Procter & Gamble Pharmaceuticals, Inc. v. Johnny Carpela
Claim Number: FA0601000625591
Complainant is Procter & Gamble Pharmaceuticals, Inc. (“Complainant”), represented by Alison J. Bouffard, of Keating Muething & Klekamp PLL, One East Fourth Street, Suite 1400, Cincinnati, OH 45202. Respondent is Johnny Carpela (“Respondent”), PO Box 188, Sumas, WA 98295.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <actonel.org>, registered with Go Daddy Software, Inc.
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 January 13, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 17, 2006.
On January 13, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <actonel.org> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 17, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 6, 2006 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@actonel.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 14, 2006, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <actonel.org> domain name is identical to Complainant’s ACTONEL mark.
2. Respondent does not have any rights or legitimate interests in the <actonel.org> domain name.
3. Respondent registered and used the <actonel.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Procter & Gamble Pharmaceuticals, Inc., is a manufacturer of pharmaceutical products and is the owner of the ACTONEL trademark, which it has registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,215,222, issued December 29, 1998). Complainant has registered the ACTONEL mark for a pharmaceutical product it produces, which is intended for the treatment of bone disorders. In addition, Complainant owns over 200 foreign registrations for its ACTONEL mark. Complainant has registered several domain names incorporating its ACTONEL mark, including <actonel.com>, <actonel.biz>, and <actonel.us>.
Respondent registered the disputed domain name, <actonel.org>, on March 12, 2003. Internet users who access this domain name are redirected to a website offering retail sales of pharmaceutical products, produced by Complainant and Complainant’s competitors.
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. 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.”).
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 registered the ACTONEL mark with the USPTO, and as such has established rights in the mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Respondent’s <actonel.org> domain name is identical to Complainant’s ACTONEL mark. The inclusion of the top level domain “.org” in the disputed domain name does not negate the fact that Respondent’s domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to the complainant’s mark); see also Koninklijke Philips Elecs. NV v. Goktas, D2000-1638 (WIPO Feb. 8, 2001) (finding that the domain name <philips.org> is identical to the complainant’s PHILIPS mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Once Complainant has made a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to prove that it does have rights or legitimate interests. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) ( “Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. 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.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). Complainant has presented such a prima facie case. Therefore, the Panel will consider whether the evaluation of the evidence demonstrates rights or legitimate interests under Policy ¶ 4(c).
Respondent’s <actonel.org> domain name is identical to Complainant’s ACTONEL mark, and Internet users who access this domain name are redirected to a website offering pharmaceutical products for sale, some of which are produced by Complainant’s competitors. The Panel presumes Respondent receives click-through fees in exchange for diverting Internet users to other websites. Respondent’s use of the <actonel.org> domain name is not 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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
There is no evidence on record that Respondent has ever been commonly known by the disputed domain name or is affiliated with Complainant. Additionally, the WHOIS database entry for <actonel.org > contains no information implying that Respondent is commonly known by this name. Respondent offers no evidence that it has rights or legitimate interests in the <actonel.org > domain name under Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); 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 uses <actonel.org>, a domain name identical to Complainant’s ACTONEL mark, to redirect Internet users to a website that features links to pharmaceutical products for sale but is not affiliated with Complainant. Some of the products offered for sale on this website are produced by Complainant’s competitors. The Panel assumes that Respondent receives payment for directing Internet users to this website. Because <actonel.org> is identical to Complainant’s ACTONEL mark, Internet users may mistakenly believe that Respondent’s domain name is affiliated with Complainant. Such use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”).
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 <actonel.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 20, 2006
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