The Complainant is Abbott Laboratories of Illinois, United States of America, represented by FairWinds Partners, LLC, United States of America.
The Respondent is Hola Domains / Hola Dominios Limitada, of San Jose, San Jose, Costa Rica.
The disputed domain name <glucern.com> is registered with TurnCommerce, Inc. DBA NameBright.com (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 13, 2017. On December 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 13, 2017, the Registrar transmitted by email to the Center its verification response confirming that the 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" 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 the Respondent of the Complaint, and the proceedings commenced on December 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 10, 2018.
The Center appointed Andrew Brown QC as the sole panelist in this matter on January 10, 2018. 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.
The Complainant is a healthcare products and services company. Its principal product line is nutritional and diagnostic health products. The Complainant was founded in 1888 and serves customers in more than 130 countries. It has 94,000 employees and operates in 150 countries. Its revenue for the 2016 fiscal year was USD 20.85 billion.
One of the Complainant's products is sold under the trade mark GLUCERNA. The Complainant describes the products it sells under the GLUCERNA mark as "nutrition supplements such as vitamin and calorie rich drink and drink mixes". It appears from the Complainant's evidence that its Glucerna products are particularly marketed at customers who need to manage their blood sugar, such as those with diabetes. These products have been continually sold by the Complainant under the GLUCERNA mark since 1987. The Complainant notes that GLUCERNA is a coined term without a generic or descriptive meaning in any language.
The Complainant has cited the following trade marks (the GLUCERNA marks) in its Complaint:
|
Trade mark |
Jurisdiction |
Registration No. |
Registration Date |
Class |
|
GLUCERNA |
United States |
1481364 |
March 22, 1988 |
5 |
|
GLUCERNA |
United States |
3447775 |
June 17, 2008 |
5 |
|
GLUCERNA |
United States |
3495568 |
September 2, 2008 |
5 |
|
GLUCERNA |
European Union |
006973507 |
June 2, 2009 |
5 |
The Complainant advertises and markets its line of Glucerna products on its websites "www.abbott.com" and "www.glucerna.com". The "www.glucerna.com" website allows consumers to research the Complainant's GLUCERNA products, recipes for their use and locations for purchasing GLUCERNA branded products. It is unclear from the evidence provided by the Complainant whether it directly sells its products to consumers via the "www.glucerna.com" website.
As noted above, the Respondent is Hola Domains / Hola Dominios Limitada. On August 2, 2017, the Respondent registered <glucern.com> with TurnCommerce, Inc. DBA NameBright.com. Previously the disputed domain name resolved to a pay-per-click ("PPC") which makes references to both Complainant's GLUCERNA product and to third-party companies in Complainant's field of business. The disputed domain name currently resolves to an inactive page.
No response to the Complainant's complaint has been received from the Respondent.
The Complainant has submitted that the disputed domain name <glucern.com> is identical or confusingly similar to a trade mark in which the Complainant has rights (GLUCERNA) under paragraph 4(a)(i) of the Policy.
Concerning the reputation of the GLUCERNA marks, it submits that the GLUCERNA marks were registered and had become well-known prior to the registration of the disputed domain name. The Complainant relies on Section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, "WIPO Overview 3.0") which notes that "[a] domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element." The Complainant submits that the Respondent in the present case "initially attracts searchers to its website by using a copy of [the] Complainant's GLUCERNA Mark and merely deleting the letter 'a' thereby making visitors to its website think that they are being linked to one of the Complainant's legitimate sites" or a site linked to the Complainant.
The Complainant has also submitted that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraph 4(a)(ii) of the Policy. It has submitted that none of the circumstances provided for under paragraph 4(c) of the Policy apply to the Respondent in the present case for the following reasons.
It submits that the Respondent's actions are not a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. The Complainant has provided evidence that the disputed domain name resolves to a website containing "Related Links" to a range of products, including "Diabetes Supplement", "Nutrition Supplement", "Boost Supplement", "Nutrition Supplement Drinks", "Glucerna SR", "Diabetes Shakes" and "Protein and Diabetes". The Complainant describes the page as "a classic PPC page displaying links which divert visitors - likely Complainant's customers and potential customers - to other websites which are not associated with Complainant and, in some instances, are owned by companies that may be competitors". The Complainant relies on previous UDRP decisions panels where PPC websites have been found not to amount to a bona fide offering of goods or services.
The Complainant submits that there is no evidence that the Respondent is commonly known by <glucern.com> under paragraph 4(c)(ii) of the Policy.
It also submits that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain or to misleadingly divert consumers or to tarnish the trade mark or service mark at issue under paragraph 4(c)(iii) of the Policy. The Complainant submits that the disputed domain name is an intentional misspelling or shortening of GLUCERNA that is used to resolve to PPC page that refers to the Complainant's GLUCERNA products and other products manufactured by competitors. The Complainant submits that the Respondent is using the disputed domain name to confuse and misleadingly divert the Complainant's consumers. It also submits that this conduct tarnishes the GLUCERNA marks. The Respondent's use of the disputed domain name, the Complainant says, has "diminished the public's capacity to associate the well-known GLUCERNA Mark with the quality products offered by the Complainant".
The Complainant has submitted that the disputed domain name was registered and is being used in bad faith under 4(a)(iii). It submits that by registering the disputed domain name <glucern.com>, the Respondent's conduct falls under paragraph 4(b)(iv) of the Policy concerning evidence of registration and use in bad faith, being the creation of a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation or endorsement.
The Complainant submits that the Respondent was on "actual notice" of the Complainant's rights prior to registration of the disputed domain name. This notice is said to have occurred due to the "Complainant's extensive use of the Mark". It also relies on evidence showing that the GLUCERNA mark was being used in the "Related Links" section of the website found at "www.glucern.com" to show that the Respondent must have been aware of the GLUCERNA marks when registering the disputed domain name. The Complainant also submits that the Respondent is seeking commercial gain for itself and for third parties from the website found at the disputed domain name through the use of PPC links.
