WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bristol-Myers Squibb Company v. Domain Admin
Case No. D2007-0351
1. The Parties
The Complainant is Bristol-Myers Squibb Company, New York, New York, United States of America, represented by Quinn Emanuel Urquhart Oliver & Hedges, LLP, United States of America.
The Respondent is Domain Admin, San Francisco, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <bristolmeyerssquibb.com> is registered with Dotster, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2007. On March 12, 2007, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On March 12, 2007, Dotster, Inc. 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 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 March 23, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 13, 2007.
The Center appointed Andrew Mansfield as the sole panelist in this matter on April 27, 2007. 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
Complainant presents two United States trademarks that are registered with the Federal government.
First is BRISTOL-MYERS SQUIBB TOUR OF HOPE, Reg. No. 2953586, first used 10/1l/2003, relating to goods and services promoting public awareness of the need for a cure for cancer.
Second is BRISTOL-MYERS SQUIBB MEDICAL IMAGING, Reg. No. 2887611, first used 4/29/2003, relating to Pharmaceutical preparations for the treatment and prevention of cardiovascular diseases, central nervous system diseases and disorders, diabetes, stroke, cancer, inflammation and inflammatory diseases, respiratory and infectious diseases, auto-immune diseases, antibiotics, and, contrasting agent for ultrasound diagnostic imaging.
5. Parties’ Contentions
Complainant alleges that it has established rights in a trademark consisting of the words “bristol-myers squibb”.
Complainant alleges that Bristol-Myers Squibb Company has almost a century and a half of history to its name. Complainant states that in 1858, in Brooklyn, New York, Edward Robinson Squibb founded a pharmaceutical company that later became known as E.R. Squibb & Sons. Further, Complainant alleges that Bristol-Myers was established in 1887 when William McLaren Bristol and John Ripley Myers invested in a drug manufacturing company in Clinton, New York. The successors-in-interest of these two companies, according to Complainant, came together in 1989 to form Bristol-Myers Squibb Company, one of the largest pharmaceutical companies in the world.
Complainant alleges that BRISTOL-MYERS and SQUIBB were two of the most famous marks in the pharmaceutical industry in 1989, as a result of well over a century of use. After the merger, the strength of these two marks was combined to make the allegedly famous and distinctive mark, BRISTOL-MYERS SQUIBB. Since 1989, Complainant alleges that it has continuously owned and used the well-known BRISTOL-MYERS SQUIBB trade name, trademark and service mark (the “BRISTOL-MYERS SQUIBB Mark”) in the United States and throughout the world for pharmaceuticals and nutritional supplements.
Complainant alleges that is has undertaken extensive and exclusive use and expended millions of Dollars spent advertising over the last two decades and that the BRISTOL-MYERS SQUIBB Mark has acquired invaluable goodwill and reputation, not only in the United States hut also throughout the world. Complainant informs the Panel that it currently operates in almost every country in the world, where it sells hundreds of products under the BRISTOL-MYERS SQUIBB Mark. Additionally, Complainant allegedly uses the BRISTOL-MYERS SQUIBB Mark extensively in its advertising, on its Bristol-Myers Squibb building signage, and in connection with community support and service programs associated with its services and products.
In addition to Complainant’s alleged common law trademark rights in the
BRISTOL-MYERS SQUIBB Mark, Complainant owns United States trademark registrations that incorporate its well-known BRISTOL-MYERS SQUIBB Mark, including, U.S. Reg. No. 2953586 for BRISTOL-MYERS SQUIBB TOUR OF HOPE, and U.S. Reg. No. 2887611 for BRISTOL-MYERS SQUIBB MEDICAL IMAGING (and Design).
Complainant also indicates that it operates a website at “www.bristolmyerssquibb.com” where consumers may obtain extensive information about Bristol-Myers Squibb products and services. Complainant’s websites are allegedly organized to provide information about product categories, product details and the history of the company. The websites, argues Complainant, are a vital part of its business and contribute to its online identity and brand
Complainant next alleges that the domain name <bristolmeyerssquibb.com> is confusingly similar to Complainant’s BRISTOL-MYERS SQUIBB Mark. The domain name simply contains an extra “e” within the word “myers”, creating a term that is virtually identical to BRISTOL-MYERS SQUIBB’S world-famous trademark. Complainant alleges that this addition of one letter and resulting similarity with Complainant’s mark is calculated to trade on the BRISTOL-MYERS SQUIBB Mark by exploiting likely mistakes made by people seeking Bristol-Myers Squibb’s websites. Complainant argues that this establishes a confusingly similar use of a complainant’s trademark, and requires transfer of the domain to the rightful trademark owner.
