Ferring B.V. v. John Thornton / Andrews & Thornton
Claim Number: FA1602001661923
Complainant is Ferring B.V. (“Complainant”), represented by Arne M. Olson, Illinois, USA. Respondent is John Thornton / Andrews & Thornton (“Respondent”), represented by Sean Higgins, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bravellelawsuits.com> and <bravellerecallattorneys.com>, registered with 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 February 19, 2016; the Forum received payment on February 22, 2016.
On February 22, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bravellelawsuits.com> and <bravellerecallattorneys.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the 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 February 23, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 7, 2016 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 email@example.com, and firstname.lastname@example.org. Also on February 23, 2016, 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 April 7, 2016.
On April 11, 2016, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Trademark/Service Mark Information: ICANN Rule 3(b)(viii).
Complainant is the owner of the BRAVELLE trademark for various pharmaceutical preparations throughout the world. It owns a United States trademark registration for the BRAVELLE trademark for "pharmaceutical preparations for human use which stimulates fertility in men and women", which was registered on December 24, 2002.
Complainant is also the owner of over 25 additional trademark registrations for the BRAVELLE trademark throughout the world.
Complainant's rights in the BRAVELLE trademark as shown in the registration and the list are collectively referred to as the "BRAVELLE Trademark."
FACTUAL AND LEGAL GROUNDS
[a.] The Disputed Domain Names are confusingly similar to the BRAVELLE Trademark in which Complainant has rights. UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i).
Respondent's <bravellelawsuits.com> and <bravellerecallattorneys.com> domain names (collectively referred to as "Disputed Domain Names") are identical or confusingly similar to the BRAVELLE Trademark owned by Complainant.
Complainant owns over 30 trademark registrations covering over 70 countries for the BRAVELLE Trademark for pharmaceutical products.
Complainant is also the owner of many domain name registrations incorporating the BRAVELLE Trademark including: <bravelle.com>, <bravelle.info>, <bravelle.net>, and <bravelle.org>. Printouts from the WHOIS database for each of the above referenced domain names collectively referred to as the "BRAVELLE Domain Names."
The <bravelle.com> and <bravelle.net> domain names are redirected to the <ferringfertility.com> domain name, which is owned by a related entity in the United States, Ferring Pharmaceuticals Inc.
The <bravelle.info> and <bravelle.org> domain names are redirected to the <ferring.com> domain name, which is owned by Complainant.
Complainant's trademark registrations for the BRAVELLE Trademark, along with its BRAVELLE Domain Names, establish a prima facie case of Complainant's rights in the BRAVELLE Trademark. See Ferring B.V. v. IsraMeds, FA 1410664 (Nat. Arb. Forum Mar. 10, 2011) (Complainant's BRAVELLE trademark registrations were sufficient to establish rights in the mark pursuant to Policy ¶4(a)(i)); see also Ferring B.V. v. Melrock, Ltd., FA 1451135 (Nat. Arb. Forum Aug. 15, 2012) (Complainant's BRAVELLE trademark registrations were sufficient to establish rights in the mark pursuant to Policy ¶4(a)(i)).
Complainant's rights in the BRAVELLE Trademark predate the registration date of the Disputed Domain Names. Complainant received its first registration for the BRAVELLE Trademark on April 4, 2002. (Benelux Reg. No. 0708758). It received its United States Registration for BRAVELLE on December 24, 2002. (U.S. Reg. No.
2,667,119). Complainant also began registering the BRAVELLE Domain Names in 2001. Over thirteen years after Complainant established rights in the BRAVELLE Trademark, Respondent registered both of Disputed Domain Names on January 14, 2016. Thus, commensurate with Policy ¶4(a)(i), Complainant has established prior rights in the BRAVELLE Trademark through its trademark registrations.
All of the Disputed Domain Names are confusingly similar to the BRAVELLE Trademark as they include the BRAVELLE Trademark in its entirety with merely generic terms. See Ferring B.V. v. Melrock, Ltd., FA 1451135 (Nat. Arb. Forum Aug. 15, 2012) (finding the <bravelleesideeffects.com> domain name confusingly similar to Complainant's BRAVELLE Trademark).
