WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Abraxis BioScience, LLC v. Les Rubin
Case No. D2008-0066
1. The Parties
Complainant is Abraxis BioScience, LLC of Los Angeles, California, United States of America, represented by Law Offices of Eric S. Freibrun, Ltd., United States of America.
Respondent is Les Rubin of Bronx, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <abraxisbioscience.com> (the “Domain Name”) is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2008. On January 17, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On January 17, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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 Respondent of the Complaint, and the proceedings commenced on January 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 18, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 19, 2008.
The Center appointed John R. Keys, Jr. as the sole panelist in this matter on February 28, 2008. 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 is a biotechnology company which develops and markets pharmaceuticals and other therapeutic technologies to treat cancer and other critical illnesses. Complainant was formed in early 2006 by a merger of its predecessor company, American Pharmaceutical Partners, Inc., with its parent company, American Bio Science, Inc., with the merged entity adopting the name Abraxis BioScience, LLC.
Complainant owns two registrations on the Principal Register of the United States Patent and Trademark Office (“USPTO”) for the trademark ABRAXIS relating to pharmaceuticals and pharmaceutical research: Reg. No. 3,077,449, filed 12/1/2003 and registered 4/4/2006; and Reg. No. 3,181,030, filed 4/8/2006 and registered 12/5/2006. Both are based on a claim of first use in commerce of 2/7/2005.
Complainant also has pending applications for the marks ABRAXIS BIOSCIENCE, filed 1/27/2006, and A ABRAXIS BIOSCIENCE, filed 4/19/06. The USPTO has issued a Notice of Allowance for ABRAXIS BIOSCIENCE, but it is not yet registered.
Complainant owns four registrations for two marks that include the word ABRAXIS: ABRAXIS ONCOLOGY and ABRAXIS PHARMACEUTICAL PRODUCTS. It has another four applications pending for marks including the word ABRAXIS.
Complainant registered the domain name <abraxisbio.com> on August 15, 2005.
On November 28, 2005, Complainant’s predecessor entities issued a press release announcing their agreement to merge the two entities into a new company under the name Abraxis BioScience.
On November 28, 2005, the same day as Complainant’s press release, Respondent registered the Domain Name, <abraxisbioscience.com>.
5. Parties’ Contentions
A.1. The Domain Name is Identical or Confusingly Similar to Complainant’s Marks
Complainant contends that it possesses established legal rights in its ABRAXIS and ABRAXIS BIOSCIENCE trade marks in the United States of America and elsewhere around the world in connection with the sale of pharmaceuticals and related products for the treatment of cancer and other illnesses and for related research and development activities. Complainant’s predecessors began using the ABRAXIS mark in commerce at least as early as February 2005 and the ABRAXIS BIOSCIENCE mark on November 28, 2005, when they announced the formation by merger of Abraxis BioScience.
Complainant has obtained registrations of the ABRAXIS mark in the United States of America, Canada, and the European Community and has applications pending for registration of its ABRAXIS BIOSCIENCE mark in the United States of America.
Complainant further contends that in 2007 it had revenues in excess of USD $766 million and spent in excess of USD $80 million advertising and promoting its products using its ABRAXIS BIOSCIENCE mark.
Complainant contends that the Domain Name is identical to Complainant’s ABRAXIS BIOSCIENCE mark and is confusingly similar to its ABRAXIS mark.
A.2. Respondent has no rights or legitimate interests in the Domain Name
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name. Complainant has not licensed or otherwise authorized Respondent to use its marks for any purpose. There is no evidence that Respondent has been commonly known by the Domain Name or by Complainant’s marks.
Complainant contends that Respondent is not making use of the Domain Name in connection with a bona fide offering of goods or services. The Domain Name is parked with the Registrar. The Domain Name leads to a web page provided courtesy of the Registrar which contains advertisements for the Registrar’s services and sponsored advertising links to several providers of “bioscience” products and services, none of which are Complainant’s products or services. The Registrar offers a monetization program called “Cash Parking” which allows Respondent to earn revenues from its parked Domain Name. The site states that “Each time someone clicks on advertising that generates revenue on your parked pages, you share in the revenue.” This, Complainant contends, misleads Internet users and tarnishes Complainant’s marks.
Finally, Complainant contends that Respondent is not making a non-commercial or fair use of the Domain Name.
A.3. The Domain Name was registered and is being used in bad faith
Complainant contends that Respondent registered and is using the Domain Name in bad faith. Complainant points to the fact that Respondent registered the Domain Name on the same day that Complainant’s predecessor entities publicly announced their merger and formation of the new company under the name Abraxis BioScience. The Domain Name thus incorporated Complainant’s newly announced corporate name and its pre-existing ABRAXIS trademark. Complainant notes that Respondent was found to have acted in bad faith in a previous UDRP decision on similar facts, namely, Dart Industries Inc. v. Leslie Rubin, WIPO Case No. D2006-0146, in which Respondent registered the domain names <tupperwarebrands.com> and <tupperwarebrandscorporation.com> on the same day that the company, Tupperware Corporation, announced publicly the change of it corporate name to Tupperware Brands Corporation.