Complainant alleges that Respondent has no rights or legitimate interest in the Domain Name. Under the Policy, according to Complainant, Respondent bears the burden of proving that it has rights or legitimate interest in the Domain Name. Complainant argues that Respondent cannot overcome this burden.
First, Complainant alleges that Respondent has no rights in the BRISTOL-MYERS SQUIBB Mark, nor its corrupted spelling. Bristol-Myers Squibb has not authorized any individual or business entity to register the domain name <bristolmeyerssquibb.com>. Complainant indicates that it knows of no “Bristolmeyerssquibb” entity that offers goods or services of any sort. Complainant also points out to the Panel that the registrant is “anonymous” and therefore not a legitimate business.
Second, Complainant alleges that Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Complainant indicates that Respondent is using the Domain Name primarily if not solely for the purpose of earning referral fees for diverting traffic to other commercial websites, including direct competitors of Bristol-Myers Squibb, to Bristol-Myers Squibb’s commercial detriment. Complainant alleges that Respondent’s use is plainly commercial and is not a legitimate use of another’s trademark.
Complainant alleges that the Domain Name was registered and is being used in bad faith. Complainant argues that the use of the Domain Name to link to goods sold by its competitors constitutes a bad faith use and is evidence of bad faith registration. Complainant argues that Respondent has registered the domain name primarily to disrupt the business of Bristol-Myers Squibb.
Complainant alleges that Respondent also acquired the <bristolmeyerssquibb.com> domain name in order to attract Internet users to its website for Respondent’s own commercial gain by creating a likelihood of confusion between its website and BRISTOL-MYERS SQUIBB’S Mark. Complainant alleges that the purpose of the “www.bristolmeyerssquibb.com” website appears to be to earn referral fees by directing Internet users to retail websites or competitors of Bristol-Myers Squibb. Respondent’s use of a domain name which is confusingly similar to the famous BRISTOL-MYERS SQUIBB Mark for commercial benefit is evidence that Respondent is attempting to profit by creating confusion with Bristol-Myers Squibb in the minds of Internet users.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Complainant has the burden of proof in showing that each element within paragraph 4(a) of the Policy is present. These are as follows:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name was registered and is being used by Respondent in bad faith.
Even when a respondent defaults, as is the case here, the Complainant must establish and carry the burden of proof on each of the three elements identified above with regard to each of the disputed domain names. See Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383.
The Panel proceeds to deal with each of these elements in turn.
A. Identical or Confusingly Similar
The possession of United States Federally registered trademark rights by complainant meets the threshold requirement of possessing trademark rights sufficient to satisfy paragraph 4(a)(i) of the Policy. Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano, WIPO Case No. D2003-0661.
The Panel notes that Complainant has two United States Federally registered trademarks that contain BRISTOL-MYERS SQUIBB. This alone satisfies the requirement for trademark rights under paragraph 4(a)(i) of the Policy. In addition, Complainant has presented evidence that it possesses long-standing common law trademark rights to BRISTOL-MYERS SQUIBB, which would also establish trademark rights sufficient to proceed under the Policy.
The Panel finds that the Domain Name <bristolmeyerssquibb.com> is confusingly similar to Complainant’s trademark BRISTOL-MYERS SQUIBB. The Domain Name differs only by the inclusion of an extra “e” in Myers. “Myers” and “Meyers” are both common spellings of the family name “Meyers”. Both are pronounced the same in English. The addition of the single letter “e” to the Domain Name is a form of “typo-squatting” wherein one party hopes to benefit from the misspelling of another party’s trademark.
B. Rights or Legitimate Interests
Complainant asserts inter alia that it is aware of no rights or legitimate interests that Respondent has in the disputed domain name. The disputed domain name is not the name of the respondent. The Panel is satisfied that Complainant has made out an initial prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating a right or legitimate interest in the disputed domain name. By matter of default, Respondent has failed to do so, and Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides the following non-exclusive examples of registration and use in bad faith:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.”
The Panel finds that Respondent has sought to benefit from the confusion between the disputed domain name and complainant’s trademark. Respondent’s conduct is similar to the example provided in Paragraph 4(b)(iv) of the Policy.
Respondent operates a website at the Domain Name that links to numerous goods and services offered by third parties, including Complainant’s competitors. When an Internet user mistakenly types in the Domain Name, certainly looking for information on goods sold by Complainant, the user is offered information or the ability to purchase products that compete with Complainant’s products.
The Panel finds that the similarity between the Domain Name and Complainant’s trademark BRISTOL-MYERS SQUIBB, an unusual combination of words and letters, provides evidence that Respondent intentionally registered the Domain Name in bad faith to profit from the confusion generated with Complainant’s trademark. Complainant has also demonstrated the current use of the Domain Name is in bad faith.
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 <bristolmeyerssquibb.com> be transferred to the Complainant.
Dated: May 11, 2007