WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Santhera Pharmaceuticals (Switzerland) Ltd. v. Catena Canada Case No. D2008-1828 1. The Parties
The Complainant is Santhera Pharmaceuticals (Switzerland) Ltd. of Liestal, Switzerland, represented by Homburger AG, Switzerland.
The Respondent is Catena Canada of Quebec, Canada. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with R Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2008. On November 27, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 27, 2008, the Registrar 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” 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 29, 2008.
The Center appointed Tony Willoughby as the sole panelist in this matter on January 5, 2009. 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 is a specialist pharmaceutical company based in Switzerland. One of its drugs is marketed under the brand name CATENA. The Complainant is the registered proprietor of various trade mark registrations of the word CATENA, including the following:
International registration no. 929616 dated June 18, 2007 for inter alia pharmaceutical preparations for the treatment of various conditions, including neurological and muscular diseases.
Nothing is known about the Respondent save its name, Catena Canada (which may be a pseudonym), and its Canadian address.
On July 24, 2008 the Complainant issued a press release announcing that Health Canada had approved CATENA for the Canadian market for the treatment of Friedrich's Ataxia and that the launch of the product would take place in Canada in October that year.
On a date unknown between July 25, 2008 and August 25, 2008 the Domain Name was acquired by the Respondent.
The Domain Name is connected to a pay-per-click site.
On October 28, 2008 the Complainant's representative wrote to the Respondent drawing the Respondent's attention to the Complainant's rights and seeking transfer of the Domain Name. The Respondent did not reply. 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Name is identical to its registered trade mark, CATENA.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith. B. Identical or Confusingly Similar
The Domain Name features the Complainant's registered trade mark, CATENA (word), and the generic domain suffix. For the purpose of this head of paragraph 4(a) of the Policy the domain suffix may be ignored.
The Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests
The Complainant recites the examples set out in paragraph 4(c) of the Policy of what shall constitute rights or legitimate interests in respect of the Domain Name and contends that none of them is applicable.
The Complainant observes that the Respondent does not appear to be known by the Domain Name and asserts that it has not granted the Respondent any right to use the Complainant's trade mark.
The Complainant contends that the Respondent acquired the Domain Name from its previous owner, BWI Domains, on a date unknown between July 25, 2008 and August 25, 2008 and produces print-outs from the Domain Tools website to support that contention. The Complainant contends that the Respondent's acquisition of the Domain Name was motivated by a desire to ride on the back of the goodwill of the Complainant's new Catena pharmaceutical, which was the subject of the press release published in Canada on July 24, 2008 and described in more detail in Section 4 above.
On acquisition of the Domain Name the Respondent connected it to a pay-per-click website featuring links to a variety of categories of links from hotels to watches. The Complainant contends that some of the links are to competitors of the Complainant.
The Complainant contends that such a use of a domain name, calculated to profit on the back of the trade mark rights of another, cannot be categorized as a fair, legitimate or bona fide use of a domain name for the purposes of paragraph 4(c) of the Policy.
Interestingly, the links on the Respondent's website also lead to a link advertising a CATENA brand of Swiss watch. This could have a material effect under the next head (i.e. raising the issue as to whether any bad faith on the part of the Respondent was in fact targeted at the Complainant), but it can have no effect under this head. The vast majority of the links on the Respondent's website are devoted to products and services, which are not associated with the CATENA brand.
The Panel is satisfied that the Complainant has done enough to make out a prima facie case under this head, a case calling for an answer from the Respondent.
The Respondent has not responded. Moreover, the Panel is unable to think of any factor, which might reasonably suggest that the Respondent has any rights or legitimate interests in respect of the Domain Name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
As indicated above, the Complainant contends that the Respondent acquired the Domain Name with the Complainant's trade mark rights in mind for the purpose of attracting Internet visitors to the Respondent's website for commercial gain (i.e. pay-per-click revenue).
The sole evidence in support of this contention as to the Respondent's motives is the timing of the Respondent's acquisition of the Domain Name, following, as it did, by a matter of days and no more than 4 weeks, the above-mentioned press announcement in Canada, the Respondent's home country, on July 24, 2008 relating to the Complainant's product
The Complainant is not the only owner of trade mark rights in respect of the name, CATENA. The Complainant fairly draws to the attention of the Panel the existence of CATENA branded watches and the Panel is also aware of a CATENA brand of Argentinian wine. The Complainant's fall-back position is that even if the Respondent was not aware of the Complainant's brand at the time, the Domain Name still constitutes an abusive registration under the Policy on the basis of the indirect links on the Respondent's website to Catena watches and on the basis of constructive knowledge of the trade mark rights of others (including those of the Complainant) in respect of the name CATENA. The Complainant contends that the Respondent could readily have checked out third party rights by way of trade mark searches.
The Panel acknowledges the argument, but does not accept its validity. In the view of this Panel for a domain name to constitute an abusive registration under paragraph 4(a)(iii) of the Policy, the registrant's registration/acquisition of the Domain Name must have been with the complainant and/or its trade mark rights in mind.
Here, while there is scope for debate, the Panel is satisfied that the timing of the Respondent's acquisition of the Domain Name renders it more likely than not that it was the press announcement in Canada on July 24, 2008 in relation to the Complainant's Catena drug, which prompted the Respondent to acquire the Domain Name, with a view to profiting from it. The fact that a proportion of visitors to the site will be attracted to it in recognition of the name, CATENA, as a trade mark for the goods or services of others is irrelevant. If the Panel is correct, the Respondent clearly anticipated that readers of the press announcement and others familiar with the Complainant's trade mark would visit the site. It is noteworthy, too, that the Respondent had the opportunity to answer the Complainant's allegations, but elected not to do so.
The Panel agrees with the Complainant that the Respondent's use of the Domain Name under these circumstances for pay-per-click revenue constitutes bad faith registration and use of the Domain Name within the meaning of 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 the Complainant.
Tony Willoughby
Sole Panelist
Date: January 7, 2009
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