national arbitration forum

 

DECISION

 

Abbott Laboratories v. Janice Liburd

Claim Number: FA1101001367739

 

PARTIES

Complainant is Abbott Laboratories (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA.  Respondent is Janice Liburd (“Respondent”), Panama.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <slimilac.com>, registered with Moniker Online Services, Inc.

 

PANEL

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.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 15, 2011; the National Arbitration Forum received payment on January 20, 2011.

 

On January 19, 2011, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <slimilac.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the names.  Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 20, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 9, 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@slimilac.com.  Also on January 20, 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 11, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.                  This dispute concerns the domain name identified below:

 

Domain                                                                      Creation Date                                   

<slimilac.com>                                                           October 18, 2010

 

 

Factual and Legal Grounds

 

2.                  As set forth more fully below, the Complainant own certain trademarks and make extensive use of them such that they have become famous.

 

(a)                Complainant Abbott Owns Its Marks. Complainant Abbott is the owner of the distinctive and well known SIMILAC trademarks and their corresponding logos (the “SIMILAC Marks”).  For many years, and long prior to the creation of the applicable Disputed Domains, Complainant commenced use of the SIMILAC Marks in connection with the creation, production, advertising, distribution and sale of nutritional products for infants and other products and services related thereto.  Since the inception of each of the SIMILAC Marks, Complainant Abbott has continually used such Marks in interstate and international commerce.

 

(b)               The SIMILAC Marks Are Extensively Used, Promoted and Protected. Founded in 1888 by Dr. Wallace Abbott, a Chicago physician, Complainant Abbott is now a global, broad-based health care company that researches, develops, manufactures and markets human and animal directed products and services that span the continuum – from prevention and diagnosis to treatment and cure. Abbott's principal businesses are pharmaceuticals, nutritional and medical products, including diagnostics and cardiovascular devices. Abbott serves customers in more than 130 countries, with an employee base of nearly 90,000 at more than 100 manufacturing, distribution, research and development, and other locations around the world.  In its fiscal year ending November 15, 2009, the Abbott family of companies reported record revenues of US$30.8 billion.

 

Complainant Abbott extensively promotes its SIMILAC Marks through worldwide print, web, and trade show advertising. Complainant is also the recipient of numerous accolades including being named Fortune's® Most Admired Company for pharmaceuticals in 2010; recognition with top innovation awards from both The Wall Street Journal and The Scientist magazine in 2009; the 2009 Chicago Innovation Awards for HIV testing; the Shanghai Charity Foundation Appreciation Award in 2008 for earthquake relief efforts; being named one of the 10 Best Companies for Corporate Citizenship in Brazil by Gestão and RH Editora magazine in 2007; and receiving a 2001 Illinois Governor's Family Investment Award for its work/life employment initiatives. Under the name of the “Abbott Fund” and other vehicles, the company also supports an extensive, worldwide global citizenship program through which it advances medical innovation for neglected diseases, such as malaria and tuberculosis, addresses unmet health needs in developing nations, and provides a variety of patient assistance programs.  Abbott also strives to address the global challenges of climate change and water scarcity by reducing its environmental impact through ongoing energy efficiency improvement programs around the globe.

 

Complainant Abbott generates significant sales revenue as a result of the advertising and marketing it conducts on its various website including <similac.com> among others. Through these domains, Complainant provides information to prospective customers around the world in many different languages.  As a result of Complainant Abbott’s long usage and promotion of the SIMILAC Marks, they have become well-known to, and widely recognized by consumers. 

 

The SIMILAC Marks are aggressively protected through registration and enforcement. Complainant Abbott owns many trademark registrations for the SIMILAC Marks throughout the world, including United States Federal Trademark Registrations as follows:

 

Mark

Goods and Services

Reg. No.

Reg. Date

SIMILAC

IC 030. US 046. G & S: DIET FOR INFANTS. FIRST USE: 19261207. FIRST USE IN COMMERCE: 19261207

0227046

April 26, 1927

SIMILAC NATURAL CARE

C 005. US 018. G & S: BREAST MILK SUPPLEMENT. FIRST USE: 19850129. FIRST USE IN COMMERCE: 19850129

1364092

October 8, 1985

SIMILAC

IC 005. US 006 018 044 046 051 052. G & S: NUTRITIONAL PRODUCTS, NAMELY, INFANT FORMULA AND NON-PRESCRIPTION METABOLIC AND ELECTROLYTE PREPARATIONS FOR INFANTS AND CHILDREN. FIRST USE: 19261207. FIRST USE IN COMMERCE: 19261207

2465112

July 3, 2001

 

3.                  Respondent is a known cybersquatter and is engaged in a pattern of bad faith registration of domain names that are confusingly similar to trademarks in which the Respondent has no rights.  Many prior UDRP decisions, involving well-known trademarks have been successfully brought against Respondent and include:

 

Case No.

