WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Bayer HealthCare LLC v. Shen Kaixin Case No. D2008-1350 1. The Parties
The Complainant is Bayer HealthCare LLC, Pittsburgh, United States of America, represented by Scott Lonardo, United States of America.
The Respondent is Shen Kaixin, Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name is registered with D. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2008. On September 4, 2008, the Center transmitted by email to D a request for registrar verification in connection with the domain name at issue. On September 5, 2008, D 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 sent an email communication to the Complainant relating to mutual jurisdiction on September 10, 2008 and September 29, 2008. 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 September 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 19, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 21, 2008.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on October 30, 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
The Complainant produces and sells medical and healthcare products. One of these is Neo-Synephrine, a vasoconstrictor having local and systemic action, used for example as a nasal decongestant.
The Complainant is currently registered as the owner of the trademark NEO-SYNEPHRINE. The trademark was first registered by the Complainant's predecessors as United States trademark Registration No. 406,720, dated April 18, 1944, and as Canadian trademark Registration No. UCA18444 dated July 16, 1943. Thus the trademark has been in use by the Complainant and its predecessors in interest for 65 years.
Little is known of the Respondent except that he or she registered the disputed domain name on March 15, 2008 and provides the contact details currently given in the registration. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is virtually identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant submits documentary evidence of its ownership of the trademark NEO-SYNEPHRINE, and that its use predates the registration of the disputed domain name. The Complainant submits that the trademark NEO-SYNEPHRINE is incontestable pursuant to 15 U.S.C. § 1065 and 1115(b).
The Complainant says that the public has come to recognize and favorably associate the NEO-SYNEPHRINE trademark with the Complainant and that it holds considerable goodwill in the trademark.
The Complainant contends that the disputed domain name is effectively identical to its trademark, the presence or absence of the hyphen being inconsequential (citing Ross-Simons, Inc. v. Domain.Contact,WIPO Case No. D2003-0994, and other UDRP decisions). Furthermore the element “.com” should not preclude a finding that the disputed domain name is identical or confusingly similar to the trademark.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name in the terms of paragraph 4(a)(ii) of the Policy. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, but as a pay-per-click business generating revenue from the referral of users to advertising links. The Respondent is not commonly known by the disputed domain name or as Neosynephrine or Neo-Synephrine and has not acquired any rights in the trademark. The Respondent is not making a legitimate noncommercial or fair use of the domain name since its use as a source of pay-per-click revenue is commercial and its exploitation of the Complainant's trademark is unfair.
The Complainant further contends that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent knew or ought to have known of the Complainant's long-standing trademark and had constructive knowledge of the trademark, therefore the Respondent's incorporation of the trademark as part of the disputed domain name could not have been with legitimate intent.
The Complainant contends that the Respondent has registered the disputed domain name to prevent the Complainant from reflecting its NEO-SYNEPHRINE trademark in a domain name and has engaged in a pattern of such conduct by targeting variants or misspellings of other famous trademarks such as , and .
The Complainant says that the Respondent is using the disputed domain name intentionally to attract Internet users to its web site, for commercial gain, by creating a likelihood of confusion with the Complainant's trademark. The Respondent's website features sponsored listings or advertising links that most likely earn a revenue stream for the Respondent. Visitors to the website are offered links to topics including an online pharmacy, Synephrine, erectile dysfunction, a money market account, and impotence, thereby diverting users to alternative, competing or irrelevant websites. Users have been attracted to the Respondent's website by its use of the Complainant's trademark and thus the Respondent is using the disputed domain name to attract business for commercial gain.
The Complainant requests the transfer to it of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute. A. Identical or Confusingly Similar
The Complainant has produced documentary evidence of its ownership of the trademark NEO-SYNEPHRINE, which it or its predecessors in interest have held for 65 years. The disputed domain name is . The standard designation “.com” may be disregarded in the consideration of confusing similarity since it or an equivalent merely indicates the generic top level domain (gTLD) and is an inevitable part of a domain name. The distinctive component of the disputed domain name is “neosynephrine”, which the Panel finds to be confusingly similar to, and to all intents and purposes identical with, the Complainant's trademark NEO-SYNEPHRINE. B. Rights or Legitimate Interests
The Complainant must prove that the Respondent does not have any rights or legitimate interests in the disputed domain name. This it may do by setting out a prima facie case to that effect, which the Respondent may refute in the terms of paragraph 4(c) of the Policy or otherwise.
The Complainant states that the Respondent has not acquired any rights in the trademark NEO-SYNEPHRINE and is not commonly known by the disputed domain name. Furthermore, that the Respondent is not making a bona fide offering of goods or services. Also, that the Respondent is making neither a legitimate noncommercial use of the disputed domain name since its use as a source of pay-per-click revenue is commercial, nor a fair use since its exploitation of the Complainant's trademark is unfair.
Upon the evidence presented and the Complainant's statements, the Panel accepts that a prima facie case has been established in the terms of paragraph 4(a)(ii) of the Policy. The Respondent has not made any reply and the Panel cannot find grounds under paragraph 4(c) of the Policy, or otherwise, that might provide the Respondent with the basis of any rights or legitimate interests in the disputed domain name. The Panel finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant is required to prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Complainant relies principally on paragraphs 4(b)(ii) and 4(b)(iv) of the Policy, above. On an overview of the Respondent's activities, such as are clear from the evidence, paragraph 4(b)(iv) of the Policy is particularly pertinent and it is appropriate to proceed under this paragraph.
The Respondent evidently operates the disputed domain name as a website that relies on the attraction of visitors. Having arrived at the Respondent's website, visitors are invited to follow links to the websites of advertisers. The screenshot of the corresponding website captured by the Center dated September 29, 2008 offered links categorised into “popular categories” such as Synephrine and the opioid drug hydrocodone, and “favorite categories” such as travel, finance and entertainment, each with several sub-categories.
The business model behind this activity is well recognised and is widely in use on the Internet. It is known as pay-per-click, because each advertiser pays a fee back to the originating website when a visitor clicks on a link to the advertiser. Sophisticated software is often installed to target different advertisements to different viewers according to parameters such as their global location, thereby optimising the potential uptake of links by each viewer. On the balance of probabilities it may reasonably be concluded that the Respondent is engaged in the generation of revenue from referral fees in this way.
In and of itself, the pay-per-click business may be a legitimate form of advertising and is widely used by authentic Internet hosts. Many informative websites offer a free service that is effectively subsidised through the advertising links displayed. On the other hand there are websites offering token content or nothing of significance, except links, set up as a scheme to generate revenue. If the relevant domain name is innocuous, this may also be legitimate. For the scheme to be profitable, however, it has to attract visitors, and in the present case it may reasonably be concluded that the Respondent has appropriated the Complainant's trademark essentially in order to attract Internet users seeking the term Neo-Synephrine or Neosynephrine, or related terms, either directly or through search engines. A number of those visitors are likely to have been captured through the fame of NEO-SYNEPHRINE trademark, and to the extent that they then click on links from the website they may derive revenue for the Respondent out of the goodwill embodied in the Complainant's trademark. It is likely that at least some viewers misled to the Respondent's website in this way will be confused into thinking it is endorsed by the Complainant. The Respondent's activity is within the anticipation of paragraph 4(b)(iv) of the Policy and the Panel finds bad faith registration and use proven accordingly. 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.
Dr. Clive N.A. Trotman
Sole Panelist
Dated: November 13, 2008
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