The Complainant is Amylin Pharmaceuticals, Inc. of San Diego, California, United States of America, represented by Connolly Bove Lodge & Hutz LLP, United States of America.
The Respondent is Watts Guerra Craft LLP of San Antonio, Texas, United States of America, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2012. On March 13, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed domain name. On March 14, 2012, GoD, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on March 19, 2012.
The Center verified that the Complaint together with the 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 the Respondent of the Complaint, and the proceedings commenced on March 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2012. The Response was filed with the Center on April 9, 2012.
The Center appointed David H. Bernstein as the sole panelist in this matter on April 13, 2012. 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.
On April 13, 2012, the Complainant transmitted a Supplemental Filing by email to the Center. Because the Supplemental Filing did not raise any facts or arguments that could not have been anticipated in the Complaint, the Panel declines to consider the Supplemental Filing under paragraphs 10 and 12 of the Rules. 4. Factual Background
In 2005, the Complainant launched Byetta, a medication used to treat type 2 diabetes, delivered via injection. Byetta was approved in the United States in April 2005 and in Europe in November 2006. Byetta has been approved and launched in over 74 countries. The Complainant has registered over 400 domain names related to its Byetta product and has registered trademarks in the United States and around the world. The Complainant holds U.S. trademark registrations for the following marks, among others:
- BYETTA & Design, Reg. No. 3,106,331 (June 20, 2006);
- BYETTA, Reg. No. 3,229,429 (April 17, 2007);
- BYETTA & Design, Reg. No. 3,241,856 (May 15, 2007);
- BYETTA & Design, Reg No. 3,446,509 (June 10, 2008).
On November 7, 2011, the Respondent, a law firm, registered the disputed domain name with GoD. In the period immediately after it was registered, the disputed domain name resolved to GoDaddy’s standard parked page which was populated with Adwords pay-per-click links including advertisements to websites for various drugs and health services.
On January 9, 2012, the Respondent launched its own website. Since then, the disputed domain name has resolved to a page that displays a banner at the top with the Respondent’s name (“WATTS | GUERRA | CRAFT LLP”) along with a phone number and email address directing to “[…]@.” Beneath the banner, on the right of the page is a form offering a “Free Case Evaluation,” and on the left, the following text is displayed: “If you are a Type II Diabetic who has taken Byetta injections to control your blood sugar and later developed pancreatitis, pancreatic cancer, or thyroid cancer, you may be entitled to compensation for your injuries.” Below that text, the web page displays a small picture of Byetta packaging (using the stylized mark), accompanied by the text: “You may be entitled to compensation.” The remainder of the home page of the website presents information about the alleged potential negative side effects of Byetta, including Pancreatitis, Pancreatic Cancer, and Thyroid Cancer, and the past successes the Respondent has had in representing plaintiffs in pharmaceutical cases.
The bottom right of the home page of the website links to a Disclaimer that begins with the following text: “Thank you for visiting the website of Watts Guerra Craft LLP. The materials on this web site were prepared by Watts Guerra Craft LLP, for information purposes only and should not be construed as legal advice or legal opinion on any specific facts or circumstances.” 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain name is confusingly similar to its registered mark because it utilizes the whole of the Complainant’s trademark, BYETTA, and adds the dictionary word “cancer.”
The Complainant argues that the Respondent does not have prior rights in the mark or any legitimate interest in the disputed domain name . The Complainant argues that the Respondent initially used the website for pay-per-click advertising, which does not constitute a legitimate, noncommercial use of the domain name.
With respect to the site as currently constituted, the Complainant argues that the Respondent is utilizing the BYETTA mark to attract purchasers for commercial gain, and that such use is not a nominative fair use because (a) the Respondent seeks commercial gain at the expense of the Complainant, and (b) the Respondent is seeking to confuse consumers by utilizing the Complainant’s logo and marks, making it difficult to ascertain the sponsor of the website. The Complainant further asserts that, by using the name Byetta in the disputed domain name, the Respondent is seeking to divert Internet searches who are looking for information on the Byetta product, and instead provide them with lawsuit information (which is not what they are searching for).
