Talecris Biotherapeutics, Inc. v. Optistate Inc.
Claim Number: FA0602000640261
Complainant is Talecris Biotherapeutics, Inc. (“Complainant”), represented by Maury M. Tepper, of Womble Carlyle Sandridge & Rice, PLLC, 150 Fayetteville Street Mall, P.O. Box 831, Raleigh, NC 27602. Respondent is OptiState Inc. (“Respondent”), 122-A E. Foothill Blvd. #162, Arcadia, CA 91006.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <gammunex.com>, registered with Fabulous.com Pty Ltd.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 8, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 9, 2006.
On February 8, 2006, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <gammunex.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 February 14, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 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@gammunex.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 10, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <gammunex.com> domain name is confusingly similar to Complainant’s GAMUNEX mark.
2. Respondent does not have any rights or legitimate interests in the <gammunex.com> domain name.
3. Respondent registered and used the <gammunex.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Talecris Biotherapeutics, Inc., is a leading manufacturer and developer of blood plasma products. Complainant annually spends millions of dollars researching, developing, and marketing its products, which include GAMUNEX, an FDA-approved sterile solution of human immune globulin protein for intravenous administration. Complainant has built a state-of-the-art production facility for the sole purpose of manufacturing GAMUNEX.
Complainant has registered the GAMUNEX mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,716,540 issued May 13, 2003). Complainant also owns registrations for the mark in Canada, Mexico, and Israel. Complainant maintains a website at the <gamunex.com> domain name (registered on January 4, 2001), where it provides information on the GAMUNEX product.
Respondent registered the <gammunex.com> domain name on June 16, 2005. Respondent is using the disputed domain name to operate a search engine containing links to a variety of content, including Complainant’s direct competitors in the pharmaceutical industry.
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 established rights to the GAMUNEX mark by
registering the mark with the USPTO. See
Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
Nov. 11, 2003) (“Complainant's federal trademark registrations establish
Complainant's rights in the BLIZZARD mark.”); see
also 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.”).
Respondent’s <gammunex.com> domain name is
confusingly similar to Complainant’s GAMUNEX mark pursuant to Policy ¶ 4(a)(i),
because it contains the entire mark and merely adds an additional letter
“m.” Panels have concluded that
misspelling a complainant’s mark in a domain name does not distinguish a domain
name from a mark. See Victoria’s
Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding
that, by misspelling words and adding letters to words, a respondent does not
create a distinct mark but nevertheless renders the domain name confusingly
similar to the complainant’s marks); see also Bama Rags, Inc. v. Zuccarini,
FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that
<davemathewsband.com> is a common misspelling of the DAVE MATTHEWS BAND
mark and therefore confusingly similar).
Therefore, Respondent’s domain name is confusingly similar to
Complainant’s GAMUNEX mark.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the <gammunex.com> domain name. Complainant must first make a prima facie case in support of its allegations, and then the burden shifts to the Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); 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”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <gammunex.com>
domain name. See Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where the respondent fails to respond); see also Branco do Brasil S.A. v.
Sync Tech., D2000-0727 (WIPO Sept. 1, 2000) (“By its default, Respondent
has not contested the allegation . . . that the Respondent lacks any rights or
legitimate interests in the domain name.
The Panel thus assumes that there was no other reason for the Respondent
having registered <bancodobrasil.com> but the presumably known existence
of the Complainant´s mark BANCO DO BRASIL”).
However, the Panel will now examine the record
to determine if Respondent has rights or legitimate interests under Policy ¶
4(c).
Respondent has registered the domain name under the name “Optistate
Inc.,” and there is no other evidence in the record suggesting that Respondent
is commonly known by the <gammunex.com> domain name. Thus, Respondent has not established rights
or legitimate interests in the <gammunex.com> domain name pursuant
to Policy ¶ 4(c)(ii). See 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"); see
also Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where the respondent was not commonly known by the mark and
never applied for a license or permission from the complainant to use the
trademarked name).
In addition, Respondent’s <gammunex.com> domain
name, which includes Complainant’s GAMUNEX mark, resolves to a search engine
displaying links to Complainant’s direct competitors and to unrelated
content. In Golden
Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17,
2003), the respondent registered the <nicklausgolf.com> domain name,
which included the complainant’s NICKLAUS mark, and used it to operate a search
engine displaying links to third-party websites. The Panel held that the respondent’s diversion of Internet users to
websites unrelated to the complainant’s mark did not represent a 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). Because Respondent is also diverting Internet users
seeking Complainant’s products to a search engine containing links to
third-party websites, its use of the disputed domain name provides evidence
that it lacks rights and legitimate interests in the <gammunex.com>
domain name. See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that
the respondent used a domain name for commercial benefit by diverting Internet
users to a website that sold goods and services similar to those offered by the
complainant and thus, was not using the name in connection with a bona fide
offering of goods or services nor a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <gammunex.com> domain name, which includes Complainant’s GAMUNEX mark, to redirect Internet users seeking Complainant’s products to a search engine featuring links to Complainant’s direct competitors and to unrelated content. The Panel infers that Respondent earns referral fees for each consumer it diverts to these third-party websites. Therefore, Respondent is taking advantage of the confusing similarity between Respondent’s domain name and Complainant’s GAMUNEX mark, and profiting from the goodwill associated with the mark. Use of the disputed domain name for this purpose is indicative of 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 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 Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
Furthermore, the Panel finds that Respondent’s practice of
using a typographically misspelled version of Complainant’s GAMUNEX mark to
take advantage of errors made by Internet users amounts to typosquatting, which
is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Nat’l Ass’n of
Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003)
(“Typo squatting … is the intentional misspelling of words with [the] intent to
intercept and siphon off traffic from its intended destination, by preying on
Internauts who make common typing errors.
Typo squatting is inherently parasitic and of itself evidence of bad
faith.”); see also Dermalogica, Inc.
v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com>
domain name was a “simple misspelling” of the complainant's DERMALOGICA
mark which indicated typo squatting and bad faith pursuant to Policy 4 ¶
(a)(iii)).
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 <gammunex.com> domain name be TRANSFERRED sfrom Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: March 22, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum