Ferring B.V. v GCD PANAMA INC.
Claim Number: FA1106001392930
Complainant is Ferring B.V. (“Complainant”), represented by Arne M. Olson, Illinois, USA. Respondent is GCD PANAMA INC. (“Respondent”), represented by John A. Myers of Taylor McCaffrey LLP, Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <buyeuflexxa.com> and <discounteuflexxa.com>, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 9, 2011; the National Arbitration Forum received payment on June 10, 2011.
On June 13, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <buyeuflexxa.com> and <discounteuflexxa.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. 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 June 20, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 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@buyeuflexxa.com and postmaster@discounteuflexxa.com. Also on June 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 July 13, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <buyeuflexxa.com> and <discounteuflexxa.com> domain names are confusingly similar to Complainant’s EUFLEXXA mark.
2. Respondent does not have any rights or legitimate interests in the <buyeuflexxa.com> and <discounteuflexxa.com> domain name.
3. Respondent registered and used the <buyeuflexxa.com> and <discounteuflexxa.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ferring B.V., is large global pharmaceuticals company. Complainant owns a federal trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,346,569 issued December 4, 2007) for the EUFLEXXA mark. Complainant utilizes the mark as the brand name for an arthritis treatment.
Respondent, GCD PANAMA INC., registered the <buyeuflexxa.com> domain name on April 25, 2010, and the <discounteuflexxa.com> domain name on August 8, 2010. The disputed domain names resolve to a site offering online pharmacy services which compete directly with Complainant’s own product offerings.
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 it has established its rights in the EUFLEXXA mark by registering the mark with the USPTO. Registering a mark with the USPTO will give the registrant rights in the mark within the meaning of Policy ¶ 4(a)(i). 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 Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, the Panel finds Complainant has established its rights in the EUFLEXXA mark under Policy ¶ 4(a)(i) by registering the mark with the USPTO (Reg. No. 3,346,569 issued December 4, 2007).
Complainant also contends Respondent’s disputed domain names are confusingly similar to its EUFLEXXA mark. The disputed domain names both include the entire mark while separately adding the generic terms “buy” and “discount.” The disputed domain names also include the generic top-level domain (“gTLD”) “.com.” The Panel finds Respondent has failed differentiate its disputed domain names from Complainant’s EUFLEXXA mark making the two confusingly similar under Policy ¶ 4(a)(i). See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy); 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.”).
Policy ¶ 4(a)(i) has been established.
Although Complainant bears the initial burden of proof under Policy ¶ 4(a)(ii), that burden has shifted to Respondent because the Panel finds Complainant has made a prima facie case showing Respondent’s lack of rights and legitimate interests in the disputed domain names. 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.”). Because Respondent failed to file a response in this case, the Panel may assume it lacks rights or legitimate interests in the disputed domain names. See American 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.”). However, the Panel will still examine the entire record before making a determination regarding Respondent’s rights or legitimate interests in the disputed domain names according to the factors listed in Policy ¶ 4(c).
Complainant asserts Respondent is not commonly known by the disputed domain names. The WHOIS information does not indicate a connection between Respondent and the disputed domain names and Respondent has offered no evidence to contradict Complainant’s assertion. Thus, the Panel finds Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See 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); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant also asserts Respondent is not engaging in a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. Respondent’s disputed domain names resolve to two separate sites both offering the same services--online pharmacies. The online pharmaceutical function directly competes with Complainant’s own sale of pharmaceutical drugs. Therefore, the Panel finds Respondent is not engaging in a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor is its making a legitiamate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii) because Respondent presumably profits from the sale of goods from the sites. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”)
Policy ¶ 4(a)(ii) has been established.
Complainant argues Respondent is disrupting its business through the use of the disputed domain names. The disputed domain names both resolve to sites which sell goods in direct competition with Complainant’s pharmaceuticals. Internet users may arrive at these sites and then purchase goods from Respondent rather than Complainant. The use of a domain name under these circumstances constitutes evidence of bad faith registration and use under 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 Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <buyeuflexxa.com> and <discounteuflexxa.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 21, 2011
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