WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pliva, Inc. v. Eric Kaiser
Case No. D2003-0316
1. The Parties
The Complainant is Pliva, Inc., East Hanover, New Jersey, United States of America, represented by Attorney Robert A. Becker of Fross Zelnick Lehrman & Zissu, P.C., New York, United States of America.
The Respondent is Eric Kaiser, Colorado Springs, Colorado, United States of America.
2. The Domain Name and Registrar
The disputed domain name (hereafter "the domain name") is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 23, 2003. On April 24, 2003, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On April 24, 2003, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center 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").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 28, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on May 19, 2003.
The Center appointed Paul E. Mason as the sole panelist in this matter on June 4, 2003. 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.
When notifying the Respondent of the commencement of the administrative proceeding, the Complaint and notification thereof were sent by email, fax and international mail courier service. The communications records appended to the case file indicate that the courier package was successfully delivered and the fax was sent successfully. According to the Center, the properties of the emails of this information to Respondent indicate that the emails were successfully sent to Respondent�s email address. After no reply from Respondent to any of these communication methods, the Response Default Notice and the Notification of Panel Appointment were sent to him by email. While there is no proof that the latter emails were actually read, they did not bounce back to the Center, and so the Center assumes that these notices were sent to active email accounts.
4. Factual Background
Complainant and its predecessors-in-interest have used and owned the trademark ANTABUSE in the U.S. since 1949. Complainant and its predecessors have used the ANTABUSE trademark for a leading medicinal preparation for the treatment of alcoholism. According to the complaint, the generic name for this medicinal preparation is "disulfiram".
Complainant owns U.S. federal trademark Reg. No. 529,206 for the ANTABUSE trademark in the United States. The relevant certificates issued by the U.S. Patent & Trademark Office proving ownership of this mark and its regular usage in commerce, as also required under U.S. trademark law, are contained in Exhibits D, E, F and G to the Complaint.
5. Parties� Contentions
A. Complainant
(a). With regard to the issue of the domain name being identical or confusingly similar to the ANTABUSE trademark:
Complainant indicates that the domain name is identical to the trademark name ANTABUSE.
(b). With regard to its rights in the ANTABUSE trademark:
See Section 4 above, describing Complainant�s trademark registrations.
Complainant adds that it has not licensed or otherwise directly or indirectly authorized Respondent to use the ANTABUSE mark.
(i). With regard to the usage in commerce, fame and reputation of the ANTABUSE mark:
Complainant states that it has sold over U.S.$ 40 million in over 1,135,000 ANTABUSE prescriptions in the U.S. Complainant adds that it spent over U.S.$ 400,000 per year in 2001 and 2002 on advertising and promotion of its ANTABUSE medicinal preparation, with ads running in numerous well-known medical journals. Samples of these ads are found in Exhibit B to the Complaint.
(c). With regard to the issue of registration and use of the domain name in bad faith:
Complainant states that an internet user visiting the site www." is taken to a page to order the drug disulfiram, described therein as "generic Antabuse".
Complainant further states � and this is the core of Complainant�s case � that Respondent is using this website derived from the domain name to market a product directly competing with Complainant�s own Antabuse product. In other words, Respondent is allegedly using the domain name and website, both built on the back of Complainant�s trademark, to market a directly competitive product � a so-called "bait and switch" scheme.
Complainant avers bad faith registration by the fact that the ANTABUSE trademark has been well-known in the U.S. for many years, and by the fact that Respondent uses the Antabuse name frequently on its website and so must have known of the ANTABUSE name or mark when registering the domain name.
Complainant also alleges bad faith registration of the domain name because Respondent has not answered emails or correspondence sent to the addresses provided to the Registrar on registration of the domain name.
Complainant claims bad faith use of the domain name in the marketing tactics used on the website of Respondent, as described above. Complainant adds that there is at least one other somewhat similar case pending against Respondent relating to another type of medication marketed by Respondent, showing a pattern of illegal behavior by Respondent.
Finally, Complainant argues that the disclaimer offered by Respondent on its website is not legally effective because it appears below the boxes where customers are to order Respondent�s product, thus making it improbable that customers would see it before placing their orders.
B. Respondent
The Respondent did not reply to the Complainant�s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
On this issue, the Panel finds there is no question that the domain name is identical to the trademark "ANTABUSE".
B. Rights or Legitimate Interests
On this issue, the Panel finds that Complainant has proved its rights and legitimate interests in the "ANTABUSE" trademark through both registrations of the mark and proof of its active usage in commerce, the latter required in order to acquire rights under U.S. trademark law.
The Panel finds further that Respondent has shown no such rights.
C. Registered and Used in Bad Faith
(i) On the issue of bad faith registration, the Panel finds that the notoriety of the "ANTABUSE" trademark as shown by Complainant, coupled with the length of time it has been in active commercial use by Complainant, is sufficient to have placed Respondent on notice at the time the domain name was registered, that there existed a trademark on the same type of product that Respondent was offering to sell on its website.
This Panel visited Respondent�s website "www." on June 4, 2003, and found it to be similar, although not quite the same as described in the Complaint by Complainant�s attorney. A main point here is that the home page of this site used the word "Antabuse" very frequently, indicating knowledge of the commercial mark.
Therefore, the Panel finds bad faith registration by Respondent.
However, the Panel was not persuaded by Complainant�s argument regarding communication problems. Just because emails and letters do not go through does not prove bad faith registration by a respondent. There could be many reasons for this communication failure. Bad faith here would need to be actually proven by Complainant, not merely averred in the Complaint.
(ii) On the issue of bad faith use, the Panel concludes that Respondent�s use of the domain name takes improper advantage of Complainant�s mark to induce customers to buy a competing product.
There have been a number of UDRP cases relating to this issue, decided both ways. For example, this Panelist was on a three-member panel which denied a complaint on the domain name B based on similar grounds, see Bang & Olufsen America, Inc. v BeoW, WIPO Case No. D2001-0159. But there, the domain name and trademark were dissimilar.
The Panel would need more proof regarding other cases to consider Complainant�s argument that there is a pattern of illegal conduct, but it is not necessary to decide this case.
Now turning to the main legal issue in this case, the Panel finds that Respondent�s disclaimer is not sufficient to form an effective defense here. The question of sufficiency of disclaimers varies from case to case, depending on the content, size, context and positioning of the disclaimer in question.
The disclaimer in this case reads as follows:
"Antabuse is Manufactured by Ayerst Laboratories, Inc. A Wyeth-Ayerst Company. This site is not endoresed or affiliated with the company Ayerst Laboratories, Inc."
[Ayerst Laboratories was apparently a predecessor-in-interest of Complainant]
Respondent may have varied somewhat his positioning of the disclaimer, because the Panel found it towards the bottom of the home page itself, and not only after clicking to another page to order Respondent�s product. Nevertheless, on the home page itself, the disclaimer is still below the place where a customer would click to order Respondent�s product.
There are at least two reasons why this disclaimer is not effective. First, it comes after a full page of marketing where the "Antabuse" name appears many times. Second, the disclaimer appears only towards the bottom of the home page, after the customer�s ordering option. See Dr. Ing. h.c. F. Porsche AG v. Sabatino Andreoni, WIPO Case No. D2003-0224 and cases cited therein for a relevant discussion of the disclaimer issue.
In conclusion, Respondent is of course free to market its own competing product on a website, but not deriving from a domain name and riding on the back of the trademark rights and goodwill earned by Complainant holding a trademark with the same name. This is the essence of bad faith.
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 be transferred to the Complainant.
Paul E. Mason
Sole Panelist
Dated: June 9, 2003
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