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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

ALK-Abellу A/S v. Manila Industries Inc.

Case No. D2006-1033

 

1. The Parties

The Complainant is ALK-Abellу A/S, Horsholm, Denmark, represented by Sandel, Lшje & Wallberg, Denmark.

The Respondent is Manila Industries Inc., Santa Ana, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <alkabello.com> is registered with Compana LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2006. On August 14, 2006, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name at issue. On August 21, 24 and 29, Compana LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center 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”).

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 August 30, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 19, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 22, 2006.

The Center appointed Michel N. Bertschy as the sole panelist in this matter on October 4, 2006. 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.

The language of these administrative proceedings is English, being the language of the registration agreement (Rules, Paragraph 11).

 

4. Factual Background

The Complainant, ALK-Abellу A/S, a limited liability company under the laws of Denmark, is a pharmaceutical company which operates worldwide. The company produces, develops and markets antihistamine drugs. The annual turnover of the Complainant was of approximately US$ 210 million in the fiscal year 2004/2005. Its marketing expenses totaled in excess of US$ 4 million the same year.

ALK-Abellу A/S is the owner of four registered marks, one in Denmark, ALK-ABELLO, for products and services in classes 5, 42 and 44, Reg. No. VR 2006 00417, applied for on January 12, 2006, and registered on January 27, 2006, one in China, ALK-ABELLO (fig), for products and services in class 5, Reg. No. 1668407, applied for on November 6, 2000, and registered on November 21, 2001, and two in Spain, ALK-ABELLO GROUP, for products and services in classes 5, and 16, Reg. Nos. 1804437M9 and 1804438M7, both applied for on February 18, 1994, and registered on June 5, 1996.

The complainant filed applications on July 6 and 7, 2006, for the Community trademark ALK-ABELLO, for products and services in classes 1, 5, 42 and 44, and in China, Norway, Switzerland and in the United States of America for the trademark ALK-ABELLO, for products and services in classes 5, 42 and 44. These registrations are pending.

ALK-Abellу A/S has also registered and owns a number of domain names, in particular <alk-abello.com>, <alk-abello.net>, <alk-abello.biz>, <alk-abello.us>, <alk-abello.it>, <alk-abello.nl>, <alk-abello.co.uk>, <alk-abello.de> and <alk-abello.fr>. The Complainant’s principal website is <alk-abello.com>.

According to the WHOIS database maintained by Compana LLC, the registrar of the disputed domain name, <alkabello.com> was registered on January 30, 2005, by the Respondent. Manila Industries Inc.’s website, to which the disputed domain name relates, proposes a variety of sponsored links (hotels, art galleries, insurance, travel, etc.), including pharmaceutical products, antihistamine drugs in particular, of the Complainant’s competitors.

The Respondent has been involved in a number of UDRP disputes (Group Kaitu, LLC, Darkside productions, Inc. v. Groupe Kaitu LLC aka Manila Industries, Inc., WIPO Case No. D2005-1087; Cap Gemini v. Manila Industries, Inc./”Cap Gemini”, WIPO Case No. D2006-0027; KPMG International v. Manila Industries, Inc., WIPO Case No. D2006-0597; Valpak Direct Marketing Systems, Inc. v. Manila Industries, Inc., WIPO Case No. D2006-0714; Hummert International, Inc. v. Manila Industries, Inc., WIPO Case No. D2006-0777; Pioneer Hi-Bred International, Inc. v. Manila Industries, Inc., NAF Case No. 444468; Eastman Chemical Company v. Manila Industries, Inc., NAF Case No. 450806; Commemorative Brands, Inc. v. Manila Industries, Inc., NAF Case No. 709096; Tahoe Joe’s, Inc. v. Manila Industries, Inc., NAF Case No. 721976; First American Real Estate Solutions L.P. v. Manila Industries, Inc., NAF Case No. 758614; River Valley Credit Union, Inc. v. Manila Industries, Inc., NAF Case No. 772866).

