Amerisource Heritage Corporation v. N.A. c/o Domain Admin
Claim Number: FA0602000647054
Complainant is Amerisource Heritage Corporation (“Complainant”), represented by James J. Johnston, of Dechert LLP, Cira Centre, 2929 Arch Street, Philadelphia, PA 19104-2808. Respondent is N.A. c/o Domain Admin (“Respondent”), 5654 St. Joe Road, Fort Wayne, IN 46835.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <amerisourcebergan.com>, registered with Mango Moods, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 17, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 17, 2006.
On February 20, 2006, Mango Moods, Inc. confirmed by e-mail to the National Arbitration Forum that the <amerisourcebergan.com> domain name is registered with Mango Moods, Inc. and that Respondent is the current registrant of the name. Mango Moods, Inc. has verified that Respondent is bound by the Mango Moods, 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 February 22, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 14, 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@amerisourcebergan.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 17, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <amerisourcebergan.com> domain name is confusingly similar to Complainant’s AMERISOURCEBERGEN mark.
2. Respondent does not have any rights or legitimate interests in the <amerisourcebergan.com> domain name.
3. Respondent registered and used the <amerisourcebergan.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Amerisource Heritage Corporation, is a wholesale distributor of pharmaceuticals, medical and surgical supplies, and healthcare and beauty products. Complainant is a wholly-owned subsidiary of AmerisourceBergen Corporation, one of the largest pharmaceutical services companies in the United States. Complainant has continuously and extensively used the AMERISOURCEBERGEN mark in connection with the aforementioned services since the merger of Amerisource Health Corporation and Bergen Brunswig Corporation in 2001. Complainant is ranked twenty-third on the list of Fortune 500 companies and reports more than $54 billion in annual operating revenue.
Complainant has registered the AMERISOURCEBERGEN mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,609,432 issued August 20, 2002; Reg. No. 2,617,944 issued September 10, 2002). Complainant has also registered several domain names incorporating the AMERISOURCEBERGEN mark, including <amerisourcebergen.com>, <amerisourcebergen.net> and <amerisource-bergen.com> (each registered on April 14, 2004).
Respondent registered the <amerisourcebergan.com> domain name on November 27,
2005. Respondent’s domain name resolves to a search engine that displays links to Complainant’s direct competitors in the pharmaceutical industry as well as to unrelated content.
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 AMERISOURCEBERGEN
mark by registering the mark with the USPTO.
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 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.”).
Respondent’s <amerisourcebergan.com>
domain name is confusingly similar to Complainant’s
AMERISOURCEBERGEN mark because it merely replaces one letter “a” with an
“e.” Panels have held that misspelling
a complainant’s mark in a domain name does not distinguish the domain name from
the mark. See Belkin
Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the
<belken.com> domain name confusingly similar to the complainant's BELKIN mark
because the name merely replaced the letter “i” in the complainant's mark with
the letter “e”); see also 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and
legitimate interests in the <amerisourcebergan.com> domain
name. Complainant must first make a prima
facie case in support of its allegations, and then the burden shifts to
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) (holding that, where the complainant has asserted that the
respondent has no rights or legitimate interests with respect to the domain
name, it is incumbent on the respondent to come forward with concrete evidence
rebutting this assertion because this information is “uniquely within the
knowledge and control of the respondent”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <amerisourcebergan.com>
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 BIC Deutschland GmbH & Co. KG v. Tweed,
D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has
failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c)
of the Policy, any rights or legitimate interests in the domain name”).
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 “N.A.
c/o Domain Admin,” and there is no other evidence in the record suggesting that
Respondent is commonly known by the <amerisourcebergan.com> domain
name. Thus, Respondent has not
established rights or legitimate interests in the <amerisourcebergan.com> domain name pursuant to Policy ¶
4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark); see
also 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.”).
Furthermore, Respondent’s <amerisourcebergan.com>
domain name, which is confusingly similar to Complainant’s AMERISOURCEBERGEN
mark, resolves to a third-party website featuring 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 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
<amerisourcebergan.com> domain name. See 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <amerisourcebergan.com> domain name, which is confusingly similar to Complainant’s AMERISOURCEBERGEN mark, to redirect Internet users seeking Complainant’s pharmaceutical services to a search engine displaying links to Complainant’s direct competitors and to other content. In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the respondent registered the <mailonsunday.com> domain name, which included the complainant’s THE MAIL ON SUNDAY mark, and was using the domain name to provide links to competing newspapers and to third-party websites. The panel held that such use provided evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because Respondent “presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’” In this case, Respondent also likely receives referral fees for each consumer it diverts to other websites and is, therefore, taking advantage of the confusing similarity between the disputed domain name and Complainant’s mark. Such use of the disputed domain name to profit off of the goodwill associated with Complainant’s mark 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)).
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 <amerisourcebergan.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 29, 2006
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