Upsher-Smith Laboratories v. Cook Creative Domain Limited / Asiaciti Trust Pacific Limited
Claim Number: FA1107001400146
Complainant is Upsher-Smith Laboratories (“Complainant”), represented by Frances M. Jagla of Leydig, Voit & Mayer, Ltd., Washington, USA. Respondent is Cook Creative Domain Limited / Asiaciti Trust Pacific Limited (“Respondent”), Cook Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <klorcon.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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 25, 2011; the National Arbitration Forum received payment on July 27, 2011.
On July 26, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <klorcon.com> 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 July 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 17, 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@klorcon.com. Also on July 28, 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 August 22, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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 <klorcon.com> domain name is confusingly similar to Complainant’s KLOR-CON mark.
2. Respondent does not have any rights or legitimate interests in the <klorcon.com> domain name.
3. Respondent registered and used the <klorcon.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Upsher-Smith Laboratories, owner of the KLOR-CON mark, has sold its brand of potassium supplements under the KLOR-CON mark since March 16, 1971. Complainant also promotes its goods at its official website <klor-con.com>. Complainant has a trademark registration for the KLOR-CON mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,415,559 registered November 4, 1986).
Respondent, Cook Creative Domain Limited / Asiaciti Trust Pacific Limited, registered the <klorcon.com> domain name on February 18, 2003. The disputed domain name resolves to a website with information about potassium chloride and links to sites in the same pharmaceutical field as Complainant.
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 asserts that it has established rights in the KLOR-CON mark. Past panels have determined that rights in a mark can be established through registration with a trademark authority. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”). Also, as indicated by previous decisions, Complainant is not required to have registered its mark within the country where Respondent resides or operates. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); 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). In the instant case, Complainant has a trademark registration for its KLOR-CON mark with the USPTO (Reg. No. 1,415,559 registered November 4, 1986), which the Panel finds demonstrates Complainant’s rights in the mark under Policy ¶ 4(a)(i).
Complainant also contends that Respondent’s <klorcon.com> domain name is confusingly similar to Complainant’s KLOR-CON mark. The disputed domain name merely changes Complainant’s KLOR-CON mark by deleting the hyphen and adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that deleting punctuation, such as a hyphen, does not help to remove the disputed domain name from the realm of confusing similarity. See 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). Furthermore, the Panel recognizes that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. 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 finds that Respondent’s <klorcon.com> domain name is confusingly similar to Complainant’s KLOR-CON mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant claims that Respondent should be considered as having no rights or legitimate interests in the disputed domain name. In F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007), the panel stated, “Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.” The Panel finds that Complainant has made a prima facie case supporting its claims. Respondent did not submit a response to the Complaint and such a failure can be viewed as evidence that Respondent does not have rights or legitimate interests under Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). Even in light of Respondent’s failure to respond, the Panel looks to the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant maintains that Respondent is not commonly known by the <klorcon.com> domain name. The WHOIS information identifies Respondent as “Cook Creative Domain Limited / Asiaciti Trust Pacific Limited,” which is not similar to the disputed domain name. Moreover, Complainant claims that there is no affiliation between Respondent and Complainant and makes no mention of ever having authorized Respondent to use its KLOR-CON mark within the disputed domain name. The Panel concludes that Respondent is not commonly known by the disputed domain name, according to Policy ¶ 4(c)(ii), as no evidence indicates otherwise. 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 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).
Respondent’s <klorcon.com> domain name resolves to a website that offers information about potassium chloride under the “klorcon” name and contains links to other pharmaceutical sites. Complainants states that Respondent receives click-through fees from these links. The Panel concludes that Respondent’s use of the disputed domain name to operate a pharmaceutical site directing Internet users to Complainant’s competitors and offering unauthorized information about Complainant’s potassium supplements is not a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Skyhawke Techs., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does 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).”).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainants argues that Respondent’s <klorcon.com> domain name diminishes the value and reputation of its KLOR-CON mark as Complainant has no control over how its mark is used or portrayed on the resolving website. Internet users initially intending to purchase Complainant’s pharmaceutical goods may find Respondent’s website and either be misled by the information provided by Respondent under the “klorcon” mark or purchase similar goods from one of the competing third-party links. Given these findings, the Panel determines that Respondent registered and is using the disputed domain name in order to disrupt Complainant’s pharmaceutical business, showing that Respondent acted in bad faith according to Policy ¶ 4(b)(iii). See 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); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business).
The Panel infers that Respondent collects click-through fees from the links on the resolving website. On the resolving website, Respondent features links to pharmaceutical sites in the same field as Complainant and also features information about potassium chloride, similar to the potassium supplements sold by Complainant. The information is offered under the “klorcon” name, which is Complainant’s KLOR-CON mark without the hyphen. Complainant argues that use of the “klorcon” name is similar enough to create a likelihood of confusion as to Complainant’s sponsorship of the website content and affiliation with the third-party links. Respondent tries to profit from this confusion through the click-through fees generated by the pay-per-click links. The Panel concludes that such registration and use is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”); see also Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”).
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 <klorcon.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: September 2, 2011
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