Complainant is Abbott Laboratories of Abbott Park, Illinois, United States of America ("United States"), represented by Steven M. Levy, Esq., United States.
Respondent is Domain May Be For Sale, Check afternic.com Domain Admin, Whois protection, this company does not own this domain name s.r.o. of Prague, Czech Republic / Hulmiho Ukolen, Poste restante of Helsinki, Finland.
The disputed domain name <enssure.com> is registered with Gransy, s.r.o. d/b/a subreg.cz (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 31, 2017. On October 31, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 1, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent, and contact information in the Complaint. The Center sent an email communication to Complainant on November 7, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 9, 2017.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 4, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 5, 2017.
The Center appointed Roberto Bianchi as the sole panelist in this matter on December 8, 2017. 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.
Complainant is a global health care company researching, developing, manufacturing and marketing human and animal directed products and services aimed at prevention, diagnosis, treatment and cure. Complainant's main businesses are nutritional and diagnostic products, including blood glucose monitoring systems. Complainant serves customers in over 130 countries, with 94,000 employees in 150 countries. In fiscal year 2016, Complainant reported revenues of USD 20.85 billion.
Complainant owns, inter alia, the following trademark registrations:
|
Jurisdiction |
Mark |
Reg. No. |
Reg. Date |
Filing Date |
Goods / Services |
First Use / First Use in Commerce |
|
UNITED STATES |
ENSURE |
965204 |
July 31, 1973 |
June 9, 1972 |
Liquid nutritive preparations for oral or gavage feeding, in International Class 5 |
March 17, 1972 |
|
UNITED STATES |
ENSURE PLUS |
1051691 |
November 2, 1976 |
April 2, 1976 |
Liquid nutritive preparations for oral or gavage feeding, in International Class 5 |
March 9, 1976 |
|
UNITED STATES |
ENSURE |
1485012 |
April 19, 1988 |
September 2, 1987 |
Dietary foods supplements; namely, vitamins and minerals in a flavored pudding base, in International Class 5 |
October 29, 1986 |
|
EUROPEAN UNION |
ENSURE |
40485 |
October 7, 1998 |
April 1, 1996 |
Dietetical substances adapted for medical use, in International class 5 |
N/A |
A prior UDRP Complaint was filed against the disputed domain name on December 28, 2010 at another UDRP provider under Abbott Laboratories et al. v. Whois Privacy Services Pty Ltd., NAF Claim No. FA 1365160. The previous proceeding was suspended and at some point during the pendency of the proceeding the WhoIs was updated with the current Respondent's information. After many years of renewed case suspensions, Complainant requested the termination of the previous UDRP proceeding, which was granted "without prejudice".
The disputed domain name bears a creation date of May 9, 2015 and resolves to a website with pay-per-click ads relating to "Ensure", "Nutrition Pregnancy", and other pregnancy-related topics.
Complainant contends as follows:
Complainant owns the distinctive and well known ENSURE trademark. In 1972, Complainant commenced use of this mark in connection with the sale and distribution of nutrition supplements such as vitamin and calorie rich drink and drink mixes. Since that time, Complainant has continually used the ENSURE mark in commerce. Complainant generates significant sales revenue because of the advertising and marketing it conducts on its various websites, including "www.abbott.com" and "www.ensure.com". Through these websites, Complainant provides information to prospective customers around the world in many different languages. Because of Complainant's long usage and promotion of the ENSURE mark, it has become well known to, and widely recognized by consumers around the world.
The disputed domain name is confusingly similar to Complainant's ENSURE marks, which became well known long prior to the creation date of the disputed domain name. Searchers will likely be confused into believing that there is a connection of source, sponsorship, affiliation or endorsement between Complainant and Respondent by Respondent's use of the disputed domain name. It has been held in numerous decisions, that a minor misspelling of a complainant's trademark creates a confusingly similar domain name. Respondent initially attracts searchers to its website by using a copy of Complainant's ENSURE mark and merely adding an extra letter "s" thereby making visitors to its website think that they are being linked to one of Complainant's legitimate sites. The addition of the ".com" generic Top-Level Domain does nothing to alleviate confusion between the ENSURE mark and the disputed domain name.
Respondent has no rights or legitimate interest in respect of the disputed domain name. Respondent's actions are not a bona fide offering of goods or services under Policy paragraph 4(c)(i). Respondent's website under the disputed domain name, at least initially, redirects users to a rotating series of third party websites under the fast flux DNS ("FFDNS") technique. In some cases, users are ultimately directed to a site that attempts to install malware on the user's computer. Under the FFDNS technique, in an attempt to throw investigators off the trail, the affected domain name typically does not resolve to the same page on subsequent attempts. When the disputed domain name is input into the same browser a second time, it resolves to a warning message. This sort of FFDNS activity, although recently on the rise, is known to UDRP panels and has been found not to provide a domain owner with any rights or legitimate interest in a disputed domain name. See, e.g., CenturyLink Intellectual Property LLC v. Above.com Domain Privacy / Protection Domain, WIPO Case No. D2017-0144 ("Respondent is not using the disputed domain names in a bona fide manner" where "[t]he Respondent's websites are alleged to redirect visitors to a rotating number of websites that either contain PPC links, advertisements for the Complainant or a competitor of the Complainant, or sites allegedly designed for phishing or distribution of malware.").
