WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hoffmann-La Roche Inc. v. AZ Marketing Inc., Thomas Brennan
Case No. D2007-1843
1. The Parties
Complainant is Hoffmann-La Roche Inc., represented by Lathrop & Gage L.C., United States of America.
Respondent is AZ Marketing Inc., Thomas Brennan, Longview, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Schlund + Partner, Karlsruhe, Germany.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2007. On December 12, 2007, the Center transmitted by email to Schlund + Partner a request for registrar verification in connection with the domain name at issue. On December 18, 2007, Schlund + Partner 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”), 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 Respondent of the Complaint, and the proceedings commenced on December 18, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2008. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 11, 2008.
The Center appointed Jeffrey D. Steinhardt as the sole panelist in this matter on February 4, 2008. 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.
4. Factual Background
Complainant, along with its affiliated companies, is one of the leading manufacturers of pharmaceutical and diagnostic products in the world. The KLONOPIN trademark Nos. 1,415,564 and 2,186,702 were registered in the United States Patent and Trademark Office on November 4, 1986, and September 1, 1998, covering anticonvulsant and panic disorder preparations, respectively.
Based upon the registrar’s Whois records, Respondent appears to have registered the domain name on April 6, 2004.
On May 19, 2004, the website to which Respondent’s domain name resolved displayed information about use of Klonopin and links to offers for sale of Klonopin products. The following notice appeared at the bottom of the first page of Respondent’s website:
“Order-Klonopin-O Does Not dispense medications, but is a paid advertiser.”
(italics in original).
As of May 28, 2004, the above-quoted language was no longer visible, but the other aspects of the website remained.
The informational and promotional link aspects of the website were largely unchanged at the time that the Panel was appointed. Other language from Respondent’s website is discussed below.
5. Parties’ Contentions
A. Complainant
Complainant avers that for many years, Complainant’s KLONOPIN trademark and its anticonvulsant and panic disorder preparations have been extensively promoted in the United States of America, resulting in considerable good will. Complainant also avers that the preparation has generated millions of dollars in sales since its introduction to the market in 1986.
Identical or Confusingly Similar to Complainant’s Trademark
Complainant avers that the disputed domain name contains Complainant’s entire KLONOPIN trademark. In light of Complainant’s registered trademark, Complainant contends that Respondent’s registration and use of the disputed domain name creates a strong likelihood of confusion as to source, sponsorship, association or endorsement of Respondent’s website by Complainant.
Complainant continues that the added descriptive terms “order” and “buy” do not prevent the likelihood of confusion created by the disputed domain name, citing the authority of Thomas McCarthy, 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition � 23:50 (4th ed. 1998), and the WIPO Panel decision in General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087.
Therefore, Complainant argues, the disputed domain name is identical or confusingly similar to the trademark of Complainant.
No Rights or Legitimate Interests in Domain Name
Complainant alleges that Respondent has registered and used the domain name without legitimate right, license or authorization. Complainant alleges that neither Respondent nor its web site has been commonly known by the domain name pursuant to the Policy, paragraph 4(c)(ii). Complainant further alleges that the use of the disputed domain name is not in connection with a bona fide offering of goods or services because Complainant has not authorized Respondent to use the name.
In support of these conclusions Complainant contends:
1. That “Klonopin” is not a word and has no valid use other than in connection with Complainant’s trademark and that Complainant did not authorize Respondent to use its KLONOPIN trademark, to incorporate the trademark into any domain names, nor did Complainant grant a license to Respondent.
2. That Respondent is using the domain name because of its similarity to Complainant’s trademark.
3. That, based upon Respondent’s website, neither Respondent nor its websites have been commonly known by the disputed domain name.
4. That Respondent’s use of the domain name is “purely disreputable”; Complainant avers that Respondent uses its U.S.-registered trademark to sell pharmaceutical products to consumers apparently without medical consultation or a prescription.
5. That Respondent’s use and incorporation of Complainant’s famous trademark in the disputed domain name is evidence of Respondent’s bad faith and its intent to trade upon the reputation and goodwill of Complainant’s trademark and that Respondent’s appropriation and use of Complainant’s famous trademark is a clear attempt to create and benefit from consumer confusion.