Finally the Complainant has provided evidence of three previous registrations by the Respondent that UDRP panels have held to be bad faith registration.1 These previous UDRP decisions are relied upon by the Complainant to show that the Respondent "has engaged in a pattern of conduct designed to infringe upon the trademarks of others". The Complainant submits that the Respondent's pattern of conduct is evidence of "its state of mind in the present dispute and certainly of its ability to copy famous trademarks in its domain names".
The Complainant has submitted that the appropriate remedy is for the disputed domain name to be transferred to the Complainant.
The Respondent did not reply to the Complainant's contentions.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:
(i) That the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
The Panel finds that the Complainant has rights in the GLUCERNA trade mark by virtue of its trade mark registrations set out above, registered in the United States and the European Union.
The Panel finds that the disputed domain name is confusingly similar to the GLUCERNA trade mark. As submitted by the Complainant, the only difference between the GLUCERNA trade mark and the disputed domain name is the omission of the letter "a". That letter comes at the end of the Complainant's GLUCERNA mark, and its omission is not significant enough to prevent confusion. Consumers who are attempting to find the Complainant's website <glucerna.com> may misspell the GLUCERNA mark or mistakenly omit the letter "a" through a typing error, and be confused once they are presented with the website found at the disputed domain name.
The Panel therefore finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
(i) That before notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) That the Respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service mark rights; or
(iii) That the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or tarnish the trademark or service mark at issue.
As already noted above, no response or evidence has been provided by the Respondent. However, the overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.
There is no evidence of the Respondent using or making demonstrable preparations to use the disputed domain name or a name corresponding to that name in connection with a bona fide offering of goods or services. Nor is there any evidence of the Respondent being commonly known by the disputed domain name. To the contrary, the use of the GLUCERNA mark in the disputed domain name as the URL for a website containing PPC links (which include use of the GLUCERNA mark, as well links to products produced by the Complainant's competitors) amounts to using the disputed domain name with intent for commercial gain to misleadingly divert customers as specified in paragraph 4(c)(iii) of the Policy. It also amounts to misleading Internet users, as customers looking for the Complainant's products who mistakenly enter the disputed domain name (through misspelling or typographical error) and reach the website may erroneously consider that the website is the Complainant's website or is connected to it in some way.
Accordingly, and in the absence of any response from the Respondent, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.
Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the disputed domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or
(ii) That the Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) That the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) That by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location.
The Panel finds that the Respondent registered the disputed domain name in bad faith as provided for under paragraph 4(b)(iv) of the Policy for the following reasons:
(i) As noted above, the mark GLUCERNA is a coined term with no generic or descriptive meaning. The evidence shows that the GLUCERNA marks have been used by the Complainant in connection with health products, and in particular vitamin and calorie rich drink and drink mixes, since 1988. In the absence of any evidence showing prior bona fide use by the Respondent of the GLUCERNA mark (or indeed any response from the Respondent) the Panel infers that the Respondent intended to adopt a confusingly similar domain name to the GLUCERNA marks at the time of registration.
(ii) The fact that the Respondent chose the disputed domain name for a website that displays "Related Links" for closely similar products to those sold under the GLUCERNA marks demonstrates that the Respondent was aware of the GLUCERNA marks and products at the time of registration of the disputed domain name.
(iii) The website that is displayed after an Internet user enters the disputed domain name includes a link that uses the GLUCERNA mark, being "GLUCERNA SR". This shows that the Respondent intended to target and confuse consumers looking for the Complainant's GLUCERNA products when the disputed domain name was registered.
The Panel also finds that the Respondent has used the disputed domain name in bad faith as provided for under paragraph 4(b)(iv) of the Policy for the following reasons:
(i) As already noted above, the "Related Links" placed on the website utilise the GLUCERNA mark and offer consumers links to related products to those sold under the GLUCERNA mark, such as "Diabetes Supplements". Taken in combination with the disputed domain name <glucern.com>, the Panel finds that the use of these related links was a strategy to lure consumers who were looking for the Complainant into clicking on the PPC links displayed.
(ii) Consumers who are looking for the Complainant's GLUCERNA products but who end up on the Respondent's website are likely to consider, when seeing the "Related Links" displayed there, that the website is the Complainant's website, or is in some way connected or affiliated with the Complainant. This is due to the similarity between the GLUCERNA and GLUCERN marks, the actual use of the GLUCERNA mark on the website, and the related goods that are advertised on the Respondent's website.
The Panel finds that the above likelihood of confusion was created for the purposes of commercial gain, as the website displayed at the disputed domain name contained multiple pay-per-click links to third-party websites, some of which directly compete with the Complainant's business. The Panel finds this supports a finding of bad faith under paragraph 4(b)(iv) of the Policy.
The Panel also accepts the Complainant's submission that the Respondent's history of bad faith registrations as found by previous WIPO UDRP panels supports a finding of bad faith in the present case, given the lack of any evidence of bona fide intention to use the disputed domain name.
Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favor of the Complainant.
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, <glucern.com> be transferred to the Complainant.
Andrew Brown Q.C.
Sole Panelist
Date: February 2, 2018
1 Credit Industriel et Commercial v. Hola Domains, Hola Dominios Limitada, WIPO Case No. D2017-1457; (), Skillease v. Hola Domains, Hola Dominios Limitada, WIPO Case No. D2017-0924; and Jacobs Douwe Egberts DE GmbH v. Hola Domains, Hola Dominios Limitada, WIPO Case No. D2017-0365.