Domain(s)

Case Name

Status

Decision Date

1360210 NAF

brainetics.org

Brainetics, LLC v. Janice Liburd

Transferred

10-Jan-2011

1355493 NAF

morganstanelysmithbarney.com

Morgan Stanley and Morgan Stanley Smith Barney Holdings LLC v. Janice Liburd

Transferred

11-Dec-2010

1341427 NAF

qvcshoppingchannel.com

ER Marks, Inc and QVC, Inc. v. Janice Liburd

Transferred

29-Sep-2010

D2010-0859 WIPO

nilfiskusa.com

Nilfisk-Advance A/S v. Moniker Privacy Services [2466703]/Janice Liburd, Porchester Partners, Inc.

Transfer

23-Jul-2010

 

4.                  In the present dispute, Respondent’s registration of the <slimilac.com> domain similarly violates the Policy.

 

(a)                The <slimilac.com> Domain is identical or confusingly similar to the Marks under Policy ¶4(a)(i). Respondent’s <slimilac.com> domain is confusingly similar, on its face, to one or more of Complainant’s registered trademarks.  Searchers will likely be confused into believing that there is a connection of source, sponsorship, affiliation or endorsement between the Complainant’s Marks and Respondent by Respondent’s use of the <slimilac.com> domain.

 

It has been held, in decisions too numerous to mention, that a minor misspelling of a Complainant’s trademark, or the addition of generic or other words creates a confusingly similar domain name.  For example, in DIRECTV, Inc v. Digi Real Estate Foundation, NAF Claim No. FA0702000914942 the Panel found that “Respondent’s <dirtectv.com>, <durectv.com>, <dorecttv.com>, and <dishdirectv.com> domain names are all confusingly similar to Complainant’s DIRECTV mark pursuant to Policy ¶4(a)(i), because Respondent’s domain names each contain Complainant’s mark in its entirety or are simply a misspelled variation of the DIRECTV mark.” In relation to a different domain owned by respondent, the Panel went on to hold that “Respondent’s <dishdirectv.com> domain name contains Complainant’s mark in its entirety and adds the generic word ‘dish.’  Prefixing ‘directv’ with the generic word ‘dish’ does not prevent a finding of confusingly similarity under Policy ¶4(a)(i).”  The Panel held that all of the domains at issue are “likely to cause confusion among customers searching for Complainant’s goods and services.” Similarly, in Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211, the respondent used a minor misspelling of the complainant’s trademark leading the panel to find that “Respondent has chosen the Domain Name precisely to attract users who mistype the name of the complainant’s website.”  Id.  See also, Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., WIPO Case No. D2001-0075 (finding that the domain name  <christiesauction.com> is confusingly similar to the complainant's mark since it merely adds the word “auction” used in its generic sense).

 

Similarly to the above-cited decisions, the Respondent in the present dispute initially attracts searchers to its website by using an identical or confusingly similar copy of the Complainant’s Marks, thereby making visitors to its website think that they are being linked to one of the Complainant’s legitimate sites.  See, Focus Do It All Group v. Athanasios Sermbizis, WIPO Case No. D2000-0923 (Complainant’s trademark rights and use of its mark “make it likely beyond real doubt that consumers who know that mark will think that ‘focus-do-it-all.com’ is their address.  As reasoned in Athanasios, even if searchers discover they are not at  one of Complainant’s sites, searchers may be led to believe that the Complainant endorsed, sponsored or affiliated itself with the goods and services offered at the website of the <slimilac.com> domain.  As in Athanasios, Respondent here uses the Complainant’s Marks in its site’s domain name as well as in the title and body of most of its website.  It only makes sense that if searchers see the Marks listed in the body of the <slimilac.com> domain web page and numerous links to other goods and services are also listed on that page, searchers will be confused and led to believe that, even if the goods and services are not those of Complainant, they are at least affiliated with, endorsed or sponsored by Complainant.