Complainant further contends that Respondent is using the Domain Name in bad faith in that he is intentionally attempting to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website, which constitutes bad faith under paragraph 4(b)(iv) of the Policy.
Complainant contends also that Respondent’s passive use of the Domain Name constitutes bad faith under Policy, paragraph 4(b)(iii). Again, Complainant notes that Respondent was previously found in the Dart Industries decision to have been acting in bad faith under a similar domain name parking situation.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Respondent did not respond to the Complaint, therefore the Panel considers whether Respondent has been given adequate notice of the proceeding. The evidence indicates the Center sent the Complaint in electronic form and in hard copy by courier service to the address provided in Respondent’s registration information, and it appears that the Complaint was in fact delivered. The Panel concludes that the Center discharged its responsibility under the Rules to notify Respondent of the Complaint and the administrative proceeding.
Where a respondent does not respond to the complaint, the panel must decide the dispute based upon the complaint, Rules, paragraphs 5(e) and 14(a). The panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems applicable, Rules, paragraph 15(a). Under Rules, paragraph 14(b), Respondent’s failure to answer entitles the Panel to “draw such inferences therefrom as it considers appropriate”.
Under paragraph 4(a) of the Policy, Complainant must prove each of the following three elements of its case in order to obtain the requested relief:
(i) Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent’s Domain Name was registered and is being used in bad faith.
The Panel considers each element in order.
A. Identical or Confusingly Similar
Complainant possesses legal rights in the ABRAXIS mark based on its use in commerce since February 2005 and by reason of its registration on the USPTO Principal Register. Complainant also has common law rights in the mark ABRAXIS BIOSCIENCE which it has used in commerce since November 28, 2005. The USPTO has issued a Notice of Allowance for the mark, but it has not yet been registered.
Respondent’s Domain Name is identical to Complainant’s ABRAXIS BIOSCIENCE mark. The Domain Name is also confusingly similar to Complainant’s ABRAXIS mark. Respondent incorporated Complainant’s ABRAXIS mark into the Domain Name in its entirety, adding the word “bioscience”. The addition of a descriptive term like “bioscience” to Complainant’s established trademark does not negate confusing similarity. “Generally, a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.” 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 2005). See General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; Eastman Chemical Company. v. Manila Industries, Inc., NAF Case No. FA 450806; Pioneer Hi-Bred International, Inc. v. Manila Industries, Inc., NAF Case No. FA 444468.
In this case, where the descriptive term actually describes the goods or services of Complainant, it tends to increase rather than diminish confusing similarity. See Costco Wholesale Membership, Inc., Costco Wholesale Corporation v. Yong Li, WIPO Case No. D2004-0296 (descriptive term “tires” in <costcotires.com> increases confusion); Media West-GSI, Inc., Gannett Satellite Information Network, Inc., and Gannett Co., Inc. v. Cupcake City and null John Zuccarini a/k/a John Zuccarini, WIPO Case No. D2001-0235 (addition of “sports” and “weather” to name of newspaper caused confusion); Capital Broadcasting Company, Inc. v. Private, WIPO Case No. D2000-1609 (addition of “weather” heightened confusion with television call letter mark).
Complainant has established that the Domain Name is identical and confusingly similar to trademarks in which Complainant has rights and thus proves the first element of its case, under the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Complainant must show that Respondent has no rights or legitimate interests in the Domain Name. Here Complainant makes a sufficient prima facie case that Respondent possesses no rights or legitimate interests in the Domain Name. There is no evidence that Respondent has ever been known either by the Domain Name or by the name “Abraxis”. Complainant has not licensed or otherwise authorized Respondent to use the trademarks in the Domain Name or in any other way. See Dart Industries Inc. v. Leslie Rubin, supra; Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261.
The evidence further shows that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. The evidence on record demonstrates that Respondent is using the ABRAXIS and ABRAXIS BIOSCIENCE marks as part of the Domain Name to divert Internet traffic intended for Complainant to a website where it has parked the Domain Name with the Registrar. The website at the Domain Name has nothing whatsoever to do with Complainant or Complainant’s goods or services and, in fact, provides advertising links to unrelated providers of goods and services, some of which may even compete with Complainant. Respondent presumably earns revenues from the website at the Domain Name when Internet users click on sponsored advertising links. Respondent is thus creating a false impression of association or sponsorship between Complainant and Respondent’s website which is deceptive to the Internet user and harmful to Complainant’s reputation and goodwill. This does not constitute a bona fide offering of goods or services by Respondent. See Dart Industries Inc. v. Leslie Rubin, supra; Sanrio Company Ltd v. Neric Lau, WIPO Case No. D2000-0172 (interests in the domain name not legitimate where there is no authorized association with trademark owner); Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The foregoing further demonstrates that this is not a case of noncommercial or fair use of the Domain Name.