The Complainant believes that the Respondent could promote its services without utilizing the BYETTA mark in the disputed domain name by instead referencing the drug’s generic designation. The Complainant also argues that the Respondent’s disclaimer is “ineffectual, . . . legally insufficient, . . . buried in the site and fails to identify ‘Amylin’ by name.”
The Complainant also asserts that the Respondent registered and is using the disputed domain name in bad faith for an “intentional attempt to attract Internet users and the Complainant’s customers to other competing websites” with its pay-per-click page, and the “extensive, unauthorized use of Complainant’s marks and packaging” on the current site. B. Respondent
The Respondent opposes the Complainant’s request for transfer of the disputed domain name.
First, the Respondent argues that it was not responsible for, and did not commercially benefit, from the parked page that initially appeared on the webpage to which the domain name resolved. When the Respondent registered this disputed domain name with GoDaddy, GoDaddy reserved the right to place pay-per-click links on a parked page and to receive revenues for that advertising. The Respondent claims that it did not receive any revenue from the parked page.
With respect to the content that launched in January 2012, the Respondent argues that the disputed domain name is not confusingly similar to the Complainant’s mark because it combines the mark with the word “cancer,” when the product’s purpose is to treat diabetes.
The Respondent claims that it has rights or legitimate interests in the disputed domain name because it is making a “fair use,” including because (a) the drug does not have a generic name people would recognize, so use of the drug’s brand name is necessary, (b) the Respondent does not use more of the mark than necessary, and (c) the Respondent’s use on its website of the “prominent and unmistakable logo, advisory about harm caused by Byetta and the potential right to compensation for such harm,” among other things, show that there can be no confusion over endorsement or sponsorship. 6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove by a preponderance of the evidence that:
(i) The disputed 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 in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and used in bad faith.
The Panel finds that, although the disputed domain name is confusingly similar to the Complainant’s trademark, the Complainant has failed to show that the Respondent lacks a legitimate interest in the domain name and therefore the Complainant has not sustained its burden. A. The Domain Name is Confusingly Similar to the Complainant’s Mark
The Complainant has demonstrated its rights to the BYETTA trademark. The incorporation of a trademark in its entirety in a domain name is generally sufficient to establish that the domain name is identical or confusingly similar to the complainant’s mark for purposes of the Policy. The addition of other terms in the domain name, even if those terms are not related to the goods or services offered under the trademark, does not undermine a finding that the domain name is identical or confusingly similar to the complainant’s trademark for purposes of the Policy. See, e.g., Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647 (domain name confusingly similar to trademark despite addition of “sucks” to common law trademark); Pfizer Inc. v. Van Robichaux,WIPO Case No. D2003-0399 (domain name confusingly similar to trademark despite addition of “info” to the LIPITOR mark). Here, the inclusion of the term “cancer” does not change the fact that the Complainant’s mark is used in its entirety in the disputed domain name and that the domain name will be perceived as including the BYETTA mark. As such, the disputed domain name is confusingly similar to the Complainant’s registered mark for the purposes of the Policy. B. Respondent has a Legitimate Interest in the Domain Name
The Complainant has failed to carry its burden to show that the Respondent does not have a legitimate interest in the disputed domain name. The Policy, at paragraph 4(c), provides that rights or legitimate interests may be demonstrated in any of the following circumstances, in particular but without limitation:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
In this Panel’s view, the Respondent has shown that it is currently making a fair use of the disputed domain name and has been doing so since before the filing of the Complaint. As noted above, paragraph 4(c)(iii) of the Policy provides that making a “fair use” is a legitimate use, as long as the Respondent has “no intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.” The Respondent’s use in this case is a clear nominative fair use under the Lanham Act,1 and the Respondent does not seek to gain commercially by “misleadingly divert[ing] customers,” or by “tarnish[ing] the trademark.”
