Ferring B.V. v. John Mastrell / ferringpharmaceutical
Claim Number: FA1508001632792
Complainant is Ferring B.V. (“Complainant”), represented by Alissa A. Digman, Illinois, United States. Respondent is John Mastrell / ferringpharmaceutical (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ferringpharmaceutical.com>, registered with Melbourne IT 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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 10, 2015; the Forum received payment on August 11, 2015.
On August 11, 2015, Melbourne IT Ltd confirmed by e-mail to the Forum that the <ferringpharmaceutical.com> domain name is registered with Melbourne IT Ltd and that Respondent is the current registrant of the name. Melbourne IT Ltd has verified that Respondent is bound by the Melbourne IT 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 August 13, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 2, 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@ferringpharmaceutical.com. Also on August 13, 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.
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 that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant owns the FERRING PHARMACEUTICALS mark in connection with its business as a provider of a full line of pharmaceuticals and pharmaceutical preparations for treatment of urological disorders and conditions, diabetes insipidus, enuresis, bed wetting, arthritis, for treatment in the field of infertility, and for use as a diagnostic agent and therapeutic agent for hormonal disorders. Complainant has registered the FERRING PHARMACEUTICALS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,232,088, registered April 24, 2007). The Panel is directed to Attached Annex 2 for copies of Complainant’s USPTO registrations for the mark. These USPTO registrations demonstrate Complainant’s rights in its marks. The <ferringpharmaceutical.com> domain name is confusingly similar to Complainant’s FERRING PHARMACEUTICALS mark as it merely uses the singular form of the word “pharmaceutical” and adds the generic top-level domain (“gTLD”) “.com.” Respondent’s disputed domain name is confusingly similar to Complainant’s FERRING mark as it merely adds the gTLD “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent is not commonly known by the disputed domain name or any derivative of Complainant’s marks, although the WHOIS seems to denote Respondent as such. Second, Respondent has no authorization or license to use Complainant’s marks. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to perpetrate a fraud and pass itself off as Complainant.
Respondent has registered and is using the disputed domain name in bad faith. First, Respondent has disrupted Complainant’s business by using the disputed domain name to create the false impression that Respondent’s use and registration of the disputed domain name was authorized by Complainant. Second, Respondent attempted to pass itself off as Complainant by providing the Registrar with a company name that incorporates the FERRING mark, thereby engaging in conduct proscribed by Policy ¶ 4(a)(iii). Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a Netherlands company that is a provider of pharmaceuticals and pharmaceutical preparations and related goods and services.
2. Complainant is the registered owner of the FERRING PHARMACEUTICALS mark registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,232,088, registered April 24, 2007).