 

(b)       Respondent has no rights or legitimate interest in the <slimilac.com> Domain Under Policy ¶4(a)(ii).  Section 4(c) of the Policy sets out certain circumstances which, if proven by the evidence presented, may demonstrate Respondent’s rights or legitimate interests to the Disputed Domains.  None of these circumstances apply to Respondent in the present dispute.

 

Respondent’s actions are not a bona fide offering of goods or services under Policy ¶4(c)(i).  Through the use of a classic pay-per-click website, Respondent’s domain name diverts Complainant’s customers and potential customers to Respondent’s pay-per-click website and then to other websites which are not associated with Complainant.  (Copies of Respondent’s website, as captured on or about December 29, 2010, are attached at Exhibits F 1-2.)  ICANN panels have found that leading consumers who are searching for a particular business, to a site where the same or similar services provided by others are listed, is not a bona fide use. Homer, TLC Inc. v. Kang, NAF Case No. FA573872 (“Respondent’s use of domain name that is identical to Complainant’s mark to divert Internet users to third-party website for Respondent’s own commercial gain does not constitute a bona fide offering ... or a legitimate noncommercial or fair use ....”).

 

Respondent is not commonly known by the <slimilac.com> domain and so its actions do not fall within Policy ¶4(c)(ii).  Upon information and belief, Respondent is not commonly known by any of Complainant’s Marks, nor does Respondent operate a business or other organization under such marks or names and does not own any trademark or service mark rights in these names. See, Dell Inc. v. George Dell and Dell Net Solutions, WIPO Case No. D2004-0512 (Regarding the domain <dellnetsolutions.com> “there is no evidence that the Respondents’ business has been commonly known by that name. Further, the Respondents added terms to the surname to create the disputed domain name.”)

 

Respondent is not making a legitimate noncommercial or fair use of the <slimilac.com> domain without intent for commercial gain, and so its actions do not fall within Policy ¶4(c)(iii).  Instead, Respondent is using the <slimilac.com> domain to confuse and misleadingly divert consumers, or to tarnish the Marks of the Complainant.  In Dr. Ing. h.c. F. Porsche AG v. Limex, LLC, WIPO Case No. D2003-0649 the Panel noted that “The 3 domain names in issue use the PORSCHE trademark to attract potential customers to the generic [auto] loan business.”  The Panel held that such use, in a domain name, of one manufacturer’s trademark to offer products or services relating to goods sold under that trademark and also other manufacturer’s trademarks did not constitute a legitimate or fair use of the domain. Id.

 

Further, in Athanasios, supra, the Panel found that respondent’s use “could in no way be characterized as fair, because consumers would think that they were visiting a site of the Complainant until they found that instead they were in a directory which would do the Complainant potential harm”.  Here, searchers for Complainant’s various goods and services, who found the <slimilac.com> domain, would be confused and think they were visiting a site of the Complainant’s until they discovered that they were in a directory of links to competitors and other goods and services.  Such use cannot be considered fair.  See, Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258 (“While the intention to earn click-through-revenue is not in itself illegitimate, the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use. See for instance L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc. WIPO Case No. D2005-0623.”)

 

Lastly, Respondent’s use has tarnished and diluted the Marks.  Respondent has diminished consumers’ capacity to associate the Marks with the quality products offered under the Marks by the Complainant by using the Marks in association with a directory site which provides links to numerous products and services not associated with or related to the Complainant’s quality branded products.  Respondent’s use creates the very real risk that Complainant’s trademarks are not only being associated with numerous products and services not related to Complainant’s branded products, but also to products and services linked to directory sites over which Complainant has no quality control.

 

(c)        Respondent Registered The <slimilac.com> Domain In Bad Faith Under Policy ¶4(a)(iii).  The Policy clearly explains that bad faith can be found where a Respondent, by using a domain name, intentionally attempts to attract, for commercial gain, Internet searchers to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.  See Policy ¶4(b)(iv).

 

Respondent intentionally used the Marks without consent from Complainant.  Respondent was put on constructive notice of Complainant’s rights in its Marks through Complainant’s extensive prior use of the Marks as well as its various trademark registrations, most of which predate the creation dates of the <slimilac.com> domain.  See, American Funds Distributors, Inc. v. Domain Administration Limited, WIPO Case No. D2007-0950 (“the extensive prior use of that name and the fact that it comprises the dominant part of several U.S. registered trademarks provided constructive knowledge of the Complainant’s trademark rights….”).  Therefore, Respondent knowingly and intentionally used the Marks in violation of Complainant’s rights in its Marks.  Moreover, the content on Respondent’s website at the <slimilac.com> domain reveals that Respondent has actual knowledge of the Marks and Complainant’s goods associated with each and is purposefully trading on the Marks.