The use is a nominative fair use because the Respondent is using the trademark to refer to the trademarked goods and services, and the Respondent needs to use the mark in order for Internet users to understand the goods to which the Respondent is referring. Pfizer, supra, citing New Kids on the Block v. News Am Publ’g. Inc., 971 F.2d 302, 308 (9th Cir. 1991). One issue in determining whether the use is fair is whether the Respondent has been clear about its intentions or whether the website is misleading about its relationship to the trademark owner. Cf. Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Here, the website is quite clear about its intention (there is no diversion) to provide information and services to individuals seeking information or services concerning the link between Byetta and certain types of cancer. The site clearly discloses that it comes from a law firm, and does not use more the BYETTA trademark than is necessary to make its message clear (for example, the site does not include the BYETTA logo, other than on the image of the product that is shown on the website).
This case is similar in some ways to Pfizer, supra, in which a law firm specializing in pharmaceutical litigation registered the domain name . At the time, it did not have any information on any hazardous side-effects of Lipitor; instead, the domain name resolved to the law firm’s general website. The respondent in that case stated that, “should [respondent] become aware of facts indicating this would be appropriate, he will use the disputed domain name to direct Internet users to a website where he will offer information about the Complainant’s trademarked product and recommend that potential clients be in contact with him.” Id. The panel concluded that this use was a “fair use” because few members of the public would be expected to understand a reference to Lipitor’s generic name (“Pfizer’s atorvastatin calcium product”), the mark was not used in the domain name more than reasonably necessary to identify the product, and finally, the respondent would “use the format of his existing informational web pages, plus a disclaimer, to make clear to any Internet user that the Complainant does not sponsor his website.” Id.
Similarly, in N.V. Organon and Schering Plough Corporation v. Fields Law Firm and Stephen Fields, NAF Claim No. 1259266, the panel found that a law firm using the domain name made fair use of the NUVARING mark, stating:
“A person may not, by using a domain name, attempt to trade on the goodwill of a trademark holder by creating confusion or misleading the public about the source or sponsorship of his website, but if his purpose is to offer criticism or express concern about the safety of a given product in the marketplace he is entitled to use the name of that product in his domain name, so long as the domain name, taken as a whole, is clear as to the purpose of the website and does not imply sponsorship or endorsement thereof by the proponents of that product.” Id.
Similarly, in KBR, Inc. v. Jeffrey L. Raizner /Jeffrey Raizner, NAF Claim No. 1413439, the panel found that use of the mark KBR in the domain name was appropriate when the respondent law firm used the site to report on litigation against the complainant. See also Howard Jarvis Taxpayers Association v. Paul McCauley,WIPO Case No. D2004-0014.2
If anything, the facts here are even more supportive of a fair use than those in Pfizer, supra. In Pfizer, the law firm respondent indicated that it had an interest in offering information about Lipitor that might arise in the future; here, the Respondent already is offering information about the possible link between Byetta and cancer. The Respondent cannot exercise its free speech right to make this information available – and to offer its services to those who may be interested in pursuing litigation – without referring to the Complainant’s drug by its brand name.
Further, there is nothing misleading about the source or sponsorship of the Respondent’s website and virtually no chance that an Internet user would believe that the Complainant sponsors or endorses the site’s content or the services offered through it.
Unlike as in other UDRP cases where confusion has been found, the Respondent’s home page is not designed in a way to confuse consumers into believing that it is sponsored by the Complainant in any way. Cf. Jews for Jesus v. Brodsky, 993 F. Supp. 282 (D.N.J. 1998), aff'd, 159 F.3d 1351 (3d Cir. 1998) (finding confusion where criticism site was confusingly designed to look like official Jews For Jesus site and defendant admitted his intent was to deceive consumers about the sponsorship of his website); Planned Parenthood v. Bucci, 42 U.S.P.Q.2d 1430 (S.D.N.Y. 1997) (finding confusion where criticism site was confusingly designed to look like official Planned Parenthood site in order to lure readers into the site before delivering its anti-abortion message), aff'd, 152 F.3d 920 (2d Cir. 1998), cert. denied, 119 S.Ct. 90 (1998). Upon entering the site, the prominent placement of the law firm name, the focus of the website on providing information about the alleged dangers of Byetta, and the offer of “free case evaluations” make it clear that the website is not sponsored by the Complainant.3 Next to the small picture of Byetta’s packaging, the line “You may be entitled to compensation” appears – a line very commonly associated with attorney advertising. This is not a case that requires significant reading to try and ascertain the sponsors of the website, as the Complainant contends. Not only is it clear that the Complainant does not sponsor or endorse the website, it is abundantly clear that the Respondent does.
