DECISION

Allergan Inc. v. Medbotox Inc.

Claim Number: FA0307000170639

PARTIES

Complainant is Allergan Inc., Irvine, CA (“Complainant”) represented by Martin A. Voet. Respondent is Medbotox Inc., Richmond, BC, Canada (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <medbotox.com> registered with Tucows.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 22, 2003; the Forum received a hard copy of the Complaint on July 23, 2003.

On July 23, 2003, Tucows confirmed by e-mail to the Forum that the domain name <medbotox.com> is registered with Tucows and that Respondent is the current registrant of the name. Tucows has verified that Respondent is bound by the Tucows 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 July 25, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 14, 2003, 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@medbotox.com 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 August 26, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain name registered by Respondent, <medbotox.com>, is confusingly similar to Complainant’s BOTOX mark.

2. Respondent has no rights or legitimate interests in the <medbotox.com> domain name.

3. Respondent registered and used the <medbotox.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant holds a number of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BOTOX mark, including Reg. No. 1,692,384 (registered on June 9, 1992) in relation to pharmaceutical preparations, namely, ophthalmic muscle relaxants.

Complainant marketed its pharmaceutical for the therapeutic treatment of neurological disorders and muscle dystonias under the BOTOX mark in the United States and abroad. Recently Complainant began marketing this product for certain cosmetic indications.

Respondent registered the <medbotox.com> domain name on February 23, 2003. Respondent is using the disputed domain name to divert Internet traffic to a website that offers a product that purports to therapeutically effect involuntary movement disorders with a neuro-pathology. Respondent’s product allegedly also temporarily eliminates facial wrinkles.

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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

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

(2) 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 to and/or Confusingly Similar

Complainant established in this proceeding that it has rights in the BOTOX mark through registration with the USPTO. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”).

The domain name registered by Respondent, <medbotox.com>, is confusingly similar to Complainant’s BOTOX mark because the disputed domain name incorporates Complainant’s entire mark and merely adds the prefix “med” to the mark. The addition of letters such as “med” to the beginning of the mark does not sufficiently differentiate the domain name from the mark pursuant to Policy ¶ 4(a)(i) because the mark remains the principal element of the domain name. See Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to Complainant’s federally registered service mark, “Kelson”); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion).

Accordingly, the Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights to or Legitimate Interests

Complainant established that it has rights and legitimate interests in the mark and asserted that Respondent has no such rights.  Respondent has not challenged the allegations in the Complaint. Under these circumstances it is appropriate for the Panel to accept all reasonable allegations and inferences in the Complaint as true. See Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Moreover, due to Respondent’s failure to answer the Complaint, the Panel presumes that Respondent lacks rights to or legitimate interests in the disputed domain name in accord with Policy ¶ 4(a)(ii). See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a Response or provided the Panel with evidence to suggest otherwise).

Respondent is using the <medbotox.com> domain name to market a product that competes directly with Complainant’s products marketed under the BOTOX mark. The use of a domain name confusingly similar to a registered mark to offer a product in competition with the mark holder’s products does not suggest a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website).

Furthermore, Respondent produced no proof and no evidence in the record indicates that Respondent is commonly known by MEDBOTOX or <medbotox.com>.  Accordingly, the Panel finds that Respondent has failed to show that Respondent has any rights to or legitimate interests in the disputed domain name under 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 a domain name when Respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

The Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant alleged that Respondent registered and used the domain name in bad faith. Respondent is using a domain name confusingly similar to Complainant’s mark to offer goods in direct competition with Complainant’s goods. Respondent’s registration and use of the <medbotox.com> domain name demonstrates bad faith registration and use because Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor, which is evidence of bad faith registration and use with regard to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from Complainant's marks suggests that Respondent, Complainant’s competitor, registered the names primarily for the purpose of disrupting Complainant's business); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business).

Furthermore, Respondent’s registration and subsequent use of the <medbotox.com> domain name to offer Internet users goods that compete with goods under Complainant’s BOTOX mark demonstrates Respondent’s bad faith registration and use of the disputed domain name because Respondent is capitalizing on the likelihood of confusion between the domain name and the mark, which evidences bad faith registration and use under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also MathForum.com, LLC v. Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked <drmath.com>, which contains Complainant’s Dr. Math mark, to a website run by Respondent, creating confusion for Internet users regarding the endorsement, sponsorship, of affiliation of the website).

The Panel finds that Policy ¶ 4(a)(iii) has been established.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <medbotox.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: September 9, 2003.

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