Complainant is Bayer HealthCare LLC of Pittsburgh, Pennsylvania, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, United States of America.
Respondent is Isaac Goldstein of Hong Kong, Hong Kong, SAR of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Tuvaludomains, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2011. On March 31, 2011, the Center transmitted by email to Tuvaludomains, LLC a request for registrar verification in connection with the disputed domain name. On April 1, 2011, Tuvaludomains, LLC transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on April 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 24, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 26, 2011.
The Center appointed Ross Carson as the sole panelist in this matter on May 3, 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 and its predecessors have manufactured, advertised, distributed and sold medical preparations under the CAMPHO-PHENIQUE trademark since at least as early as 1884. Complainant is the registered owner of United States trademark Registration No. 3668752 for the trademark CAMPHO-PHENIQUE registered in relation to the goods: Antiseptic preparations; preparations for the relief of pain; registered on August 18, 2009, based on first use since February 29, 1884. Complainant is also the owner of United States Trademark Registration No. 1251488 for the trademark CAMPHO-PHENIQUE registered in relation to the goods: Medicated lip balm; registered on September 20, 1983, based on first use since June 14, 1982. Complainant and its predecessors have sold hundreds of millions of dollars of medical products under the CAMPHO-PHENIQUE trademarks and Complainant spends large sums annually to promote the CAMPHO-PHENIQUE trademarks throughout the United States of America. According to Complainant, for many years, Complainant and consumers have used the designation “campho” to refer to the CAMPHO- PHENIQUE products. The designation “campho” uniquely and distinctly identifies Complainant’s CAMPHO-PHENIQUE products. A query on the Google search engine for the term “campho” returns five pages of results referring almost exclusively to Complainant’s CAMPHO-PHENIQUE products.
On October 30, 2001, Complainant’s related company, Bayer Corporation, registered the disputed domain name, . In 2005, the domain name registration was transferred to another company related to Complainant, Bayer AG. From the commencement of the operation of the “www.” website in 2001 the domain name resolved to a website identical to Complainant’s website at “” and like that website provided information on Complainant’s CAMPHO-PHENIQUE products.
On December 20, 2010, Complainant’s registration for the disputed domain name inadvertently lapsed. Immediately after Complainant’s redemption period ended approximately one month later, the disputed domain name was registered by Respondent through a back order. According to the WhoIs records, Respondent’s registration of the disputed domain name was effectuated on January 23, 2011, long after Complainant adopted, used and registered its CAMPHO-PHENIQUE trademarks. 5. Parties’ Contentions A. Complainant A.1. Identical or Confusingly Similar
Complainant states that its registered trademarks CAMPHO-PHENIQUE referred to in section 4 above have been in use since at least as early as 1884 and are well-known throughout the United States of America in association with the medical products for which they are registered.
Complainant submits that the disputed domain name is confusingly similar to Complainant’s registered trademarks CAMPHO-PHENIQUE because it is an abbreviated version of the trademarks. See, Banque Saudi Fransi v. ABCIB,WIPO Case No. D2003-0656 (finding , which originally belonged to a complainant before the complainant’s registration mistakenly lapsed, confusingly similar to complainant’s AL BANK AL SAUDI AL FRANSI trademark); Algemeen Nederlands Persbureau ANP B.V. v. European Travel Network,WIPO Case No. D2004-0520, (“Distinctive elements of the Complainant’s marks, notably the acronym ANP, are reproduced entirely in the domain name”). A.2. No Rights or Legitimate Interests in respect of the Domain Name
Complainant submits that Respondent is not affiliated or related to Complainant in any way, nor is Respondent licensed by Complainant or otherwise authorized to use the CAMPHO-PHENIQUE trademarks. See, AltaVista Company v. Jean-Daniel Gamache, NAF Claim No. FA95249, (the respondent was not licensed to use the complainant’s mark and therefore had no rights or legitimate interests in the domain name).
Complainant further submits that Respondent is not generally known by the disputed domain name and has not acquired any trademark or service mark rights in the disputed domain name. See, Gallup Inc. v Amish Country Store, NAF Claim No. FA96209 (the respondent does not have rights in the domain name incorporating another’s mark when the respondent is not known by that mark).
