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
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.
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 email@example.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.")
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.
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).")
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
Dated: April 7, 2004