Intervet International B.V. v. Domain Holding, LLC
Case No. D2010-0723
1. The Parties
The Complainant is Intervet International B.V. of Netherlands represented by Lowenstein Sandler PC of United States of America.
The Respondent is Domain Holding, LLC of United States of America.
2. The Domain Name and Registrar
The Disputed Domain Name <buyfinaplix.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2010. On May 6, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Disputed Domain Name. On May 7, 2010, 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. 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 May 18, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 7, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 8, 2010.
The Center appointed Dawn Osborne as the sole panelist in this matter on June 16, 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 the owner of the FINAPLIX trademark. The Complainant has used the FINAPLIX mark since at least as early as 2003, as a trademark and trade name for a veterinary anabolic product. The Respondent registered the Disputed Domain Name <buyfinaplix.com> on March 14, 2007. The Respondent uses the Disputed Domain Name for a web site that features information about Finaplix surrounded by advertisements that link to third party web sites that sell a variety of steroid products suggested for use by humans.
5. Parties' Contentions
A. Complainant
The Complainant's contentions can be summarized as follows:
The Complainant is the owner of the FINAPLIX trademark. The Complainant has used the FINAPLIX mark since at least as early as 2003, as a trademark and trade name for a veterinary anabolic product. In 2008, the Complainant had USD 2.3 million dollars in sales of Finaplix in the United States alone. In 2008 and 2009, the Complainant spent over USD 1.2 million per year on the marketing and promotion of Finaplix and Revalor in the United States. The Complainant owns a United States federal trademark registration for the FINAPLIX mark and 6 trademark registrations for the FINAPLIX mark in other countries all over the world. The Complainant provides information about Finaplix on its websites at “www.revalor.com” and “www.intervetusa.com”. The Complainant vigorously polices its rights to its FINAPLIX mark. The FINAPLIX mark is a strong mark with considerable goodwill. Indeed, as a result of this strength, worldwide use, and high consumer recognition, the FINAPLIX mark is well-known and famous.
(a) Respondent's Activities
The Respondent registered the Disputed Domain Name <buyfinaplix.com> on March 14, 2007. The Respondent uses the Disputed Domain Name for a web site that features information about Finaplix surrounded by advertisements that link to third party web sites that sell a variety of steroid products suggested for use by humans. The informational text displayed on the Respondent's web site was not provided or authorized by the Complainant. The Respondent provides misinformation on its site, suggesting that the Finaplix veterinary anabolic product is acceptable for use in humans. A warning on Complainant's Finaplix packaging clearly states that this product is intended for animal treatment only and not for use in humans. Consumption of the Finaplix product by humans is in contravention of the drug's intended purpose, contrary to the label warning and is illegal in many jurisdictions. The Respondent profits financially from the advertisements features on its website by driving website traffic to third-party websites.
(b) The Disputed Domain Name is confusingly similar to the FINAPLIX mark
The Disputed Domain Name should be transferred to Complainant because, within the meaning of paragraph 4 of the Policy, the Disputed Domain Name is confusingly similar to the FINAPLIX mark. The Disputed Domain Name <buyfinaplix.com> incorporates Complainant's identical FINAPLIX trademark. Evidence that a third party “rips off” or “steals” a trademark owner's mark is evidence of secondary meaning. See Osem Food Ind., Ltd. V. Sherwood Foods, Inc., 917 F.2d 161 (4th Cir. 1990) (copying creates not only a presumption of secondary meaning, but a presumption of likelihood of confusion). It is because of this association with the Complainant's FINAPLIX mark that Respondent registered the Disputed Domain Name. The Respondent can have no purpose for registering the Disputed Domain Name other than to cause consumer confusion and to attract customers to its website for commercial gain. The Respondent appropriated the Disputed Domain Name with the intent of causing confusion, mistake, and deception as to the Complainant and the Respondent. Because the Disputed Domain Name incorporates the FINAPLIX mark and is confusingly similar to the FINAPLIX mark, the Complainant satisfies the requirements under paragraph 4(a)(i) of the Policy.