Complainant further states that Respondent is not offering the goods at issue, but is merely using the disputed domain name to list links to external websites, some of which offer goods from competitors of Complainant. Even though some of those links pertain to Complainant, many do not. Using Complainant’s CAMPHO-PHENIQUE trademarks to bring Internet users to websites that contain links to both Complainant’s products and products of Complainant’s competitors does not constitute a bona fide offering of goods or services. See, American Safety Institute, Inc. v. Jordan Meagar, NAF Claim No. FA1219231 (the respondent’s use of a domain name in dispute for a “parking” page, with hyperlinks to businesses offering services competitive with the complainant is “neither a bona fide offering of goods or services under Policy paragraph 4(c)(i) nor a legitimate noncommercial or fair use under Policy paragraph 4(c)(iii)”). A.3. Registration in Bad Faith
Complainant submits that Respondent acquired the disputed domain name long after Complainant’s adoption, use and registration of the CAMPHO-PHENIQUE trademarks. The widespread use and long history of the CAMPHO-PHENIQUE trademarks leads to the necessary conclusion that Respondent registered the disputed domain name with actual and constructive knowledge of Complainant’s rights. See, Pavilion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse.,WIPO Case No. D2000-1221 (finding the respondent’s domain names to be “so obviously connected” to the Complainants that “use or registration by anyone other than complainants suggests ‘opportunistic bad faith’”). A.4. Use in Bad Faith
Complainant states that based on the facts that the disputed domain name disrupts Complainant’s business; is deliberately used for commercial gain to attract Internet users to Respondent’s website based on likelihood of confusion with Complainant’s CAMPHO-PHENIQUE trademarks; and is part of a pattern of conduct preventing trademark owners from reflecting their trademarks in domain names, it is apparent Complainant satisfies the requirements of paragraphs 4(b)(iii) and 4(b)(iv) of the Policy.
Complainant states that the disputed domain name resolves to a pay-per-click parking page that offers links to products directly competing with Complainant’s products. Respondent is using the disputed domain name in an attempt to intentionally attract Internet users to Respondent’s website for commercial gain, based on a likelihood of confusion with Complainant and its CAMPHO-PHENIQUE trademarks. See, Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267 (finding bad faith where respondent used the disputed domain name for a “parking” page that contained sponsored links to sites selling products competitive with complainant’s products).
Complainant further states that by using the disputed domain name to provide commercial advertising links to Complainant’s competitors, Respondent is attempting to disrupt Complainant’s business. This also constitutes a bad faith use of the disputed domain name under the Policy. See, Disney Enterprises, Inc. v. Greg Kiesinger, NAF Claim FA1203947 (noting that use of the disputed domain name to provide links to complainant’s competitors “is intended to disrupt [the c]omplainant’s business, and accordingly finds it to be additional evidence of [the r]espondent’s bad faith registration and use of the disputed domain name[] pursuant to Policy paragraph 4(b)(iii)”).
Complainant further submits that Respondent registered the disputed domain name to prevent Complainant from reflecting its trademarks in a corresponding domain name. Respondent’s prior and current domain name registrations show a pattern of bad faith conduct in registering domain names. See, Zevex, Inc. v. Isaac Goldstein, NAF Claim No. FA1323005; ChemRite CoPac, Inc. v. Isaac Goldstein,WIPO Case No. D2010-0279 (registering a domain name whose prior registration lapsed as a result of an oversight indicates “bad faith on the part of the Respondent, in view of the length of time that the Complainant had previously registered and used the disputed domain name, namely, eleven years”). B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and 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:
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.
Complainant has established that it is the owner of two registered trademarks in the United States of America for the trademark CAMPHO-PHENIQUE registered in relation to the goods described in section 4 above. Complainant and its predecessors have manufactured, advertised, distributed and sold medical preparations under the CAMPHO-PHENIQUE trademark since at least as early as 1884.
The disputed domain name is the prefix of Complainant’s registered trademarks CAMPHO-PHENIQUE. The evidence shows that both Complainant and consumers use the suffix “campho” as an abbreviation referring to Complainant’s CAMPHO-PHENIQUE medical preparations.
Previous UDRP panels have found that a domain name including a distinctive element of a registered trademark is confusingly similar to the registered trademark. See, Banque Saudi Fransi, supra; Algemeen Nederlands Persbureau ANP B.V., supra.
