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Дела по доменам общего пользования
Дела по национальным доменам
WIPO Arbitration and
Mediation Center
ADMINISTRATIVE PANEL
DECISION
Abbott Laboratories
v. United Worldwide Express Co., Ltd.
Case No. D2004-0088
1. The Parties
Complainant is Abbott Laboratories,
an Illinois corporation with its principal place of business in Abbott Park,
Illinois, United States of America.
Respondent is United Worldwide
Express Co. of Ridgefield, New Jersey, United States of America.
2. The Domain Name and
Registrar
The disputed domain name
is <babysimilac.com> (the "Domain Name"). The registrar of the
Domain Name is R&K Global Business Services, Inc. d/b/a 000Domains.com ("000Domains.com").
3. Procedural History
The Complaint was filed
with the WIPO Arbitration and Mediation Center (the "Center") on January 30, 2004.
On February 3, 2004, the Center sent 000Domains.com a request for
registrar verification in connection with the Domain Name, and 000Domains.com
confirmed that Respondent is listed as the registrant of the Domain Name. The
Center then verified that 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").
The Center formally notified
Respondent of the Complaint, and the proceeding commenced on February 6, 2004.
The due date for Respondent's Response was February 26, 2004. Respondent
did not submit a Response. Accordingly, the Center notified Respondent's default
on March 1, 2004.
The Center appointed David
M. Kelly as the sole panelist in this matter on March 24, 2004.
The Panel has independently
determined and agrees with WIPO's assessment that the Complaint is in formal
compliance with the requirements of the Policy, the Rules, and the Supplemental
Rules.
The language of the proceeding
is English.
4. Factual Background
Complainant is a multi-national
company with business operations in many areas, such as pharmaceuticals, health
systems, and infant nutrition. [Complaint, ¶ V(A)(1).]
Since 1926, Complainant
and/or its predecessors-in-interest have continuously used the trademark SIMILAC
throughout the world for baby formula and infant nutrition products. Complainant
owns an incontestable United States Trademark Registration No. 227,046 for
the SIMILAC mark covering "diet for infants" products in International
Class 30. Complainant also owns numerous trademark registrations throughout
the world for its SIMILAC mark. [Complaint, ¶ V(A)(1).]
Complainant uses the
domain name <similac.com> in connection with the advertising,
promotion, and sale of its various SIMILAC baby formula and infant nutrition
products. The domain name <similac.com> currently resolves to
Complainant's website, located at the URL "www.welcomeaddition.com",
which provides information on SIMILAC products, as well as other resources
for expecting parents and parents of young children. [Complaint, ¶ V(A)(1).]
Complainant's domestic
sales for each of the last five years, 1999-2003, under the SIMILAC mark average
in excess of $800 million annually. Complainant's foreign sales for each of
the last five years under the SIMILAC mark average in excess of $150 million
annually. [Complaint, ¶ V(A)(1).]
Complainant stated that
Respondent is not a licensee of Complainant, and that Respondent is not affiliated
with or related to Complainant in any way.
5. Parties' Contentions
A. Complainant
Complainant alleged that
the Domain Name is confusingly similar to Complainant's mark SIMILAC, that
Respondent has no rights or legitimate interests in the Domain Name, and that
Respondent registered and used the Domain Name in bad faith pursuant to the
Policy.
Complainant provided
evidence that Respondent uses the Domain Name for a Korean-language website
that promotes and sells Complainant's SIMILAC products, as well as directly
competing baby formula and infant nutrition products manufactured by Complainant's
competitors.
B. Respondent
Respondent did not submit
a Response to the Complaint or otherwise contest Complainant's allegations.
6. Discussion and Findings
Paragraph 4(a) of the UDRP
directs that the complainant must prove each of the following: (A) that the
domain name registered by the respondent is identical or confusingly similar
to a trademark or service mark in which the complainant has rights; (B) that
the respondent has no rights or legitimate interests in respect of the domain
name; and (C) the domain name has been registered and used in bad faith.
A. Identical or Confusingly
Similar
The Panel finds that the
Domain Name is confusingly similar to Complainant's SIMILAC mark because the
Domain Name incorporates that mark in its entirety and because the addition
of the descriptive and/or generic word "baby" in the Domain Name does
not sufficiently distinguish it from Complainant's SIMILAC mark. UDRP Panels
have routinely held that the addition of a generic term to a mark in a domain
name does not distinguish the domain name from that mark. See, e.g., Disney
Enterprises, Inc. v. Lorna Kang, NAF Case No. FA00125375 (finding the domain
name <disneylandhotel.com> confusingly similar to Disney's marks DISNEY
and DISNEYLAND despite respondent's addition of the word "hotel");
Yahoo! Inc. v. Kelvin Pham, NAF Case No. FA00109699 (finding the domain
name <yahoonail.com> confusingly similar to the YAHOO! mark and holding
the addition of a generic term to the mark is "inconsequential to the confusing
similarity inquiry, as the addition of a generic term does not detract from
the dominant portion of the mark.")
