Hoffmann-La Roche Inc. v. Alan Truskowski
Claim Number: FA0609000808287
PARTIES
Complainant is Hoffmann-La Roche
Inc., Nutley, NJ (“Complainant”) represented by Elizabeth Atkins, of Lathrop
& Gage L.C. Respondent is Alan Truskowski (“Respondent”) 2735-3C
Granada Dr., Jackson, MI 49202.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <genericxenical.us>,
registered with Go Daddy Software, Inc.
PANEL
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:
Hon. (Ret.) Nelson A. Diaz, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on September 28, 2006; the Forum received a hard
copy of the Complaint on September 29, 2006.
On September 30, 2006, Go Daddy Software, Inc. confirmed by e-mail to
the Forum that the domain name <genericxenical.us>
is registered with Go Daddy Software, Inc. and that the 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 the U. S.
Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On October 4, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 24, 2006 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules
for usTLD Dispute Resolution Policy (the “Rules”).
A timely Response was received and determined to be complete on October
24, 2006.
On October 31, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the Forum
appointed Hon. (Ret.) Nelson A. Diaz as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
·
Complainant asserts that it has established rights in
the XENICAL mark through its widespead use of the mark since 1994 in connection
with a highly sucessful and widely promoted pharmaceutical preparation. In addition, Complainant registered the mark
with the United States Patent and Trademark Office (“USPTO”) (Reg. No.
1,906,281 issued July 18, 1995), well before Respondent’s July 4, 2006
registration of the disputed domain name.
Complainant argues that Respondent’s <genericxenical.us>
domain name is confusingly
similar to the XENICAL mark in that Respondent’s domain name includes
Complainant’s XENICAL mark in its entirety and merely affixes the common term
“generic” and the top-level domain “.us.”
Thus, the Panel should find that the disputed domain name is confusingly
similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
·
Complainant asserts
that Respondent lacks rights or legitimate interests in the <genericxenical.us>
domain name. Complainant
reiterates that it has established rights in the XENICAL mark through USPTO
registration and asserts that there is no evidence that Respondent is the owner
of a trade or service mark identical to the disputed domain name pursuant to
Policy ¶ 4(c)(i). Complainant further avers that there is no
evidence that Respondent is commonly known by the disputed domain name, as an
individual, business or other organization, as contemplated by Policy ¶
4(c)(iii). Complainant further asserts that Respondent
is not using the disputed domain name in connection with a bona fide
offering of goods or services as contemplated by Policy ¶ 4(c)(ii) or a
legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iv). To the contrary, Complainant avers that
Respondent is using the disputed domain name to redirect Internet users to
Respondent’s website featuring links to commercial third-party websites
purporting to sell Complainant’s products as well as competing products. Complainant argues that such use cannot be a
bona fide offering of goods or services because Respondent is using
Complainants mark to attract Internet users to its website featuring links to
third-party websites. Further,
Complainant argues that Respondent’s use cannot be a legitimate noncommercial
or fair use because Respondent is profiting from misdirected Internet users by
collecting pay-per-click fees from the links on its website. Thus, the Panel should find that Respondent
has failed to establish legitimate interests pursuant to Policy ¶¶ 4(c)(ii) or
(iv).
·
Finally, Complainant
argues that Respondent registered and is using the disputed domain name in bad
faith pursuant to Policy ¶ 4(b)(iii) because Internet users misdirected to
Respondent’s website may follow the third-party links to commercial websites
offering goods in competition with Complainant. Complainant argues that such use not only disrupts Complainant’s
business by drawing away potential customers, it also disrupts Complainant’s
business by damaging the public goodwill in Complainant. Thus, the Panel should find that
Respondent’s use is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iii).
B. Respondent
Respondent denies the allegations noting
that:
·
That he made no
financial or material gain from this domain name. To the contrary, Respondent avers that the domain name has cost
him money.
·
Respondent
further avers that he operates no website in connection with the domain name;
it is merely a “parked domain name” that
“has no more impact then [sic] a reference by a newspaper or magazine
article”. Further, Respondent avers
that he “never requested for, or approved sponsorship on the parked page.”
·
Finally,
Respondent avers that he has not endorsed or condemned the use of this product
[presumably, XENICAL].”
FINDINGS
The Panel finds that Complainant has established prior rights in the
distinctive XENICAL Mark in the
United States in connection with its pharmaceutical products. The Panel further finds that Respondent’s
domain name, <genericxenical.us>, is confusingly similar to Complainant’s mark.
The Panel further finds that Respondent
is not commonly known by the domain name
for purposes of Policy ¶ 4(c)(ii) and has no rights or legitimate interests in respect of the domain name. The
Panel finds that the
Respondent’s use of the domain name
to operate a website is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a
legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel finds that Respondent registered and
used the domain name in bad
faith pursuant to Policy ¶
4(b)(iii).
