Genzyme Corporation v. Johnny Carpela
Claim Number: FA0704000959633
Complainant is Genzyme Corporation (“Complainant”), represented by Lawrence
R Robins, of Finnegan,
REGISTRAR
AND DISPUTED DOMAIN NAMES
The domain names at issue are <sinvisc.com>, <sinvisk.com>, and <synvisk.com>, 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 11, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 12, 2007.
On April 11, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <sinvisc.com>, <sinvisk.com>, and <synvisk.com> domain names are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. 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 April 13, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 3, 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@sinvisc.com, postmaster@sinvisk.com, and postmaster@synvisk.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 11, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sinvisc.com>, <sinvisk.com>, and <synvisk.com> domain names are confusingly similar to Complainant’s SYNVISC mark.
2. Respondent does not have any rights or legitimate interests in the <sinvisc.com>, <sinvisk.com>, and <synvisk.com> domain names.
3. Respondent registered and used the <sinvisc.com>, <sinvisk.com>, and <synvisk.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Genzyme Corporation, is a developer and marketer of biotechnology products and services, including a pharmaceutical treatment for osteoarthritis of the knee that it markets under the SYNVISC mark. Complainant has continuously used this mark in commerce since 1985. In 2006 alone, Complainant earned $233 million in revenue connected to sales of this pharmaceutical treatment. A recent article in The Boston Globe reported use of Complainant’s SYNVISC product by professional athletes, including baseball players Keith Foulke and Randy Johnson.
Complainant holds a trademark registration for the SYNVISC mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,418,125 issued November 25, 1986).
Respondent registered the <synvisk.com> domain name on February 13, 2002, and the <sinvisc.com> and <sinvisk.com> domain names on February 26, 2002. Respondent is using the domain names to operate commercial web directories featuring links to other pharmaceutical companies.
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.
Through registration of the SYNVISC mark with the USPTO, Complainant has sufficiently demonstrated its rights in the mark pursuant to Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainants federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (concluding that the complainant demonstrated its rights in the SPORTSCENTER mark through its valid trademark registrations with the USPTO and similar offices around the world).
Respondent’s <sinvisc.com>, <sinvisk.com>, and <synvisk.com> domain names are all common misspellings
of Complainant’s SYNVISC mark. In State Farm Mutual Auto Insurance Company v.
Unasi Management, Inc., FA 440325
(Nat. Arb. Forum Apr. 29, 2005), the respondent registered eighteen domain
names that were misspelled versions of the complainant’s STATE FARM INSURANCE
mark. The panel stated, “Respondent’s
registration of domain names consisting of typographically erroneous versions
of Complainant’s mark does not negate the confusing similarity of the domain
names with Complainant’s mark pursuant to Policy ¶ 4(a)(i)).”
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant has the initial burden of proving that Respondent does not have any rights or legitimate interests in the domain names in dispute. Once Complainant has done so, the burden shifts to Respondent to demonstrate that it does have rights or legitimate interests. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (finding that Policy ¶ 4(a)(ii) requires that the complainant must show that the respondent has no rights to or legitimate interests in the subject domain name and that once the complainant makes this showing, the burden of production shifts to the respondent to rebut the complainant’s allegations); see also SEMCO Prods., LLC v. dmg world media (uk) ltd, FA 913881 (Nat. Arb. Forum Apr. 9, 2007) (concluding that under Policy ¶ 4(a)(ii) and the factors listed in Policy ¶ 4(c), a complainant must first make a prima facie case that the respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, that the respondent is not commonly known by the disputed domain name, and that the respondent is not making a legitimate noncommercial or fair use of the disputed domain name before the burden shifts to the respondent to show otherwise).
Respondent has not responded to the Complaint. This raises a presumption that it does not have any rights or legitimate interests in the domain names in dispute. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). Nevertheless, the Panel will still examine the record to observe whether or not Respondent has any rights or legitimate interests pursuant to the factors listed in Policy ¶ 4(c).
Under Policy ¶ 4(c)(ii), Respondent can demonstrate rights
or legitimate interests in the domain names in dispute if it is commonly known
by the domain names. Because Respondent
has failed to respond, however, the only available evidence is the WHOIS
record, which lists “Johnny Carpella” as the registrant. Therefore, the Panel finds that Respondent is
not commonly known by the <sinvisc.com>, <sinvisk.com>, and <synvisk.com> domain names according to Policy ¶
4(c)(ii). See Ed. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb.
Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by
the <thirteen.com> domain name based on all evidence in the record, and
the respondent did not counter this argument in its response); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21,
2007) (concluding a respondent has no rights or legitimate interests in a
disputed domain name where there is no evidence in the record indicating that
the respondent is commonly known by the disputed domain name).
Respondent is using the <sinvisc.com>, <sinvisk.com>, and <synvisk.com> domain names as web portals that display
links to various other pharmaceutical companies that compete with
Complainant. In Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003), the respondent
registered the <wwwzyban.com> domain name and was redirecting Internet
users to a pharmaceutical site offering products that competed with the
complainant. The panel held that the
respondent was not using the domain name within the parameters of Policy ¶
4(c)(i) or (iii).
Furthermore, the <sinvisc.com>, <sinvisk.com>, and <synvisk.com> domain names are all common misspellings
of Complainant’s SYNVISC mark. In Microsoft Corp. v. Domain Registration
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s websites at the <sinvisc.com>, <sinvisk.com>, and <synvisk.com> domain names display links to competing pharmaceutical companies. Such registration and use indicates that Respondent is disrupting Complainant’s business under the SYNVISC mark, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Moreover, Respondent’s <sinvisc.com>, <sinvisk.com>, and <synvisk.com> domain names each resolve to a commercial web directory with links to other pharmaceutical companies. It is likely that Respondent is profiting from diverting Internet users to these other websites in the form of click-through fees. Respondent is therefore taking advantage of the confusing similarity between the disputed domain names and Complainant’s registered SYNVISC mark and profiting from the goodwill associated with the mark. The Panel finds that Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting from click-through fees); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The <sinvisc.com>, <sinvisk.com>, and <synvisk.com> domain names each take advantage of
Internet users who mistakenly misspell Complainant’s SYNVISC mark when entering
it into a domain name. Respondent is
presumably profiting from diverting these Internet users to its own
websites. As a result, Respondent’s registration and use of these
typosquatted domain names provides additional evidence of bad faith under
Policy ¶ 4(a)(iii). See Nextel Commc'ns Inc. v. Geer, FA
477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent's
registration and use of the <nextell.com> domain name was in bad faith
because the domain name epitomized typosquatting in its purest form); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June
23, 2003) (finding that the respondent engaged in typosquatting, which is
evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sinvisc.com>, <sinvisk.com>, and <synvisk.com> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: May 22, 2007
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