Ferring B.V. v. Private Whois buymenopuronline.com / Private Whois buypentasaonline.com / Private Whois buypentasa-suppositories.com / Private Whois buypentasaenemaonline.com / Private Whois pentasarectalfoaminfo.com / Private Whois buyrepronex.com
Claim Number: FA1201001424042
Complainant is Ferring B.V. (“Complainant”), represented by Arne M. Olson, Illinois, USA. Respondents are Private Whois buymenopuronline.com / Private Whois buypentasaonline.com / Private Whois buypentasa-suppositories.com / Private Whois buypentasaenemaonline.com / Private Whois pentasarectalfoaminfo.com / Private Whois buyrepronex.com (collectively “Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <buymenopuronline.com>, <buypentasaonline.com>, <buypentasa-suppositories.com>, <buypentasaenemaonline.com>, <pentasarectalfoaminfo.com>, and <buyrepronex.com>, registered with Internet.bs Corp.
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 January 11, 2012; the National Arbitration Forum received payment on January 12, 2012.
On January 11, 2012, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <buymenopuronline.com>, <buypentasaonline.com>, <buypentasa-suppositories.com>, <buypentasaenemaonline.com>, <pentasarectalfoaminfo.com>, and <buyrepronex.com> domain names are registered with Internet.bs Corp. and that Respondent is the current registrant of the names. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 January 18, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 7, 2012 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@buymenopuronline.com, postmaster@buypentasaonline.com, postmaster@buypentasa-suppositories.com, postmaster@buypentasaenemaonline.com, postmaster@pentasarectalfoaminfo.com, and postmaster@buyrepronex.com. Also on January 18, 2012, 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 February 13, 2012, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <buymenopuronline.com> domain name is confusingly similar to Complainant’s MENOPUR mark.
Respondent’s <buypentasaonline.com>, <buypentasa-suppositories.com>, <buypentasaenemaonline.com>, and <pentasarectalfoaminfo.com> domain names are confusingly similar to Complainant’s PENTASA mark.
Respondent’s <buyrepronex.com> domain name is confusingly similar to Complainant’s REPRONEX mark.
2. Respondent does not have any rights or legitimate interests in the <buymenopuronline.com>, <buypentasaonline.com>, <buypentasa-suppositories.com>, <buypentasaenemaonline.com>, <pentasarectalfoaminfo.com>, and <buyrepronex.com> domain names.
3. Respondent registered and used the <buymenopuronline.com>, <buypentasaonline.com>, <buypentasa-suppositories.com>, <buypentasaenemaonline.com>, <pentasarectalfoaminfo.com>, and <buyrepronex.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses its MENOPUR, PENTASA, and REPRONEX marks in connection with its pharmaceutical products. Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its MENOPUR (e.g., Reg. No. 2,989,995 registered August 30, 2005), PENTASA (e.g., Reg. No. 1,279,563 registered May 29, 1984), and REPRONEX marks (e.g., Reg. No. 2,256,371 registered June 29, 1999).
Respondent registered the <buymenopuronline.com>, <buypentasaonline.com>, <buypentasa-suppositories.com>, <buypentasaenemaonline.com>, <pentasarectalfoaminfo.com>, and <buyrepronex.com> domain names no earlier than April 25, 2010. The disputed domain names resolve to a website containing information about Complainant’s business and pharmaceutical products and hyperlink advertisements for Complainant’s competitors.
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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Panel finds that Complainant sufficiently demonstrated that the same entity controls all of the disputed domain names by offering evidence that the disputed domain names were nearly all registered on the same day with the same registrar and privacy shield service.
Complainant alleges rights in its MENOPUR, PENTASA, and REPRONEX marks under Policy ¶ 4(a)(i). Complainant presents the Panel with its USPTO trademark registration certificates for its MENOPUR mark (Reg. No. 2,989,995 registered August 30, 2005), PENTASA mark (e.g., Reg. No. 1,279,563 registered May 29, 1984), and REPRONEX mark (Reg. No. 2,256,371 registered June 29, 1999). The Panel deems Complainant’s USPTO trademark registrations sufficient to establish Complainant’s rights in the MENOPUR, PENTASA, and REPRONEX marks under Policy ¶ 4(a)(i), regardless of whether Respondent resides or operates in a country outside of the United States. 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.”); see also 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).
Respondent’s <buymenopuronline.com> contains Complainant’s MENOPUR mark, the generic terms “buy” and “online,” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that these alterations fail to adequately distinguish the disputed domain name from Complainant’s mark. See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark); 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.”). Consequently, the Panel concludes that Respondent’s <buymenopuronline.com> domain name is confusingly similar to Complainant’s MENOPUR mark pursuant to Policy ¶ 4(a)(i).
