Talecrisbenefitsnow.com

The timeline behind talecrisbenefitsnow.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Talecris Biotherapeutics, Inc. v. Navigation Catalyst Systems, Inc. Claim Number: FA0803001170019 PARTIES Complainant is Talecris Biotherapeutics, Inc. (“Complainant”), represented by Maury M. Tepper, of Womble Carlyle Sandridge & Rice, PLLC, North Carolina, USA. Respondent is Navigation Catalyst Systems, Inc (“Respondent”), California, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <talecrisbenefitsnow.com>, registered with Basic Fusion, Inc. PANEL The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. Honorable Paul A. Dorf (Ret.), as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on March 26, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 27, 2008. On March 27, 2008, Basic Fusion, Inc. confirmed by e-mail to the National Arbitration Forum that the <talecrisbenefitsnow.com> domain name is registered with Basic Fusion, Inc. and that Respondent is the current registrant of the name. Basic Fusion, Inc. has verified that Respondent is bound by the Basic Fusion, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On March 28, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 17, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@talecrisbenefitsnow.com by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On April 24, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.), as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <talecrisbenefitsnow.com> domain name is confusingly similar to Complainant’s TALECRIS DIRECT mark. 2. Respondent does not have any rights or legitimate interests in the <talecrisbenefitsnow.com> domain name. 3. Respondent registered and used the <talecrisbenefitsnow.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Talecris Biotherapeutics, Inc., discovers, develops, manufactures, and markets blood plasma products. Complainant registered the TALECRIS DIRECT mark with the United States Patent and Trademark Office (“USPTO”) on July 24, 2007 (Reg. No. 3,269,859), and filed for registration on January 21, 2005. In addition, Complainant filed for registration of the TALECRIS mark on January 21, 2005 (Ser. No. 78/551,985). Complainant also owns the <talecris.com> and <talecrisplasma.com> domain names. Respondent registered the <talecrisbenefitsnow.com> domain name on May 29, 2006. Respondent has been using the disputed domain name to redirect Internet users to the <fundraisingopportunity.org> domain name which displays links to a variety of fundraising companies. Respondent was previously ordered to transfer domain names to the trademark owners in at least one other UDRP decision. See mVisible Techs., Inc. v. Navigation Catalyst Systems, Inc., D2007-1141 (WIPO Nov. 30, 2007) (transferring 35 domain names to the complainant). DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). 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: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. Identical and/or Confusingly Similar Complainant has registered the TALECRIS DIRECT mark with the USPTO. In Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001), the panel held that “[t]he effective date of Complainant's federal rights is . . . the filing date of its issued registration.” Complainant filed a trademark application for the TALECRIS DIRECT mark with the USPTO on January 21, 2005. The Panel finds that Complainant’s registration of the mark has established Complainant’s rights pursuant to Policy ¶ 4(a)(i), and that those rights date back to the filing of the USPTO application. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."). The <talecrisbenefitsnow.com> domain name incorporates the main term of Complainant’s TALECRIS DIRECT mark and the two generic terms “benefits” and “now.” Complainant contends that the term “talecris” was coined by Complainant, and there is no other meaning of the term. In Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001), the panel found confusing similarity where the domain name in dispute contained the identical mark of the complainant combined with a generic word or term. Here also, the addition of the generic terms “benefits” and “now” do not sufficiently distinguish the disputed domain name for the purposes of confusing similarity. Furthermore, all registered domain names are required to have a top-level domain. Therefore, Respondent’s addition of the generic top-level domain (“gTLD”) “.com” is not a distinguishing factor in a confusing similarity analysis. Thus, the Panel concludes that the <talecrisbenefitsnow.com> domain name is confusingly similar to the TALECRIS DIRECT mark under Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . ."). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Complainant has the initial burden of showing that Respondent lacks all rights and legitimate interests in the disputed domain name. Once Complainant has established a prima facie case, the burden shifts to Respondent to show that it has rights or legitimate interests in the disputed domain name. Complainant has asserted that Respondent has neither rights nor legitimate interests in the <talecrisbenefitsnow.com> domain name, therefore the Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). The burden then shifts to Respondent. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). Based on Respondent’s failure to respond to the Complaint, the Panel may presume that Respondent has no rights or legitimate interests in the <talecrisbenefitsnow.com> domain name. The panel in Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) found that failing to respond allowed a presumption that the complainant’s allegations were true unless clearly contradicted by the evidence. However, the Panel will consider all evidence in the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c). See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Complainant contends that Respondent is not commonly known by the <talecrisbenefitsnow.com> domain name. The WHOIS information does not suggest that Respondent is commonly known by the disputed domain name, and Complainant does not indicate that it has authorized Respondent to use the mark. Thus, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that the respondent has no rights or legitimate interests in domain names because it is not commonly known by the complainant’s marks and the respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark). Moreover, the disputed domain name is being used to redirect Internet users to the <fundraisingopportunity.org> domain name. The website displays links to fundraising companies, and is completely unrelated to Complainant’s business. In Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003), the panel held that “[d]iverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).” Here, the Panel also finds that redirecting Internet users to an unrelated website is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Respondent has been previously ordered by a panel to transfer disputed domain names incorporating another’s mark; that decision involved the transfer of 35 domain names. See mVisible Techs., Inc. v. Navigation Catalyst Systems, Inc., D2007-1141 (WIPO Nov. 30, 2007). The Panel finds that these previous registrations combined with the instant proceeding are evidence of bad faith registration and use under Policy ¶ 4(b)(ii). See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting); see also Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)). Furthermore, Respondent is using the <talecrisbenefitsnow.com> domain name to redirect Internet users to a website unrelated to Complainant’s business. The Panel may infer that Respondent is commercially benefiting from the goodwill associated with the TALECRIS DIRECT mark, and that Respondent’s use of the disputed domain name is capable of creating confusion as to the source or sponsorship of the website that resolves from the <talecrisbenefitsnow.com> domain name. The Panel finds that Respondent’s use of the disputed domain name is evidence of registration and use in bad faith under Policy ¶ 4(b)(iv). See Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”). The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <talecrisbenefitsnow.com> domain name TRANSFERRED from Respondent to Complainant. Honorable Paul A. Dorf (Ret.), Panelist Dated: May 7, 2008 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.