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that, prior to the registration of the disputed domain name in January 2005, it was the owner of trademarks registered in Denmark, China and Spain. Reference made to the country of residence of the Respondent, the United States of America, ALK-Abellу A/S asserts that it owns prior rights by way of use of its trade name since 1993. Moreover, the disputed domain name incorporates the mark “ALK-ABELLO”, omitting the hyphen and the accent <…ґ…>. The omission of a hyphen and an accent is insufficient to avoid the confusing similarity between a domain name and a trademark (Deutsche Telecom AG v. Dexcom Holdings B.V., WIPO Case No. DTV 2006-0001; Chernow Communications, Inc. v. Jonathan D. Kimball, WIPO Case No. D2000-0119). The disputed domain name is therefore confusingly similar to the trademarks in which the Complainant has established rights.

ALK-Abellу A/S contends that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent has not been authorized to use the Complainant’s marks. Moreover, the mark ALK-ABELLO has no meaning and cannot be related by an Internet user to the products and services present on the Respondent’s website. The mark is in fact highly distinctive.

The Complainant further asserts that the Respondent registered and is using the disputed domain name in bad faith. According to ALK-Abellу A/S, the Respondent intentionally attempted to attract for commercial gain, Internet users, to the website, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and services offered on those websites. The use made by the Respondent of sponsored links to websites of competitors of the Complainant has been found to constitute bad faith (Grundfos A/S v. King Pumps Inc., WIPO Case No. D2005-1073).

The Complainant asserts in addition that the disputed domain name was registered at a time when ALK-Abellу A/S publicly announced its listing on the New York, Denver and Austin stock exchanges, thus suggesting that the Respondent knew of the existence of the mark and trade name of ALK-Abellу A/S. In using ALK-ABELLO in the domain name the Respondent has engaged in the practice of “typosquatting”, a conduct found to be of bad faith (Medco Health Stationery, Inc. v. LaPoert Holdings, Inc., WIPO Case No. D2004-0800).

In accordance with Paragraph 4(i) of the Policy, the Complainant requests the Administrative Panel issue a decision that the Domain Name <alkabello.com> be transferred to ALK-Abellу A/S.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration and to obtain relief. These elements are that:

(i) the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the Respondent’s domain name has been registered and is being used in bad faith.

Each of the aforesaid elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

There are two requirements that a Complainant must establish under Paragraph 4(a)(i) of the Policy; that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the marks.

The Consensus view of WIPO UDRP panels is that if the Complainant owns a registered trademark then it satisfies the requirement of having trademark rights (Overview of WIPO Panel Views on Selected UDRP Questions, http://arbiter.wipo.int/domains/search, First UDRP Element, 1.1.).

The Complainant has provided evidence of the registration of marks in Denmark ALK-ABELLO, applied for on January 12, 2006, and registered on January 27, 2006, in Spain ALK-ABELLO GROUP, applied for on February 18, 1994, and registered on June 5, 1996, and a figurative mark in China ALK-ABELLO, applied for on November 6, 2000, and registered on November 21, 2001. The Respondent registered the disputed domain name on January 30, 2006. Since the location of the registered trademark and the goods and/or services it is registered for are irrelevant when finding rights in the mark (Overview of WIPO Panel Views on Selected UDRP Questions, http://arbiter.wipo.int/domains/search, First UDRP Element, 1.1.), the registration of ALK-ABELLO in Denmark, China and Spain suffice to meet the first requirement of Paragraph 4(a)(i) of the Policy.

The Panel thus finds that the Complainant has rights in the ALK-ABELLO trademarks.

Moreover, the domain name at issue, <alkabello.com>, includes the term ALK-ABELLO. The mere omission of the hyphen and the accent <…ґ…> does not contribute to lessen the confusing similarity of the disputed domain name with the Complainant’s trademarks. Previous WIPO UDRP Panels have found that a domain name incorporating mark in its entirety is confusingly similar (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). The Panel therefore finds that the domain name <alkabello.com> is confusingly similar to the Complainant’s ALK-ABELLO trademarks.

The first requirement of the Policy is satisfied.