Panelists in the past have found that the addition of pejorative terms to a trademark actually increases a likelihood of confusion, applying the analysis that:
When an Internet user enters a trademark into [a] search engine and 'sucks'-formative domain name is returned as a search result, that user is likely to proceed to the site so identified because of interest or puzzlement created by association of the trademark and the pejorative term. The operator of the website identified by the 'sucks' – formative domain name will have accomplished the objective of diverting the Internet user seeking the trademark holder's website. Bad faith adoption of a trademark, including in a 'sucks'-formative domain name increases the likelihood of a finding of confusing similarity.
HBT Investment, LLC v. Christopher D. Bussing, D-2010-1326 (WIPO Sept. 24, 2010) (citing TPI Holdings, Inc. v. AFX Communications, D2000-1472 (WIPO Sept. 2, 2001)).
While none of the Disputed Domain Names includes "sucks", they include pejorative terms such as "lawsuits" and "recall" with "attorney" intended to entice Internet users looking for Complainant's BRAVELLE product to visit Respondent's Disputed Domain Names. Panelists in the past have found that the addition of "lawsuit" to a trademark make the domain name confusingly similar to the trademark. See Ginn Real Estate Co LLC v. Hilton Wiener, FA 1211342 (Nat. Arb. Forum Aug. 20, 2008); see also Am Int'l Group, Inc. v. Debra Speyer, FA 481751 (Nat. Arb. Forum June 28, 2005). Similar conclusions have been reached by other Panelists with respect to domain names that add terms like "recall" or "class" and "action" to a trademark. See General Motors LLC v. Franklin Lujan, FA 1579458 (Nat. Arb. Forum Oct. 28, 2014) (finding the addition of the terms "recall" and "center" to the GM trademark insufficient to avoid a likelihood of confusion); see also Johnson & Johnson v. Registrant, D-2010-1563 (WIPO Nov. 15, 2010) (finding the domain name <mcneithproductsrecall.com> confusingly similar to the MCNEIL trademark); Fortune Hi-Tech Marketing Inc. v. Phuket Wekib, FA 1412581 (Nat. Arb. Forum Dec. 2, 2011) (finding the <fhtmclassaction.info> domain name confusingly similar to the FHTM mark); SCI Services, Inc. v. E-Cloud Services, LLC, FA 1407828 (Nat. Arb. Forum Nov. 5, 2011) (finding the <saxonmortgageclassaction.com> domain name confusingly similar to the SAXON mark).
All domain names are required to have a top-level domain. Thus, the addition of the generic top level domain ".com" does not distinguish the Disputed Domain Names from the BRAVELLE Trademark. See Ferring B.V. v. IsraMeds, FA 1410664 (Nat. Arb. Forum Mar. 10, 2011).
Thus, Complainant has established that the Disputed Domain Names -<bravellelawsuits.com> and <bravellerecallattorneys.com> - are confusingly similar to the BRAVELLE Trademark as required by Policy ¶4(a)(i).
[b.] Respondent has no rights or legitimate interest in the Disputed Domain Names. UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii).
In late 2015, Ferring Pharmaceuticals determined, through routine quality monitoring, that certain lots of BRAVELLE did not meet potency specifications through the expiration date. In an abundance of caution, Ferring decided to voluntarily remove all BRAVELLE from the U.S. market. The FDA categorized this as a Class III recall, meaning that it considered the potency issue not likely to cause adverse health consequences.
Subsequently, Respondent registered the Disputed Domain Names, which include the BRAVELLE trademark, for Respondent's own commercial gain.
