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Abbott Laboratories v. United Worldwide Express Co., Ltd.

WIPO Case No. D2004-0088

Outcome
Transfer
Domain names
babysimilac.com
Complainant
Abbott Laboratories
Respondent
United Worldwide Express Co., Ltd.
Panelist
David M. Kelly
Decided
19 Apr 2004
Response
The respondent did not reply
Language
English

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2004/d2004-0088.html

WIPO Arbitration and

Mediation Center

ADMINISTRATIVE PANEL

DECISION

Abbott Laboratories

v. United Worldwide Express Co., Ltd.

Case No. D2004-0088

1. The Parties

Complainant is Abbott Laboratories,

an Illinois corporation with its principal place of business in Abbott Park,

Illinois, United States of America.

Respondent is United Worldwide

Express Co. of Ridgefield, New Jersey, United States of America.

2. The Domain Name and

Registrar

The disputed domain name

is <babysimilac.com> (the "Domain Name"). The registrar of the

Domain Name is R&K Global Business Services, Inc. d/b/a 000Domains.com ("000Domains.com").

3. Procedural History

The Complaint was filed

with the WIPO Arbitration and Mediation Center (the "Center") on January 30, 2004.

On February 3, 2004, the Center sent 000Domains.com a request for

registrar verification in connection with the Domain Name, and 000Domains.com

confirmed that Respondent is listed as the registrant of the Domain Name. The

Center then 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").

The Center formally notified

Respondent of the Complaint, and the proceeding commenced on February 6, 2004.

The due date for Respondent's Response was February 26, 2004. Respondent

did not submit a Response. Accordingly, the Center notified Respondent's default

on March 1, 2004.

The Center appointed David

M. Kelly as the sole panelist in this matter on March 24, 2004.

The Panel has independently

determined and agrees with WIPO's assessment that the Complaint is in formal

compliance with the requirements of the Policy, the Rules, and the Supplemental

Rules.

The language of the proceeding

is English.

4. Factual Background

Complainant is a multi-national

company with business operations in many areas, such as pharmaceuticals, health

systems, and infant nutrition. [Complaint, ¶ V(A)(1).]

Since 1926, Complainant

and/or its predecessors-in-interest have continuously used the trademark SIMILAC

throughout the world for baby formula and infant nutrition products. Complainant

owns an incontestable United States Trademark Registration No. 227,046 for

the SIMILAC mark covering "diet for infants" products in International

Class 30. Complainant also owns numerous trademark registrations throughout

the world for its SIMILAC mark. [Complaint, ¶ V(A)(1).]

Complainant uses the

domain name <similac.com> in connection with the advertising,

promotion, and sale of its various SIMILAC baby formula and infant nutrition

products. The domain name <similac.com> currently resolves to

Complainant's website, located at the URL "www.welcomeaddition.com",

which provides information on SIMILAC products, as well as other resources

for expecting parents and parents of young children. [Complaint, ¶ V(A)(1).]

Complainant's domestic

sales for each of the last five years, 1999-2003, under the SIMILAC mark average

in excess of $800 million annually. Complainant's foreign sales for each of

the last five years under the SIMILAC mark average in excess of $150 million

annually. [Complaint, ¶ V(A)(1).]

Complainant stated that

Respondent is not a licensee of Complainant, and that Respondent is not affiliated

with or related to Complainant in any way.

5. Parties' Contentions

A. Complainant

Complainant alleged that

the Domain Name is confusingly similar to Complainant's mark SIMILAC, that

Respondent has no rights or legitimate interests in the Domain Name, and that

Respondent registered and used the Domain Name in bad faith pursuant to the

Policy.

Complainant provided

evidence that Respondent uses the Domain Name for a Korean-language website

that promotes and sells Complainant's SIMILAC products, as well as directly

competing baby formula and infant nutrition products manufactured by Complainant's

competitors.

B. Respondent

Respondent did not submit

a Response to the Complaint or otherwise contest Complainant's allegations.

6. Discussion and Findings

Paragraph 4(a) of the UDRP

directs that the complainant must prove each of the following: (A) that the

domain name registered by the respondent is identical or confusingly similar

to a trademark or service mark in which the complainant has rights; (B) that

the respondent has no rights or legitimate interests in respect of the domain

name; and (C) the domain name has been registered and used in bad faith.

