Allergan, Inc. v. tianjinshan
Claim Number: FA1210001468408
Complainant is Allergan, Inc. (“Complainant”), represented by Dana Kang, California, USA. Respondent is tianjinshan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <botoxday.com>, registered with Hangzhou AiMing Network Co., LTD.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 22, 2012; the National Arbitration Forum received payment on October 22, 2012. The Complaint was submitted in both English and Chinese.
On October 23, 2012, Hangzhou AiMing Network Co., LTD confirmed by e-mail to the National Arbitration Forum that the <botoxday.com> domain name is registered with Hangzhou AiMing Network Co., LTD and that Respondent is the current registrant of the names. Hangzhou AiMing Network Co., LTD has verified that Respondent is bound by the Hangzhou AiMing Network Co., LTD 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 29, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of November 19, 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@botoxday.com. Also on October 29, 2012, the Chinese laungage 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 December 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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.
LANGUAGE OF THE PROCEEDINGS
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i. Complainant has not licensed or authorized Respondent to use the BOTOX mark.
ii. Respondent’s disputed domain name resolves to a website located at <www.19gougou.com>, which references lumbar back pain remedies, and is unrelated to any approved indication for the BOTOX product, which is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use under Policy ¶ 4(c)(iii).
i. Respondent has acquired the domain name with the primary purpose of selling the domain name for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name, which constitutes bad faith under Policy ¶ 4(b)(i).
ii. Respondent is using the disputed domain name in a manner that confuses Internet users into believing that Respondent is offering Complainant’s BOTOX product, when it is not, which constitutes bad faith under Policy ¶ 4(b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Allergan, Inc., is a multi-specialty health care company focused on developing and commercializing specialty pharmaceutical, biologics, medical device and over-the-counter products. Complainant has marketed the BOTOX product since 1990. BOTOX is a pharmaceutical product that is used, in its most popular indication, to improve the look of moderate to severe frown lines. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BOTOX marks (e.g., Reg. No. 1,692,384 registered June 9, 1992) and with China’s State Administration for Industry and Commerce (“SAIC”) for the BOTOX marks (e.g., Reg. No. 721,003 registered December 21, 1994).
Respondent, tianjinshan, registered the <botoxday.com> domain name on September 11, 2011. Respondent’s disputed domain name resolves to a website located at <www.19gougou.com>, which references lumbar back pain remedies, and is unrelated to any approved indication for the BOTOX product.
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."
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.
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.”).
Complainant owns trademark registrations for the BOTOX marks with the USPTO (e.g., Reg. No. 1,692,384, registered June 9, 1992) and with the SAIC (e.g., Reg. No. 721,003, registered December 21, 1994). The Panel finds that Complainant’s trademark registrations with the USPTO and SAIC are sufficient to establish its rights in the BOTOX marks pursuant to Policy ¶ 4(a)(i). See Hewlett-Packard Dev. Co., L.P. v. Wu Wenbing, FA 1294944 (Nat. Arb. Forum Dec. 31, 2009) (“The Panel finds Complainant has sufficiently established rights in the HP mark . . . through its numerous registrations with many governmental trademark authorities . . . including the State Intellectual Property Office of the People’s Republic of China . . . and the United States Patent and Trademark Office . . .”).
Respondent’s <botoxday.com> domain name is confusingly similar to Complainant’s BOTOX marks as it incorporates the BOTOX trademark in its entirety and merely adds the generic term “day.” The Panel finds that Respondent’s addition of a generic term does not distinguish the domain name from Complainant’s mark. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark). The gTLD “.com” does not sufficiently differentiate Respondent’s <botoxday.com> domain name from Complainant’s BOTOX marks. The addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Therefore, the Panel finds that Respondent’s <botoxday.com> domain name is confusingly similar to Complainant’s BOTOX marks under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant has not licensed or authorized Respondent to use the BOTOX mark. The WHOIS information identifies “tianjinshan” as the registrant of the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Respondent’s disputed domain name resolves to a website located at <www.19gougou.com>, which references lumbar back pain remedies, and is unrelated to any approved indication for the BOTOX products or marks. Respondent’s website does not include any mention of the BOTOX products or marks. The Panel finds that Respondent’s 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). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Respondent has acquired the domain name with the primary purpose of selling the domain name for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name. After Complainant sent Respondent a cease and desist letter, Respondent offered to sell the domain name to Complainant for $78,500. Respondent registered and is using the disputed domain name with the purpose of selling it, which constitutes bad faith under Policy ¶ 4(b)(i). See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name).
Respondent is using the disputed domain name in a manner that confuses Internet users into believing that Respondent is offering Complainant’s BOTOX product, when it is not. Complainant argues under Policy ¶ 4(a)(ii) that Respondent’s website references back pain remedies and appears to sell such medication through the resolving website. The Panel finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv), by using Complainant’s mark to attract Internet users to Respondent’s website where it advertises and sells unrelated medications and remedies. See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <botoxday.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 20, 2012
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