WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Bayer HealthCare LLC v. Eighty Business Names Case No. D2010-1024 1. The Parties
The Complainant is Bayer HealthCare LLC of Pittsburgh, Pennsylvania, United States of America.
The Respondent is Eighty Business Names of Grand Cayman, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with R Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2010. On June 22, 2010, the Center transmitted by email to R Corp. a request for registrar verification in connection with the disputed domain name. On June 28, 2010, R Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 30, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 20, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 21, 2010.
The Center appointed Angela Fox as the sole panelist in this matter on August 4, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a medical and healthcare products company. One of its products is an anti-asthmatic preparation called Bronkaid, which the Complainant, either itself or through its predecessors, has sold continuously since 1964. The Complainant refers to its website at “/bronkaid.cfm”, which describes Bronkaid as a medicine in caplet form that provides “temporary relief of shortness of breath, tightness in the chest, wheezing and cough associated with bronchial asthma.”
The Complainant claims that through its marketing efforts and widespread use of the Bronkaid product, the public has come to recognize and favorably associate the BRONKAID mark with the Complainant. Consequently, the Complainant claims that it owns valuable goodwill in the BRONKAID mark.
The Complainant owns trademark registrations for BRONKAID. It points, in particular, to United States registration no. 788,673 and Canadian registration no. TMA 146195, dating from 1964 and 1965 respectively, copies of which were annexed to the Complaint.
The disputed domain name was registered on August 6, 2004, although the Complainant indicates that historical WhoIs records obtained on the “” website show that the Respondent only acquired it on June 6, 2009. Annexed to the Complaint was a print-out from the linked website made on June 10, 2010 showing that the disputed domain name was in use for a pay-per-click (“PPC”) landing site, featuring links to third party websites relating to Sudafed sinus medication, allergy relief, allergy medications, Delsym cough liquid, sinus problems, cold and cough products and Lipodrene diet pills. The print-out also shows links to “Related Searches” under the headings “Asthma Inhaler Cases”, “Asthma Relief”, and “Cold Inhaler”.
The Complaint was filed on June 22, 2010. The Panel notes that the PPC landing page was changed at some point after June 10, 2010 to display only links relating to dieting, weight loss and nutrition, as well as a link marked “Bronkaid”. Clicking on that link takes the visitor to further links relating to gold, silver and foreign exchange trading, online dating, and a further search option for “the top sites for Bronkaid”. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is identical to its registered BRONKAID trademark, differing only in the non-distinctive domain name suffix “.com.”
The Complainant further asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not been using the disputed domain name in connection with a bona fide offering of goods or services, is not commonly known by the domain name, and is not making a legitimate non-commercial or fair use of it. The Respondent's use of the disputed domain name in respect of a PPC landing site intentionally and misleadingly diverts users to goods offered by competitors of the Complainant, and is not therefore use in connection with a bona fide offering of goods or services within the meaning of paragraph 4 (c)(i) of the Policy. Moreover, because the Respondent is likely generating revenue from clicks to its “Sponsored Listings” for third-party commercial websites, it is not making a legitimate noncommercial or fair use of the disputed domain name. The Complainant has not, moreover, licensed the Respondent to use the BRONKAID mark in the disputed domain name.
Finally, the Complainant alleges that the Respondent acquired and has used the disputed domain name in bad faith. The Complainant avers that given its history of 45 years of use of the BRONKAID mark and its ownership of inter alia a United States federal trademark registration for the mark, the Respondent had actual or constructive knowledge of the Complainant's rights in the trademark BRONKAID at the time it acquired the disputed domain name.
The Complainant contends that the Respondent has a history of cybersquatting behavior, which further supports an inference that it acquired and has used the disputed domain name in bad faith, as well. According to a reverse WhoIs search conducted by the Complainant on June 10, 2010, the Respondent has registered over 9,000 domain names, many of which incorporate the well-known trademarks of third parties or “typosquatting” variants of them, including , , , , , and . The Complainant also notes that the Respondent has been involved as respondent in at least two prior domain name disputes, which resulted in the transfer of domain names to the complainants (BAB, Inc. v. Eighty Business Names,WIPO Case No. D2010-0478; and Russell Frey d/b/a edHelper v. Eighty Business Names c/o Domain Administrator, NAF Case No. FA1293862).
The Complainant asserts that the Respondent is using the disputed domain name intentionally to attract Internet users to its website, for commercial gain in the form of PPC revenue arising from clicks on third-party sponsored links, by creating a likelihood of confusion with the Complainant's BRONKAID mark, which constitutes evidence of bad faith registration and use under paragraph 4 (b)(iv) of the Policy. B. Respondent
The Respondent did not reply to the Complainant's contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent's default. 6. Discussion and Findings
Under paragraph 4 (a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy. A. Identical or Confusingly Similar
The Complainant has proved that it owns trademark registrations for BRONKAID in the United States and Canada.
The disputed domain name is . The distinctive portion of the domain name is identical to the Complainant's registered trademark, BRONKAID. It is well-established that non-distinctive domain name suffixes such as “.com” may be disregarded when comparing domain names and trademarks.
