Talecris Biotherapeutics Inc. v. Maltuzi
Claim Number: FA0703000949710
Complainant is Talecris Biotherapeutics Inc. (“Complainant”), represented by Maury
M. Tepper of Womble Carlyle Sandridge & Rice PLLC,
PO Box 831, Raleigh, NC 27602.
Respondent is Maltuzi (“Respondent”), 800 West El Camino Real Suite 180,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <talecrisplama.com>, registered with Nameking.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically March 30, 2007; the National Arbitration Forum received a hard copy of the Complaint April 2, 2007.
On April 5, 2007, Nameking.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <talecrisplama.com> domain name is registered with Nameking.com, Inc. and that Respondent is the current registrant of the name. Nameking.com, Inc. verified that Respondent is bound by the Nameking.com, Inc. registration agreement and thereby has 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 9, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 30, 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@talecrisplama.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 6, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <talecrisplama.com>, is confusingly similar to Complainant’s TALECRIS mark.
2. Respondent has no rights to or legitimate interests in the <talecrisplama.com> domain name.
3. Respondent registered and used the <talecrisplama.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Talecris Biotherapeutics, Inc., researches, develops, and markets products for use in the prevention, treatment, and alleviation of a variety of health disorders and diseases. Among the products marketed, Complainant is a leading manufacturer of blood plasma products. Complainant provides information for patients and physicians at the <talecrisplasma.com> domain name and has spent substantial amounts of money marketing and advertising its products under the TALECRIS mark. Currently, Complainant has several pending trademark applications with the United States Patent and Trademark Office (“USPTO”) (Ser. Nos. 78/551,985; 78/552,024; 78/703,084).
Respondent registered the <talecrisplama.com> domain name February 9, 2007. Respondent’s domain name resolves to a website containing links for competing plasma processors as well as links for airline tickets, car insurance, and mortgage 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 will draw such inferences as the Panel 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 Complainant to 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 is currently awaiting the results of several trademark applications with the USPTO, the Panel finds that a trademark registration is not necessary to establish rights in a mark under Policy ¶ 4(a)(i), so long as the complainant has established common law rights in the mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Complainant contends that it has spent large sums of money marketing, promoting, and advertising its various blood plasma products under the TALECRIS mark since January 21, 2005. In light of Complainant’s continuous use of the TALECRIS mark since that time, the Panel finds that Complainant sufficiently established rights in the mark for purposes of Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”).
Complainant further contends that the disputed domain name that Respondent registered, <talecrisplama.com>, is confusingly similar to Complainant’s mark. Respondent’s disputed domain name features Complainant’s TALECRIS mark in its entirety and adds a misspelled variation of the term “plasma.” The Panel finds that the term “plasma” has a direct relation to Complainant’s business, which is partially conducted through Complainant’s legitimate website at the <talecrisplasma.com> domain name. As such, the Panel finds that Respondent’s <talecrisplama.com> domain name is confusingly similar to Complainant’s TALECRIS mark for purposes of Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established with extrinsic proof in this proceeding that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain name. Complainant contends that Respondent has no such rights to or legitimate interests in the <talecrisplama.com> domain name. Under certain circumstances, Complainant’s assertion may establish a prima facie case, resulting in a burden shift from Complainant to Respondent to establish that Respondent does have rights and legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”). Because Respondent has failed to respond to Complainant’s Complaint, the Panel infers that Respondent does not have rights or legitimate interests in the <talecrisplama.com> domain name under Policy ¶ 4(a)(ii). 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). However, the Panel chooses to examine the evidence under the Policy ¶ 4(c) elements.
Complainant contends that Respondent is not commonly known by the <talecrisplama.com> domain name and is not licensed to register names featuring Complainant’s TALECRIS mark. Moreover, the WHOIS information for the disputed domain name shows “Maltuzi LLC” as the domain name registrant. The Panel finds that without evidence suggesting otherwise, Respondent has not established rights or legitimate interests in the <talecrisplama.com> domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant submitted evidence to support its contention that Respondent is using the <talecrisplama.com> domain name to resolve to a website that features links to various websites offering blood plasma products that attempt to compete with Complainant’s products as well as links to companies offering other unrelated commercial products and services. The Panel infers from Respondent’s use that Respondent collects referral fees for each misdirected Internet user. The Panel finds that Respondent’s use 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 pursuant to Policy ¶ (c)(iii). See Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no rights or legitimate interests in the disputed domain name where the respondent was using the complainant’s mark to redirect Internet users to a website offering credit card services unrelated to those services legitimately offered under the complainant’s mark); 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).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent acted in bad faith in registering and using the disputed domain name. Complainant alleges that Respondent is using the <talecrisplama.com> domain name to operate a website that provides Internet users with links to various blood plasma product websites that attempt to compete with Complainant. The Panel finds that Respondent’s use of the disputed domain name constitutes a disruption of Complainant’s business and evinces bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); 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).
Furthermore, Respondent’s use will likely cause confusion as to Complainant’s sponsorship of and affiliation with the resulting websites. The Panel finds that such use of domain names confusingly similar to Complainant’s mark for Respondent’s commercial gain is additional evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website).
The Panel finds that Complainant 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 <talecrisplama.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 18, 2007.
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