BIOPLUS SPECIALTY PHARMACY SERVICES, INC. v. Farridha Khathoon
Claim Number: FA1310001526652
Complainant is BIOPLUS SPECIALTY PHARMACY SERVICES, INC. (“Complainant”), represented by James R. Lussier of Mateer & Harbert, P.A., Florida, USA. Respondent is Farridha Khathoon (“Respondent”), represented by Andrew Ee & Co., Advocate & Solicitor, Singapore.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bioplus.com>, registered with Total Web Solutions Limited trading as TotalRegistrations.
The undersigned, Daniel B. Banks, Jr., as panelist, 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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 25, 2013; the National Arbitration Forum received payment on October 25, 2013.
On October 28, 2013, Total Web Solutions Limited trading as TotalRegistrations confirmed by e-mail to the National Arbitration Forum that the <bioplus.com> domain name is registered with Total Web Solutions Limited trading as TotalRegistrations and that Respondent is the current registrant of the name. Total Web Solutions Limited trading as TotalRegistrations has verified that Respondent is bound by the Total Web Solutions Limited trading as TotalRegistrations 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, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 28, 2013 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@bioplus.com. Also on October 29, 2013, 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.
A timely Response was received and determined to be complete on November 26, 2013.
An Additional Submission was received and determined to be complete on November 30, 2013.
On December 2, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Daniel B. Banks, Jr., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i)
· Complainant has used the BIOPLUS mark in connection with medical services, particularly in the field of disease management through therapy, medication, and treatment. Complainant has registered the BIOPLUS mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,329,227 registered on March 14, 2000).
· Complainant has used the BIOPLUS mark in connection with its specialty service since 1998. See Compl., Decl. of Vogt, Attached as Ex. A. Dr. Vogt founded Complainant in 1988, and since then the business has grown: Complainant employs 100 individuals, and provides care to tens of thousands of patients throughout the United States. The USPTO deemed the BIOPLUS mark to be incontestable under United States law on February 11, 2010.
· The <bioplus.com> domain name is identical to Complainant’s mark.
Policy ¶ 4(a)(ii)
· Respondent is holding the domain name to sell it at an exorbitant price of $20,000.00 USD. See Decl. of Vogt at ¶ 17.
· Respondent at some point used the <bioplus.com> domain name to send Internet users to the <innerbeautythedayspa.com> domain name, but this domain name is no longer in existence and is free for anyone to register.
· Respondent is making no active use of the <bioplus.com> domain name.
Policy ¶ 4(a)(iii)
· Respondent sought to sell the <bioplus.com> domain name for a price in excess of $20,000.
· Respondent at some point used the <bioplus.com> domain name to send Internet users to the <innerbeautythedayspa.com> domain name, but this domain name is no longer in existence and is free for anyone to register.
· Respondent has not provided any active website on the <bioplus.com> domain name for most of the time Respondent has controlled the <bioplus.com> domain name.
Respondent registered this <bioplus.com> domain name on August 11, 2003.
B. Respondent
Policy ¶ 4(a)(ii)
· Respondent has rights in the <bioplus.com> domain name as a result of her registration of the BIO+ mark with the Intellectual Property Office of Singapore (“IPOS”) for Class 3 products: namely, beauty and cosmetic goods (e.g., Reg. No. T0508693E filed on January 23, 2006, registered on April 7, 2006). Respondent is in the business of providing natural and non-intrusive remedies to skin sagging and other facial problems. Respondent is currently in the process of having BIO+ goods approved by Malaysian religious authorities so as to allow the BIO+ goods to gain exposure in Malaysia’s Muslim population. Contrary to Complainant’s misleading and incorrect evidence, Respondent uses the domain name to promote its own legitimate BIO+ business through an e-mail account. See Response, at Attached Exs. FK-14 – FK-16.
· Respondent is using the <bioplus.com> domain name to host its business website for its beauty and cosmetic products. Respondent has expended an estimated $80,000.00 developing its business on the Internet.
Policy ¶ 4(a)(iii)
· Respondent is not engaging in bad faith as it does not operate in the same field as Complainant. Consumers are not fools and they will understand that Respondent’s endeavor to sell Singapore-based cosmetics and beauty products is not a subdivision of Complainant’s American pharmaceuticals operations.
· Respondent bought the domain name from a gentleman known as Shu Hui Huang. As Respondent had no reason to suspect that its independent Singapore-based cosmetics firm would infringe on a trademark used in the United States for medical services, Respondent could not have registered the domain name in bad faith as intended by the Policy.
Reverse Domain Name Hijacking
· Complainant fraudulently represents to this Panel that the <bioplus.com> domain name has no active use, when Respondent is currently operating its BIO+ cosmetic selling business through the domain name’s associated e-mail accounts. A reasonable search of trademark databases would have shown Complainant that Respondent as a Singapore-based business has protection of its BIO+ mark through registration with the IPOS.
C. Additional Submissions
In its Additional Submission, Complainant asserts that Respondent purchased the disputed domain name in February of 2004 and although it may have been used it for a period of time between 2004 and 2012, there is no evidence that it was used to promote a product or service.
That Complainant's position is based on evidence and information that existed prior to the filing of the Complainant. That Respondent has filed evidence that post dates the Complainant and should be ignored.
That Respondent has abandoned the mark in that the business known as Innerbeauty was terminated on March 13, 2013 pursuant to a "Notice of Termination of Business" filed by Respondent.
That Respondent registered a new company on October 31, 2013, after being served with the Forum's Notice of the Complaint.
That the domain name is not in current use by anyone; there is no current use by anyone of the brand Bio+ Beauty Products; there is no current business activity by Farridha Khathoon or a Singapore company called Innerbeauty; and, the disputed domain name website has not been active for years.
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).
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.
The Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(iii), therefore, the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
First of all, Respondent has rights or legitimate interests in the <bioplus.com> domain name pursuant to Policy ¶ 4(a)(ii), as a result of Respondent's registration of the Bio + mark with the Intellectual Property Office of Singapore for Class 3 products, namely beauty and cosmetic goods. Therefore the Panel finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
The Panel further finds that Respondent has not registered or used the <bioplus.com> domain name in bad faith in that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
The only evidence offered by Complainant to support its claim of bad faith is the affidavit of Dr. Stephen C. Vogt, President and CEO of Complainant who states "Approximately 4 years ago, I received an email from someone claiming to be the owner of the domain name www.bioplus.com offering to sell the domain name www.bioplus.com to my company for a price in excess of $20,000..." The "someone" is not named and a copy of the e-mail was not presented in this case. This evidence is not sufficient to satisfy this Panel that there was such an offer from Respondent. There is no other evidence that respondent has engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks; that Respondent is a competitor of Complainant seeking to disrupt Complainant's business; or that Respondent is using the domain name to divert Internet users for commercial gain. As stated above, lack of bona fide use on its on is insufficient to establish bad faith.
REVERSE DOMAIN NAME HIJACKING
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i), and therefore finds that Complainant has not engaged in reverse domain name hijacking. See Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <bioplus.com> domain name REMAIN WITH RESPONDENT.
Daniel B. Banks, Jr., Panelist
Dated: December 10, 2013
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