Glaxo Group Limited v. Yunsung Yunsung / Dotiz Interactive
Claim Number: FA1406001563490
Complainant is Glaxo Group Limited (“Complainant”), represented by Tiffani D. Otey of Womble Carlyle Sandridge & Rice PLLC, North Carolina, USA. Respondent is Yunsung Yunsung / Dotiz Interactive (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <flixonase.com>, registered with Bizcn.com,Inc.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 9, 2014; the National Arbitration Forum received payment on June 9, 2014.
On June 9, 2014, Bizcn.com,Inc. confirmed by e-mail to the National Arbitration Forum that the <flixonase.com> domain name is registered with Bizcn.com,Inc. and that Respondent is the current registrant of the name. Bizcn.com,Inc. has verified that Respondent is bound by the Bizcn.com,Inc. 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 June 10, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 30, 2014 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@flixonase.com. Also on June 10, 2014, 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 July 1, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant
a) Complainant is a leading research-based pharmaceutical and healthcare company, developing and supplying medicines to improve patients’ quality of life. Complainant employs more than 97,000 people in over 100 countries.
b) Complainant has rights in the FLIXONASE mark, used in connection with medical and pharmaceutical preparations, including respiratory preparations and substances. Complainant owns a registration for the FLIXONASE mark with the Korean Intellectual Property Office (“KIPO”) (Reg. No. 40-109255 registered May 28, 1990) and with China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 559341registered July 20, 1991).
c) Respondent’s <flixonase.com> domain name is identical to Complainant’s FLIXONASE mark. The disputed domain name incorporates Complainant’s mark in its entirety while only adding the generic top-level domain (“gTLD”) “.com.”
d) Respondent does not have any rights or legitimate interests in the <flixonase.com> domain name.
a. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its FLIXONASE mark in any way.
b. Respondent is using the <flixonase.com> domain name to operate a link farm for pharmaceutical products and medical information, and Complainant presumes Respondent is receiving click-through fees from these links.
e) Respondent registered and is using the <flixonase.com> domain name in bad faith.
a. Respondent has been a party to a previous UDRP proceeding in which Respondent was ordered to transfer the disputed domain name. See Select Appointments (Holdings) Ltd. v. Yunsung Yunsung, Dotiz Interactive, D2008-0536 (WIPO May 29, 2008).
b. Respondent is disrupting Complainant’s business by using the <flixonase.com> domain name to display competing third-party links regarding pharmaceutical products.
c. Respondent is using the <flixonase.com> domain name to attract and mislead Internet users for Respondent’s own commercial gain.
d. Respondent had knowledge of Complainant’s FLIXONASE mark prior to registering the <flixonase.com> domain name because of Complainant’s trademark registrations.
Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, Complainant is entitled to the relief requested.
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 asserts that it is a leading research-based pharmaceutical and healthcare company, developing and supplying medicines to improve patients’ quality of life. Complainant contends that it employs more than 97,000 people in over 100 countries. Complainant provides evidence of trademark registration to assert its rights in the FLIXONASE mark, used in connection with medical and pharmaceutical preparations, including respiratory preparations and substances. Complainant provides evidence that it owns a registration for the FLIXONASE mark with the KIPO (Reg. No. 40-109255 registered May 28, 1990) and with the SAIC (Reg. No. 559341registered July 20, 1991). Past panels have found that registration of a mark with the KIPO or SAIC sufficiently demonstrates that the owner of the registration has rights in the mark. See Hershey Chocolate & Confectionery Corp. v. Yao Renfa, FA 1295942 (Nat. Arb. Forum Jan. 18, 2010) (determining that Complainant’s registration of its HERSHEY’S mark with the SAIC demonstrated rights in the mark for purposes of Policy ¶ 4(a)(i)); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world). Past panels have expanded the abundance of such rights by holding that trademark registration satisfies Policy ¶ 4(a)(i) regardless of whether the respondent lives or operates within the jurisdiction where the mark is registered. See 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). Given the findings of past panels and Complainant’s demonstration of trademark registration, the Panel finds that Complainant has rights in the FLIXONASE mark pursuant to Policy ¶ 4(a)(i).