Complainant has never authorized, contracted, licensed, or otherwise permitted Respondent to use the BRAVELLE Trademark, or use the BRAVELLE Trademark in any domain name or any variation thereof. This fact supports a conclusion that Respondent does not have any rights or legitimate interest in the Disputed Domain Names. See Ferring B.V. v. IT Company, FA 1392935 (Nat. Arb. Forum July 26, 2011); Ferring B.V. and Bio-Technology General (Israel) Ltd. v. Johnny Carpela, FA 1080649 and FA 1080654 (Nat. Arb. Forum Nov. 5, 2007).
There is also no evidence that Respondent has ever been commonly known by the term "BRAVELLE", or the <bravellelawsuits.com> and <bravellerecallattorneys.com> domain names. These facts also support a finding that Respondent does not have any rights or legitimate interest in the Disputed Domain Names. See Merck Sharp & Dohme Corp. v.
Bostel, D2015-1703 (WIPO Nov. 10, 2015) (passive use of the <merckrecall.com> domain name failed to create any right or legitimate interests); see also Johnson & Johnson v. Registrant,D2010-1563 (WIPO Nov. 15, 2010) (use of pay-per-click ads on the <mcneilproductsrecall.com> domain name failed to create any right or legitimate interest); Coppertown Drive-Thru Sys., LLC v. Snowden, FA 0715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by <coppertown.com> where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent's lack of rights or legitimate interest in the Disputed Domain Names is further established through its failure to create a bona fide offering of goods or services. The website associated with each of the Disputed Domain Names is a parked domain name containing pay-per-click advertisements. Respondent is likely accruing click-through-fees when Internet users click on these advertisements. See The Weir Group PLC v. MIC, FA 1036495 (Nat. Arb. Forum Aug. 29, 2007). Operation of a website in this manner is not a bona fide offering of goods or services and does not establish a right or legitimate interest in the Disputed Domain Names. See Vance Int’l, Inc. v. Abend, FA 0970871 (Nat. Arb. Forum June 7, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate non-commercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
Complainant has made a prima facie case that Respondent does not have any rights or legitimate interests in the Disputed Domain Names under Policy ¶4(a)(ii).
[c.] Respondent has registered and used the Disputed Domain Names in bad faith. UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii).
Complainant's rights in the BRAVELLE Trademark existed over thirteen years before Respondent used or registered the Disputed Domain Names. This is evidence that Respondent registered and is using the Disputed Domain Names in bad faith.
Respondent has also registered multiple domain names, <bravellelawsuits.com> and <bravellerecallattorneys.com>, which incorporate Complainant's trademark. Registration of multiple domain names incorporating the trademark of another creates a presumption of a pattern of bad faith registration and use to prevent Complainant from reflecting its trademark in corresponding domain names under Policy ¶4(b)(ii). See State Farm Mutual Automobile Insurance Co. v. Fred Sotelo, FA 1008269 (Nat. Arb. Forum July 17, 2007) (respondent had engaged in a pattern of bad faith registration and use under Policy ¶4(b)(ii) as a result of its registration of two domain names incorporating complainant's STATE FARM mark).
The Disputed Domain Names are not being used to offer bona fide goods for sale. Rather, they include numerous advertisements that allow Respondent to profit through click-through-fees. Because the Disputed Domain Names are confusingly similar to the BRAVELLE Trademark, Respondent is likely gaining click-through-fees from Internet users who come across the Disputed Domain Name when looking for Complainant's products offered under BRAVELLE Trademark. As such, Respondent is profiting from the goodwill associated with the BRAVELLE Trademark. Use of the Disputed Domain Names in this manner for commercial gain is evidence of use and registration in bad faith under Policy ¶4(b)(iv). See Merck Sharp & Dohme Corp. v. Bostel, D2015-1703 (WIPO Nov. 10, 2015) (passive use of the <merckrecall.com> domain name was evidence of registration and use in bad faith); see also Johnson & Johnson v. Registrant, D2010-1563 (WIPO Nov. 15, 2010) (use of pay-per-click ads on the <mcneilproductsrecall.com> domain name was evidence of bad faith registration and use); Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click- through revenue suggested bad faith registration and use under UDRP ¶4(b)(iv)); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third- party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
For all the above reasons, the panel should find that Respondent's use and registration of Disputed Domain Names is in bad faith and Policy ¶4(a)(iii) is established.