6. That because Respondent is infringing Complainant’s U.S. trademark, Respondent’s use of the domain name cannot be bona fide.
Citing the Policy, paragraph 4(c)(iii), Complainant also avers that there is no evidence that Respondent is making a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain.
Registration and Use of Domain Name in Bad Faith
Relying on most of the points recited above, Complainant contends that Respondent knew of the KLONOPIN trademarked and registered and is using the disputed domain name in bad faith. Complainant argues that Respondent’s “true purpose” in registering the disputed domain name was to “capitalize on the reputation of Complainant’s KLONOPIN mark by diverting Internet users to Respondent’s own web site … for financial gain.”
Complainant seeks from the Panel transfer of the disputed domain name.
Notices to Respondent
Complainant represents that in October 2007, Complainant’s attorneys sent a letter by e-mail and certified U.S. mail, return receipt requested, to Respondent at the addresses indicated in the Whois record. The letter advised Respondent that the disputed domain name infringed trademark rights and requested transfer of the disputed domain name to Complainant. The certified mail was allegedly returned undelivered and Complainant states that there was no response to any of its communications by Respondent.
Complainant also states that the required notice of these proceedings was sent by courier and email to Respondent at the addresses indicated in the Whois record.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if the respondent does not reply. The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. In the absence of a Reply, the Panel may also accept as true the factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009).
A. Identical or Confusingly Similar
Although the disputed domain name is not identical to Complainant’s trademark, the Panel agrees with Complainant that Respondent’s domain name is confusingly similar.
Panels disregard the “.com” suffix in evaluating confusing similarity. E.g., VAT Holding AG v. VAT.com,WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-1315.
The Panel concludes that the addition of the descriptive terms “order” and “online” does not negate the confusing similarity created by Respondent’s use of Complainant’s KLONOPIN trademark in the disputed domain name. E.g., Giata Gesellschaft f�r die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc.,WIPO Case No. D2006-1137; Hoffmann-La Roche Inc. v. Aneko Bohner,WIPO Case No. D2006-0629.1
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark and that the requirements in paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii).
A complainant must show a prima facie case proving the negative that a respondent lacks rights or legitimate interests. E.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002 -0005).
Complainant avers that Respondent was not commonly known by the disputed domain name; that Respondent “provides a KLONOPIN product apparently without prescription or any examination by a licensed medical professional to determine whether KLONOPIN is an appropriate drug for them”; and that Respondent was without any license or authorization by Complainant.
Since Respondent did not submit a response to the Complaint, the Panel accepts as true Complainant’s specific factual averments that Respondent was not commonly known by the disputed domain name and that Respondent lacked license or authorization by Complainant.
Complainant alleges that Respondent is bringing Complainant’s trademark into disrepute because Complainant represents that Respondent is providing “a Klonopin product” without prescription. The Panel cannot accept this summary factual allegation as true, however, because it appears to be contradicted at least on a prima facie basis by evidence readily available to the Panel.2
The following statements appear on Respondent’s website:
The price of your order includes a FREE consultation with one of our U.S.-licensed medical doctors. Not only do we save you valuable time, but we also save you money. Once you have completed the online questionnaire, your information will immediately be forwarded to a physician, who will determine your eligibility for receiving these medications.
All the physicians who review orders placed on Order-Klonopin-Online are licensed in the United States. Please contact us if you wish to verify the licensed physician that has reviewed your medical information and issued your prescription.....
****
Order-Klonopin-Online is not a pharmacy. Order-Klonopin-Online provides an online ordering system that routes prescription drug orders to affiliated licensed pharmacies.
Such statements are of course easy to make, and do not of themselves constitute proof that Klonopin is in fact being offered with a prescription. However, given the fact that these statements do plainly appear on Respondent’s website, and that Complainant has done little to demonstrate to the Panel that the statements are inaccurate, it would be inappropriate for the Panel to accept Complainant’s summary averment that Complainant’s pharmaceutical products are being provided by Respondent without prescription.3 Whether or not Respondent’s provision of the products involves a prescription or medical professional’s opinion, however, is not dispositive in this proceeding, because Respondent’s website also appears to promote the products of Complainant’s competitors.
