Takeda Pharmaceutical Company Limited v. Internet Commerce Corp.
Claim Number: FA0703000933916
Complainant is Takeda Pharmaceutical Company Limited (“Complainant”), represented by B.
Brett Heavner, of Finnegan, Henderson, Farabow, Garrett &
Dunner, L.L.P.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <order-rozerem.com> and <rozerim.org>, registered with Network Solutions, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On March 12, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 2, 2007 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@order-rozerem.com and postmaster@rozerim.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <order-rozerem.com> and <rozerim.org> domain names are confusingly similar to Complainant’s ROZEREM mark.
2. Respondent does not have any rights or legitimate interests in the <order-rozerem.com> and <rozerim.org> domain names.
3. Respondent registered and used the <order-rozerem.com> and <rozerim.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Takeda Pharmaceutical Company Limited,
manufacturers and distributes a variety of pharmaceutical products. In connection with the provision of these
products and services, Complainant maintains common law rights in the ROZEREM
mark, which identifies Complainant’s medication for insomnia. Complainant asserts that its rights in the
ROZEREM mark date to
Respondent registered the disputed domain names on
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.
Although Complainant does not maintain a federal trademark
registration for its ROZEREM mark, previous panels have consistently held that
common law rights in a mark are sufficient grounds to file a complaint under
the UDRP. See
Complainant asserts
rights in the ROZEREM mark from
Complainant maintains
that Respondent’s disputed domain names are confusingly similar to
Complainant’s ROZEREM mark. In the case
of the <order-rozerem.com>
domain name, the disputed domain name contains Complainant’s mark in its
entirety, adds the generic term “order,” a hyphen, and the generic top-level
domain (“gTLD”) “.com.” In the case of
the <rozerim.org> domain
name, the disputed domain name is a common misspelling of Complainant’s ROZEREM
mark. Additionally, the disputed domain
name contains the gTLD “.org.” The Panel
finds that, in the case of the <order-rozerem.com>
domain name, the addition of a generic term, a hyphen, and a gTLD is
insufficient to preclude a finding of confusing similarity pursuant to Policy ¶
4(a)(i). Additionally, the Panel finds
that, in the case of the <rozerim.org> domain name, a common
misspelling of a protected mark combined with the addition of a gTLD fails to
sufficiently distinguish the disputed domain name from Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See Isleworth
Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
In cases where Complainant has made a prima facie case in support of its allegations, the burden shifts
to Respondent to set forth concrete evidence indicating that it has rights or
legitimate interests in the disputed domain names. See
Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov.
28, 2000) (finding that, under certain circumstances, the mere assertion by the
complainant that the respondent has no right or legitimate interest is
sufficient to shift the burden of proof to the respondent to demonstrate that
such a right or legitimate interest does exist); see also G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum
Respondent’s disputed domain names resolve to sponsored
links websites featuring advertisements and lists of other commercial
websites. The Panel finds that such use
is neither a bona fide offering of
goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii). See Wells
Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (holding that
the respondent’s use of “confusingly similar
derivatives of Complainant’s WELLS FARGO mark to divert Internet users to
websites featuring pop-up advertisements” was not a bona fide offering
of goods or services); see also Computer Doctor Franchise Sys., Inc. v.
Computer Doctor, FA 95396 (Nat. Arb. Forum
Complainant asserts that Respondent is not commonly known by
the disputed domain names. According to
Respondent’s WHOIS registration information, the registrant of the <order-rozerem.com> and <rozerim.org>
domain names is “Internet Commerce Corp.”
In light of the lack of countervailing evidence, the Panel finds that
Respondent is not commonly known by the disputed domain names pursuant to
Policy ¶ 4(c)(ii). See Am. W.
Airlines, Inc. v. Paik, FA 206396 (Nat.
Arb. Forum
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
Respondent’s <order-rozerem.com> domain name resolves to a website that features products that directly compete with Complainant’s products. The Panel finds that Respondent’s use of a confusingly similar domain name to redirect unsuspecting Internet users to a website that offers competing products amounts to a disruption of Complainant’s business, which evinces registration and use in bad faith in accordance with Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
Both disputed domain names resolve to websites that display
advertisements, from which Respondent presumably receives referral fees. The Panel finds that such use to attract
Internet users for commercial gain amounts to registration and use in bad faith
pursuant to Policy ¶ 4(b)(iv). See State Farm Mut. Auto. Ins. Co. v.
Northway, FA 95464 (Nat. Arb. Forum
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 <order-rozerem.com> and <rozerim.org> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: April 13, 2007
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