WIPO Domain Name Decision D2019-0289 for genericvesicare.com
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Astellas Pharma Inc.; Astellas US LLC v. John Rashad, Esq. Case No. D2019-0289 1. The Parties
Complainants are Astellas Pharma Inc. of Tokyo, Japan and Astellas US LLC of Northbrook, Illinois, United States of America (“USA” or “United States”), represented by Covington & Burling, USA.
Respondent is John Rashad, Esq. of St. Paul, Minnesota, USA, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2019. On February 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 7, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on February 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 4, 2019. The Response was filed with the Center on February 18, 2019.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on February 22, 2019. 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.
On February 22, 2019, the Complainant filed a reply to the Response. 4. Factual Background
Complainants are Astellas Pharma Inc. (“API”), a Japanese corporation, and its wholly-owned subsidiary Astellas US LLC (“AUS”), a United States corporation. Complainants are parent and subsidiary entities forming part of a global pharmaceutical company that engages in the research, development, and manufacture of pharmaceutical products. API owns trademark registrations for the VESICARE mark in the United States and in many jurisdictions around the world. Both API and AUS own various domain names corresponding to the VESICARE mark, including , registered in 2002 by AUS and registered in 2001 by API. Complainants’ VESICARE mark is used in connection with a pharmaceutical product for the treatment of overactive bladder, first used in commerce in the United States in January 2005. Registrations for the VESICARE mark date back to December 22, 1999 (e.g., International Registration No. 726931A). The domain name resolves to a website operated by Complainants that relates to the VESICARE overactive bladder pharmaceutical product and related information.
The disputed domain name, , was registered by Respondent on November 8, 2017, and currently resolves to a website promoting and offering information on solifenacin succinate. 5. Parties’ Contentions A. Complainant
According to Complainant, on July 2, 2018, Respondent sent an email to AUS advising that Respondent had registered the disputed domain name and offered to sell it to AUS for USD 5,500. According to Complainant, at the time of this email, the disputed domain name did not resolve to any active website. On July 12, 2018, in response to Respondent’s email, Complainant AUS advised Respondent of API’s rights in the VESICARE mark and ownership of a United States trademark registration for VESICARE, and demanded that Respondent cease all use of the disputed domain name and immediately transfer the disputed domain name registration to AUS. On the same day, Respondent replied to AUS’s letter reiterating Respondent’s earlier offer to sell the disputed domain name to AUS for USD 5,500 and that it had been contacted by third parties expressing interest in purchasing the disputed domain name.
In or around December 2018, Complainants learned that Respondent was using the disputed domain name to promote solifenacin succinate — the nonproprietary name for API’s pharmaceutical product Vesicare — as “generic Vesicare®.” On January 8, 2019, Respondent sent another email to AUS, again offering to sell the disputed domain name, but this time for USD 9,999.
According to Complainants, the disputed domain name is confusingly similar to the VESICARE mark in which they own established rights. Complainants assert that the disputed domain name incorporates the entire VESICARE mark, with the addition of the generic term “generic.” Complainants assert that prior UDRP panels have concluded that “adding the word ‘generic’ alone…to certain famous drug names, to which pharmaceutical companies have trademark rights, and registering the resulted combinations as domain names” does nothing to prevent the domain names from being confusingly similar to the trademarks. According to Complainants, the international nonproprietary name for VESICARE is “solifenacin succinate,” and referring to that substance as “generic Vesicare®” is likely to increase, rather than diminish, likelihood of consumer confusion as to the source of the disputed domain name and website hosted there. Complainants assert that the disclaimer located on the website at the disputed domain name, which states that the website it not affiliated with any pharmaceutical maker of branded or generic versions of Vesicare®, does nothing to alleviate such confusion.
Complainants further assert that Respondent has no rights or legitimate interest in the disputed domain name. Complainants state that Respondent is not licensed or otherwise authorized to use the VESICARE mark in connection with its activities or as part of the disputed domain name, and that Respondent is not commonly known by the disputed domain name. Complainants further allege that Respondent’s use of the disputed domain name to promote and offer information on solifenacin succinate does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use. Complainants assert that Respondent was aware of Complainants and the VESICARE mark when it registered the disputed domain name and has intended to divert Internet users seeking Complainants’ products and services to Respondent’s website. According to Complainants, Respondent’s maintenance of an “informational website” at the disputed domain name is disingenuous and pretextual in light of its commercial intent in registering the disputed domain name, and that Respondent has registered other domain names following the general format “generic[trademarked pharmaceutical name].com.”
According to Complainants, Respondent registered and is using the disputed domain name in bad faith. Complainants assert that Respondent’s use of the disputed domain name to promote solifenacin succinate under the confusing and misleading name “generic Vesicare®” without legitimate interests in the VESICARE mark is prima facie evidence of bad faith under the UDRP. Complainants assert that Respondent’s actual or constructive knowledge of the VESICARE mark at the time it registered the disputed domain name in 2017, based on trademark registrations in the United States and many other jurisdictions obtained many years before such registration of the disputed domain name, is further evidence of its bad faith. According to Complainants, Respondent’s proactive efforts to sell the disputed domain name make clear its awareness of Complainants’ rights in the VESICARE mark. More specifically, Respondent’s registration of the disputed domain name for the purpose of selling it to AUS for consideration in excess of its out-of-pocket costs demonstrates its bad faith under the UDRP section 4(b)(i). Finally, Complainant contends that Respondent has a history of registering domain names that infringe third parties’ trademark rights, which further evidences its bad faith under UDRP section 4(b)(ii), and thatat least two other domain dispute proceedings have been brought against Respondent, including one involving the domain name , and both panels found for the complainants in those cases.
Accordingly, Complainants have requested that the disputed domain name be transferred to Complainant AUS. B. Respondent
Respondent asserts that the registration of the disputed domain name is in connection with a legitimate noncommercial fair use, and that such use does not directly or indirectly infringe the legal rights of Complainants. According to Respondent, it has only used the disputed domain name with a genuine informational, news, and commentary site related to developments in manufacturing and government approval of generic versions of Vesicare. According to Respondent, this establishes its legitimate interests in the disputed domain name. According to Respondent, Complainants are attempting to block the fair or nominative use of the disputed domain name to disseminate information about generic versions of its Vesicare product. Respondent asserts that “even Commercial speech that is inextricably intertwined ‘with informative and perhaps persuasive speech seeking support for particular causes or for particular views on economic, political, or social issues,’ by contrast, is treated as political speech and is fully protected under First Amendment.”
According to Respondent, no reasonable consumer searching Google for “generic Vesicare” would be confused by the website located at the disputed domain name. Respondent asserts that a detailed disclaimer is provided on the website to any visitors, highlighting the website is for educational and informational purposes only and thus the likelihood of confusion with Complainant’s trademark is non-existent.
Respondent argues that there is no ban against legitimately registering, buying, selling and developing domain names or domaining [sic]. Respondent reiterates that it made lawful legitimate noncommercial and nominative fair use of the disputed domain name in good faith and has not used it to infringe upon the rights of Complainants. According to Respondent, in addition to using the disputed domain name for an informational website, the only other use of the disputed domain name is in connection with the email address “[…]@“ associated with this website.
Accordingly, Respondent requests that the Complaint be denied, and Respondent has further requested a ruling that Complainants have engag