The bottom of Respondent’s website home page states “This website has information on buy cheap online xanax.” Xanax is an anti-anxiety pharmaceutical product of Pfizer Inc., one of Complainant’s competitors.
Since Respondent’s website appears to promote at least in part products of Complainant’s competitors, this case is distinguishable from instances in which a respondent uses the disputed domain name to make bona fide offers solely respecting products that a complainant itself placed on the market. The Panel also notes Respondent’s failure to accurately disclose on the website its relationship (or the lack of a relationship) with Complainant as the trademark holder for KLONOPIN. The Panel further notes the apparent inconsistency between the statement previously appearing on the website (noted under paragraph 4 above) that the website does not dispense medication, but rather is a paid advertiser, and Respondent’s statement (quoted above) which instead suggests that the website is an online ordering system for the Klonopin prescription product. However this may be, in the circumstances, and noting also the absence of any response, the Panel finds that Respondent is not making a bona fide offering of goods or services.4
Respondent presumably receives revenues when it routes traffic through its online ordering system to the affiliated pharmacies. As noted, in the language from Respondent’s 2004 website quoted above, Respondent described itself as a “paid” advertiser. Cf. The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit . . . in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya Ltd, WIPO Case No. D2006-1079. The Panel therefore finds that Respondent’s use of the disputed domain name demonstrates Respondent’s lack of a legitimate non-commercial interest in, or fair use of, the domain name. E.g., Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784.
Respondent’s commercial activities undertaken through use of the disputed domain name are neither fair use nor bona fide under the Policy. See, e.g. America Online, Inc. v. Xianfeng Fu,WIPO Case No. D2000-1374, cited in Hoffmann-La Roche Inc. v. Aneko Bohner, supra.
Filing no response, Respondent has not invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the domain name.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
E. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L�Or�al, Biotherm, Lanc�me Parfums et Beaut� & Cie v. Unasi, Inc,WIPO Case No.D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel infers that Respondent registered the disputed domain name intending to trade on the fame of Complainant’s trademark, which was registered and used in the 1980s and 1990s, before Respondent registered the domain name. The Panel further infers that Respondent was aware of Complainant’s distinctive trademark and product name, which is a coined term without ordinary meaning. The Panel finds that Respondent deliberately attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant’s mark, therefore, the Panel concludes that Respondent registered the domain name in bad faith.
Respondent is on the face of it using a domain name which is confusingly similar to Complainant’s mark to attract Internet users for commercial gain. Respondent’s website shows that the disputed domain name is used not only to promote sales of Complainant’s preparation, but also appears to promote at least in part the products of other pharmaceutical companies. The Panel concludes that this activity is sufficient, particularly in the absence of any response, to establish bad faith use by Respondent. Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784 (citing Google, Inc v. and Jimmy Siavesh Behain,WIPO Case No. D2000-1240; Casio Keisanki Kabushiki (Casio Computer Co., Ltd.) v. Jongchan Kim,WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH,WIPO Case No. D2003-0088).
In the circumstances, the Panel concludes on the available record that the disputed domain name was registered and is being used by Respondent in bad faith under paragraph 4(b)(iv) of the Policy.
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 Complainant.
Jeffrey D. Steinhardt
Sole Panelist
Date: February 18, 2008
1 Complainant’s reliance on the Panel decision in General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087, is misplaced, however, since the discussion of descriptive terms added to the complainant’s trademark in that case was dictum.
2 The Panel has undertaken limited factual research by visiting archives for Respondent's website at “”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
3 These statements, Respondent’s archived website statement that it is a paid advertiser, and Respondent’s promotion involving products that compete with Complainant’s products (discussed below) are all important facts, which the Panel would have expected to be clearly addressed in the Complaint. It should not be for this Panel to unpack such obvious and significant factual elements from Complainant’s case and arguments.
4 Complainant appears to rely on trademark infringement grounds to demonstrate that Respondent has no legitimate rights or interest, and that Respondent’s use of the disputed domain name cannot be bona fide. This Panel is not in a position to make a summary determination respecting trademark infringement. Moreover, Complainant does not clarify what is meant when it alleges that Respondent provides “a” Klonopin product – whether this signifies actual product that Complainant itself initially placed on the market, or another source of product.
Full & Egal Universal Law Academy