(c) The Respondent has no rights or legitimate interests in the Disputed Domain Name
The Respondent cannot demonstrate any legitimate interest in the Disputed Domain Name. The Respondent registered the Disputed Domain Name well after the Complainant had established its rights in its FINAPLIX mark. The Respondent is not commonly known by the Disputed Domain Name. Further, to the Complainant's knowledge, the Respondent has never conducted a legitimate offline business under the name “Finaplix.” Respondent has been granted no license or other rights to use the Complainant's mark as part of any domain name or for any other purpose. The Complainant is in no way associated or affiliated with the Respondent. The Complainant believes that the Respondent is advertising the Finaplix product for human use, rather than animal use, which is illegal and in contravention of the drug's intended purpose. The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name, and the only possible use of the Disputed Domain Name would be to misleadingly use it to attract customers to its website for its own commercial gain. The Respondent registered the Disputed Domain Name solely for deceptive purposes. Where, as here, the Complainant's mark is so widely recognized, and has been used in connection with veterinary anabolic products for so many years, there can be no legitimate use by the Respondent. For instance, in Nike Inc. v. B.B. de Boer,WIPO Case No. D2000-1397 (December 21, 2000), the panel concluded that the respondent had no legitimate rights, noting that it was difficult to see how the respondent could not have known about the trademark NIKE. See also Victoria's Secret, et al. v. Atchinson Investments Ltd., NAF Claim No. 96496 (finding respondent could not have been unaware that VICTORIA'S SECRET was a famous mark and thus respondent had no legitimate rights to register a domain name using the mark). Because the Respondent has no rights or legitimate interests in the Disputed Domain Name, the Complainant satisfies the requirements under paragraph 4(a)(ii) of the Policy.
(d) The domain name was registered and is being used in bad faith
Bad faith is found when “it appears more likely than not from the evidence offered by Complainant that Respondent has registered the domain name in a deliberate attempt to attract users to its planned website for commercial gain due to confusion with Complainant's mark.” Infospace.com v. Tenenbaum Ofer,
WIPO Case No. D2000-0075. This is exactly the case here. The Respondent clearly registered and is using the Disputed Domain Name with the intent of diverting Internet traffic of end users seeking to find the website of the Complainant, to capitalize on consumers' assumption that the Disputed Domain Name is one of the Complainant's domain names, and/or to suggest to potential customers that the Complainant is somehow related to or affiliated with the Respondent. In any case, the Respondent's registration and use is disruptive of and damaging to the Complainant's business and such registration and use was undertaken in bad faith. It is impossible to conceive of a good faith reason for the Respondent's registration and use of the Disputed Domain Name. Given that the Complainant's FINAPLIX mark is well-known as a veterinary anabolic, the Respondent “knew or should have known” about the existence of the Complainant's trademark rights. See Expedia, Inc. v. European Travel Network,
WIPO Case No. D2000-0137; Document Technologies v. International Electronic Communications, Inc.,
WIPO Case No. D2000-0270 (Respondent's knowledge of complainant's mark at the time of registration of the domain name suggests bad faith). The Respondent has clearly registered and is using the Disputed Domain Name in bad faith within the meaning of paragraph 4(b)(iii) and (iv) of the Policy, and establish that this Complaint satisfies the requirements under paragraph 4(a)(iii) of the Policy.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
- The Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
- The Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Disputed Domain Name consists of the Complainant's FINAPLIX registered mark, the generic word “buy” which does not serve to distinguish the Disputed Domain Name from the Complainant's trade mark and the generic “.com” top level domain which is ignored for the purposes of the Policy. As such the Disputed Domain Name is confusingly similar to a trade mark in which the Complainant has rights for the purpose of the Policy.
B. Rights or Legitimate Interests
The Respondent has not filed a Response, does not appear to have any trade marks associated with “finaplix”, is not commonly known by this name and does not have any consent from the Complainant to use this name. Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Rules sets out non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including circumstances where, by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its web site or location or of a product or service on its web site or location.
It does appear that the Respondent has attempted to attract and cause confusion amongst Internet users between the Complainant's marks and goods and the third party links on the site attached to the Disputed Domain Name for commercial gain.
Accordingly, the Panel finds that the Disputed Domain Name has been registered and used in bad faith.
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 <buyfinaplix.com> be transferred to the Complainant.
Dawn Osborne Sole Panelist
Dated: June 28, 2010
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