Hospira, Inc. v.
Claim Number: FA0704000959934
PARTIES
Complainant is Hospira, Inc. (“Complainant”), represented by Thad
Chaloemtiarana, of Pattishall, McAuliffe, Newbury, Hilliard
& Gerladson LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ourhospira.com>, registered with Compana, LLC.
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.
P-E H
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 12, 2007; the
National Arbitration Forum received a hard copy of the Complaint on April 16, 2007.
On April 20, 2007, Compana, LLC confirmed by e-mail to the
National Arbitration Forum that the <ourhospira.com> domain name is
registered with Compana, LLC and that
Respondent is the current registrant of the name. Compana, LLC
has verified that Respondent is bound by the Compana,
LLC 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 23, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 14, 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@ourhospira.com by e-mail.
A timely Response was received and determined to be complete on May 14, 2007.
An Additional Submission was submitted by
Complainant on May 21, 2007 and was determined to be deficient. The Panel
has chosen to consider this Additional Submission in its Decision.
An Additional Submission was submitted by
Respondent on May 29, 2007 and was determined to be timely filed. The Panel will therefore consider
this Additional Submission in its Decision.
On May 21, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Mr P-E H
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant states that, prior to Respondent’s registration of the disputed
domain name, it has adopted and continuously used the mark HOSPIRA throughout
the world and that the said mark is inherently distinctive. Complainant claims to have sold hundreds of
millions of dollars worth of goods and services under the HOSPIRA marks and
that the marks therefore have become well known, representing extraordinary
valuable goodwill.
Complainant argues that the disputed domain name is confusingly similar
to the HOSPIRA marks as it incorporates the mark in its entirety and merely
adds the generic term “our” to the beginning of the mark.
Respondent registered <ourhospira.com> after Complainant was publicly spun-off from its
predecessor and began trading on the New York Stock Exchange and after
Complainant had applied for the HOSPIRA marks. Complainant concludes that Respondent
therefore had constructive knowledge of Complainant’s trademark rights.
Respondent is not affiliated with Complainant and is
not otherwise authorized to use the HOSPIRA marks.
The disputed domain name resolves to a passive holding
page with automated links to various third-party sites and a search engine. Searching for “pharmaceuticals” with the
search engine takes the visitor to a site with links to Complainant’s
competitors. Respondent’s use is not in connection with a bona fide offering of goods or services, nor a legitimate
noncommercial or fair use.
Finally, Complainant states that Respondent has
established a pattern of registering domain names comprised of other parties’
well-known trademarks or close misspellings thereof and enclose WHOIS reports
to prove that statement.
B.
Respondent
Respondent denies Complainant’s accusations.
Respondent argues that Complainant had no registered trademark, nor any
common law rights, at the time of the registration of the disputed domain name
and concludes that it is therefore no need for the Panel to determine
similarity or confusion. According to
Respondent, Complainant has failed to present any evidence that it did anything
at all necessary to create common law rights in the name HOSPIRA during April
30, 2004 to November 27, 2004.
Respondent denies that the links on its website are intended to target
Complainant, and refer to some previous UDRP decisions stating that a domain
name holder is not responsible for the potentially offending content where they
have contracts with third parties that control that content.
Respondent states that it may fairly use descriptive or generic terms as a commercial domain name, regardless of whether they are federally-registered, as common words and generic terms are legitimately subject to registration as domain names on a “first-come, first-served basis.”
Respondent claims to have registered
the <ourhospira.com> domain name because it believed it was a term to which no party had exclusive
rights.
Finally, as Complainant had no common law rights at the time of the
registration of the disputed domain name, Respondent concludes that it did not
register, and is not using, the <ourhospira.com> domain name in bad faith.
C. Additional Submissions
Complainant:
In its Additional Submission, Complainant argues that the fact that it
has trademark registrations for HOSPIRA in the
Respondent:
Respondent objects to the filing of Complainant’s Additional
Submission, citing Rule 12 of the Policy, and states that the Forum’s
Supplemental Rule 7 is an improper modification of the Policy. Even so, Respondent argues that Complainant
has gone beyond the scope of Rule 7, “Complainant’s Additional Submission
contains no facts or evidence which could not have been filed in the
Complaint.”
Respondent thereafter argues that there was no federally registered
mark at the time of the domain name registration and the domain name could not
have been registered in bad faith absent a showing by Complainant that
Respondent was aware of Complainant’s alleged mark. Such can only be done via evidence that there
were common law rights of which Respondent was (or should have been) aware at
the time the disputed domain name was registered.
FINDINGS
Complainant is a global pharmaceutical and
medication delivery company, which was publicly spun-off from Abbott
Laboratories on April 30, 2004 and began trading on the New York Stock Exchange
on May 3, 2004. Complainant and its
predecessor in interest have been using the name / mark HOSPIRA since at least
April 30, 2004.
Complainant is the owner of the following
No. 3,032,878 HOSPIRA (word) for goods and
services in classes 5, 9, 10 and 44. Application
filed on October 17, 2003. Registration
date: December 20, 2005.
No 3,005,020 HOSPIRA MEDNET (word) for goods
in classes 9 and 16. Application filed
on December 19, 2003. Registration date:
October 4, 2005.
