The Complainant is Novo Nordisk FemCare AG of Zurich, Switzerland.
The Respondent is Jim C of Washington, United States of America.
2. The Domain Name and Registrar
The disputed domain name <activella.net> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2008. On February 4, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On February 4, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient and notice of change in registrant information, the Complainant filed an amendment to the Complaint on February 12, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 February 13, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 6, 2008.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on March 13, 2008. 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
4.1 The Complainant uses the trademark ACTIVELLA for pharmaceutical preparations, especially for hormone therapy for women with menopausal symptoms.
4.2 The trademark ACTIVELLA is registered in the United States under registration number 2654685 in Class 5 (hormone preparations for hormone replacement therapy for treatment of women in menopause). The trademark was registered on November 26, 2002.
4.3 The Complainant also operates a website located at “www.activella.com” which describes and provides information on the products marketed under the ACTIVELLA trademark. Through the website, the Complainant promotes pharmaceutical preparations containing estrogen and progestin hormones.
4.4 The Respondent’s domain name <activella.net> resolves to a website containing various links which refer to female health issues, including estrogen hormones. Based on the registrar’s verification, the domain name was created on February 9, 2007.
5. Parties’ Contentions
A. Complainant
The Complainant contends as follows:
5.1 The Respondent’s <activella.net> domain name consists of and is identical to the Complainant’s ACTIVELLA trademark.
5.1.2 The Respondent has no rights or legitimate interests in respect of the domain name. The Complainant contends that there are no contractual or other agreement between the parties and the Respondent has not been authorized to use the trademark ACTIVELLA in any way.
5.1.3 The domain name was registered and is being used in bad faith. In this regard, the Complainant points to the use of the domain name which resolves to a ‘pay-per-click’ website with links which refer to female health issues, including estrogen issue. The Complainant, therefore, contends that:
(a) the Respondent is intentionally trying to attract Internet users to the website using the Complainant’s trademark and promoting goods that are female health related thereby creating a likelihood of confusion for visitors to the <activella.net> website;
(b) the Respondent is intentionally attempting to obtain a commercial gain by attracting Internet users to the Respondent’s website by creating the impression that the Respondent’s website is somehow associated with the Complainant;
(c) the Respondent in the present case is also the respondent in numerous cases before WIPO, many of which have resulted in the transfer of domain names to the rightful trademark owner.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:
(a) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights to the trademark ACTIVELLA. The evidence adduced by the Complainant of trademark Registration No. 2654685 for the mark ACTIVELLA suffices for this purpose. The website located at <activella.com> also evidences use of the trademark by the Complainant.
The domain name at issue wholly comprises the word “Activella” and is, therefore, identical to the Complainant’s trademark. The addition of the “.net” suffix does not serve to distinguish the domain name from the mark (see Freeman v. Mighty LLC,
WIPO Case No. D2005-0263).
Based on the fact that the Respondent’s domain name is identical to the Complainant’s trademarks, the Panel is satisfied that the first element of paragraph 4(a) of the Policy has been proven by the Complainant.
B. Rights or Legitimate Interests
The failure of the Respondent to respond to the Complainant’s contentions and the evidence adduced by the Complainant leads the Panel to find that the Respondent has no rights or legitimate interests in the domain name. The Panel could find no justification, rights or legitimate interests on the part of the Respondent to the words comprising the domain name as the contentions made by the Complainant were not rebutted.
It does not appear that there exists any licence, agreement or form of consent by the Complainant to allow the Respondent to use the ACTIVELLA trademark as part of its domain name. Nor does it appear that the Respondent is commonly known or referred to as “Activella”.
Based on the above circumstances, the Panel is satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant.
C. Registered and Used in Bad Faith
The domain name fully incorporates the Complainant’s trademark and was acquired after the Complainant’s mark was registered.
By using a domain name which is identical to the Complainant’s trademark, it suggests that the website being operated by the Respondent is somehow connected or associated with the Complainant, when in fact no such connection exists. This Panel, therefore, agrees that the Respondent is intentionally trying to attract Internet users to the website by creating a false impression that the Respondent’s website is somehow associated with the Complainant.
Bad faith registration and use of the domain name may also be established by the fact that the domain name is being used to divert Internet traffic to a linking portal. This Panel finds that the Respondent’s use of the Complainant’s trademark to resolve to a pay-per click site which provides links to competing products is not a bona fide offering of goods or services or a legitimate non-commercial or fair use of the domain name. It is an act of bad faith (see Société des Hotels Meridien v. La Porte Holdings, Inc.,
WIPO Case No. D2004-0849).
It was also contended by the Complainant that the Respondent in this case was also a respondent in numerous cases previously resulting in transfers of domain names to the rightful trademark owners. A finding of bad faith can be made where there exists a pattern of registration from which the respondent seeks to derive financial benefit through the use of trademarks which it does not have any rights or legitimate interests (see SociétéBIC v. LaPorte Holdings, LLC,
WIPO Case No. D2005-0342). Unfortunately, however, this bare assertion by the Complainant was not substantiated with evidence. It is not the role of this Panel to investigate or to search beyond the evidence adduced by the parties to the proceeding. This duty lies with the parties themselves.
Moreover, in the original Complaint this pattern of registration referred to Domains by Proxy, Inc. (the original Respondent prior to amendment of the Complaint) whereas in the amended Complaint, the relevant portion of the Complaint was not amended to reflect the change in the Respondent. As such, this Panel did not come to a conclusion on whether there was such a pattern of conduct by the Respondent.
Accordingly, the Panel is also satisfied that the third element of paragraph 4(a) of the Policy has been satisfactorily proven by the Complainant.
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, <activella.net>, be transferred to the Complainant.
Syed Naqiz Shahabuddin Sole Panelist
Dated: March 27, 2008
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