The Panel therefore finds that the disputed domain name is identical to an earlier trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The burden of proving absence of a right or legitimate interest in a disputed domain name falls on the Complainant, but panels have long recognised that the information needed to prove such a right or interest is normally in the possession of the respondent.
In order to avoid requiring complainants to prove a negative, which will often be impossible, panels have typically accepted that once a complainant has established a prima facie case that a respondent lacks rights or legitimate interests, the burden of proof passes to the respondent to show that it does indeed have such a right or interest (see, inter alia, Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
In this case, the Complainant has put forward a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not authorised or licensed the Respondent to use a domain name including its BRONKAID trademark, and there is no evidence that the Respondent has commonly been known by a name corresponding to the disputed domain name. There is nothing on the record to indicate that the Respondent might enjoy a right or legitimate interest in the domain name, and it has not attempted to refute the Complainant's assertions.
Whatever the current content of the Respondent's website, it is clear from the print-out annexed to the Complaint that the Respondent has been using the disputed domain name to offer sponsored listings to third-party commercial websites in the medical and healthcare field, including “Related Searches” relating specifically to asthma inhaler cases and asthma relief. None of the sponsored links relates to the Bronkaid product, but a number of them relate to respiratory conditions such as coughs, colds and allergies, and all of them relate to medical or healthcare preparations. The Complainant alleges, and the Respondent has not denied, that the Respondent is deriving income from pay-per-click advertising for these sponsored links.
The distinctive part of the disputed domain name consists of the trademark BRONKAID, which is an invented, distinctive term with no descriptive meaning in respect of any goods. Therefore, the value of the disputed domain name in respect of the Respondent's revenue-generating PPC landing site is not vested in any descriptive, dictionary meaning, but rather in its trademark significance. The fact that the content shown to have been displayed on the Respondent's website included links to competitors of the Complainant indicates, moreover, that the Respondent is likely to have been aware of the Complainant's trademark in the field of asthma treatment. Consequently, in line with the approach taken by numerous other panels in similar cases, the Panel finds that the provision of PPC links through the Respondent's landing site is not a bona fide offering of services capable of conferring a right or legitimate interest under paragraph 4 (c)(1) of the Policy (see inter alia mVisible Technologies Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141; Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; Grundfos A/S v. Texas International Property Associates,WIPO Case No. D2007-1448; Champagne Lanson v. Development Services/MailP, Inc., WIPO Case No. D2006-0006; The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340; and Brink's Network, Inc. v. Asproductions,WIPO Case No. D2007-03530).
There is nothing in the evidence to suggest that the Respondent has any right or legitimate interest in the disputed domain name. The Panel finds that the Respondent has none. C. Registered and Used in Bad Faith
Under paragraph 4 (b)(iv) of the Policy, the following circumstances, if found by the Panel to be present, shall be deemed to be evidence of both registration and use in bad faith:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Respondent has not sought to contest the Complainant's assertion of long-standing continuous use of and reputation in the BRONKAID mark for anti-asthmatic preparations, nor to deny knowledge of the BRONKAID mark at the time it acquired the disputed domain name. Indeed, given the distinctive character of the BRONKAID mark and the fact that the linked PPC landing page provided sponsored links to third-party websites relating to asthma relief and offering products of interest to those suffering from respiratory conditions, the Panel finds it more likely than not that the Respondent acquired the disputed domain name in the knowledge of the Complainant's BRONKAID mark, and that indeed such awareness prompted the Respondent's acquisition and use of the disputed domain name. The Respondent has not denied that it derives PPC revenue from the linked site.
By using the disputed domain name in an attempt to profit from visitors clicking through to other commercial websites, the Panel finds that the Respondent has used the disputed domain name intentionally to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant's BRONKAID trademark. The disputed domain name is identical to the Complainant's registered trademark, and is inherently likely to attract Internet users seeking the Complainant. Once at the Respondent's website, visitors are confronted with links to competitors of the Complainant offering medical and healthcare products, including those intended for individuals suffering from respiratory conditions, the field in which the BRONKAID trademark is used.
In the Panel's view, the Respondent's use of the disputed domain name is inherently misleading, and the similar use of identical and confusingly similar domain names to lure Internet users to sites hosting links to providers of competing products or services has been held by numerous other panels to be prima facie evidence of bad faith (see inter alia American Automobile Association, Inc. v Texas International Property Associates, WIPO Case No. D2007-0592; and mVisible Technologies Inc. v. Navigation Catalyst Systems, Inc., supra; Mudd, (USA) LLC v. Unasi Inc. (MUDDPRODUCTS-COM-DOM), WIPO Case No. D2005-0591; and Volvo Trademark Holding AB v. Unasi, Inc.,WIPO Case No. D2005-0556).
Moreover, in the absence of any alternative explanation by the Respondent for its conduct, the fact that the Respondent has been found to have acquired and used other domain names in bad faith in very similar circumstances tends to suggest that the Respondent acted in bad faith in this case, as well (see BAB, Inc. v. Eighty Business Names,WIPO Case No. D2010-0478, and Russell Frey d/b/a edHelper v. Eighty Business Names c/o Domain Administrator, NAF Case No. FA1293862).
The Panel concludes that the disputed domain name was registered and has been used in bad faith under paragraph 4 (b)(iv) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Angela Fox
Sole Panelist
Dated: August 8, 2010
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