Finally, the Respondent’s site does not evidence an intent to “tarnish the trademark or service mark at issue.” The Respondent’s site does not appear to be classic, dilution-like “tarnishment” in the sense of associating the mark with unrelated unwholesome concepts such as illegal drugs, violence or sexual activity. Cf. American Express Co. v. Vibra Approved Labs. Corp., 10 U.S.P.Q. 2d 2006 (S.D.N.Y. 1989) (mark DON’T LEAVE HOME WITHOUT IT tarnished by condoms sold under the slogan “Never Leave Home Without It”); Hasbro, Inc. v. Internet Entertainment Group, Ltd., 40 U.S.P.Q. 2d 1479 (W.D. Wash. 1996) (adult entertainment site at domain name is tarnishment of CANDYLAND trademark for children’s games); Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415 (tarnishing to link actress's name to website selling adult entertainment). Rather, the website purports to offer truthful information about the link between the Complainant’s drug and cancer. Although the Respondent may be critical of the Complainant and its drug, that is not the kind of “tarnishment” to which the Policy refers.
For the foregoing reasons, the Panel finds that the Complainant has failed to sustain its burden of proving that the Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
In light of the Panel's finding under the legitimate interest factor, the Panel needs not consider in detail whether the Respondent registered and is using the disputed domain name in bad faith. Briefly, though the initial use of the website for pay-per-click revenues may well have been bad faith use (even if the advertising revenue went to GoDaddy and not to the Respondent), for the reasons discussed above, the Respondent appears to have registered the disputed domain name for the purpose of having a fair use site with information on potential legal claims related to Byetta and the possibility that it might cause cancer. As such, the registration was not in bad faith. 7. Decision
Because the Complainant has failed to prove that the Respondent lacks a legitimate interest in the disputed domain name, the Panel declines to order transfer of the disputed domain name.
David H. Bernstein
Sole Panelist
Dated: April 29, 2012
1 Given that both parties are located in the United States, it is appropriate to apply U.S. legal principles to the analysis of the parties’ respective rights, including whether the Respondent’s use qualifies as a “fair use.”
2 The Complainant relies on decisions from American International Group, Inc. v. Bruce Levin, NAF Claim No. 0591254 and American International Group, Inc. v. Debra Speyer, NAF Claim No. 0422815, to argue that the purpose of such websites, like the Respondent’s website, is to gain commercially “at the expense of the Complainant,” in violation of the Policy. However, “[t]he fact that Respondent may profit from use of the disputed domain name does not prevent him from establishing a nominative fair use defense,” as that defense is not dependant on whether the Respondent profits. See Pfizer Inc v. Van Robichaux, WIPO Case No. D2003-0399. The Panel finds that the reasoning in N.V. Organon and Schering Plough Corporation v. Fields Law Firm and Stephen Fields, NAF Claim No. 1259266 and Pfizer, supra, more appropriately describes “fair use” under the Policy than the reasoning in the AIG decisions, which this Panel declines to follow.
3 Although the Complainant is also critical of the disclaimer’s failure to mention Amylin by name, the disclaimer makes very clear that the website belongs to the law firm since it starts by saying: “Thank you for visiting the website of Watts Guerra Craft LLP.” Furthermore, the front page of the website states “Our defective drug lawyers believe that Amylin Pharmaceuticals and Eli Lilly & Co. have failed to adequately warn medical practitioners and pharmaceutical consumers about the risk of serious and potentially fatal side effects including pancreatitis, pancreatic cancer, and thyroid cancer associated with the use of Byetta,” clearly showing that the site is not sponsored by the Complainant.
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