Abbott Diabetes Care Inc. v. Balticsea LLC
Claim Number: FA1608001690772
Complainant is Abbott Diabetes Care Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, United States. Respondent is Balticsea LLC (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <freestylemeter.com>, registered with Tucows Domains Inc.[1]
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 24, 2016; the Forum received payment on August 24, 2016.
On August 24, 2016, Tucows Domains Inc. confirmed by e-mail to the Forum that the <freestylemeter.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 August 25, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 14, 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 postmaster@freestylemeter.com. Also on August 25, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 21, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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 that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant uses its FREESTYLE mark in connection with diabetes management products and services. Complainant has registered the FREESTYLE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,670,744, registered Jan. 7, 2003), which demonstrates Complainant’s rights in its mark.
2. Respondent’s domain is confusingly similar to Complainant’s mark as it wholly incorporates the mark and merely adds the descriptive term “meter” and the generic top-level domain (“gTLD”) “.com.”
3. Respondent has no rights or legitimate interests in the domain. Respondent is not commonly known by the domain, and Respondent is not licensed by Complainant to use Complainant’s trademarks.
4. Further, Respondent is not using the domain in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, Respondent’s domain resolves to a website which contains links for “Freestyle Glucose Meters” and other links, which, when clicked, take the user to websites that are unrelated to Complainant and, in some cases, belong to competitors. Additionally, Respondent has listed the domain for sale.
5. Respondent registered and is using the domain in bad faith. First, Respondent has listed the domain for sale. Second, Respondent has been a party to numerous prior UDRP cases in which panels ordered the transfer of the domains to the respective complainants. Third, Respondent’s use of the domain to host competing hyperlinks is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). Fourth, because of the fame of Complainant’s mark, it is clear that Respondent registered the domain with knowledge of Complainant’s mark and rights therein.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the FREESTYLE mark. Respondent’s domain name is confusingly similar to Complainant’s FREESTYLE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <freestylemeter.com> domain name, and that Respondent registered and uses the domain name 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 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(f), 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 (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 uses its FREESTYLE mark in connection with diabetes management products and services. Complainant has registered the FREESTYLE mark with the USPTO (e.g., Reg. No. 2,670,744, registered Jan. 7, 2003), which demonstrates its rights in the mark. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (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.”). Accordingly, the Panel finds that Complainant has demonstrated its rights in its mark pursuant to Policy ¶ 4(a)(i).
Complainant claims that Respondent’s domain is confusingly similar to Complainant’s mark as it wholly incorporates the mark and merely adds the descriptive term “meter” and the gTLD “.com.” Neither the addition of a descriptive term nor the affixation of the “.com” gTLD serves to adequately distinguish a respondent’s domain from a complainant’s mark per Policy ¶ 4(a)(i). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied). The Panel finds that Respondent’s domain is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <freestylemeter.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the <freestylemeter.com> domain name. According to Complainant, Respondent is not commonly known by the domain, and Respondent is not licensed by Complainant to use Complainant’s trademarks. The WHOIS information merely lists “Balticsea LLC” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration. Thus, the Panel finds no basis in the record to find Respondent commonly known by the domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant contends that Respondent is not using the domain in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, Complainant alleges that Respondent’s domain resolves to a website which contains links for “Freestyle Glucose Meters” and other links, which, when clicked, take the user to websites that are unrelated to Complainant and, in some cases, belong to competitors. A respondent’s use of a domain to host competing links and/or links that are unrelated to a complainant does not constitute 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). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (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). Therefore, the Panel finds that Respondent is not using the domain 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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant has shown that Respondent has been a party to numerous UDRP cases in which panels ordered the transfer of the domains to the respective complainants. Complainant cites the following cases, among others: McClaren Health Care Corporation v. Balticsea LLC, FA 1475824 (Forum Jan. 24, 2013), Homer TLC, Inc. v. Balticsea LLC, FA 1505216 (Forum Aug. 19, 2013), and Bloomberg Finance L.P. v. Balticsea LLC , FA 1539704 (Forum Feb. 17, 2014). Prior adverse UDRP rulings against a respondent has been found to constitute evidence of a pattern of bad faith under Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations). Therefore, the Panel finds that Respondent has engaged in a pattern of bad faith, in violation of Policy ¶ 4(b)(ii).
Complainant contends that Respondent’s use of the <freestylemeter.com> domain to host competing hyperlinks is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). The Panel agrees. See Univ. of Texas Sys. v. Smith, FA 1195696 (Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). .
Finally, Complainant argues that because of the fame of Complainant’s mark, it is clear that Respondent registered the domain with knowledge of Complainant’s mark and rights therein. Based on the record, the Panel concludes that Respondent undoubtedly had actual knowledge of Complainant's mark and rights and therefore holds that Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <freestylemeter.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 26, 2016
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