Abbott Endocrine, Inc. v. Kendrick Smith
Claim Number: FA1111001416216
Complainant is Abbott Endocrine, Inc. (“Complainant”), represented by Douglas A. Rettew of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington, D.C., USA. Respondent is Kendrick Smith (“Respondent”), Hawaii, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lupronprostatecancer.com>, registered with GoDaddy.com.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 18, 2011; the National Arbitration Forum received payment on November 18, 2011.
On November 18, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <lupronprostatecancer.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 November 21, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 12, 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@lupronprostatecancer.com. Also on November 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 December 20, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant discovers, develops and manufactures pharmaceutical products ranging from the prevention and diagnosis to treatment and cure of illnesses, including prostate cancer.
Complainant owns a trademark registration on file with the United States Patent and Trademark Office ("USPTO") for its LUPRON mark (Reg. No. 1,357,567, registered September 3, 1985).
Respondent registered the <lupronprostatecancer.com> domain name on July 30, 2010.
Respondent’s domain name resolves to a website that appears to give information about Complainant’s products, but that features an advertisement and links for an unrelated book and unrelated products for sale through <amazon.com>.
Respondent also has the domain name listed for sale at <buydomains.com>.
Respondent’s <lupronprostatecancer.com> domain name is confusingly similar to Complainant’s LUPRON mark.
Respondent does not have any rights to or legitimate interests in the domain name <lupronprostatecancer.com>.
Respondent registered and uses the <lupronprostatecancer.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in its LUPRON trademark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. 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 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.”).
The <lupronprostatecancer.com> domain name is confusingly similar to Com-plainant’s LUPRON mark because it is comprised of Complainant’s mark in its entirety, coupled with the generic or descriptive phrase ‘prostate cancer,’ and the generic top-level domain “.com.” See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating a complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names with the descriptive words "fashion" or "cosmetics" after the trademark of another were confusingly similar to the trademark); further see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of a domain name such as “.net” or “.com” does not affect the domain name for purposes of determining whether it is identical or confusingly similar to the mark of a complainant).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights to or legitimate interests in the <lupronprostatecancer.com> domain name. Complainant is required to make out a prima facie showing in support of this allegation. Once Complainant has produced such a prima facie case, the burden shifts to Respondent to show that it possesses rights to or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), finding that:
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.
To the same effect, see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008).
Complainant has produced a prima facie case under this head of the Policy. Owing to Respondent’s failure to respond to the Complaint filed in this proceeding, we may therefore presume that Respondent does not have any rights to or legitimate interests in the <lupronprostatecancer.com> domain name. See, for example, 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.
See also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests in a contested domain name where a respondent fails to respond to a UDRP complaint).
Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by observing that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the domain name <lupronprostatecancer.com> and that Complainant has not given Respondent permission to use Complainant’s LUPRON trademark. Moreover, the pertinent WHOIS information identifies the registrant of the <lupronprostatecancer.com> domain name only as “Kendrick Smith”, which does not resemble the disputed domain name. On this record we conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in it under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights to or legitimate interests in the domain name <emitmortgage.com> where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it was commonly known by the domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by the disputed domain names, and so had no rights to or legitimate interests in them under Policy ¶ 4(c)(ii), where the pertinent WHOIS information, as well as other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its mark).
We next note that Complainant asserts, without objection from Respondent, that Respondent’s domain name resolves to a website that was evidently created to give the appearance of providing information on Complainant’s products, but which also features reviews of a book that is unrelated to Complainant’s pharmaceutical business, and which features links to websites offering products identified for sale on third-party website <amazon.com>. In the circumstances here presented, we may comfortably presume that Respondent receives referral fees tracing to the visits of Internet users to the websites resolving from those links. Respondent’s use of the domain name in this manner is 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 Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that a respondent had no rights to or legitimate interests in a disputed domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii) where it was used to operate a website featuring links to other sites offering goods and services unrelated to the business of a complainant); see also Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that a respondent did not have rights to or legitimate interests in a domain name where it was used to redirect Internet users to its own website promoting that respondent’s books unrelated to the business of a complainant).
Similarly, Respondent does not contest Complainant’s allegation that Respondent has listed the disputed domain name for sale with the website <buydomains.com>. In light of the circumstances set out above, Respondent’s apparent intent to sell the domain name is further evidence of its lack of rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii). See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests in a disputed domain name where a respondent registered the domain name with the intention of selling it); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that a respondent’s conduct purporting to sell a contested domain name suggested it had no legitimate use for the domain).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent registered and is using the disputed domain name with the evident intent of attracting Internet users to its resolving website, from which it benefits commercially when Internet users employ the links featured on it. Further, Respondent also promotes, and appears to provide reviews for, a prostate cancer treatment book that is unrelated to Complainant, for which Respondent presumably receives commercial benefit. Respondent’s use of the domain name in this manner is evidence of bad faith registration and use of the contested 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 ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where a respondent linked a disputed domain name to another domain name, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain).
Further, Respondent is attempting to sell the contested domain name through the website <buydomains.com>. This is evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(i). See, for example, Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding in the prevailing circum-stances that the attempted sale of a domain name was evidence of bad faith); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):
Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <lupronprostatecancer.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 29, 2011
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