 

Respondent is obtaining commercial gain from its use of the website at the <slimilac.com> domain.  This is a directory or “pay-per-click” website providing a listing of hyperlinks, some of which lead to Complainant’s websites and some to the website of Complainant’s competitors.  Upon information and belief, each time a searcher clicks on one of these search links, Respondent receives compensation from the various website owners who are linked through the website of the <slimilac.com> domain.  Most likely, Respondent receives compensation based upon the number of hits the website owners get from being linked to the directory site.  See AllianceBernstein LP v. Texas International Property Associates - NA NA, WIPO Case No. D2008-1230, and Brownells, D2007-1211 (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain). 

 

In, AllianceBernstein the respondent registered the domain name <allaincebernstein.com>, which was indisputably identical to the complainant’s ALLIANCEBERNSTEIN mark.  The domain name led to a search directory website with links to third party vendors, including competitors of complainant.  Id.  The Panel inferred that the respondent received click-through fees by directing users to various commercial website via these links and found that the respondent’s use was for commercial gain and was in bad faith under Policy ¶4(b)(iv).  Id.

 

In Brownells, the respondent  registered the domain name <brwonells.com>, which the panel found to be nearly identical to the complainant’s mark, with two of the letters in the mark reversed.  Brownells, D2007-1211.  The respondent’s website offered links to hunting equipment and related items.  Id.  The panel found that such listing of links were provided purely for respondent’s commercial gain.  Id.

 

Here, Respondent’s generation of click-through fees from its operation of a pay-per-click site under the <slimilac.com> domain alone constitutes commercial gain.  See AllianceBernstein, D2008-1230.  Moreover, similar to the facts in Brownells and AllianceBernstein, Respondent’s use of the domain name and website results in a commercial gain for others by placing links to competitors of Complainant and other individuals, groups or entities on its website.  Just as commercial gain was sought for the respondents in the abovementioned cases, commercial gain was sought by Respondent here for itself and the various website owners who were linked to the web pages of the <slimilac.com> domain.  Respondent’s use of this domain name is commercial because the various companies linked to the directory sites of the <slimilac.com> domain benefit from the subsequent interest and purchases of those searches.  ICANN Panels have held that there only needs to be commercial gain sought by some party for the use to be commercial.  See, Focus Do It All Group v. Athanasios Sermbizis, WIPO Case No. D2000-0923 (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial). 

 

Of course, as the owner of the <slimilac.com> domain, Respondent is entirely and solely responsible for the content of its website.  See, Disney Enterprises, Inc. v. ll, NAF Claim No. FA1007001336979 (2010) (Respondent acted in bad faith, despite its claimed lack of control over the content on its parked, pay-per-click website); MasterCard International Incorporated v. Banu Asum Kilich, WIPO Case No. D2009-1525 (Panel agreed with complainant’s assertion that “as the owner of the disputed domain name, [respondent] is responsible for the contents of the website, regardless of whether a third party profits from the links placed on the website.”

 

Finally, as more fully set forth above, Respondent’s bad faith is demonstrated by its intentional use of the Marks in its domain name to attract Internet searchers by creating a likelihood of confusion with Complainant’s Marks.  See, e.g., DIRECTV, Inc v. Digi Real Estate Foundation.  Thus, all of the factors under Policy ¶4(b)(iv) strongly demonstrate that Respondent has registered and used the <slimilac.com> domain in bad faith.

 

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

 

FINDINGS

Complainant, Abbott Laboratories, owns the exclusive rights to its SIMILAC mark which it uses in connection with the sale, manufacture, and distribution of infant nutritional products.  Complainant also operates the website <similac.com> which is just one of its many sites related to the SIMILAC mark.  Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its SIMILAC mark (e.g., Reg. No. 227,046 issued April 26, 1927).

 

Respondent, Janice Liburd, registered the <slimilac.com> domain name on October 18, 2010.  The disputed domain name resolves to a directory website featuring pay-per-click links.