At other times, Respondent's website under the disputed domain name resolves to a classic pay-per-click page displaying links that divert visitors – likely Complainant's customers and potential customers – to other websites not associated with Complainant and, in some instances, are owned by companies that may be competitors. This pay-per-click resolution has been going on for some time as shown by the archival screenshot of the website at the disputed domain name from June of 2015. See Complaint Exhibit F-8. UDRP panels have found that leading consumers who are searching for a particular business, to a site where the same or similar services are provided by others, is not a bona fide use. WIPO Overview 3.0, at section 2.9 (a pay-per-click website "does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant's mark or otherwise mislead Internet users").
The WhoIs record for the disputed domain name lists Respondent as "Hulmiho Ukolen / Poste restante". Upon information and belief, Respondent is not commonly known by the disputed domain name or the term "Ensure", nor does Respondent operate a business or other organization under the ENSURE mark or this domain name and does not own any trademark or service mark rights in the "Ensure" name. In fact, Respondent's use of a privacy service to hide its identity indicates that it specifically did not want to reveal the name by which it is commonly known. This has been held indicative of no rights or legitimate interests accruing to a Respondent under Policy, paragraph 4(c)(ii). See, e.g., L'Oréal SA v. PrivacyProtect.org/ WangShanShan, WIPO Case No. D2014-0295.
Next, Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain, and so its actions do not fall within Policy paragraph 4(c)(iii). The domain name uses an intentional misspelling of the ENSURE mark by adding a second letter "s". This combined with the fact that the disputed domain name, at certain times, resolves to a pay-per-click website that refers to both Complainant's ENSURE product and to third-party companies in Complainant's field of business, leads to the only reasonable conclusion that the disputed domain name is derived from Complainant's ENSURE mark. As such, the disputed domain name is not being used for any generic or descriptive meaning. Thus, Respondent uses the domain name to confuse and misleadingly divert consumers, or to tarnish the well-known ENSURE mark. Such use cannot be considered fair and it does not fit in to any accepted category of fair use such as news reporting, commentary, political speech, etc. Rather, based upon the popularity and reputation of the ENSURE mark, those who see the disputed domain name and the resulting websites will immediately perceive the domain name to refer to Complainant and for Respondent to claim otherwise would be disingenuous and highly suspect.
Finally, Respondent's use has tarnished and diluted Complainant's ENSURE mark. As a result of its using the disputed domain name in association with a variety of third-party websites, Respondent has diminished the public's capacity to associate the well-known ENSURE Mark with the quality products offered by Complainant. Respondent's use creates the very real risk that Complainant's trademark is being associated with products and services, over which Complainant has no quality control.
The domain name was registered and is being used in bad faith. Respondent intentionally targeted the ENSURE mark without consent from Complainant. Respondent was on actual notice of Complainant's rights in its well-known mark as a result of Complainant's extensive use of the mark that long predates the date on which Respondent acquired the disputed domain name. Furthermore, as the disputed domain name contains an intentional misspelling of Complainant's mark and resolves, at times, to a pay-per-click page with links mentioning Complainant's products, it is clear that Respondent can only have created the disputed domain name upon its knowledge of Complainant's mark and name. Therefore, Respondent intentionally used the domain name with knowledge of, and in violation of Complainant's trademark rights.
That Respondent both registered and is using the disputed domain name in bad faith is clearly seen from its use of the FFDNS technique to resolve the disputed domain name to third party websites, some of which seek to deposit malware on a user's computer for the purposes of hacking, phishing, identity theft, etc. See WIPO Overview 3.0 at section 3.4 ("the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution.")
Further, Respondent is seeking commercial gain as seen in the pay-per-click resolution of the disputed domain name. When a visitor to this website clicks on one of the links which appear there, Respondent receives compensation from the various website owners who are forwarded from the site. Most likely, Respondent receives compensation based upon the number of hits the website owners get from being linked to the website at the disputed domain name. Respondent's generation of click-through fees from the disputed domain name alone constitutes commercial gain. Furthermore, Respondent's use of the disputed domain name and its websites results in a commercial gain for others by forwarding visitors to third parties. Respondent sought commercial gain here for itself and the various website owners who are forwarded from the links at the disputed domain name. There is no other rational explanation for Respondent having registered and maintained the disputed domain name and, in many cases, resolving it to a pay-per-click site with commercial links that relate directly to Complainant's nutrition business.
