Ferring B.V. v. IsraMeds
Claim Number: FA1110001410690
Complainant is Ferring B.V. (“Complainant”), represented by Arne M. Olson, Illinois, USA. Respondent is IsraMeds (“Respondent”), Israel.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <buymenopur.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 October 7, 2011; the National Arbitration Forum received payment on October 10, 2011.
On October 7, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <buymenopur.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 October 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 31, 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@buymenopur.com. Also on October 11, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 November 7, 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 <buymenopur.com> domain name is confusingly similar to Complainant’s MENOPUR mark.
2. Respondent does not have any rights or legitimate interests in the <buymenopur.com> domain name.
3. Respondent registered and used the <buymenopur.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ferring B.V., claims rights in the MENOPUR mark. Complainant has registered the mark with numerous trademark authorities, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,989,995 registered August 30, 2005) and the Israel Trademark Office (“ITO”) (Reg. No. 218,012 registered August 8, 2010). Complainant uses this mark in connection with the sale of pharmaceuticals for treatment in the field of fertility.
Respondent, IsraMeds, registered the <buymenopur.com> domain name on May 15, 2011. The disputed domain name redirects visitors to an online pharmacy found at the <isrameds.com> domain name. This online pharmacy sells Complainant’s products and is presumably run by Respondent.
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 claims rights in the MENOPUR mark based on its numerous trademark registrations, including registration with the USPTO (e.g., Reg. No. 2,989,995 registered August 30, 2005) and the Israel Trademark Office (“ITO”) (Reg. No. 218,012 registered August 8, 2010). Previous panels have agreed that registration of a mark with a national trademark agency is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s national trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). The Panel concludes that Complainant has established rights in the MENOPUR mark under Policy ¶ 4(a)(i).
Complainant urges that the Panel find the disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). The disputed domain name wholly includes Complainant’s MENOPUR mark, adding only the generic term “buy” and the generic top-level domain (“gTLD”) “.com.” UDRP precedent is clear that neither of these changes can distinguish a disputed domain name under Policy ¶ 4(a)(i). See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The Panel holds that the disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Policy ¶ 4(c) requires Complainant to first present a prima facie case in order to shift the burden to Respondent. 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)). In the immediate case, Complainant has satisfied its burden, while Respondent has not. Some panels have viewed this as per se evidence that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). 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). For the sake of fairness, however, the Panel will continue to examine the record to determine whether such rights or legitimate interests do in fact exist under Policy ¶ 4(c).
In alleging that Respondent is not commonly known by the disputed domain name, Complainant states that it has never authorized, licensed, contracted, or otherwise permitted Respondent’s use of the MENOPUR mark. The relevant WHOIS information identifies the domain name registrant as “IsraMeds,” which the Panel finds to bear no resemblance to the <buymenopur.com> domain name. Because Respondent has failed to submit a Response, there is no other evidence in the record to support the idea that Respondent is commonly known by the disputed domain name. Based on the foregoing, the Panel must conclude that Respondent is not commonly known by the disputed domain name for the purposes of Policy ¶ 4(c)(ii). See 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant also alleges that Respondent’s use of the disputed domain name cannot be properly considered 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 disputed domain name redirects visitors to a competing online pharmacy, presumably run by Respondent, that sells Complainant’s products. The Panel finds that the operation of competing business that sells Complainant’s without Complainant’s authorization does not constitute a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”).
The Panel finds Policy ¶ 4(a)(ii) to be satisfied.
Complainant argues that Respondent’s conduct evidences a pattern of bad faith registrations and use of disputed domain names. Complainant states that Respondent currently owns another domain name not currently a part of this dispute, <buybravelle.com>, which also diverts Internet users to its online pharmacy website and incorporates a mark not currently being asserted in this action, BRAVELLE. As the <buybravelle.com> domain name is not a part of this dispute and Complainant does not present evidence that a UDRP panel found Respondent registered and used the <buybravelle.com> domain name in bad faith, this Panel finds that Respondent is not guilty of bad faith registration and use under Policy ¶ 4(b)(ii).
Complainant contends that Respondent’s registration and use of the disputed domain name disrupts its business in bad faith under Policy ¶ 4(b)(iii). The Panel holds that Respondent’s use of a confusingly similar domain name to divert Internet users away from Complainant’s website and instead redirect them to a competing website that sells Complainant’s products constitutes bad faith disruption 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 G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).
Complainant further contends that Respondent’s registration and use of the disputed domain name represents bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). By using a confusingly similar domain name, Respondent creates confusion as to Complainant’s endorsement of, or affiliation with, the disputed domain name. Respondent relies on this confusion to drive traffic to its website, which houses a competing online pharmacy service. Respondent presumably profits from the operation of its online pharmacy. The commercial gain Respondent realizes, therefore, is dependant on the confusion it creates as to Complainant’s affiliation with the disputed domain name. The Panel holds that registration and use for this purpose represents bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); 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).”).
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the MENOPUR mark. While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, the Panel may nonetheless find that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). The Panel finds that Complainant has proven that Respondent has actual knowledge of Complainant's mark and, therefore, that Respondent has registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
The Panel finds Policy ¶ 4(a)(iii) to be satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <buymenopur.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: November 8, 2011
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