3. The disputed domain name was registered on July 21, 2015.
4. Respondent has used the disputed domain name to perpetrate a fraud and to pass itself off as Complainant.
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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely .Complainant submits that it owns the FERRING PHARMACEUTICALS mark in connection with its business as a provider of a full line of pharmaceuticals and pharmaceutical preparations for treatment of urological disorders and conditions, diabetes insipidus, enuresis, bed wetting, arthritis, for treatment in the field of infertility, and for use as a diagnostic agent and therapeutic agent for hormonal disorders. Complainant has registered the FERRING PHARMACEUTICALS mark with the USPTO (e.g., Reg. No. 3,232,088, registered April 24, 2007). The Panel notes that Attached Annex 2 to the Complaint comprises copies of Complainant’s USPTO registrations. Complainant argues that these USPTO registrations demonstrate Complainant’s rights in its marks. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has demonstrated its rights in its marks for the purposes of Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s FERRING PHARMACEUTICALS mark. Complainant argues that the <ferringpharmaceutical.com> domain name is confusingly similar to Complainant’s FERRING PHARMACEUTICALS mark as it merely uses the singular form of the word “pharmaceutical” and adds the gTLD “.com.” Past panels have found confusing similarity between a complainant’s mark and a respondent’s disputed domain name where the respondent’s domain name simply lacked the letter “s.” See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it). Past panels have also found confusing similarity where a respondent merely added the gTLD “.com” to a complainant’s mark. See AOL Inc. v. Morgan, FA 1349260 (Nat. Arb. Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark). For these reasons, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s marks pursuant to Policy ¶ 4(a) (i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s FERRING PHARMACEUTICALS mark and to use it in its domain name with only the “S” of the trademark being deleted in the domain name;
(b) Respondent registered the disputed domain name on July 21, 2015;
(c) Respondent has used the disputed domain name to perpetrate a fraud and to pass itself off as Complainant;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant alleges that Respondent is not commonly known by the disputed domain name or any variant of Complainant’s marks. Further, Complainant argues that it has not authorized or licensed Respondent to use its marks. The Panel notes that the WHOIS information merely lists “John Mastrell / ferringpharmaceutical” as registrant and that Respondent has failed to submit any evidence for the Panel’s consideration. While Respondent seems commonly known by the terms of the disputed domain name, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name for the purposes of Policy ¶ 4(c)(ii). See City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”);
(f) Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). Complainant argues that Respondent has used the disputed domain name to pass itself off as Complainant by adopting a fictitious persona, company, and email address. In July 2015, a law firm in Denmark was contacted by a company to handle an alleged breach of contract dispute between Complainant and a third party. Using the names “Johan Mastrell” and “John Mastrell” and an email address associated with the disputed domain name, john.mastrell@ferringpharmaceutical.com, Respondent represented to this law firm that Ferring acknowledged that it breached a contract agreement, that Ferring had agreed to settle the matter, and provided the law firm with a bank check for nearly $500,000.00. Past panels have found that it is neither a bona fide offering of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) when the respondent attempts to pass itself off as the complainant. See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”). Therefore, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii);
(g) Complainant alleges that Respondent’s disputed domain name resolves to a blank webpage. Complainant argues that Respondent’s failure to make an active use of the disputed domain name demonstrates that Respondent does not have any rights or legitimate interests in the disputed domain name. The Panel notes Attached Annex 8 for a screenshot of the resolving webpage. Past panels have concluded that a respondent lacked rights or legitimate interests in a disputed domain name where it failed to make any active use of the domain name. See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint). As such, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, the Panel notes again that specific arguments under the various criteria set out in Policy ¶ 4(b) are not mandatory under the Policy, provided that Complainant shows bad faith use and registration in some other manner, as Complainant does in the present case. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
In that regard, Complainant submits that Respondent attempted to pass itself off as Complainant, thereby engaging in conduct proscribed by Policy ¶ 4(a)(iii). Specifically, Complainant argues that Respondent passed itself off as Complainant by causing third parties to believe that Respondent is authorized to enter into contracts and settle disputes on behalf of Complainant, and by providing the Registrar with a company name that incorporates the FERRING PHARMACEUTICALS mark. Past panels have found bad faith under Policy ¶ 4(a)(iii) where a respondent used a disputed domain name to impersonate the complainant. See Smiths Group plc v. Snooks, FA 1372112 (Nat. Arb. Forum Mar. 18, 2011) (finding that the respondent’s attempt to impersonate an employee of the complainant was evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). Accordingly, the Panel accepts Complainant’s arguments and the evidence adduced in support of those arguments and finds that Respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Complainant also contends that Respondent registered the disputed domain name with actual knowledge of Complainant’s marks. Complainant references Respondent’s adoption of an email format similar to that utilized by Complainant and the persona of an actual employee of Complainant’s, “Johan Mastrell.” Past panels have found bad faith where it is clear that the respondent was well-aware of the complainant’s mark at the time of the domain name registration. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). As such, the Panel finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s marks.
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <ferringpharmaceutical.com> domain name using the FERRING PHARMACEUTICALS mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ferringpharmaceutical.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 9, 2015
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