The response read “While Respondents firmly believe they, as a products liability law firm actually prosecuting personal injury cases involving Bravelle against Perring, have a First Amendment commercial speech right to use the disputed domains to advertise their legal services and that there is absolutely zero chance of confusion since no reasonable person could believe that Perring would offer lawyers to sue itself over the Bravelle product line, which was recalled for potency issues, Respondents agreed to transfer back the disputed domains to Perring for no compensation in return. Rather than accept that the matter was resolved, Perring unreasonably sought to extract a promise never to use, purchase or control any domain which references any Perring product.
Respondents refused to agree to a prior restraint of their commercial speech or to settle issues which were not even in dispute (or existence). They again agreed to transfer the domains unconditionally. However, unfortunately, Perring has obstinately and in bad faith refused to acknowledge the unconditional transfer and insists on a prior restraint on using domains not in dispute or in existence. While Respondents would like to resolve the only dispute before this arbitrator they cannot agree to a prior restraint of domains not in dispute into perpetuity (nor would such an agreement ever be enforceable in a court of law). At any rate, Respondents respectfully request the arbitrator effectuate Respondent's agreement to transfer the two disputed domains with no return compensation. The Complaint seeks the remedy of a transfer of the above two domains which has been accepted without condition. There is no dispute for this arbitrator to rule on. Instead, Perring seeks remedies not sought in their Complaint. A ruling on the merits is unwarranted, inefficient and unnecessary given Respondent's agreement to Ferring's sought remedy.
In the event the arbitrator deems it necessary to rule on the merits despite the above, Respondents will be forced to defend this case on the merits, unnecessary as it may be, and respectfully request an opportunity to do so on an expedited timeline (5 days).”
C. Additional Submissions
COMPLAINANT’S FACTUAL AND LEGAL GROUNDS
[a.] The Disputed Domain Names Are Confusingly Similar to Complainant's Trademark. UDRP Rule 3(d)(ix)(I); UDRP Policy ¶4(a)(I).
Respondent argues, without support, that there is "zero chance of confusion" between the Disputed Domain Names and Complainant's BRAVELLE Trademark. Panels, however, have consistently held that domain names that incorporate the entire mark and merely add a descriptive terms, such as "lawsuit" or "recall", are confusingly similar to a complainant's mark. See Am. Int'l Group, Inc. v. Speyer, FA 422815 (Nat. Arb. Forum Apr. 7, 2005) ("Numerous ICANN decisions have held that the addition of a non-distinctive, descriptive, or generic term, such as 'lawsuit,' does not change the overall impression of a mark."); see also Johnson & Johnson and McNeil PPC Inc. v. Registrant : Alex Do, WIPO Case No. Case No. D2010-1563 (finding that the disputed domain name was confusingly similar to complainant's trademark and finding that the mere addition of generic terms "product" and "recall" increases the confusing similarity because the terms describe the activity of product recall and do nothing to distinguish the disputed domain name from the registered trademark); Am. Laser Centers v. Kresch Legal Services, FA 1317314 (Nat. Arb. Forum May 26, 2010) (finding the addition of generic words "lawsuit" and "classaction" to a mark creates clear confusing similarity).
[b.] Respondent Does Not Have First Amendment Rights to Use Complainant's Trademark.
Under ICANN's Uniform Domain Name Dispute Resolution Policy (the "policy"), a respondent can prevail if it is making a legitimate noncommercial or fair use of the domain name and without the intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue, the respondent can prevail under the Policy. See Policy ¶(4)(c)(iii). This is not the case here.
Respondent argues, without support, that it has a "First Amendment commercial speech right to use the disputed domain to advertise their legal services". (Response p. 2). An offer of legal services, however, is not protected under the UDRP because it "is clearly for commercial gain". Am. Laser Centers v. Kresch Legal Services, FA 1317314 (Nat. Arb. Forum May 26, 2010). This even applies to situations, like the present, when the respondent is a law firm representing plaintiffs in a class action lawsuit. See Am. Int'l Group, Inc., FA 591254 (Nat. Arb. Forum Dec. 21, 2005).
