Auxilium Pharmaceuticals, Inc. v. W D
Claim Number: FA1402001542333
Complainant is Auxilium Pharmaceuticals, Inc. (“Complainant”), represented by Ronald J. Ventola II of SCHNADER HARRISON SEGAL & LEWIS LLP, Pennsylvania, USA. Respondent is W D (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <xiaflex.org> and <xiaflex.info>, registered with GoDaddy.com, LLC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 5, 2014; the National Arbitration Forum received payment on February 11, 2014.
On February 5, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <xiaflex.org> and <xiaflex.info> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 11, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 3, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@xiaflex.org, postmaster@xiaflex.info. Also on February 11, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 7, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
1. Complainant has rights in the XIAFLEX mark under Policy ¶ 4(a)(i).
a. Complainant owns registrations for the XIAFLEX mark and has used it since at least March 4, 2010 for pharmaceutical preparations, specifically, to treat fibroproliferative disease conditions.
i. Complainant provides evidence of registrations with the United States Patent and Trademark Office (“USPTO”) (E.g., Reg. No. 3,785,074 registered May 4, 2010).
b. Respondent’s <xiaflex.org> and <xiaflex.info> domain names are identical to Complainant’s XIAFLEX mark.
2. Respondent has no rights or legitimate interests in the <xiaflex.org> and <xiaflex.info> domain names.
a. There is no evidence that Respondent is commonly known by the disputed domain names or has been known by the disputed domain names within the period of time relevant for the Complaint.
b. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names.
i. Prior to Respondent’s removal of the website associated with the <xiaflex.org> domain name, the website had the appearance of an advertisement falsely suggesting to Internet users that Complainant’s product can be used to treat cellulite, and that Complainant is endorsing the statements on the website. Respondent’s use of this website both unlawfully promoted XIAFLEX for an unapproved use and misled consumers to believe that Complainant was involved in Respondent’s unlawful statements.
3. Respondent registered and is using the <xiaflex.org> and <xiaflex.info> domain names in bad faith.
a. Respondent is holding or parking unused domain names consisting of Complainant’s trademark in bad faith.
b. Respondent attempts to conceal its real identity by registering the disputed domain names while providing incomplete and inaccurate information for its name and address. The WHOIS information for the disputed domain names lists “W D” as registrant.
Respondent’s <xiaflex.org> and <xiaflex.info> domain names were created on May 18, 2012.
1. Respondent’s <xiaflex.org> and <xiaflex.info> domain names is confusingly similar to Complainant’s XIAFLEX mark.
2. Respondent does not have any rights or legitimate interests in the <xiaflex.org> and <xiaflex.info> domain names.
3. Respondent registered or used the <xiaflex.org> and <xiaflex.info> domain names in bad faith.
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 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.
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.”).
Complainant asserts that it has rights in the XIAFLEX mark under Policy ¶ 4(a)(i). Complainant claims that it owns registrations for the XIAFLEX mark and has used it since at least March 4, 2010 for pharmaceutical preparations, specifically, to treat fibroproliferative disease conditions. Complainant provides evidence of registrations with the USPTO (E.g., Reg. No. 3,785,074 registered May 4, 2010). See Exhibit A. Panels have previously found that providing evidence of a registration for a given mark with a recognized trademark authority is sufficient do establish rights in that mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The Panel concludes that Complainant has rights in the XIAFLEX mark.