Respondent, in default here, does not come forward with evidence of his own to counter Complainants’ prima facie case and has not, therefore, established that he has rights or legitimate interests in the Domain Name.
Complainant has established that Respondent has no rights or legitimate interests in the Domain Name, the second element of its case, under the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Complainant must demonstrate that Respondent both registered and is using the Domain Name in bad faith.
The registration of a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark may in itself constitute sufficient evidence of bad faith registration and use. Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202 F.3d 489, 498 (2d Cir. 2000); Pepperdine University v. BDC Partners, Inc., WIPO Case No. D2006-1003; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known product by someone with no connection with the product suggests opportunistic bad faith). Similarly, a number of UDRP Panels have found bad faith registration where it was clear that the respondent had actual or constructive knowledge of the complainant’s mark and intentionally registered a confusingly similar domain name. Waterman, S.A.S. v. Brian Art, WIPO Case No. D2005-0340 (finding bad faith registration and noting that complainant’s mark was well-known); Microsoft Corporation v. Party Night, Inc. d/b/a/ Peter Carrington, WIPO Case No. D2003-0501 (“It is not reasonable to expect the [r]espondent to register the disputed Domain Names if the [r]espondent had no knowledge of the [c]omplainant’s trademark and services in connection thereto”). Prior UDRP panels have held that actual or constructive knowledge of complainant’s rights in trademarks is a factor indicating bad faith registration. Ticketmaster Corporation v. Spider Web Design, Inc., WIPO Case No. D2000-1551; The Channel Tunnel Group Ltd. v. John Powell, WIPO Case No. D2000-0038.
While the ABRAXIS trademark was not yet registered and may not have been famous in a trademark sense as of November 28, 2005, the mark nevertheless was in use in commerce demonstrating some evidence of Complainant’s common law trademark rights in the ABRAXIS mark, and there was an application pending to register it. More compelling, however, is the fact that Respondent, who had no relationship with Complainant, registered the Domain Name on the same day that Complainant’s predecessor entities publicly announced their merger and the new corporate name, Abraxis BioScience. There exists a reasonable, if not inescapable, inference that Respondent registered the Domain Name with actual knowledge, obtained from the press reports, of Complainant’s new corporate name and chose to appropriate it for his own commercial advantage. See Dart Industries Inc. v. Leslie Rubin, supra. The Panel concludes that Respondent registered the Domain Name in bad faith.
With regard to the issue of bad faith use, the Policy provides that bad faith exists, inter alia, where the respondent “has intentionally attempted to attract, for commercial gain, Internet users to [its] website . . . by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on their website or location.” Policy, paragraph 4(b)(iv). This appears clearly to be what Respondent is doing here. Respondent is using Complainant’s ABRAXIS BIOSCIENCE and ABRAXIS marks, trading on their goodwill, to attract and divert Internet users to a webpage by creating a false impression that the site is affiliated with or sponsored by Complainant. The fact that the webpage contains advertising links, from which Respondent likely benefits through the Registrar’s “Cash Parking” monetization program, supports the inference that the purpose of Respondent’s diversion of traffic from Complainant to himself is for Respondent’s own commercial gain. See Ticketmaster Corporation v. Yong Li, WIPO Case No. D2003-0905; Costco Wholesale Membership, Inc., Costco Wholesale Corporation v. Henry Chan, WIPO Case No. D2004-0218; Costco Wholesale Membership, Inc., Costco Wholesale Corporation v. Yong Li, supra. The Panel finds bad faith use of the Domain Name under Policy, paragraph 4(b)(iv).
Complainant contends also that Respondent’s conduct constitutes passive holding of the Domain Name and thus bad faith within the meaning of paragraph 4(b)(iii) of the Policy (registering the domain name for the purpose of disrupting the business of a competitor). There is no evidence that Respondent and Complainant are competitors, thus the Panel does not find paragraph 4(b)(iii) to be implicated here. Given the Panel’s conclusion above that there exists bad faith under Paragraph 4(b)(iv), the Panel finds it unnecessary to address the question of whether this form of monetized webpage parking provided by the Registrar constitutes bad faith passive holding as described in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and other cases.
Complainant has established bad faith registration and use of the Domain Name, the third and final element of its case, under the Policy, paragraph 4(a)(iii).
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, <abraxisbioscience.com>, be transferred to Complainant.
John R. Keys, Jr.
Dated: March 13, 2008