Abbott Laboratories v. Kanter Associates SA
Claim Number: FA1101001367741
Complainant is Abbott Laboratories (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Kanter Associates SA (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <simlac.com>, registered with Fabulous.com Pty Ltd.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically January 15, 2011; the National Arbitration Forum received payment January 20, 2011.
On January 18, 2011, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <simlac.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the names. Fabulous.com Pty Ltd verified that Respondent is bound by the Fabulous.com Pty Ltd registration agreement and thereby has agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 27, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 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@simlac.com. Also on January 27, 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 18, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit 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 <simlac.com> domain name is confusingly similar to Complainant’s SIMILAC mark.
2. Respondent has no rights to or legitimate interests in the <simlac.com> domain name.
3. Respondent registered and used the <simlac.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Abbott Laboratories, is a global provider of healthcare, health, and nutrition products for all ages. Complainant owns a family of trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 227,046 issued April 26, 1927) for its SIMILAC mark. Complainant uses this mark to support its nutritional products directed towards new mothers and infants.
Respondent, Kanter Assoc. SA, registered the disputed domain name November 19, 2002. The disputed domain name resolves to a pay-per-click website.
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."
Given 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 will draw such inferences as the Panel 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 to 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 that it has established its rights in the SIMILAC mark by registering that mark with the USPTO(e.g., Reg. No. 227,046 issued April 26, 1927). Registration of a mark with a federal trademark authority is affirmative evidence of a complainant’s rights in the mark. See 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); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Therefore, the Panel finds that Complainant has demonstrated rights in the SIMILAC mark under Policy ¶ 4(a)(i) by registering that mark with a federal trademark authority, the USPTO.
Complainant also urges that Respondent’s <simlac.com> domain name is confusingly similar to Complainant’s SIMILAC mark. The disputed domain name includes the majority of the mark only removing the letter “i,” and adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent has failed to sufficiently differentiate its disputed domain name from Complainant’s SIMILAC mark. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s SIMILAC mark; Complainant has satisfied the elements of ICANN Policy ¶ 4(a)(i).
The Panel finds that Complainant has met its initial burden of proof by making a prima facie case showing that Respondent lacks rights to or legitimate interests in the <simlac.com> domain name. Once Complainant makes a prima facie case to support its allegations, the burden of proof shifts to the respondent to prove that it does in fact have such rights or legitimate interests in the disputed domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). Respondent did not reply to the initial complaint, and this Panel may assume, based on that failure, that Respondent has no rights or legitimate interests in the disputed domain name. 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.”). Nonetheless, this Panel still examines the entire record to determine whether Respondent has rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent is not commonly known by its <simlac.com> domain name. Respondent has offered no evidence to show that it is commonly known by the disputed domain name. The WHOIS information shows that Respondent is not commonly known by the disputed domain name and the Panel accordingly finds that Respondent is not commonly known by the <simlac.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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant also contends the Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the <simlac.com> domain name. Respondent’s disputed domain name resolves to a pay-per-click website. Use of a disputed domain name to resolve to a pay-per-click site is not a bona fide offering of goods or services or a legitimate noncommercial of fair use of the domain name. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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 also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). Therefore, the Panel finds that Respondent is not engaging in a bona fide offering of goods or services and is not making a legitimate noncommercial of fair use of the <simlac.com> domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant also alleges that Respondent acted in bad faith in registering and using a domain name containing Complainant’s protected mark. Complainant asserts that Respondent is gaining commercially from the operation of its <simlac.com> domain name. Respondent’s disputed domain name resolves to a pay-per-click website. Respondent presumably collects fees from the sites it chooses to link on its site. The Panel finds that Respondent is using the disputed domain name for its own commercial gain and this supports findings of bad faith registration and use under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also 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)).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <simlac.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 1, 2011.
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