Complainant additionally asserts that Respondent’s <xiaflex.org> and <xiaflex.info> domain names are identical to Complainant’s XIAFLEX mark. Panels have traditionally found that adding a generic top-level domain such as “.org” or “.info” does not distinguish a disputed domain name from the registered mark. See Koninklijke Philips Elecs. NV v. Goktas, D2000-1638 (WIPO Feb. 8, 2001) (finding that the domain name <philips.org> is identical to the complainant’s PHILIPS mark); see also PepsiCo, Inc. v. Shah, FA 103934 (Nat. Arb. Forum Mar. 4, 2002) (finding the <pepsico.info> domain name identical to the complainant’s PEPSICO mark). The Panel finds that Respondent’s <xiaflex.org> and <xiaflex.info> domain names are identical to Complainant’s XIAFLEX mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the <xiaflex.org> and <xiaflex.info> domain names. Complainant contends that there is no evidence that Respondent is commonly known by the disputed domain names or has been known by the disputed domain names within the period of time relevant for this Complaint. Complainant argues that Respondent registered the disputed domain names more than five years after Complainant selected and applied to register the mark XIAFLEX, and more than two years after Complainant began using its mark in commerce. See Exhibit A-H. The Panel notes that the WHOIS information for the disputed domain names lists “W D” as registrant of the names. Panels have routinely found that a respondent is not commonly known by a disputed domain name where there is no evidence on the record indicating that respondent is commonly known by the disputed domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). The Panel concludes that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant additionally contends that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶¶ 4(c)(i) or 4(c)(iii). Complainant states that prior to Respondent’s removal of the website associated with the <xiaflex.org> domain name, the website had the appearance of an advertisement, falsely suggesting to Internet users that Complainant’s product can be used to treat cellulite, and that Complainant is endorsing the statements on the website. See Exhibit I. Complainant argues that Respondent’s use of this website both unlawfully promoted XIAFLEX for an unapproved use and misled consumers to believe that Complainant was involved in Respondent’s unlawful statements. The Panel notes that Exhibit I is illegible, however, the Complainant claims that the website states the following, “XIAFLEX is a prescription medication originally used to treat patients with excessive collagen deposits in the hands. Cellulite, is another condition that results from abnormal collagen deposits, and is characterized by dimpling of the skin around the thighs and buttocks. Cellulite results from fibrous septae that causes skin dimpling and affects up to 98% of women. XIAFLEX is thought to be a potential treatment for cellulite, and is currently being investigated for this indication.” Prior panels have found that using an identical or confusingly similar domain name to resolve to a website using complainant’s mark and referencing its product does not confer rights or legitimate interests in a domain name. See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). The Panel concludes that Respondent has no rights or legitimate interests in the <xiaflex.org> domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii) when Respondent makes untrue representations as to suggested uses of Complainant’s products.
Complainant asserts that Respondent has removed the content on the <xiaflex.org> domain name and it now resolves to a Google error page. See Exhibit J. Panels have frequently found that a respondent does not have rights or legitimate interests in a domain name that resolves to an inactive website or error page. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). The Panel concludes that Respondent’s current use of the <xiaflex.org> domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii).
The Panel notes Exhibit K displaying the website resolving from Respondent’s <xiaflex.info> domain name. The Panel sees that this screenshot was taken from October 2013 and displays headings including, “Is this your domain? Let’s turn it into a website!” “Would you like to buy this domain?” “Easily build your professional website,” and “Discover a new way to work.” Panels have previously found that using an identical or confusingly similar domain name to resolve to a website featuring advertisements and links unrelated to a complainant’s business does not convey rights or legitimate interests in a disputed domain name. See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does 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).”). The Panel finds that Respondent has no rights or legitimate interests in the <xiaflex.info> domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii).
Complainant asserts that Respondent registered and is using the <xiaflex.org> and <xiaflex.info> domain names in bad faith under Policy ¶ 4(b)(iv). Complainant argues that Respondent knowingly registered the disputed domain names using Complainant’s XIAFLEX mark to attract Internet users to its websites by creating a likelihood of confusion with Complainant’s mark. As stated previously, Complainant argues that Respondent’s prior use of the <xiaflex.org> domain name to resolve to a website both unlawfully promoted XIAFLEX for an unapproved use and misled consumers to believe that Complainant was involved in Respondent’s unlawful statements concerning the usefulness of XIAFLEX products in untested and unadvertised uses. Panels have frequently found that using an identical domain name to resolve to a website referencing a complainant’s products for profit is bad faith use and registration. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”). The Panel concludes that Respondent registered and used the <xiaflex.org> domain name in bad faith under Policy ¶ 4(b)(iv).
The Panel notes that Respondent’s current use of the <xiaflex.org> domain name to resolve to a website featuring a Google error page is also an indication of bad faith use and registration. See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose). The Panel therefore concludes that Respondent’s current use of the <xiaflex.org> domain name suggests bad faith use and registration under Policy ¶ 4(b)(iv).
Likewise, the Panel notes that Respondent’s use of the <xiaflex.info> domain name, as discussed previously, to resolve to a website offering advertisements and links to third-party websites indicates bad faith use and registration under Policy ¶ 4(b)(iv). See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)). The Panel thus concludes that Respondent has registered and is using the<xiaflex.info> domain name in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xiaflex.org> and <xiaflex.info> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 19, 2014
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