national arbitration forum

 

DECISION

 

Ferring B.V. v. Growth Marketing

Claim Number: FA1110001412470

 

PARTIES

Complainant is Ferring B.V. (“Complainant”), represented by Arne M. Olson, Illinois, USA. Respondent is Growth Marketing (“Respondent”), South Carolina, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <menopure.com>, registered with GoDaddy.com, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically October 20, 2011; the National Arbitration Forum received payment October 21, 2011.

 

On October 21, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <menopure.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and 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 21, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 10, 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@menopure.com.  Also on October 21, 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 November 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 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.    The domain name that Respondent registered, <menopure.com>, is confusingly similar to Complainant’s MENOPUR mark.

 

2.    Respondent has no rights to or legitimate interests in the <menopure.com> domain name.

 

3.    Respondent registered and used the <menopure.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Ferring B.V, is the owner of the registration with the United States Patent and Trademark Office (“USPTO”) for the MENOPUR mark (Reg. No. 2,989,995 registered August 30, 2005). Complainant uses its MENOPUR mark in connection with pharmaceuticals for the treatment of infertility.

 

Respondent, Growth Marketing, registered the disputed domain name May 4, 2010, some five years after Complainant obtained its registration. The <menopure.com> domain name resolves to a parked website that displays advertisements and links that are unrelated to the Complainant’s business conducted under the MENOPUR mark.

 

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."

 

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 to 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 to and/or Confusingly Similar

 

Complainant argues that it has rights in the MENOPUR mark. Proof of the registration of the MENOPUR mark (Reg. No. 2,989,995 registered August 30, 2005) with the USPTO has been provided to the Panel by Complainant. The Panel finds that Complainant’s registration of the MENOPUR mark with a federal trademark authority establishes its rights in the mark pursuant to Policy ¶ 4(a)(i). 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 Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).

 

Complainant contends that the <menopure.com> domain name is confusingly similar to its MENOPUR mark. Respondent has fully-incorporated Complainant’s mark within the disputed domain name and simply added the letter “e” to follow Complainant’s mark. The Panel finds that this change does not distinguish the domain name from Complainant’s mark, but rather increases the confusing similarity. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also 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).”).  As is necessary for all domain names, this Respondent added the generic top-level domain (“gTLD”) “.com” to the <menopure.com> domain name. The Panel finds that addition of a gTLD is irrelevant for the purposes of  an analysis under Policy ¶ 4(a)(i). 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); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel finds that Respondent made insufficient changes in the domain name that uses Complainant’s protected mark in its entirety to distinguish the disputed domain name from Complainant’s mark.

 

The Panel finds that the disputed <menopure.com> domain name is confusingly similar to Complainant’s MENOPUR mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Where Complainant has made a prima facie case to support its allegations, the burden of proof shifts to the Respondent to show that it does have such rights or legitimate interests. 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)); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”).

 

Where, however, Respondent does not submit a Response to the Complaint, the Panel may make an inference that Respondent has no such rights or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation supports a finding for the complainant). Complainant asserts that Respondent has neither rights nor legitimate interests in the disputed domain name. The Panel finds that this assertion has been supported by Complainant with evidence amounting to a prima facie case. However, the Panel still reviews the record, according to Policy ¶ 4(c), to determine whether evidence there suggests that Respondent has such rights or interests. The Panel finds that Respondent has not shown rights or legitimate interests in the <menopure.com> domain name under this section.

 

A finding that a respondent is commonly known by a disputed domain name may confer rights or legitimate interests relative to the domain name. Complainant argues that Respondent is not commonly known by the disputed domain name. Complainant maintains that it has not licensed, authorized, or in any other way permitted Respondent to use its MENOPUR mark in any fashion. Complainant additionally asserts that the WHOIS listing for the <menopure.com> domain name demonstrates that Respondent is not commonly known by the disputed domain name. The WHOIS record lists “Growth Marketing” as the domain name registrant. The Panel finds that the information available, including the WHOIS record and Complainant’s claims, demonstrates that Respondent is not commonly known by the <menopure.com> domain name pursuant to 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 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). The Respondent is not shown to have rights or interests under this section.

 

Complainant additionally submits that Respondent’s use of the <menopure.com> domain name is evidence of Respondent’s lack of rights and legitimate interests. Panels have found previously, in Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007), and Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003), that the display of unrelated links is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Complainant uses the disputed domain name to resolve to a parked page, which displays links and advertisements to goods and services unrelated to Complainant’s business under the MENOPUR mark in the infertility pharmaceutical market. Therefore, the Panel finds that Respondent’s use of the <menopure.com> domain name does not qualify as a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.  Respondent is not shown to have rights or interests under this section.

 

Complainant next argues that Respondent has, in registering the <menopure.com> domain name, engaged in typosquatting. Where it is found that a respondent has practiced typosquatting, panels have found that this indicates a lack of rights and legitimate interests on the part of the Respondent. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain name vis á vis the complainant). The <menopure.com> domain name contains Complainant’s MENOPUR mark and the letter “e.” The last letter of Complainant’s mark and the letter “e” sit next to one another on a QWERTY keyboard. The Panel finds that addition of a single letter, especially one in such close proximity on a keyboard that likely provides the highest margin of error, is a clear case of typosquatting. Additionally, the Panel finds that Respondent’s practice of typosquatting regarding the <menopure.com> domain name is further evidence of its lack of rights or legitimate interests in the disputed domain name under a Policy ¶ 4(a)(ii) analysis.

 

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).

 

Registration and Use in Bad Faith

 

Complainant also alleges that Respondent’s registration and use of the <menopure.com> domain name were done in bad faith. The disputed domain name is confusingly similar to the MENOPUR mark. This alone is certain to confuse Internet users who come upon the <menopure.com> domain name when seeking Complainant as to the source, sponsorship, or affiliation of the <menopure.com> domain name. Once having entered the resolving website, this confusion will increase due to the differences in the content of the unrelated links. The Panel makes an inference that these links generate click-through fees for Respondent when Internet users navigate through them. Given the minor deviation from Complainant’s mark, Internet users will assume that the <menopure.com> domain name is associated with Respondent, click through the links, and subsequently allow Respondent to profit from the registration and use of the infringing <menopure.com> domain name. The Panel thus finds that Respondent’s registration and use of the disputed domain name was done in order to profit from Internet users’ confusion regarding the source of the <menopure.com> domain name 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).

 

Lastly, Complainant urges that Respondent, having typosquatted, demonstrated its bad faith registration and use of the disputed domain name. Previous panels have found that where typosquatting is identified, it renders the registration and use of the disputed domain name as actions done in bad faith. See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.). Having already established that Respondent engaged in typosquatting concerning the <menopure.com> domain name, the Panel finds that Respondent’s actions further illustrate Respondent’s bad faith registration and use of the <menopure.com> domain name pursuant to Policy ¶ 4(a)(iii).

 

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).

 

DECISION

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

 

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

 

Hon. Carolyn Marks Johnson, Panelist

Dated:  November 22, 2011.  

 

 

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