 

Respondent has been the respondent in various other UDRP proceedings in which the disputed domain names in those cases were transferred from Respondent to the complainants involved.  See Brainetics, LLC v. Janice Liburd – NA NA, FA 1360210 (Nat. Arb. Forum January 10, 2011); see also Morgan Stanley and Morgan Stanley Smith Barney Holdings LLC v. Janice Liburd – NA NA, FA 1355493 (Nat. Arb. Forum December 11, 2010).

 

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 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 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.

 

Identical and/or Confusingly Similar

Complainant contends it has established rights in the SIMILAC mark.  The Panel finds trademark registrations with a governmental trademark agency are sufficient to establish rights in a mark, irrespective of the country in which a respondent operates. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).  Complainant holds multiple trademark registrations with the USPTO for its SIMILAC mark (e.g., Reg. No. 227,046 issued April 26, 1927).  Therefore, the Panel finds Complainant has established rights in the SIMILAC mark pursuant to Policy ¶4(a)(i).

 

Complainant alleges Respondent’s <slimilac.com> domain name is confusingly similar to Complainant’s SIMILAC mark.  The disputed domain name contains Complainant’s entire SIMILAC mark, adds the letter ‘l,’ and adds the generic top-level domain (gTLD) “.com.”  Previous panels have found the addition of a letter and a gTLD do nothing to distinguish a disputed domain name from a complainant’s famous mark. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶4(a)(i).”); see also 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).  Accordingly, the Panel concludes Respondent’s <slimilac.com> domain name is confusingly similar to Complainant’s SIMILAC mark under a Policy ¶4(a)(i) analysis.

 

The Panel finds Policy ¶4(a)(i) is satisfied.

 

Rights or Legitimate Interests

Complainant argues Respondent lacks rights and legitimate interests in the <slimilac.com> domain name.  Earlier panels have asserted a complainant must first make a prima facie case in support of its allegations and then the burden of proof shifts to the respondent to show respondent has rights or legitimate interests under Policy ¶4(a)(ii).  The Panel finds Complainant has made a prima facie case.  Due to Respondent’s failure to respond to the complaint, the Panel is entitled to assume Respondent does not have rights or legitimate interests in the disputed domain name. 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 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 of the complaint.”).  Out of an abundance of caution, the Panel will examine the record to determine if Respondent has rights or legitimate interests in the <slimilac.com> domain name under Policy ¶4(c).

 

The WHOIS information identifies the domain name registrant as “Janice Liburd.”  Complainant contends Respondent is not, and has not ever been, authorized to use the SIMILAC mark.  There is no other evidence being set forth in the record to indicate Respondent is commonly known by the <slimilac.com> domain name.  Accordingly, the Panel infers Respondent has not established rights or legitimate interests pursuant to Policy ¶4(c)(ii). See 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); see also 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).

 

Respondent uses the <slimilac.com> domain name to display a commercial links page, which is unrelated to Complainant’s business.  The Panel finds, in such a context, a pay-per-click site 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 Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)).

 

The Panel finds Policy ¶4(a)(ii) is satisfied.

 

Registration and Use in Bad Faith

Complainant contends Respondent’s use of the <slimilac.com> domain name is a part of a pattern of bad faith use and registration.  Respondent has been the respondent in numerous other UDRP proceedings in which disputed domain names were transferred from Respondent to the complainants in those cases.  See Brainetics, LLC v. Janice Liburd – NA NA, FA 1360210 (Nat. Arb. Forum January 10, 2011); see also Morgan Stanley and Morgan Stanley Smith Barney Holdings LLC v. Janice Liburd – NA NA, FA 1355493 (Nat. Arb. Forum December 11, 2010).  The Panel finds this to be evidence of a pattern of bad faith registration and use of domain names pursuant to 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 Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent has registered numerous domain names that infringe upon the complainant’s marks and in addition, the respondent has registered domain names that infringe upon other entities’ marks).

 

Complainant asserts Respondent uses the confusingly similar <slimilac.com> domain name to attract Internet users who are likely seeking one of Complainant’s official sites.  Respondent likely profits when Internet users, who are confused about the relationship or sponsorship between Respondent and Complainant, click through the links on the disputed domain name.  The Panel finds this creation of confusion in an attempt to commercially gain is evidence of bad faith registration and use under Policy ¶4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶4(b)(iv)); see also The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶4(b)(iv)).

 

The Panel finds Policy ¶4(a)(iii) is satisfied.

 

DECISION

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

 

Accordingly, it is Ordered the <slimilac.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: February 15, 2011

 

 

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