Insight Pharmaceuticals LLC v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1711001760477
Complainant is Insight Pharmaceuticals LLC (“Complainant”), represented by Micheline Kelly Johnson of Baker Donelson, Tennessee, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kondremul.com>, registered with Internet Domain Service BS Corp.
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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on November 29, 2017; the Forum received payment on November 29, 2017.
On December 1, 2017, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <kondremul.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 December 5, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 2017 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@kondremul.com. Also on December 5, 2017, 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 December 29, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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
Complainant markets and distributes a variety of over-the-counter healthcare products in the United States and internationally. Complainant began marketing its over-the-counter laxative product Kondremul 87 years ago, in the United States. Complainant registered the KONDREMUL mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 275,459) on September 23, 1930). Respondent’s <kondremul.com> domain name (the “Domain Name”) is identical to Complainant’s mark, as it contains Complainant’s mark in its entirety and simply appends the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the Domain Name. It is not commonly known by the Domain Name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use its KONDREMUL mark. Further, Respondent does not use the Domain Name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, it uses the web site resolving from the Domain Name to redirect users via a hyperlink named “Buy Kondremul” to the <amazon.com> web site, presumably to benefit from pay-per-click fees.
Respondent registered and uses the Domain Name in bad faith. It intentionally attempts to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant's KONDREMUL mark as to the source, sponsorship, affiliation, or endorsement of Complainant. Respondent creates this confusion to generate pay-per-click fees when users click on the hyperlink displayed on the resolving web site. Finally, Respondent had actual knowledge of Complainant’s mark, as evidenced by Complainant’s longstanding use of its KONDREMUL mark, and Respondent displaying Complainant’s mark by name at the resolving web site.
Respondent:
Respondent did not submit a response in this proceeding.
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 will 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 registered the KONDREMUL mark with the USPTO (Reg. No. 275,459) on September 23, 1930. See, Complaint Exhibit C. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (“There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has demonstrated sufficient rights in the KONDREMUL mark for the purposes of Policy ¶ 4(a)(i).
Further, Respondent’s <kondremul.com> Domain Name is identical to Complainant’s mark, as it contains that mark in its entirety and simply appends the gTLD “.com.” The addition of a gTLD is irrelevant for the analysis under Policy ¶4(a)(i). F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”).
Based upon the foregoing, the Panel finds that the Domain Name is identical to the KONDREMUL mark, in which Complainant has demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interest. If, though, the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0 at ¶ 2.1.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) it is not commonly known by the Domain Name, (ii) Complainant has not authorized it to use the KONDREMUL mark, and (iii) the web site resolving from the Domain Name simply redirects visitors to another web site, presumably for pay-per click revenues, and this cannot constitute a bona fide offering of goods and services, or a legitimate noncommercial or fair use of the Domain Name. These allegations are supported by competent evidence. The WHOIS record associated with this case identifies registrant as “Domain Admin” and the Registrant Organization as “Whois Privacy Corp.” See, Complaint Exhibit A. This is competent evidence that Respondent is not commonly known by the Domain Name.[1] Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Further, Complainant states that it has never authorized Respondent to use its KONDREMUL mark in any domain name registration. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel.
Exhibit E attached to the Complaint contains screenshots of (1) the web page resolving from the Domain Name, which advertises Complainant’s Kondremul product and contains a link to the <amazon.com> web site, and (2) the <amazon.com> web page where Kondremul can be purchased. Using a domain name to redirect users to services in direct competition with a complainant 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). Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use”).
Complainant has made its prima facie case. On the evidence presented, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Respondent’s use of the Domain Name as demonstrated by Complainant’s Exhibit E also supports a finding of bad faith. It is clear from that evidence that Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's KONDREMUL mark as to the source, sponsorship, affiliation, or endorsement of Complainant. Using a Domain Name that trades upon the goodwill of a complainant for commercial gain is manifest evidence of bad faith under Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”).
Further, Respondent registered the Domain Name on September 6, 2008. See, WHOIS record, Complaint Exhibit A. Because of Respondent’s featuring of Complainant’s Kondremul product on its web site, and because of the long history of that branded product in commerce, it is certain that Respondent had actual knowledge of Complainant’s mark when he registered the Domain Name. This has consistently been held to be evidence bad faith registration. Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name), Chevron Intellectual Property LLC v. Richard Bailey/Jacobs, FA 1588430 (Forum Dec. 9, 2014) (finding that respondent’s behavior of sending emails impersonating complainant demonstrated that the domain name was registered with complainant in mind), and Michelin North America, Inc. v. Innis, FA 1511296 (Forum Dec. 27, 2013) (holding that respondent’s registration of domain names that were confusingly similar to complainant’s famous marks evidenced that respondent had actual knowledge of complainant’s marks and rights and registered the domain names in bad faith under Policy ¶ 4(a)(iii)).
It is obvious from the evidence that Respondent had actual knowledge of Complainant’s mark when it registered its Domain Name.
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kondremul.com> domain name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
January 2, 2018
[1] Complainant attached as Exhibit B to its Complaint a copy of an email it received on October 23, 2017 from one Pex Cornel stating that he was the owner of the Domain Name. No documentary or other evidence was submitted with that email. Even if true, this information would not change the Panel’s analysis of the Policy ¶ 4(a)(ii) element in this case.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page