Complainant claims that Respondent’s <flixonase.com> domain name is identical to Complainant’s FLIXONASE mark under Policy ¶ 4(a)(i). Complainant states that the disputed domain name incorporates Complainant’s mark in its entirety while only adding the gTLD “.com.” Past panels have routinely found that the addition of a gTLD is insufficient when conducting an identical analysis. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark). Additionally, Respondent displays Complainant’s entire FLIXONASE mark in the <flixonase.com> domain name. The Panel therefore concludes that Respondent’s <flixonase.com> domain name, varying only by the addition of a gTLD, is identical to Complainant’s FIXONASE mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims that Respondent has no rights or legitimate interests in the <flixonase.com> domain name. Complainant argues that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its FLIXONASE mark in any way. The WHOIS information for the disputed domain name lists “Yunsung Yunsung” as the registrant. Complainant further asserts that it has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s marks. Finally, Complainant adds that Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Given Respondent’s failure to rebut the preceding allegations, the Panel holds that Respondent is not commonly known by the <flixonase.com> domain name within the meaning of Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant further claims that Respondent is using the <flixonase.com> domain name to operate a link farm for pharmaceutical products and medical information, and Complainant presumes Respondent is receiving click-through fees from these links. Complainant’s Exhibits show Respondent’s website used to display links including, “Mucinex Allergy,” “4 Stages of COPD,” “Allergy Symptoms,” “Treatment for Migraines,” and “Online Pharmacy.” These links resolve to advertisements and third-party websites, some of which allegedly offering medical advice. Complainant also presumes that Respondent receives pay-per-click fees from the linked website. Past panels have found that resolving websites that promote links to the complainant and its competitors does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this 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).”). The Panel finds that Respondent is not using the <flixonase.com> domain name to provide 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) by causing the disputed domain name to resolve to a webpage promoting third-parties, products and services that compete with Complainant.
Complainant has proven this element.
Complainant asserts that Respondent registered and is using the <flixonase.com> domain name domain name in bad faith under Policy ¶ 4(a)(ii). Complainant states that Respondent has been a party to previous UDRP proceedings in which Respondent was ordered to transfer the disputed domain name. See Select Appointments (Holdings) Ltd. v. Yunsung Yunsung, Dotiz Interactive, D2008-0536 (WIPO May 29, 2008); see also ED Enterprise AG v. Yunsung Yunsung, D2012-0812 (WIPO June 19, 2012). The Panel determines that the respondent in each of those cases and the Respondent in the present case are in fact one and the same. The Panel holds that Respondent has demonstrated a pattern of registering domain names in bad faith, thereby indicating that Respondent has registered the <flixonase.com> domain name in bad faith, pursuant to Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Complainant next asserts that Respondent is disrupting Complainant’s business by using the <flixonase.com> domain name to display competing third-party links regarding pharmaceutical products. Previous panels have found evidence of bad faith where a respondent provides links to competitors of the complainant through the confusingly similar or identical domain name. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). The Panel finds evidence of bad faith registration and use of the <flixonase.com> domain name under Policy ¶ 4(b)(iii).
Complainant further alleges that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv) by creating a likelihood of confusion with Complainant’s marks and commercially benefitting from that confusion. Again, Complainant accuses Respondent of using the disputed domain names to redirect visitors using the <flixonase.com> domain name, to a website offering links that compete with Complainant’s products and services. Complainant also presumes that Respondent receives some form of consideration for driving traffic to the website. From Respondent’s use of the disputed domain name, the Panel concludes that Respondent intentionally registered this domain name with the goal of creating a false association with Complainant in an attempt to achieve pecuniary gain. The Panel determines that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical to Complainant’s PHOENIX COLLEGE mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <phoenixcollege.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant concludes that Respondent had actual and/or constructive knowledge of Complainant’s FLIXONASE mark prior to registering the <flixonase.com> domain name because of Complainant’s trademark registrations. Past panels have come to a consensus that constructive knowledge alone will not justify a finding of bad faith. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith). However, the Panel finds that Respondent registered the <flixonase.com> domain name with actual knowledge of Complainant’s rights, and the Panel finds bad faith under Policy ¶ 4(a)(iii). See Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant's rights in the mark, and therefore registered the disputed domain name in bad faith, since Complainant's magazine covers an industry towards which Respondent's services are marketed).
Complainant has proven this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <flixonase.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: July 7, 2014
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