Respondent’s <buypentasaonline.com>, <buypentasa-suppositories.com>, <buypentasaenemaonline.com>, and <pentasarectalfoaminfo.com> domain names combine Complainant’s PENTASA mark with the gTLD “.com; the generic or descriptive terms “buy,” “online,” “info,” “suppositories,” “enema,” “rectal,” and/or “foam”; and/or a hyphen. The Panel concludes that the addition of a gTLD, generic or descriptive term, and/or a hyphen fails to remove Respondent’s <buypentasaonline.com>, <buypentasa-suppositories.com>, <buypentasaenemaonline.com>, and <pentasarectalfoaminfo.com> domain names from the realm of confusing similarity for the purposes of Policy ¶ 4(a)(i). See 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); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"). The Panel therefore finds that Respondent’s <buypentasaonline.com>, <buypentasa-suppositories.com>, <buypentasaenemaonline.com>, and <pentasarectalfoaminfo.com> domain names are confusingly similar to Complainant’s PENTASA mark pursuant to Policy ¶ 4(a)(i).
Finally, the Panel concludes that Respondent’s <buyrepronex.com> domain name is confusingly similar to Complainant’s REPRONEX mark under Policy ¶ 4(a)(i) because the disputed domain name only adds the generic term “buy” and the gTLD “.com” to Complainant’s mark. See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent does not have any rights or legitimate interests in the disputed domain names. The burden shifts to Respondent to prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the disputed domain names. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). See 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.”); see also 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).
Respondent did not respond to this case and, therefore, did not present the Panel with any evidence that it is commonly known by any of the disputed domain names. To the contrary, the Panel examined the WHOIS information and finds that the WHOIS information does not indicate that Respondent is commonly known by any of the disputed domain names. Moreover, Complainant never authorized, contracted, licensed, or otherwise permitted Respondent to use Complainant’s MENOPUR, PENTASA, or REPRONEX marks. Consequently, the Panel holds that Respondent is not commonly known by the <buymenopuronline.com>, <buypentasaonline.com>, <buypentasa-suppositories.com>, <buypentasaenemaonline.com>, <pentasarectalfoaminfo.com>, and <buyrepronex.com> domain names 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 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).
Respondent uses the disputed domain names to resolve to websites that provide information about Complainant’s pharmaceutical products. Aside from this information found on the resolving websites, Respondent also places a large hyperlink advertisement for North West Pharmacy at the top and bottom of the resolving website. The hyperlinks resolve to <northwestpharmacy.com> where Complainant’s and Complainant’s competitors’ products are sold. Based on this use of the disputed domain names to host a competing hyperlink, the Panel concludes that Respondent makes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <buymenopuronline.com>, <buypentasaonline.com>, <buypentasa-suppositories.com>, <buypentasaenemaonline.com>, <pentasarectalfoaminfo.com>, and <buyrepronex.com> domain names. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds Policy ¶ 4(a)(ii) is satisfied.
Respondent registered and uses four domain names incorporating Complainant’s PENTASA mark. The Panel determines that Respondent’s registration of the four confusingly similar disputed domain names demonstrates a pattern of bad faith registration and use of the <buypentasaonline.com>, <buypentasa-suppositories.com>, <buypentasaenemaonline.com>, <pentasarectalfoaminfo.com> domain names.according to Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Albertson's, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) in the respondent’s registration of the <albertsonscoupons.com> and <albertsons-coupons.com> domain names because the respondent “registered the domain names in order to prevent Complainant from registering its common law ALBERTSON’S COUPON mark in a corresponding domain name”).
Respondent’s disputed domain names resolve to websites that feature information about Complainant’s products and a large hyperlink advertisement that resolves to a website selling Complainant’s pharmaceutical products and the pharmaceutical products of Complainant’s competitors. The Panel presumes that such a use disrupts Complainant’s pharmaceutical business. Therefore, the Panel concludes that Respondent registered and uses the <buymenopuronline.com>, <buypentasaonline.com>, <buypentasa-suppositories.com>, <buypentasaenemaonline.com>, <pentasarectalfoaminfo.com>, and <buyrepronex.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also 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).
The Panel determines that Respondent registered the disputed domain names because the domain names are confusingly similar to Complainant’s marks. Respondent attempts to create confusion as to Complainant’s affiliation with the domain names and the resolving websites by providing information about Complainant’s products. The Panel infers that Respondent attempts to profit from this confusion by receiving a referral fee each time an Internet user clicks on the hyperlink advertisement. Based on this evidence, the Panel holds that Respondent registered and uses the <buymenopuronline.com>, <buypentasaonline.com>, <buypentasa-suppositories.com>, <buypentasaenemaonline.com>, <pentasarectalfoaminfo.com>, and <buyrepronex.com> domain names in bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds Policy ¶ 4(a)(iii) is 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 <buymenopuronline.com>, <buypentasaonline.com>, <buypentasa-suppositories.com>, <buypentasaenemaonline.com>, <pentasarectalfoaminfo.com>, and <buyrepronex.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 23, 2012
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