMILAC mark through trademark registration pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <similacsite.info> domain name is confusingly similar to Complainant’s SIMILAC mark. The disputed domain name incorporates Complainant’s mark in its entirety and merely adds the generic word “site” and the generic top-level domain (“gTLD”) “.info.” The Panel finds that the addition of a generic words does not sufficiently distinguish the disputed domain name from Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). The Panel also finds that the affixation of a gTLD does not sufficiently differentiate the disputed domain name from Complainant’s 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). The Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s SIMILAC mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant asserts that Respondent has no rights and legitimate interests in the disputed domain name. Previous panels have found that once a complainant makes a prima facie case, then the burden shifts to the respondent to prove that it does have rights and legitimate interests. 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.”). Here, Complainant presented a prima facie case in support of its claims against Respondent. Due to Respondent’s failure to respond to the Complaint, the Panel is able to assume that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See 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). However, the Panel will first look to the record to determine whether Respondent has rights or legitimate interests under Policy ¶4(c) before making a decision.
Complainant alleges that Respondent is not commonly known by the <similacsite.info> domain name. The WHOIS information identifies Respondent as “Eric Williams,” which is not similar to the disputed domain name. Complainant maintains that Respondent does not have any right or license to use the SIMILAC mark. The Panel finds that Respondent is not commonly known by the <similacsite.info> domain name under Policy ¶ 4(c)(ii) as there is no evidence in the record indicating otherwise. 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 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).
The disputed domain name resolves to a directory website featuring third-party links to sites, some of which directly compete with Complainant’s line of infant nutritional products. Respondent likely receives click-through fees from these links. The Panel finds that Respondent’s use of Complainant’s mark in the disputed domain name to misdirect Internet users to websites of Complainant’s competitors is not a bona fide offering of good or services under Policy ¶ 4(c)(i) or a noncommercial or legitimate fair use under Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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 also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
Respondent has prior UDRP proceedings that resulted in a finding of bad faith and transfer of the disputed domain names to complainant. See Victoria’s Secret Stores Brand Management, Inc. v. Eric Williams, FA 1334555 (Nat. Arb. Forum Aug. 29, 2010); see also Seiko Epson Corp. and Epson Am., Inc. v. Eric Williams, FA 1290715 (Nat. Arb. Forum Dec. 21, 2009). The Panel finds that Respondent’s prior UDRP proceedings, which resulted in such findings bad faith and transfer, are evidence of a pattern of bad faith use and registration under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 16, 2000) (finding a bad faith pattern of conduct where the respondent registered many domain names unrelated to its business which infringe on famous marks and websites).
Complainant argues that Respondent’s use of the <similacsite.info> domain name disrupts its business. Internets users intending to purchase nutritional products from Complainant may find Respondent’s website as a result of the confusingly similar disputed domain name and be directed to a competitor of Complainant. Users may then purchase similar products from a competitor instead. The Panel finds that Respondent’s use of the disputed domain name does disrupt Complainant’s business which is evidence of bad faith use and registration under Policy ¶ 4(b)(iii). See 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)); 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).
Respondent’s disputed domain name resolves to a directory website listing third-party links to Complainant’s competitors in the field of infant nutrition and related products. The Panel may assume that Respondent receives click-through fees from these previously mentioned links. Internet users searching for Complainant’s website may find Respondent’s website instead and become confused as to Complainant’s sponsorship of, or affiliation with, the disputed domain name, resulting website, and sponsored links. Respondent tries to commercially gain from this confusion and misperception through the receipt of click-through fees. The Panel finds that Respondent’s use of the <similacsite.info> domain name constitutes bad faith use and registration under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also 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).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <similacsite.info> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: February 8, 2011
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