Respondent does not have a "First Amendment commercial speech right" to use Complainant's BRAVELLE Trademark in the Dispute Domain Names for Respondent's own commercial gain.
[c.] Respondent's Discussions and Use of Settlement Proposals is Improper and Inadmissible.
After Complainant commenced this proceeding, Respondent reached out to Complainant to explore settlement. Settlement terms could not be reached for a variety of reasons, including but not limited to, a disagreement as to the scope of waiver and release. Contrary to the representations of Respondent, an agreement as to an unconditional transfer was never reached. Respondent has not provided any evidence of such an agreement.
Respondent's use of the settlement negotiations in an attempt to disprove Complainant's case is improper and should be excluded under Federal Rule of Evidence 408. See Nady Systems, Inc. v. NineWire Digital Solutions, FA 103935 (Nat. Arb. Forum Mar. 4, 2002); see also LifePlan v. Life Plan FA 94826 (Nat. Arb. Forum July 13, 2000); OAG Worldwide, Inc. v. Mark Nelson, FA 105183 (Nat. Arb. Forum Apr. 22, 2002).
Preliminary Issue: Deficient Response
The Response was received without annexes separated from the Response. Thus the Forum did not consider the Response to be in compliance with ICANN Rule 5. The Panel, in its discretion, chooses to accept and consider this Response. See Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).
Preliminary Issue: Consent to Transfer
Respondent appears to have consented to transfer the <bravellelawsuits.com> and <bravellerecallattorneys.com> domain names to Complainant. However, after the initiation of this proceeding, GoDaddy.com, LLC placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain names while this proceeding is still pending. As a result, the Panel may find that in a circumstance where Respondent has not contested the transfer of the disputed domain names but instead agrees to transfer the domain names in question to Complainant, to forego the traditional UDRP analysis and order an immediate transfer of the <bravellelawsuits.com> and <bravellerecallattorneys.com> domain names. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”). However, this Panel prefers to go through the required analysis before determining whether or not Respondent consented to the transfer of the disputed domain names.
The “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008), the panel stated that:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
Therefore, Panel decides it would like to analyze the case under the elements of the UDRP.
(1) the domain name registered by Respondent in 2016 is NOT 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 transferring or cancelling 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.
Complainant owns multiple trademark registrations for the BRAVELLE mark around the world. Complainant registered the mark with the United States Patent and Trademark Office (“USPTO”) Reg. no. 2,667,119, registered on December 24, 2012. Registering a mark with a governmental authority (such as the USPTO) clearly indicates rights in the mark. While Complainant has registrations in a variety of countries, it also has a registration where Respondent conducts its business. See Glashütter Uhrenbetrieb GmbH v. li zilin / QQ869292929, FA 1575562 (Forum September 23, 2014) (holding, “Trademark registrations with a governmental authority are sufficient to prove rights in a mark pursuant to Policy ¶4(a)(i)”). Therefore, Complainant has successfully proven its rights to the BRAVELLE mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <bravellelawsuits.com> and <bravellerecallattorneys.com> domains are confusingly similar because they both incorporate the BRAVELLE mark entirely and merely add the terms “lawsuits” and “recall attorneys,” along with the gTLD “.com.” This Panel disagrees. These words are not within Complainant’s line of businesses. They don’t describe Complainant’s business model or geographical reach in any way, shape or form.