The Panel finds that Complainant has proven that the disputed domain name is confusingly similar to Complainant’s trademarks CAMPHO-PHENIQUE. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s registered trademarks or any trademarks confusingly similar thereto. The registration of the CAMPHO-PHENIQUE trademark preceded the registration of the disputed domain name by over two decades. Complainant has been using its CAMPHO-PHENIQUE trademark in association with its medical preparations since 1884. Previous UDRP panels have found that in the absence of any license or permission from a complainant to use widely-known trademarks, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed. See, AltaVista Company, supra; LEGO Juris A/S v. DomainPark Ltd, David Smith, A Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138.
The disputed domain name resolves to a parking page which provides links to the websites of Complainant and Complainant’s competitors. There is no evidence that Respondent is commonly known by the disputed domain name or is making a legitimate noncommercial or fair use of the disputed domain name. See, The Caravan Club v. Mrgsale, NAF Claim No. FA95314 (domain name ; “registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to utilize the mark reveals bad faith”); See also CBS Broadcasting Inc. v. Worldwide Webs, Inc.,WIPO Case No. D2000-0834.
Respondent is not offering the goods at issue, but is merely using the disputed domain name to list links to external websites, some of which offer goods from competitors of Complainant. Even though some of those links pertain to Complainant, many do not. Using Complainant’s CAMPHO-PHENIQUE trademark to bring Internet users to websites that contain links to both Complainant’s products and products of Complainant’s competitors does not constitute a bona fide offering of goods. See, American Safety Institute, supra.
It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a disputed domain name. Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the disputed domain name pursuant to paragraph 4(c) of the Policy. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once this showing is made, the burden of production shifts to respondent to demonstrate its rights or legitimate interests in the disputed domain name. Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.
The Panel finds that Complainant has proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name has been registered and used in bad faith. C.1. Registered in Bad Faith
Respondent acquired the disputed domain name long after Complainant’s adoption, use and registration of its CAMPHO-PHENIQUE trademarks. The widespread use and long history of Complainant’s use of its CAMPHO-PHENIQUE trademarks supports the inference that Respondent registered the disputed domain name with actual and knowledge of Complainant’s rights. See, Pavilion Agency, supra.
The Panel finds on a balance of probabilities that Respondent registered the disputed domain name in bad faith. C.2. Domain Name Used in Bad Faith
Paragraph 4(b)(iv) of the Policy provides that using a domain name to intentionally attempt to attract Internet users to your website for commercial gain by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of a respondent’s website constitutes evidence of bad faith use of a domain name.
Respondent’s webpage associated with the disputed domain name includes links to entities providing products related to the kind of products offered by Complainant without any information relating to Respondent, its purpose, business, or proposed business, if any. Respondent’s use of the disputed domain name which is confusingly similar to Complainant’s registered trademarks CAMPHO-PHENIQUE enables Respondent to draw Internet users to the website for profit by misleading Internet users associating the disputed domain name with Complainant. The Panel infers that Respondent is receiving click-through profits as the pages associated with the disputed domain name make no reference to Respondent, its purpose, business or proposed business. Linking to websites of institutions that are active in the same field as Complainant is evidence of bad faith use. See, e.g., Google Inc. v. Forum LLC, NAF Claim No. FA1053323 (finding bad faith registration and use where resolves to a commercial search engine website generating click-through advertising fees); Brink’s Network, Inc. v. Jenny Ho, ,WIPO Case No. D2009-0530 (“Where, as here, the disputed domain name is used to link, inter alia, to websites of the [c]omplainant’s competitors, a holding of bad faith use will typically follow”). See, Express Scripts, Inc., supra.
Respondent is attempting to disrupt Complainant’s business by using the disputed domain name to provide commercial advertising links to Complainant’s competitors. This unauthorized commercial advertising constitutes a bad faith use of the disputed domain name under the Policy. See, Disney Enterprises, Inc., supra.
Respondent registered the disputed domain name to prevent Complainant from reflecting its trademarks in a corresponding domain name. Respondent’s prior and current domain name registrations show a pattern of bad faith conduct in registering domain names. See, Zevex Inc., supra, and ChemRite CoPac, Inc., supra.
The Panel finds that Complainant has proven on a balance of probabilities that Respondent has used the disputed domain name in bad faith within the meaning of paragraphs 4(b)(iii) and 4(b)(iv) of the Policy, and that Complainant satisfies the requirement under paragraph 4(a)(iii) 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 Complainant.
Ross Carson
Sole Panelist
Dated: May 16, 2011
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