A. Identical or Confusingly

Similar

The Panel finds that the

Domain Name is confusingly similar to Complainant's SIMILAC mark because the

Domain Name incorporates that mark in its entirety and because the addition

of the descriptive and/or generic word "baby" in the Domain Name does

not sufficiently distinguish it from Complainant's SIMILAC mark. UDRP Panels

have routinely held that the addition of a generic term to a mark in a domain

name does not distinguish the domain name from that mark. See, e.g., Disney

Enterprises, Inc. v. Lorna Kang, NAF Case No. FA00125375 (finding the domain

name <disneylandhotel.com> confusingly similar to Disney's marks DISNEY

and DISNEYLAND despite respondent's addition of the word "hotel");

Yahoo! Inc. v. Kelvin Pham, NAF Case No. FA00109699 (finding the domain

name <yahoonail.com> confusingly similar to the YAHOO! mark and holding

the addition of a generic term to the mark is "inconsequential to the confusing

similarity inquiry, as the addition of a generic term does not detract from

the dominant portion of the mark.")

The Panel also finds the

Domain Name confusingly similar to Complainant's SIMILAC mark because the descriptive

word "baby" relates to Complainant's business. See

XO Communications Inc.

v. Registrant info@fashionid.com 9876543210, NAF Case No. FA00137676

(finding the domain name <xocommunications.com> confusingly similar to

the complainant's registered mark XO and holding the addition of a term that

describes the complainant's business does not distinguish the domain name from

the complainant's mark); Caterpillar Inc. v. Roam the Planet, Ltd., WIPO

Case No. D2000-0275 (finding the domain name <catmachines.com> confusingly

similar to the complainant's mark CAT and noting "the addition of the word

`machines' as a suffix to the word `cat' in the domain name under consideration

does not serve to distinguish the domain name from the trademark CAT, but rather

would reinforce the association of the [c]omplainant's trademark with its primary

line of products.")

B. Rights or Legitimate

Interests

Under

the UDRP, the respondent's rights or legitimate interests to a domain name

are established by demonstrating any of the following three conditions: "(i)

before any notice to you of the dispute, your use of, or demonstrable preparations

to use, the domain name or a name corresponding to the domain name in connection

with a bona fide offering of goods or services; or (ii) you (as an individual,

business, or other organization) have been commonly known by the domain name,

even if you have acquired no trademark or service mark rights; or (iii) you

are making a legitimate noncommercial or fair use of the domain name, without

intent for commercial gain to misleadingly divert consumers or to tarnish

the trademark or service mark at issue."

Because Respondent did

not file a response, it has not demonstrated any of the three prongs of legitimate

interest identified in the Policy. In any event, Complainant has shown that

Respondent does not satisfy any of these requirements.

The

Panel finds that Respondent's registration and use of the Domain Name without

Complainant's permission for a website selling both Complainant's products

and directly competing products does not constitute a bona fide offering

of goods pursuant to paragraph 4(c)(i) of the Policy. See Reed Elsevier

Inc. and Reed Elsevier Properties Inc. v. Ulexis a/k/a Lawfirm, NAF Case

No. FA0097684 (no legitimate interest when respondent used the disputed domain

name to offer similar/related services and to divert potential customers to

its competing website); Compaq Information Technologies Group, L.P. v.

Express Technology, Inc., NAF Case No. FA00104186 (holding use of the

disputed domain name to sell competing products does not constitute a bona

fide offering of goods and services).

The

Panel further finds no evidence that Respondent has been commonly known as

the Domain Name, and that Respondent is not making legitimate noncommercial

or fair use of the Domain Name.

C. Registered and

Used in Bad Faith

The Panel finds that Respondent

registered and uses the Domain Name in bad faith pursuant to paragraph 4(b)(iv)

of the Policy, because Respondent uses the Domain Name to intentionally attract,

for commercial gain, Internet users to its website by creating a likelihood

of confusion with Complainant and its well-known SIMILAC mark as to the source,

sponsorship, and/or affiliation with Respondent's website and the competing

goods offered on Respondent's website. See Yahoo! Inc. v. Web Master a/k/a

MedGo NAF Case No. FA00127717 (finding respondent's use of the disputed

domain name for a directly competing website constituted bad faith pursuant

to paragraph 4(b)(iv) of the UDRP); Compaq Information Technologies Group,

L.P. v. Scott Jones, NAF Case No. FA0099091 (finding bad faith in respondent's

commercial use of the disputed domain name to advertise competing products);

H-D Michigan, Inc. v. TT&R et al., NAF Case No. FA00126650 ("In

redirecting its <harleydavidsonsrus.com> domain name to its motorcycle

sales website at <motorcycles-r-us.com>, respondent used complainant's

mark to attract motorcycle buyers to its own website and created a strong likelihood

of confusion as to whether respondent had any affiliation with complainant.

These actions violate Policy paragraph 4(b)(iv).")

7. Decision

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 <babysimilac.com> be transferred to Complainant

Abbott Laboratories.

David M. Kelly

Sole Panelist

Dated:

April 7, 2004

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