The Panel also finds the
Domain Name confusingly similar to Complainant's SIMILAC mark because the descriptive
word "baby" relates to Complainant's business. See
XO Communications Inc.
v. Registrant info@fashionid.com 9876543210, NAF Case No. FA00137676
(finding the domain name <xocommunications.com> confusingly similar to
the complainant's registered mark XO and holding the addition of a term that
describes the complainant's business does not distinguish the domain name from
the complainant's mark); Caterpillar Inc. v. Roam the Planet, Ltd., WIPO
Case No. D2000-0275 (finding the domain name <catmachines.com> confusingly
similar to the complainant's mark CAT and noting "the addition of the word
`machines' as a suffix to the word `cat' in the domain name under consideration
does not serve to distinguish the domain name from the trademark CAT, but rather
would reinforce the association of the [c]omplainant's trademark with its primary
line of products.")
B. Rights or Legitimate
Interests
Under
the UDRP, the respondent's rights or legitimate interests to a domain name
are established by demonstrating any of the following three conditions: "(i)
before any notice to you of the dispute, your use of, or demonstrable preparations
to use, the domain name or a name corresponding to the domain name in connection
with a bona fide offering of goods or services; or (ii) you (as an individual,
business, or other organization) have been commonly known by the domain name,
even if you have acquired no trademark or service mark rights; or (iii) you
are making a legitimate noncommercial or fair use of the domain name, without
intent for commercial gain to misleadingly divert consumers or to tarnish
the trademark or service mark at issue."
Because Respondent did
not file a response, it has not demonstrated any of the three prongs of legitimate
interest identified in the Policy. In any event, Complainant has shown that
Respondent does not satisfy any of these requirements.
The
Panel finds that Respondent's registration and use of the Domain Name without
Complainant's permission for a website selling both Complainant's products
and directly competing products does not constitute a bona fide offering
of goods pursuant to paragraph 4(c)(i) of the Policy. See Reed Elsevier
Inc. and Reed Elsevier Properties Inc. v. Ulexis a/k/a Lawfirm, NAF Case
No. FA0097684 (no legitimate interest when respondent used the disputed domain
name to offer similar/related services and to divert potential customers to
its competing website); Compaq Information Technologies Group, L.P. v.
Express Technology, Inc., NAF Case No. FA00104186 (holding use of the
disputed domain name to sell competing products does not constitute a bona
fide offering of goods and services).
The
Panel further finds no evidence that Respondent has been commonly known as
the Domain Name, and that Respondent is not making legitimate noncommercial
or fair use of the Domain Name.
C. Registered and
Used in Bad Faith
The Panel finds that Respondent
registered and uses the Domain Name in bad faith pursuant to paragraph 4(b)(iv)
of the Policy, because Respondent uses the Domain Name to intentionally attract,
for commercial gain, Internet users to its website by creating a likelihood
of confusion with Complainant and its well-known SIMILAC mark as to the source,
sponsorship, and/or affiliation with Respondent's website and the competing
goods offered on Respondent's website. See Yahoo! Inc. v. Web Master a/k/a
MedGo NAF Case No. FA00127717 (finding respondent's use of the disputed
domain name for a directly competing website constituted bad faith pursuant
to paragraph 4(b)(iv) of the UDRP); Compaq Information Technologies Group,
L.P. v. Scott Jones, NAF Case No. FA0099091 (finding bad faith in respondent's
commercial use of the disputed domain name to advertise competing products);
H-D Michigan, Inc. v. TT&R et al., NAF Case No. FA00126650 ("In
redirecting its <harleydavidsonsrus.com> domain name to its motorcycle
sales website at <motorcycles-r-us.com>, respondent used complainant's
mark to attract motorcycle buyers to its own website and created a strong likelihood
of confusion as to whether respondent had any affiliation with complainant.
These actions violate Policy paragraph 4(b)(iv).")
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 <babysimilac.com> be transferred to Complainant
Abbott Laboratories.
David M. Kelly
Sole Panelist
Dated:
April 7, 2004