Complainant is N.V. Organon Corp. of Oss, Kingdom of the Netherlands, represented by Lowenstein Sandler PC, United States of America.
Respondents are Vitalline Trading Ltd., Dragic Veselin of Belgrade, Republic of Serbia; PrivacyP of Munsbach, Grand Duchy of Luxembourg. 2. The Domain Name and Registrar
The disputed domain name is registered with Netlynx Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2011. On February 8, 2011, the Center transmitted by email to Netlynx Inc. a request for registrar verification in connection with the disputed domain name. On February 9, 2011, Netlynx Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 14, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed amended Complaints on February 14 and February 15, 2011.
The Center verified that the Complaint together with the amended Complaints 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 Respondent of the Complaint, and the proceedings commenced on February 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2011. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 11, 2011.
The Center appointed Nasser A. Khasawneh as sole panelist in this matter on March 21, 2011. 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
Complainant is owner of many registrations for the trademark ORGANON and derivative marks, including for example Community Trade Mark number 00049088 in International Classes 5 and 42, registered November 25, 1999.
The disputed domain name was registered June 3, 2009. The disputed domain name routes to an online pharmacy webpage offering products of Complainant and its competitors.1 5. Parties’ Contentions A. Complainant
Complainant contends that the webpage to which the disputed domain name routes offers for sale Complainant’s pharmaceutical products, consisting of anabolic steroids, without authorization and without providing important medical guidance necessary to the safe use of Complainant’s products.
In short, Complainant alleges under the Policy that the disputed domain name is confusingly similar to a trademark in which Complainant has rights, Respondents have no rights or legitimate interests in use of the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.
On the basis of allegations elaborating the above legal points, Complainant seeks transfer of the disputed domain name. B. Respondent
Respondents did not reply to Complainant’s contentions.2 6. Discussion and Findings A. Notification of Proceedings to Respondent
The Policy is intended to resolve disputes concerning allegations of abusive domain name registration or acquisition, in an efficient manner. Fundamental due process requirements must nonetheless be met. The requirement that a respondent have notice of proceedings that may substantially affect its rights is such a fundamental requirement. The Policy and the Rules establish procedures to assure that respondents receive adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The Center notified Respondents of these proceedings by using a courier service, directed to the address listed in the WhoIs record for the disputed domain name. The courier package was not deliverable at Respondent Trading Ltd./Dragic Veselin’s listed address. The Center also notified Respondents by using email addresses provided by the registrar in its verification response to the Center.
The Panel is satisfied that by sending communications to the contacts made available through the registrar, and those provided by the registrant to the registrar as listed in the WhoIs records, the Center has exercised care and has fulfilled its responsibility under paragraph 2 of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon Respondents. B. Substance of the Complaint and Applicable Standards
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondents have no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A complainant must establish these elements even if the respondent does not reply. See The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. In the absence of a response, the Panel may also accept as true the reasonable factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). C. Identical or Confusingly Similar
The Panel agrees with Complainant that the disputed domain name is confusingly similar to Complainant’s trademarks.
Panels disregard the “.com” suffix in evaluating confusing similarity. E.g., VAT Holding AG v V,WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-1315.
The Panel concludes that the addition of the descriptive term “shop” does not negate the confusing similarity created by Respondent’s complete inclusion of the ORGANON trademark in the disputed domain name. E.g., Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc.,WIPO Case No. D2006-1137; Hoffmann-La Roche Inc. v. Aneko Bohner,WIPO Case No. D2006-0629.
The Panel finds that the disputed domain name is confusingly similar to the ORGANON trademarks of Complainant and that the requirements of paragraph 4(a)(i) of the Policy are therefore fulfilled. D. Rights or Legitimate Interests
The Panel also concludes that Respondents have no rights or legitimate interests in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i)-(iii).
A complainant must show a prima facie case proving that a respondent lacks rights or legitimate interests. E.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005).
Complainant avers that Respondent was not commonly known by the disputed domain name, and that Respondent has no license or authorization from Complainant to use the trademarks or to sell Complainant’s products. In the absence of a response, the Panel accepts these undisputed factual averments as true.
The Panel also accepts as true Complainant’s statement that Respondent’s website offers for sale online Complainant’s products.3 Screens from Respondent’s website show that the disputed domain name is also being used to promote products of Complainant’s competitors, providing a list of other pharmaceutical manufacturers in addition to their products. The Panel therefore finds that Respondent’s commercial use of the disputed domain name demonstrates Respondent’s lack of a legitimate noncommercial interest in, or fair use of the disputed domain name. E.g., Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784.
The Panel also finds there is no bona fide offering of goods or services by Respondent. Respondent’s commercial activities undertaken through use of the disputed domain name are neither fair use nor bona fide under the Policy. See, e.g. America Online, Inc. v. Xianfeng Fu,WIPO Case No. D2000-1374.
Since Respondent’s website promotes products of Complainant’s competitors, this case is distinguishable from instances in which a respondent uses the disputed domain name to make bona fide offers solely respecting products that a complainant itself placed on the market.
Filing no response, Respondent has not invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the disputed domain name.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied. E. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether there is no response to the complaint, concealment of identity, and a lack of conceivable good faith uses for the domain name. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel finds that Respondent initially registered the disputed domain name in bad faith. The Complaint provides no evidence to support its averment that its trademark has been used since 1923. However, in the absence of a response by Respondent and on the basis of hundreds of trademark registrations listed in an annex to the Complaint, the Panel is prepared to accept that the trademark has enjoyed widespread use across the world for several years predating registration of the disputed domain name.
The Panel infers that Respondent registered the disputed domain name intending to trade on Complainant’s trademark. On the website to which the disputed domain name routed until recently, the display of Complainant’s products and the usage of Complainant’s trademarks also confirms Respondent’s awareness of the trademarks. The Panel concludes that Respondent deliberately attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark.
Online screens from Respondent’s website show that the disputed domain name is used not only to promote sales of Complainant’s products, but also to promote the products of other pharmaceutical companies. The Panel concludes that this activity demonstrates bad faith use by Respondent. Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784 (citing Google, Inc v. and Jimmy Siavesh Behain,WIPO Case No. D2000-1240; Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim,WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH,WIPO Case No. D2003-0088). Respondent’s lack of a response to the Complaint and the provision of erroneous or incomplete contact information to the registrar are cumulative evidence of bad faith use. E.g., Telstra Corporation Limited v. Nuclear Marshmallows, supra.
The Panel therefore concludes that the disputed domain name was registered and is being 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 domain name be transferred to Complainant.
Nasser A. Khasawneh
Sole Panelist
Dated: March 27, 2011
1 The Panel has undertaken limited research by visiting the website to which the disputed domain name routes. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.5.
2 References to conduct , activities or intention of “Respondent” below signify the individual Respondent Vitalline Trading Ltd., Dragic Veselin.
3 Exhibits to the Complaint showing the content of Respondent’s website display the offer of the products for direct sale on line.
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