Complainant is UCB PHARMA, S.A. of Brussels, Belgium, represented internally.
Respondent is 21562719 Ont Ltd of Ontario, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with F. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2011. On May 11, 2011, the Center transmitted by email to F a request for registrar verification in connection with the disputed domain name. On May 12, 2011, F 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 May 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 2, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 8, 2011.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on June 14, 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’s affiliate, UCB, Inc., is owner of the trademark LORTAB, United States trademark registration number 1278615 in International Class 5, registered in May 22, 1984 with a first use dating back to 1980, covering an “Analgesic Tablet Containing Acetaminophen and Hydrocodone.”
The disputed domain name was registered August 24, 2004 and presently routes to a parking page displaying sponsored listings routing users to commercial pharmaceutical websites.1 5. Parties’ Contentions A. Complainant
The extremely brief Complaint alleges that the disputed domain name is identical to Complainant’s trademark; that Respondent has no rights or legitimate interests in use of the disputed domain name; and that the disputed domain name was registered and is used in bad faith under the Policy.
Complainant contends that Respondent’s use of the disputed domain name is not bona fide and in bad faith because Respondent uses the disputed domain name to divert Internet users to commercial sites with the motive of profiting from Internet traffic created by confusion with Complainant’s trademark.
Complaint avers that it “provided the Respondent with an opportunity to voluntarily transfer the disputed domain name before filing this Complaint,” without response.
On the basis of the above allegations, Complainant seeks transfer of the disputed domain name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
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) Respondent has 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.
Complainant must establish these elements even if Respondent does not submit a response. See, e.g., 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). A. Identical or Confusingly Similar
The Panel agrees with Complainant that the disputed domain name is identical to the LORTAB mark in which Complainant’s affiliate has rights.
Panels generally disregard the gTLD suffix in determining whether a disputed domain name is identical or similar to a complainant’s marks. See e.g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; 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. Removing the “.com” from the disputed domain name leaves only the LORTAB trademark.
The Panel concludes, therefore, that the Complaint establishes the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Panel also concludes that Respondent has 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 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 has no license or authorization from Complainant to use the LORTAB trademark. In the absence of a response, the Panel accepts as true these undisputed factual averments by Complainant.
Annexes to the Complaint and publicly available evidence also confirm Complainant’s allegations that the disputed domain name is being used to redirect traffic to online pharmacies. The Panel infers that Respondent receives revenues when it diverts traffic to the various online pharmacies that display links on the webpage to which the disputed domain name routes. See, e.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit [. . .] in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)); Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya ILtd, WIPO Case No. D2006-1079.
Web pages presently accessible to the Panel online also show that the disputed domain name is being used to promote products of Complainant’s competitors. The Panel therefore finds that Respondent’s 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.
Finally, the Panel also finds that the record establishes that there is no bona fide offering of goods or services by Respondent. The commercial activities undertaken through use of the disputed domain name are not bona fide under the Policy.2 See, e.g. America Online, Inc. v. Xianfeng Fu,WIPO Case No. D2000-1374, cited in Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629.
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. C. 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, including a lack of conceivable good faith uses for the domain name or failure to reply to a complaint. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel infers that Respondent was aware of Complainant’s trademark and product name, which was first used and registered in the 1980s, many years before Respondent’s registration. The Panel further infers that Respondent registered the disputed domain name intending to trade on the value of Complainant’s trademark; it is beyond doubt in the Panel’s opinion that Respondent would have chosen the disputed domain name for any other reason. The Panel finds that Respondent deliberately attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant’s mark. The Panel concludes, therefore, that Respondent registered the disputed domain name in bad faith.
The Panel also concludes that the circumstances demonstrate bad faith use of the disputed domain name by Respondent, as elaborated below.
As noted above, the disputed domain name is used to promote sales of the products of other pharmaceutical companies. Respondent has also declined to submit a response to these proceedings or to respond to Complainant’s warning letters. In addition, the Panel also finds that there is no conceivable legitimate use for the domain name by Respondent. See Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814.
The Panel therefore concludes that the disputed domain name was registered and is being used by Respondent in bad faith under paragraph 4(b)(iv) of the Policy. 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). 7. Decision
For 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.
Jeffrey D. Steinhardt
Sole Panelist
Dated: June 27, 2011
1 The Panel has undertaken limited factual research by viewing the website to which the disputed domain name resolves. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.5. The appearance of the website presently is consistent with its appearance in annexes to the Complaint.
2 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.
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