Respondent's use of the disputed domain name is commercial because the various companies forwarded from the website benefit from the subsequent interest and purchases of those who visit the website. UDRP panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. See Focus Do It All Group and others v. Athanasios Sermbizis, WIPO Case No. D2000-0923 (finding that "[I]t is enough that commercial gain is being sought for someone" for a use to be commercial).
Of course, Respondent is entirely and solely responsible for the content of its website. See WIPO Overview 3.0 at section 3.5 ("Particularly with respect to 'automatically' generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name").
Finally, Respondent here is an active cybersquatter who has engaged in a pattern of bad faith registration of domain names that are confusingly similar to trademarks in which Respondent has no rights. Policy paragraph 4(b)(ii) and WIPO Overview 3.0 at section 3.1.2 ("establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration"). At least 43 prior UDRP cases have successfully been brought against Respondent. These prior decisions against Respondent are highly relevant to the consideration of bad faith in the present case since they show that it has engaged in a pattern of conduct designed to infringe upon the trademarks of others. See WIPO Overview 3.0 section 3.1.2; see also, AdvancedMD, Inc. v. Domain Admin, Whois protection, this company does not own this domain name s.r.o. / Hulmiho Ukolen, Poste restante, WIPO Case No. D2017-0876 (bad faith found where "the Respondent has been involved in at least other twenty similar UDRP cases involving third-party trademarks").
Regardless of whether this demonstrates a pattern of conduct which deprives Complainant of the ability to reflect its mark in the .com Top-Level Domain under Policy paragraph 4(b)(ii), the facts of Policy paragraph 4(b) are not exhaustive and this Panel may nevertheless consider Respondent's actions as evidence of its state of mind in the present dispute and certainly of its ability to copy famous trademarks in its domain names. Thus, all of the facts here strongly demonstrate that Respondent has registered and used the disputed domain name in bad faith.
Respondent did not reply to Complainant's contentions.
By submitting various printouts of the databases of the corresponding trademark offices, Complainant has shown to the satisfaction of the Panel that it owns several registrations for the ENSURE mark. See section 4 above. The Panel finds that Complainant has rights in the ENSURE mark for purposes of Policy paragraph 4(a)(i).
The Panel notes that in the disputed domain name the ENSURE mark is incorporated in its entirety, with the only difference that a letter "s" was added between the "ens" and "ure" portions of the mark. In the opinion of the Panel, this addition is irrelevant, because the duplication of the "s" has almost no perceptible effect to the ear, while visually, the resulting domain name strongly suggests to be nothing else than a mistype of Complainant's mark. Lastly, it is well established that the addition in domain names of the top-level domain does nothing to dispel the impression of confusion with a mark. The Panel concludes that the disputed domain name is confusingly similar to Complainant's ENSURE mark.
Complainant contends that Respondent's website under the disputed domain name, at least initially, redirects users to a rotating series of third party websites under the fast flux DNS ("FFDNS") technique, which does not to provide with any rights or legitimate interest in a disputed domain name. The website under the disputed domain name occasionally resolves to a classic pay-per-click page displaying links that divert visitors – likely Complainant's customers and potential customers – to websites not associated with Complainant. Complainant also contends that upon information and belief, Respondent is not commonly known by the disputed domain name or the term "Ensure", nor does Respondent operate a business or other organization under the ENSURE mark or this domain name and does not own any trademark or service mark rights in the "Ensure" name.
The Panel notes that the available evidence supports Complainant's conclusion that Respondent lacks rights or legitimate interests in the disputed domain name. First, according to the WhoIs data provided by the registrar, the registrant of the disputed domain name is "Hulmiho Ukolen, Poste restante", a circumstance that does not allow inferring that this person is known – commonly or otherwise – by the disputed domain name. Thus, the hypothesis of Policy paragraph 4(c)(ii) must be discarded. Second, Complainant has shown that the website at the disputed domain name displayed a number of "related links" including "Ensure", "Nutrition Pregnancy", "Pregnancy Signs", "Pre Pregnancy", "Pregnancy Weight Gain Chart", and "Pregnancy Diet", and that after clicking on the "Ensure" link, a list of new links appeared to, inter alia, auto-insurance and nutrition drinks. This means that, at least partially, the website at the disputed domain name re-directs Internet users presumably looking for Complainant and the well-known product ENSURE to websites unrelated to Complainant. Since these websites are of a commercial nature, this use of the disputed domain name most likely is providing Respondent with click-through income generated by the confusion of the users. In the Panel's opinion, this is neither a bona fide use under Policy paragraph 4(c)(i), nor a legitimate noncommercial or fair use, without intent for commercial gain to misleadingly divert consumers under Policy paragraph 4(c)(iii). See Harpo, Inc. and Oprah's Farm, LLC v. Robert McDaniel, WIPO Case No. D2013-0585 ("The commercial use of the domain names for PPC advertising does not reflect any rights or legitimate interests of the Respondent in the domain names.") See also WIPO Overview 3.0, section 2.9 ("Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant's mark or otherwise mislead Internet users.")