B. Rights or Legitimate Interests

The Complainant bears the “general burden of proof” under paragraph 4(a)(ii) of the Policy, which burden rests on the Respondent once the Complainant makes its case prima facie. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If a respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Overview of WIPO Panel Views on Selected UDRP Questions, http://arbiter.wipo.int/ domains/search, Second UDRP Element, 2.1.).

Paragraph 4(c)(iii) of the Policy sets forth examples of circumstances whereby a domain name registrant may demonstrate a right or legitimate interest in a domain name, including: “... making a legitimate non commercial 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”.

The Respondent did not reply to the Complainant’s contentions. The Respondent’s default does not automatically result in a decision in favour of the Complainant. Subject to the principles described above, the Complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. While a panel may draw negative inferences from the Respondent’s default, Paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding (Overview of WIPO Panel Views on Selected UDRP Questions, http://arbiter.wipo.int/ domains/search, Procedural questions, 4.6.).

The Respondent is not a licensee of the Complainant and is not otherwise authorized to use the Complainants’ marks.

The website operated by the Respondent comprises sponsored links related to a variety of products and services comprising antihistamine drugs such as those manufactured by the Complainant. In these circumstances, the Respondent is clearly making a commercial use of the domain name, with intent for commercial gain, and has misleadingly diverted consumers to its website.

Based on the foregoing, the Complainant has therefore made its case prima facie.

In these circumstances, the Respondent’s use of the disputed domain name does not suggest any right or legitimate interest. There is no reason to suppose that the Respondent could claim a right or legitimate interest in respect of the domain name on any other basis.

The Panel thus finds that the second requirement of the Policy is satisfied.

C. Registered and Used in Bad Faith

For Paragraph 4(a)(iii) to apply, the Complainant must demonstrate the conjunctive conditions that the Respondent registered the domain name in bad faith and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including: (1) “[the Respondent] has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant for valuable consideration in excess of the Respondent’s documented

out-of-pocket costs directly related to the domain name, or”; (2) “[has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Respondent has] engaged in a pattern of such conduct; or” (3) “[the Respondent] has registered the domain name primarily for the purpose of disrupting the business of a competitor, or; (4)”by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.”

Whether the Respondent has registered and used the Complainant’s name in bad faith is clearly evident on the facts of this case. Indeed, the Complainant has proved that the Respondent has registered a domain name which incorporates the trademarks ALKA-BELLO, suggesting a clear affiliation with the Complainant. The website operated by the Respondent diverts Internet users to a sponsored site offering goods such as antihistamine drugs. As the Respondent has failed to provide any bona fide explanation for this, the Panel concludes that the Respondent has attempted to attract, for commercial gain, Internet users to a commercial on line location by creating a clear likelihood of confusion with the Complainant’s marks.

Furthermore, it is well-settled that the practice of typo squatting, in and of itself, can be seen as an indication of the bad faith registration of a domain name (Longs Drug Stores Cal., Inc. v. Shep Dog, WIPO Case No. D2004-1069; Lexar Media, Inc. v. Huang, WIPO Case No. D2004-1039; Wal-Mart Stores, Inc. v. Longo, WIPO Case No. D2004-0816).

The fact that the Respondent has an extensive history of typo squatting only strengthens the inference of bad faith (Group Kaitu, LLC, Darkside productions, Inc. v. Groupe Kaitu LLC aka Manila Industries, Inc., WIPO Case No. D2005-1087; Cap Gemini v. Manila Industries, Inc./”Cap Gemini”, WIPO Case No. D2006-0027; KPMG International v. Manila Industries, Inc., WIPO Case No. D2006-0597; Valpak Direct Marketing Systems, Inc. v. Manila Industries, Inc., WIPO Case No. D2006-0714; Hummert International, Inc. v. Manila Industries, Inc., WIPO Case No. D2006-0777).

The Panel therefore holds that the domain name was 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, <alkabello.com> be transferred to the Complainant.

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Michel N. Bertschy
Sole Panelist

Dated: October 18, 2006