WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Nycomed US Inc. v. Doris Mujalli Case No. D2008-1366 1. The Parties
The Complainant is Nycomed US Inc., United States of America, represented by Ohlandt, Greeley, Ruggiero & Perle, LLP, United States of America.
The Respondent is Doris Mujalli, Alabama, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Registrar Company, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2008. On September 9, 2008, the Center transmitted by email to Registrar Company, Inc. a request for registrar verification in connection with the domain name at issue. On September 10, 2008, Registrar Company, Inc. 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 the Respondent of the Complaint, and the proceedings commenced on September 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 8, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 9, 2008.
The Center appointed William R. Towns as the sole panelist in this matter on October 17, 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 manufactures and sells pharmaceutical products, including an anti-inflammatory steroidal skin cream under the TEMOVATE mark. The Complainant has used the TEMOVATE mark in commerce in the United States of America and elsewhere for more than twenty (20) years, and is the owner of a United States trademark registration for the mark issued by the United States Patent and Trademark Office (USPTO) in 1987. The Complainant is also the owner of the domain names , , , and , registered in 2006, and , registered in 2008. The Complainant has promoted its Temovate products online since 2005 on an official website at “”. The TEMOVATE mark is widely advertised, and the Complainant reports having spent more than $3,000,000 in the advertising and promotion of the mark since 2001.
The Respondent registered the disputed domain name on March 26, 2008. Prior to the filing of the Complaint, the Respondent was using the domain name in connection with a website containing advertising links to various online stores and pharmacies offering for sale the Complainant's Temovate products as well as other related pharmaceutical products. The Respondent's website also displayed information relating to the field of dermatology, which includes information purportedly related to the Complainant's Temovate products.
On May 15, 2008, the Complainant sent the Respondent a cease and desist letter, advising of the Complainant's rights in the TEMOVATE mark and demanding the transfer of the disputed domain name. The Complainant received no reply to its cease and disputed letter of May 15, 2008, and thereafter sent a reminder letter on May 30, 2008, to which there also was no reply. The Panel notes that the disputed domain name currently does not resolve to an active website. 5. Parties' Contentions A. Complainant
The Complainant maintains that the disputed domain name is confusingly similar to its distinctive and well known TEMOVATE mark. According to the Complainant, the use of the descriptive words “online” and “buy” in the disputed domain name is not sufficient to overcome the initial interest confusion created by the use of the Complainant's TEMOVATE mark.
The Complainant asserts that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant maintains that it has no relationship with the Respondent, and that the Respondent has not been authorized to use the Complainant's TEMOVATE mark or to appropriate the mark in domain names. According to the Complainant, the Respondent has not been commonly known by the disputed domain name, and the Complainant asserts that the domain name has been used by the Respondent solely in an effort to confuse Internet users and divert them away from the Complainant's website to other websites for the Respondent's commercial benefit and profit.
The Complainant contends that the Respondent registered and has used the disputed domain name in bad faith. According to the Complainant, The Respondent's bad faith is established by its use of the domain name to attract and redirect Internet traffic to a website featuring advertising links to various online stores and pharmacies offering for sale the Complainant's Temovate products and other pharmaceutical products. The Complainant argues that the Respondent would have been aware of the Complainant rights in the TEMOVATE mark when registering the disputed domain name, given that the domain name registration occurred some twenty-three (23) years after the Complaint began using and registered the trademark. In addition, the Complainant asserts that bad faith can be inferred from the Respondent's failure to reply to the Complainant's notice letters. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “Cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain names are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant's TEMOVATE mark for purposes of paragraph 4(a)(i) of the Policy. The critical inquiry under the first element of the Policy is whether the mark and domain name, when directly compared, are identical or confusingly similar. Because the disputed domain name incorporates the Complainant's TEMOVATE mark in its entirety, this alone is sufficient to support a finding that the domain name is confusingly similar to the Complainant's mark for purposes of the Policy. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662. In the context of this case, the addition of the descriptive words “online” and “buy” does not dispel the confusing similarity arising from the incorporation of the Complainant's distinctive TEMOVATE mark, and in the Panel's view may well serve to compound the confusing similarity.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. It is uncontested that the Respondent has not been authorized to use the Complainant's TEMOVATE mark or to appropriate the mark for use as a domain name, and there is no indication that the Respondent has been commonly known by the domain name. Nevertheless, the record reflects the Respondent's use of the disputed domain name, which incorporates the Complainant's distinctive mark in its entirety, to divert Internet users to a website containing links to various online stores and pharmacies offering for sale the Complainant's Temovate products as well as other related pharmaceutical products. Such links serve no apparent purpose other than as a vehicle for generating advertising revenue.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a formal response to the Complaint, and in the absence of any such submission this Panel may accept all reasonable inferences and allegations included in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. In any event, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent's registration and use of the disputed domain name within any of the safe harbors of paragraph 4(c) of the Policy.
There is no indication in the record that the Respondent has ever been commonly known by the disputed domain name. Given the presence on the Respondent's website of advertising links to various online stores and pharmacies offering for sale the Complainant's Temovate products as well as other related pharmaceutical products, the Respondent cannot credibly claim to be making a legitimate noncommercial or fair use of the domain name within the contemplation of paragraph 4(c)(iii) of the Policy. See Covanta Energy Corporation v. Anthony Mitchell,WIPO Case No. D2007-0185 (“respondent must demonstrate that the domain name is being used without intent for commercial gain in order to successfully invoke paragraph 4(c)(iii) of the Policy.”). As noted above, such links serve no apparent purpose other than as a vehicle for generating advertising revenue.
The Respondent has used the disputed domain name to divert Internet users to a website featuring advertising links that clearly are keyed to the Complainant's TEMOVATE mark. While the use of a domain name consisting of a “dictionary” word for third-party advertising may be legitimate in some circumstances, (see, e.g., The Landmark Group v. DigiM, L.P., NAF Case No. 285459), the Complainant's TEMOVATE mark is not a “dictionary” word. Given the circumstances reflected in the record in this case, and in the absence of any reply by the Respondent to the Complaint, the Panel finds that the Respondent's use of the disputed domain name in connection with a pay-per-click website featuring advertising links keyed to the Complainant's TEMOVATE mark does not constitute use of the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See, e.g., Sanofi-Aventis and Merrell Pharmaceuticals Inc. v. Smart Med Pharmacy,WIPO Case No. D2006-1113. See also HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,WIPO Case No. D2007-0062.
Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in [ ] circumstances where the registrant is seeking to profit from and exploit the trademark of another.” M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
The Respondent's bad faith registration and use of the disputed domain name is palpable from the record in this case. It is an inescapable inference from the circumstances in the record that the Respondent knew of and had in mind the Complainant and the Complainant's TEMOVATE mark when registering the disputed domain name. Under such circumstances, the Respondent's opportunistic use of the disputed domain name to drive Internet traffic to its website in order to generate advertising revenue, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website, clearly constitutes bad faith registration and use under paragraph 4(a)(iii) of the Policy. See, e.g., Sanofi-Aventis and Merrell Pharmaceuticals Inc. v. Smart Med Pharmacy,WIPO Case No. D2006-1113. See also Columbia Insurance Company, Benjamin Moore v. Whois Data Shield and St Kitts Registry,WIPO Case No. D2007-0741; Chicago Pneumatic Tool Company LLC v. Tool Gopher,WIPO Case No. D2007-0330. Beyond question, the Respondent has sought to profit from and exploit the Complainant's mark in violation of the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 the Complainant.
William R. Towns
Sole Panelist
Dated: October 31, 2008
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