ViroPharma Incorporated v. Thao Spriet
Claim
Number: FA0412000390995
Complainant is ViroPharma Incorporated (“Complainant”),
represented by Jake D. Feldman, of Morgan Lewis & Bockius LLP, 1111 Pennsylvania Avenue NW, Washington, DC 20004. Respondent is Thao Spriet (“Respondent”), 95 Beaverwood Drive, Hill City, KS
67642.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain name at issue is <vancocin.com> and <vancocin.info>,
registered with Enom, Inc. and Sipence, respectively.
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
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on December
23, 2004; the National Arbitration Forum received a hard copy of the Complaint
on December 29, 2004.
On
December 27, 2004, Enom, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <vancocin.com> is registered with Enom,
Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is
bound by the Enom, Inc. registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
January 6, 2005, Sipence confirmed by e-mail to the National Arbitration Forum
that the domain name <vancocin.info> is registered with Sipence
and that Respondent is the current registrant of the name. Sipence has verified that Respondent is
bound by the Sipence registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN's
Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
January 10, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of January 31, 2005 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@vancocin.com and
postmaster@vancocin.info by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
February 3, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed the
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <vancocin.com>
and <vancocin.info> domain names are identical to Complainant’s
VANCOCIN mark.
2. Respondent does not have any rights or
legitimate interests in the <vancocin.com> and <vancocin.info>
domain names.
3. Respondent registered and used the <vancocin.com>
and <vancocin.info> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
ViroPharma Inc., is the legal successor to all right, title and interest in and
to the VANCOCIN mark in the United States.
Complainant and Complainant’s predecessor, Eli Lilly, have used the
VANCOCIN mark since at least as early as 1958.
In 1958, Complainant’s predecessor in interest launched the first line
of VANCOCIN products for the treatment of gram positive bacteria
infections. Currently, Complainant’s
VANCOCIN product is the only Food and Drug Administration (“FDA”) approved oral
dosage form of the product for the treatment of S. aureus enterocolitis and
antibiotic-associated pseudomembranous colitis caused by C. dificile.
Complainant has
registered the VANCOCIN mark with the United States Patent and Trademark Office
(“USPTO”) (Reg. No. 683,928 issued August 25, 1959).
Respondent
registered the <vancocin.com> domain name on September 5, 2002 and
the <vancocin.info> domain name on September 29, 2004. Respondent’s domain names resolve to a
website that features links to competing pharmaceutical products and companies.
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."
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.
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.
Complainant has
established rights in the VANCOCIN mark through registration with the USPTO and
through continuous use of the mark in commerce. See Am.
Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the United States Patent
and Trademark Office creates a presumption of rights in a mark); see also Men’s
Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”).
Respondent’s <vancocin.com>
and <vancocin.info> domain names are identical to Complainant’s
VANCOCIN mark. Respondent’s addition of
the generic top-level domains “.com” and “.info” are insufficient to
distinguish the domain names from Complainant’s mark pursuant to Policy ¶
4(a)(i). See Gardline Surveys Ltd. v.
Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition
of a top-level domain is irrelevant when establishing whether or not a mark is
identical or confusingly similar, because top-level domains are a required
element of every domain name.”); see also Kioti
Tractor Div. v. O’Bryan Implement Sales, FA
210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's
domain name, <kioti.com>, is identical to Complainant's KIOTI mark
because adding a top-level domain name is irrelevant for purposes of Policy ¶
4(a)(i).”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Thus, the Panel may accept all reasonable allegations set forth in the
Complaint as true and accurate. See 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.”); see also Bayerische
Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17,
2002) (finding that in the absence of a Response the Panel is free to make
inferences from the very failure to respond and assign greater weight to
certain circumstances than it might otherwise do).
Additionally,
the Panel interprets Respondent’s failure to respond as an admission that
Respondent lacks rights and legitimate interests in the disputed domain names
pursuant to Policy ¶ 4(a)(ii). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”); see
also Geocities v.
Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has
no rights or legitimate interests in the domain name because Respondent never
submitted a response or provided the Panel with evidence to suggest otherwise).
Furthermore,
Respondent is using the <vancocin.com> and <vancocin.info>
domain names, which are identical to Complainant’s VANCOCIN mark, to
operate a website that features links to competing pharmaceutical products and
companies. Such use is not a use in
connection with 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 DLJ Long
Term Inv. Corp. v. BargainDomainNames.com, FA
104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (holding that Respondent’s appropriation of Complainant’s mark to market
products that compete with Complainant’s goods does not constitute a bona fide
offering of goods and services).
Moreover, there
is nothing in the record to indicate that Respondent is commonly known by the
disputed domain names or that Respondent is authorized to register domain names
that contain Complainant’s VANCOCIN mark.
Thus, the Panel finds that Respondent lacks rights and legitimate
interests in the domain names pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where Respondent was not
commonly known by the mark and never applied for a license or permission from
Complainant to use the trademarked name); see also RMO, Inc. v. Burbridge,
FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii)
"to require a showing that one has been commonly known by the domain name
prior to registration of the domain name to prevail").
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <vancocin.com> and <vancocin.info> domain
names, which contain identical versions of Complainant’s VANCOCIN mark, to
operate a website that features links to competing products and companies. The Panel considers such competing use to be
evidence that Respondent registered and used the domain names in bad faith
pursuant to Policy ¶ 4(b)(iii). See Disney
Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create confusion
for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) &
(iv).”); see also S. Exposure
v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by
attracting Internet users to a website that competes with Complainant’s
business).
Furthermore,
Respondent is using domain names that are identical to Complainant’s mark to
operate a website featuring links to competing pharmaceutical products and
companies. The Panel infers that
Respondent receives click-through fees for redirecting Internet users to these
competing websites. Since the disputed
domain names are identical to Complainant’s mark, consumers would become
confused as to Complainant’s affiliation with the resulting website. Therefore, Respondent’s opportunistic use of
the disputed domain names represents bad faith registration and use under
Policy ¶ 4(b)(iv). See Kmart v. Khan,
FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits
from its diversionary use of Complainant's mark when the domain name resolves
to commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)); see also Reuters
Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad
faith where Respondent attracted users to a website sponsored by Respondent and
created confusion with Complainant’s mark as to the source, sponsorship, or
affiliation of that website).
Moreover,
Respondent had actual or constructive knowledge of Complainant’s rights in the
VANCOCIN mark due to Complainant’s registration of the mark with the USPTO as
well as the fact that Respondent is using the domain names to promote competing
products and companies. Registration
and use of domain names identical to another’s mark, despite actual or
constructive knowledge of another’s rights in the mark, is tantamount to bad
faith registration and use pursuant to Policy ¶ 4(a)(iii). See Orange Glo Int’l v. Blume, FA
118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed
on the Principal Register of the USPTO, a status that confers constructive
notice on those seeking to register or use the mark or any confusingly similar
variation thereof.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO
Apr. 24, 2002) (finding that because the link between Complainant’s mark and
the content advertised on Respondent’s website was obvious, Respondent “must
have known about the Complainant’s mark when it registered the subject domain
name”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <vancocin.com> and <vancocin.info>
domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
February 17, 2005
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