Complainant is also the owner of a number of
pending US applications for marks containing the word HOSPIRA. Further, Complainant is the owner of several
HOSPIRA trademark registrations in
Complainant has, since May 2004, promoted its
products and services via the Internet, using the domain names, and also
operates an intranet website accessible to employees under the “ourhospira” name.
Respondent registered the disputed domain
name on November 27, 2004.
No specific information is provided regarding
Respondent’s business.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 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;
(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.
As to Respondent’s arguments
regarding the use of Supplemental Rule No. 7, the Panel notes that both
Additional Submissions have been timely
filed and will therefore be considered in this dispute. It is the opinion of this Panel that none of
the Additional Submissions have amended the original Complaint/Response, but
also that no significant additional facts or arguments have been presented.
The relevant part of the disputed domain name
is “ourhospira.”
Complainant has established rights
in the HOSPIRA trademark in the
Complainant also holds trademark registrations for HOSPIRA in other
jurisdictions as well as in combination with other words and devices.
Respondent’s domain name registration <ourhospira.com> incorporates Complainant’s mark HOSPIRA, in combination with
the generic word “our.” The mere addition of generic terms to a mark is insufficient to
distinguish Respondent’s domain name from Complainant’s mark.
See Arthur Guinness Son
& Co. (
The domain name was registered on November 27, 2004, which is prior to any registration date of the Complainant’s trademarks. However, as stated in Digital Vision, Ltd v. Advanced Chemill Systems, D2001-0827 (WIPO Sept. 23, 2001) and other cases, Paragraph 4(a)(i) of the Policy does not require that the trademark be registered prior to the domain name. The fact that the disputed domain name predates Complainant’s trademark registration may only be relevant to the assessment of bad faith pursuant to Paragraph 4(a)(iii), which is considered below.
The Panel concludes that the <ourhospira.com> domain name is confusingly similar to the registered
trademark HOSPIRA, owned by Complainant, and accordingly that Complainant
has satisfied the requirements of Paragraph 4(a)(i) of
the Policy.
Once the Complainant makes a prima
facie case in support of its allegations, the burden shifts to Respondent
to show that it does have rights or legitimate interests pursuant to Policy ¶
4(a)(ii). 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).
Complainant contends that Respondent is using the disputed domain name to operate a website that displays third-party hyperlinks, some of which resolve to websites in direct competition with Complainant. Respondent argues that it has no control over the content appearing on the page. The Panel notes, from the printout of the said web page, that there is nothing on the corresponding website indicating Respondent’s lack of control. Rather, at the bottom of the website is indicated “© 2007 ourhospira.com. All Rights Reserved. Contact Us” with a link to an e-mail form at <ourhospira.com>. Even if Respondent were able to establish such lack of control, the Panel would still find Respondent responsible for these links because it is Respondent who has authorized the service provider to use the domain name at issue. See Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum Jul. 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Paragraph 4(c)(i) or 4(c)(iii) of the Policy); see also Ideal Products, LLC v. Manila Industries, Inc., FA 819490 (Nat. Arb. Forum Nov. 30, 2006) (“Respondent cannot duck its responsibility for the site by saying that others choose the content. Passive holding of a domain name is neither evidence of or against bad faith, and must be evaluated in light of all of the circumstances relating to the domain name.”).
Such use of a domain name, which is considered confusingly similar to
Complainant’s trademark, is neither a bona fide offering of goods or services
under Paragraph 4(c)(i) nor a legitimate noncommercial
or fair use under 4(c)(iii) of the Policy.
See 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).
Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name.
Respondent seems to be of the opinion that the HOSPIRA
trademark is generic, and therefore free to use – “Respondent may fairly use descriptive or generic terms as a commercial
domain name, regardless of whether they are federally-registered.” This Panel considers HOSPIRA as a
distinctive word, without any obvious descriptive meaning.
A simple search for the term “HOSPIRA,” using the TESS of the USPTO, would have revealed the existence of Complainant’s pending trademark applications prior to the registration of the domain name. Additionally, a domain name search and/or a search for the word HOSPIRA in any search engine would have revealed information on Complainant’s name and business. The Panel concludes that Respondent at least had constructive knowledge of Complainant’s trademark HOSPIRA. Registration of a domain name that is confusingly similar to another’s mark, despite knowledge of the mark holder’s rights, is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”).
Respondent’s use of the <ourhospira.com> domain name to
display hyperlinks to various third-party websites, including some in direct
competition with Complainant, constitutes disruption under Policy ¶ 4(b)(iii)
and is thus evidence of bad faith registration and use. See 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).
Complainant
refers to a number of other domain names, registered by the Respondent, comprised of other parties’ well-known trademarks or
close misspellings thereof , such as <abs-cnn.com>,
<caretoonnetwok.com>, <proctorngamble.com> and
<wwewrstling.com>. Respondent has
not denied nor commentented on the existence of these domain names. The Panel finds that Respondent has
demonstrated a pattern of registering domain names containing others’ marks in
order to prevent these parties from reflecting their marks in domain names, and
that such conduct is prohibited under Policy ¶ 4(b)(ii).
Referring to the above circumstances, the Panel concludes that
Respondent has registered and used the domain name in bad faith.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ourhospira.com> domain name be TRANSFERRED
from Respondent to Complainant.
P-E H
Dated: June 4, 2007
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