DISCUSSION
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 the 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 the Respondent is identical or
confusingly similar to a trademark or service mark in which the Complainant has
rights;
(2) the Respondent has no rights or legitimate interests in respect of
the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Complainant has proven that it has established
rights in the XENICAL mark pursuant to Policy ¶ 4(a)(i) through registration of
the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No.
1,906,281 issued July 18, 1995), well before Respondent’s July 4, 2006
registration of the disputed domain name.
The Panel thus finds that Complainant has established rights in its mark
as required by Policy ¶ 4(a)(i). See
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."); 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.”).
Complainant also has met its burden of proving that Respondent’s <genericxenical.us> domain name is confusingly similar to the XENICAL mark pursuant to Policy ¶ 4(a)(i). It is self-evident that Respondent’s domain name consists of Complainant’s XENICAL mark, to which the common term “generic” and the top-level domain “.us” have been affixed. Such additional terms do not distinguish the disputed domain name from Complainant’s mark given that “generic” is a common descriptive term that alludes to a type of Complainant’s product. Further, all domain names require a top-level domain, such that the addition of “.us” does nothing to distinguish the disputed domain name from Complainant’s mark. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
Because Complainant
has made a prima facie case that Respondent lacks rights and legitimate
interests in the disputed domain names under Policy ¶ 4(a)(ii), the burden
shifts to Respondent to show it does have rights or legitimate interests. See Document Technologies, Inc. v.
International Electronic Communications Inc., D2000-0270 (WIPO Jun. 6,
2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant
prove the presence of this element (along with the other two), once a Complainant
makes out a prima facie showing, the burden of production on this factor
shifts to the Respondent to rebut the showing by providing concrete evidence
that it has rights to or legitimate interests in the Domain Name.”); see
also Hanna-Barbera
Productions, Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that
the complainant must first make a prima facie case that the respondent
lacks rights and legitimate interests in the disputed domain name under Policy
¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have
rights or legitimate interests in a domain name).
In an effort to
meet its burden, Respondent avers that it is merely operating a “parked domain
name” that “has no more impact then
[sic] a reference by a newspaper or magazine article”. Further, Respondent avers that it “never requested for, or
approved sponsorship on the parked page.”
To the extent these averments are understood, they are wholly
unpersuasive in
proving Respondent has rights or legitimate interests in the domain name.
First, there is no evidence that Respondent is the owner of a trade or service mark identical to the disputed domain name pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. John Basil a/k/a American Software Factory Corp., Inc., FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky a/k/a Joe Cutroni, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Second, there is no evidence that Respondent is commonly
known by the disputed domain name, as an individual, business or other
organization, as contemplated by Policy ¶ 4(c)(iii). Complainant indicates that Respondent’s WHOIS information
identifies Complainant as “Alan Truskowski,” a name unrelated to the disputed
domain name. See Tercent
Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing
in Respondent’s WHOIS information implies that Respondent is ‘commonly known
by’ the disputed domain name” as one factor in determining that UDRP ¶ 4(c)(ii)
does not apply); see also 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).
Finally, and contrary to Respondent’s bald averment, the operation of a “parking page” in connection with the disputed domain name does not constitute a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iv). The evidence shows that Respondent is using the disputed domain name to redirect Internet users to Respondent’s website featuring links to commercial third-party websites purporting to sell Complainant’s products, as well as competing products. Respondent’s use cannot be a legitimate noncommercial or fair use because, presumably, Respondent is profiting from misdirected Internet users by collecting pay-per-click fees from the links on its website. See Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); see also 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 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel thus finds that Respondent has not established rights or legitimate interests pursuant to Policy ¶ 4(c).
Because Internet users misdirected to Respondent’s website may follow third-party links to commercial websites offering goods in competition with Complainant, the Panel has no difficulty in finding that Respondent’s manner of using the domain name evidences the requisite bad faith registration and use barred under Policy ¶ 4(b)(iii). Such use arguably disrupts Complainant’s business by drawing away potential customers. 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) [and] (iv).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
In addition, Internet users who are
misdirected to Respondent’s website may mistakenly believe that the website is
sponsored by or affiliated with Complainant.
Thus, the Panel concludes that
Respondent has evidenced bad faith registration and use pursuant to Policy ¶
4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although
Complainant’s principal website is <century21.com>, many Internet users
are likely to use search engines to find Complainant’s website, only to be
mislead to Respondent’s website at the <century21realty.biz> domain name,
which features links for competing real estate websites. Therefore, it is likely that Internet users
seeking Complainant’s website, but who end up at Respondent’s website, will be
confused as to the source, sponsorship, affiliation or endorsement of
Respondent’s website.”); see also Associated
Newspapers Ltd. v. Domain Manager, FA
201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to Policy
¶ 4(b)(iv) because the domain name provided links to Complainant's competitors
and Respondent presumably commercially benefited from the misleading domain
name by receiving ‘click-through-fees.’”).
DECISION
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 <genericxenical.us>
domain name be TRANSFERRED from Respondent to Complainant.
Hon.
(Ret.) Nelson A. Diaz,
Panelist
Dated: November 14, 2006
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