DECISION

Abbott Laboratories v. Jongseob Kim

Claim Number: FA0111000102161

PARTIES

Complainant is Abbott Laboratories, Abbott Park, IL (“Complainant”) represented by Thad Chaloemtiarana, of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson.  Respondent is Jongseob Kim, Daegu (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <similac.net>, registered with Hangang Systems, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 12, 2001; the Forum received a hard copy of the Complaint on November 16, 2001.  The Complaint was submitted in both Korean and English.

On November 14, 2001, Hangang Systems, Inc. confirmed by e-mail to the Forum that the domain name <similac.net> is registered with Hangang Systems, Inc. and that Respondent is the current registrant of the name.  Hangang Systems, Inc. has verified that Respondent is bound by the Hangang Systems, 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 November 21, 2001, a Korean Language Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 11, 2001 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@similac.net by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On December 31, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Respondent’s <similac.net> domain name is identical to Complainant’s SIMILAC registered trademark.

Respondent  does not have any rights or legitimate interests in the domain name at issue.

Respondent registered and used the domain name at issue in bad faith.

B. Respondent

No Response was received.

FINDINGS

Complainant registered the SIMILAC trademark on the Principal Register of the U.S. Patent and Trademark Office on April 26, 1927.  Complainant additionally owns registered trademarks for SIMILAC all over the world, including Korea. Complainant has continuously used the SIMILAC trademark in connection with its infant formula and infant nutrition products.

Complainant has also established a presence on the Internet by advertising and selling its baby formula products at its <similac.com> website. 

Complainant has clearly gained significant good will in the SIMILAC name as symbolized by its significant company assets.  Complainant’s domestic sales for each of the last five years, 1996-2000, under its SIMILAC trademark average in excess of $800 million U.S. dollars, and its foreign sales have averaged over $150 million. 

Respondent is located in Korea and is neither licensed by, nor affiliated with Complainant.  Respondent registered the infringing domain name at issue on June 25, 2001 long after Complainant’s registration of its mark. 

Respondent has a history of registering infringing domain names like <myviagra.com>, and <northwestairlines.net> and offering to sell them for profit. Respondent’s buydomain@Korea reply address given at the time the domain name was registered suggests Respondent’s purpose is to sell the domain name.

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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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 through registration and use has established it has rights in the trademark.

Therefore, Respondent’s <similac.net> domain name is identical  to Complainant’s registered mark because the addition of a top level domain name like “.net” does not affect the mark for the purpose of determining whether it is identical to the domain name.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Little Six, Inc., v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is plainly identical to Complainant’s MYSTIC LAKE trademark and service mark).

Moreover, Respondent’s domain name is confusingly similar to Complainant’s trademark because there is a substantial likelihood that Internet users will confuse Respondent’s website with Complainant’s business.  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that given the similarity of the Complainant’s marks with the domain name, consumers will presume the domain name is affiliated with the Complainant …the Respondent is attracting Internet users to a website, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, or endorsement of the Respondent’s website).

Finally, Respondent’s domain name is confusingly similar to Complainant’s mark because the domain name incorporates Complainant’s registered trademark in its entirety.  See Hollywood Network, Inc, v. Video Citizen Network, FA 95897 (Nat. Arb. Forum Dec. 20, 2000) (finding that the domain name <hollywoodnetwork.tv> is identical and confusingly similar to Complainant’s HOLLYWOOD NETWORK mark because the “inclusion of the entirety of Complainant’s mark in the domain name at issue makes it confusingly similar”); see also Quixtar Inv., Inc. v. Smithberger and QUIXTAR-IBO, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the Complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

            Rights or Legitimate Interests

Because Complainant’s unauthorized use of Complainant’s registered mark is not a bona fide offering of goods pursuant to Policy ¶ 4(c)(ii), Respondent lacks rights and legitimate interests in the domain name.  See Telstra Corp. Ltd. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb.18, 2000) (finding that (i) the fact that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks, and (ii) the fact that the word <TELSTRA> appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant is that the Respondent lacks rights or legitimate interests in the domain name).

The fame of Complainant’s mark is sufficient to show that Respondent could not be commonly known by Complainant’s mark.  See Victoria’s Secret et al v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).  As a result, Respondent does not have any rights or legitimate interests in the domain name at issue because Respondent is not commonly known by the domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark). 

Respondent’s buydomain@Korea.com reply address indicating its purpose to sell the domain name suggests that Respondent has no rights or legitimate interests pursuant to Policy ¶ 4(c)(iii).  See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell domain name suggests it has no legitimate use).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent’s registration of Complainant’s famous mark in its entirety for Respondent’s domain name is evidence of bad faith.  See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding bad faith when (1) the domain name contains the complainant’s mark in its entirety, (2) the mark is a coined word, well-known and in use prior to Respondent’s registration of the domain name, and (3) Respondent fails to allege any good faith basis for use of the domain name).

Moreover, Respondent’s pattern of registering infringing domain names using famous trademarks is evidence of bad faith pursuant to Policy ¶ 4(b)(ii).  See Australian Stock Exch. v. Cmty. Internet (Australia), D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy paragraph 4(b)(ii) where Respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses); see also Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks).

Finally, Respondent’s conduct indicating its purpose for registering the infringing domain name was to sell it for profit is evidence of bad faith pursuant to Policy ¶ 4(b)(i).  See Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding bad faith based on the apparent willingness of the Respondent to sell the domain name in issue from the outset, albeit not at a price reflecting only the costs of registering and maintaining the name); see also Dollar Rent A Car Sys. Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that the Respondent demonstrates bad faith by registering the domain name for the purpose of selling the domain name in an amount in excess of out of pocket costs).

           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 the requested relief shall be hereby granted.

Accordingly, it is Ordered that the domain name <similac.net> be hereby transferred from Respondent to Complainant.

John J. Upchurch, Panelist

Dated: January 8, 2002

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