In the Panel's opinion, Complainant's contentions and supporting evidence are apt to constitute a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Since Respondent failed to provide any explanation for having registered the disputed domain name, the Panel concludes that Respondent lacks any rights or legitimate interests in the disputed domain name.
The Panel notes that Complainant's registration and first use in commerce of the ENSURE mark predates the registration of the disputed domain name by several decades. See section 4 above. In particular, the Panel notes that the disputed domain name simply is a misspelling of Complainant's mark. Further, the content of the website at the disputed domain name, exclusively displaying "related links" to, inter alia, websites offering nutrition products, or dealing with nutrition generally, strongly suggests that Respondent knew of, and had Complainant and its ENSURE nutrition product in mind at the time of registering the disputed domain name. In the circumstances of this case, this means that this registration was in bad faith.
In addition, as noticed by Complainant, Respondent is a serial cybersquatter. In fact, Respondent has engaged in a pattern of registering third party trademarks as domain names, which panels ordered to be transferred to the trademark owners in at least twenty-six prior UDRP cases. See, e.g., AdvancedMD, Inc. v. Domain Admin, Whois protection, this company does not own this domain name s.r.o. / Hulmiho Ukolen, Poste restante, WIPO Case No. D2017-0876; Société nouvelle d'études, d'éditions et de publicité SNEEP v. Whois Protection / Hulmiho Ukolen, WIPO Case No. D2015-0663; iS3, Inc. v. Hulmiho Ukolen, Poste restante / Domain Admin, Whois protection, this company does not own this domain name s.r.o., WIPO Case No. D2016-0933; LEGO Juris A/S v. Hulmiho Ukolen, Poste restante / Domain Admin, Whois protection, WIPO Case No. D2016-1604; Accenture Global Services Limited v. Hulmiho Ukolen, Poste restante / Domain Admin, Whois protection, WIPO Case No. D2015-1519; Giffits GmbH v. Whois protection, this company does not own this domain name s.r.o. / Hulmiho Ukolen, WIPO Case No. D2015-0586; American Woodmark Corporation v. Domain Admin, this company does not own this domain name s.r.o. / Hulmiho Ukolen, Poste restante, WIPO Case No. D2015-0641; RE/MAX, LLC v. Privacy--Protect.org / Isaac Goldstein / Hulmiho Ukolen, Shlomo Icik, WIPO Case No. D2013-2036; Compagnie Générale des Etablissements Michelin v. Isaac Goldstein, Hulmiho Ukolen, Poste restante/Domain Admin, Whois protection, this company does not own this domain name s.r.o., WIPO Case No. D2015-1787; Confédération Nationale du Crédit Mutuel v. Domain Admin, Whois protection, this company does not own this domain name s.r.o / Hulmiho Ukolen, Poste restante, WIPO Case No. D2016-0210; International Business Machines Corporation v. Hulmiho Ukolen, Poste restante / Whois protection, this company does not own this domain name s.r.o., WIPO Case No. D2016-0667; Migros-Genossenschafts-Bund (Federation of Migros Cooperatives) v. Hulmiho Ukolen / Domain Admin, Whois protection, WIPO Case No. D2015-0974; International Business Machines Corporation v. Hulmiho Ukolen / Domain Admin, WIPO Case No. D2015-0320; Red Bull GmbH v. Hulmiho Ukolen/Whois protection, this company does not own this domain name s.r.o., WIPO Case No. D2015-2238. Thus, Respondent aimed at preventing the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, as described in Policy paragraph 4(b)(ii), which is another circumstance of registration in bad faith.
As to the use of the disputed domain name, the evidence shows rotating lists of "related links" as the only contents of the corresponding website. When these links are clicked-on, they redirect Internet users – presumably searching for Complainant and its product ENSURE – to commercial websites unrelated to Complainant. This automatized procedure presumably generates income for Complainant via a pay-per-click scheme. In the Panel's opinion, by using the disputed domain name in this manner, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line locations, by creating a likelihood of confusion with Complainant's mark ENSURE as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location. Pursuant to Policy paragraph 4(b)(iv), this is a circumstance of registration and use in bad faith.
Lastly, the Panel notes that at the time of registering the disputed domain name, Respondent has provided false or incomplete contact details, as shown by the report of the courier entrusted with the notification of the complaint. This fact, together with Respondent's failure to submit any contention or explanation in this proceeding, also suggest bad faith conduct.
The Panel concludes that the disputed domain name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <enssure.com> be transferred to Complainant.
Roberto Bianchi
Sole Panelist
Date: December 22, 2017