WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Nycomed US Inc. v. Domains by Proxy, Inc. / Mark Cooper Case No. D2010-0667 1. The Parties
Complainant is Nycomed US Inc. of Melville, New York, United States of America, represented by Ohlandt, Greeley, Ruggiero & Perle, LLP, United States.
Respondent is Domains by Proxy, Inc. / Mark Cooper of Scottsdale, Arizona, United States and Los Angeles, California, United States, respectively. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2010. On April 28, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On April 30, 2010, GoD, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 3, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 6, 2010. Complainant filed an amendment to the Complaint on May 7, 2010. The Center verified that the Complaint together with the amendment to the Complaint and amended 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 Respondent of the Complaint, and the proceedings commenced on May 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 30, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 31, 2010.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on June 3, 2010. 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 is owner of United States Trademark Registration No. 1,428,974 issued February 17, 1987 for the TEMOVATE trademark in International Class 5, covering “pharmaceutical preparation, namely, an anti-inflammatory steroid for topical application”. Complainant also owns several domain names that are derivative of the TEMOVATE trademark.
The disputed domain name was registered August 31, 2009. The disputed domain name currently redirects users to the website at “”, which is an online pharmacy offering products of Complainant and many competitors in the pharmaceutical sector.1 According to publicly available WhoIs records, the “” domain name is registered to a party not involved in this proceeding. 5. Parties' Contentions A. Complainant
Complainant avers that it manufactures and sells an anti-inflammatory steroidal skin cream under the TEMOVATE mark, which has been in use for more than 23 years. Since 1995, Complainant avers, sales of TEMOVATE products have exceeded USD 200,000,000 and, since 2001, Complainant has spent more than USD 3,000,000 promoting and marketing TEMOVATE products.
Complainant contends that the disputed domain name is almost identical to the TEMOVATE trademark and notes that the mark is incorporated in its entirety into the disputed domain name. Complainant alleges that the addition of the descriptive or generic words “cheap” and “online” do not sufficiently distinguish the disputed domain name from Complainant's trademark.
Complainant also summarily alleges that Respondent has no legitimate rights or interests in the disputed domain name and that the disputed domain name was registered and is being used in bad faith. In support of its bad-faith allegations, Complainant notes that the disputed domain name was registered after more than 20 years of the pre-existing use and registration of the TEMOVATE trademark, and that the disputed domain name redirects Internet users to an online pharmacy website.
Complainant avers that it sent warning letters requesting transfer of the disputed domain name to which Respondent never replied.
On the basis of the above allegations, Complainant seeks transfer of the disputed domain name. B. Respondent
Respondent did not reply to 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) 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 Respondent does not reply. The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. In the absence of a response, 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
The Panel agrees with Complainant that the disputed domain name is confusingly similar to Complainant's trademark.
Panels disregard the gTLD suffix in determining whether a disputed domain name is identical or similar to a complainant's marks. See e.g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; VAT Holding AG v. V,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 “cheap” and “online” does not negate the confusing similarity created by Respondent's complete inclusion of the TEMOVATE trademark in the disputed domain name. E.g., Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc.,WIPO Case No. D2006-1137; F. Hoffmann-La Roche AG v. ActiveI, Jason Peterson,WIPO Case No. D2007-1567.
The Panel finds that the disputed domain name is confusingly similar to the registered trademark of Complainant and that the requirements of 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 disputed 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 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, and that Respondent has no license or authorization from Complainant to use the TEMOVATE trademark. In the absence of a response, the Panel accepts as true these undisputed factual averments by Complainant.
Annexes to the Complaint and publicly available evidence also confirm Complainant's allegations that the disputed domain name is being used to redirect traffic to an online pharmacy. The Panel infers that Respondent receives revenues when it diverts traffic to the online pharmacy at “”. See, e.g., 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)); 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.
Web pages from the online pharmacy to which users are redirected presently accessible to the Panel online show that the disputed domain name is being used to promote products of Complainant's competitors. The Panel therefore finds that Respondent's use of the disputed domain name demonstrates Respondent's lack of a legitimate noncommercial 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.
Finally, although Complainant does not address the issue, the Panel also finds that the record establishes that there is no bona fide offering of goods or services by Respondent. Respondent's commercial activities undertaken through use of the disputed domain name are not bona fide under the Policy.2 See, e.g. America Online, Inc. v. Xianfeng Fu,WIPO Case No. D2000-1374, cited in Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629.
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 disputed domain name.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied. C. 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´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, including a lack of conceivable good faith uses for the domain name or failure to reply to a complaint. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel infers that Respondent was aware of Complainant's trademark and product name, which was registered in the 1980s, many years before Respondent's registration. The Panel further infers that Respondent registered the disputed domain name intending to trade on the value of Complainant's trademark. 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. The Panel concludes, therefore, that Respondent registered the disputed domain name in bad faith.
The Panel also concludes that the circumstances demonstrate bad faith use of the disputed domain name by Respondent, as elaborated below.
Currently available online screens from Respondent's website show that the disputed domain name is used to promote sales of the products of other pharmaceutical companies. Respondent has also declined to submit a response to these proceedings or to respond to Complainant's warning letters.
With the addition of the words “cheap” and “online” to Complainant's TEMOVATE trademark, the Panel finds that there is no conceivable legitimate use for the domain name by Respondent. See Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814.
The Panel therefore concludes that the disputed domain name was registered and is being used by Respondent in bad faith under paragraph 4(b)(iv) of the Policy. 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 Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim,WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH,WIPO Case No. D2003-0088). 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
Dated: June 9, 2010
1 The Panel has undertaken limited factual research by viewing the website to which the disputed domain name resolves, and by viewing archives at “/index.php”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.5.
2 Since Respondent's website promotes 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.
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