In Lockheed Martin Corp. v Parisi, D2000-1015 (WIPO Jan. 26, 2001), the panel held <lockheedsucks.com> and <lockheedmartinsucks.com> were not confusingly similar to the Complainants’ marks. The panel relied on the reasoning of the United States federal courts in Bally Total Fitness v Faber, 29 F. Supp.2d 1161 (C.D. Cal. 1998) and Lucent Technologies, Inc. v. Lucentsucks.com, 95 F. Supp.2d 528 (E.D. Va. 2000). The panel agreed with the U.S. federal courts that the test for confusion must rely on common sense reasoning and that any Internet user “will be able readily to distinguish the Respondent’s site for criticism from Complainant’s sites”. Lockheed Martin Corp. v Parisi. A similar approach was taken by this Panel in Homer TLC, Inc. v. GreenPeople, Claim Number: FA0508000550345 (October 25, 2005).
The word “lawsuits” has long since entered the common English lexicon as a negative reference in most contexts. Under the facts of this case, the phrase “recall attorneys” also has a negative reference. This Panel does not believe anyone will mistakenly believe Complainant sponsors or is affiliated with these domain names.
This Panel finds the <bravellelawsuits.com> and <bravellerecallattorneys.com> domains are NOT confusingly similar to the BRAVELLE mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) NOT 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.”).
Complainant claims Respondent has no rights or legitimate interests in the disputed domain names. Complainant has not authorized or granted license or permission to Respondent to use the BRAVELLE mark in connection with domain registrations. The WHOIS of record indicates that “John Thornton / Andrews & Thornton” registered the disputed domain names. It seems obvious Respondent is not commonly known by either of the disputed domain names.
Complainant claims no bona fide offering or any legitimate noncommercial or fair use is made through the disputed domains as the websites resolve to parked, pay-per-click sites. This Panel (and a long line of other panels) agrees. See Materia, Inc. v. Michele Dinoia, FA1507001627209 (FORUM August 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”). Respondent has not begun using the domain names and has not claimed to be making preparations to use the domain names under Policy ¶4(c)(i). The Panel will not guess at how Respondent specifically planned to use the domain names.
Policy ¶4(c)(iii) allows a respondent to make a (i) legitimate noncommercial or (ii) fair use of the disputed domain name. This Panel would doubt Respondent registered the domain names for an eleemosynary purpose. Likely Respondent was planning to solicit clients (or potential clients), with the hope of making a profit. This Panel does not opine on the validity of such claims. Soliciting such claims would clearly not be “noncommercial.” This Panel will not comment on whether such a use would be a “fair use” because such a claim has not been fairly presented or briefed. Since Respondent has not advanced these theories, Complainant must prevail.
Respondent claims a constitutional free speech right to use Complainant’s mark. While that may be true in a traditional court which is the arm of a country’s government, a Proceeding occurs under the UDRP (which is the governing law) and it is delocalized. A Proceeding is an expedited and plenary procedure. There is a right of review (if timely taken). Constitutional law (of any country) has no place in a UDRP Proceeding, although the reviewing court might well consider it. Respondent demonstrates no rights under the UDRP by making this claim.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and used the disputed domains in bad faith. Respondent has not disputed these claims (although it seems as though they could have). Registering a domain name with the intention and using it to resolve to a dynamic parking page with links to unrelated advertisers is bad faith registration and use of the domain names. Respondent presumably profits from the hyperlinks on the website, and has therefore acted in bad faith under Policy ¶4(b)(iv). See Plain Green, LLC v. wenqiang tang, FA1505001621656 (Forum July 1, 2015) (finding that the respondent’s use of the disputed domain name to feature generic third-party hyperlinks constituted bad faith according to Policy ¶4(b)(iv)).
The Panel finds Policy ¶4(a)(iii) satisfied.
Respondent has essentially asked this Panel not to rule on the merits without giving Respondent a chance to brief the issues. Proceedings do not work that way. Respondent did nothing to correct its non-conforming response. Proceedings are not bifurcated as Respondent hypothesizes. This Panel will rule in accordance with the normal procedure.
Normally, this Panel would find Complainant has not met its burden. After re-reading Respondent’s submission after going through the foregoing analysis, the Panel finds Respondent has consented to a transfer even though Complainant has failed to make out its case. The Panel will carry out Respondent’s wishes.
The Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <bravellelawsuits.com> and <bravellerecallattorneys.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, April 25, 2016
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