Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services
Claim Number: FA1505001620342
Complainant is Ferring B.V. (“Complainant”), represented by Arne M. Olson, Illinois, USA. Respondent is Shanshan Huang / Melissa Domain Name Services (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rekovelle.com>, registered with GoDaddy.com, LLC; GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 19, 2015; the Forum received payment on May 20, 2015.
On May 20, 2015, GoDaddy.com, LLC; GoDaddy.com, LLC confirmed by e-mail to the Forum that the <rekovelle.com> domain name is registered with GoDaddy.com, LLC; GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC; GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC; GoDaddy.com, LLC 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 May 26, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 15, 2015 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@rekovelle.com. Also on May 26, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On June 17, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant registered the REKOVELLE mark with the Benelux Office for Intellectual Property (“BOIP”) (see, e.g., Reg. No. 0972232, filed Mar. 20, 2015, registered Mar. 25, 2015). The mark is used on or in connection with the sale of pharmaceutical preparations and substances in the therapeutic area of fertility and/or reproductive health. The <rekovelle.com> domain name is identical to the REKOVELLE mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known as the domain name, nor is Respondent a licensee of Complainant. Further, the domain name resolves to a parked webpage with links to unrelated third parties. Also, Respondent is trying to sell the disputed domain name.
Respondent has engaged in bad faith registration and use. Respondent is attempting to sell the domain name in bad faith and commercially profit from a likelihood of confusion. Further, Respondent has displayed opportunistic bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order canceling or transferring a domain name:
(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 registered the REKOVELLE mark with the BOIP (see, e.g., Reg. No. 0972232, filed Mar. 20, 2015, registered Mar. 25, 2015). The mark is used on or in connection with the sale of pharmaceutical preparations and substances in the therapeutic area of fertility and/or reproductive health. The registration of a mark with a governmental entity or authority is sufficient to establish rights in a trademark. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). Complainant does not need to register its trademark in the country where Respondent operates to enforce its trademark rights under the UDRP. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶4(a)(i)] rights even when Respondent lives or operates in a different country.”). Complainant registered its trademark before Respondent registered the domain name. At this stage of the proceeding, Complainant merely has to show it has SOME rights, not that its rights are superior to Respondent’s rights. Complainant has sufficient rights in the REKOVELLE mark pursuant to Policy ¶4(a)(i).
Complainant claims the <rekovelle.com> domain name is identical to its REKOVELLE mark. Complainant’ entire mark is incorporated into the domain name. The only difference between the domain name and the mark is the addition of the gTLD “.com.” As a general rule, the addition of a gTLD cannot adequately distinguish a domain name from the trademark at issue. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis). The disputed domain name is identical to Complainant’s mark according to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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.”).
Respondent is not commonly known by the disputed domain name, nor does Respondent have licensing rights that would allow it to use the REKOVELLE mark in domain names. “Shanshan Huang” is listed as the registrant of record for the disputed domain name. There is no obvious relationship between the Respondent’s name and the domain name. The record is devoid of any evidence to indicate Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Where there is such a dearth of evidence, Respondent cannot have rights or legitimate interests under Policy ¶4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. The domain name resolves to a parked webpage with unrelated third party links and Respondent is apparently receiving pay-per-click advertising fees. A respondent is generally responsible for the content displayed on a parked webpage, even if a hosting company adds dynamic content to Respondent’s parking page. See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”). Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and Policy ¶4(c)(iii), respectively. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use per Policy ¶¶4(c)(i) and 4(c)(iii).
Respondent has placed a general offer to sell the disputed domain name on its website. The resolving webpage reads “The owner of rekovelle.com is offering it for sale for an asking price of 950 USD!” . Trying to sell a domain name for an amount in excess of demonstrable out of pocket costs can be evidence of a lack of rights or legitimate interests. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶4(a)(ii)). Respondent lacks rights and legitimate interests in the disputed domain name per Policy ¶4(a)(ii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has engaged in bad faith registration and use. Respondent has displayed bad faith under Policy ¶4(b)(i) by registering the domain name with the intent to sell it. The resolving webpage contains a message which reads “The owner of rekovelle.com is offering it for sale for an asking price of 950 USD!” Such an offer indicates bad faith pursuant to Policy ¶4(b)(i) because it exceeds Respondent’s demonstrable out of pocket costs. See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner").
Complainant claims Respondent has displayed bad faith under Policy ¶4(b)(iv) by attempting to commercially profit from a likelihood of confusion. Complainant’s mark is what is called a “fanciful mark”-it has no meaning other than to identify Complainant’s products. Internet users are likely to believe the website resolving from the domain name will be sponsored by or affiliated with Complainant because the disputed domain name is identical to the REKOVELLE mark. Respondent also gets paid from pay-per-click advertising fees. The use of a domain name to create a likelihood of confusion for commercial gain amounts to bad faith under Policy ¶4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Respondent’s actions constitute bad faith registration and use of the domain name under Policy ¶4(b)(iv).
Complainant claims Respondent’s behavior indicates an opportunistic bad faith registration. The disputed domain name was registered just a few days after Complainant filed its registration for the REKOVELLE mark. This Panel agrees Respondent’s behavior indicates an opportunistic bad faith registration, which constitutes adequate evidence of bad faith under Policy ¶4(a)(iii). See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <rekovelle.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, July 1, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page