The Complainant is WellSpring Pharmaceutical Corp. of Sarasota, Florida, United States of America, represented by Morrison & Foerster, LLP, United States.
The Respondent is RLS Holding, M. Lamghari of Fujairah, United Arab Emirates. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2012. On June 22, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the Disputed Domain Name. On June 22, 2012, eNom. 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 amendment to the Complaint on June 27, 2012.
The Center verified that the Complaint together with the amendment to 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 June 28, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 18, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 19, 2012.
The Center appointed Ian Blackshaw as the sole panelist in this matter on July 26, 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. 4. Factual Background
The Complainant is a pharmaceutical manufacturer focused on developing medications for little known illnesses. 5. Parties’ Contentions A. Complainant
The Complainant makes the following assertions:
i. The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Complainant owns United States Trademark Registration No. 0505374 (“DIBENZYLINE”). Since1948, the DIBENZYLINE mark has been used by the Complainant or its predecessor(s)-in interest in connection with the pharmaceutical identified scientifically as phenoxybenzamine hydrochloride. The Panel has been provided with a true and correct copy of a printout of Registration No. 0505374 taken from the United States Patent and Trademark Office’s Trademark Electronic Search System.
Unbeknown to the Complainant, the Respondent registered the Disputed Domain Name on November 4, 2011.
The Disputed Domain Name incorporates the Complainant’s trademark in its entirety, and is therefore identical or virtually identical and confusingly similar to the Complainant’s trademark. See Red Bull GmbH v. Web Wax Designer,WIPO Case No. D2006-0746 (“A number of WIPO Panel decisions under the UDRP have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark.”); F. Hoffmann-La Roche AG v. Web Marketing Limited,WIPO Case No. D2006-0005 (“[I]t is well established that incorporating the entirety of a mark into a domain name is sufficient to establish that a domain name is confusingly similar to the registered mark[.]”) (citing EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047).
The use of the suffix “.net” is inconsequential and should be disregarded when determining whether or not a domain name is confusingly similar to a Complainant’s mark. See, e.g., Teachers Insurance and Annuity Association of America v. Domain Admin,WIPO Case No. D2005-1227.
ii. The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name
The Respondent has no rights to or legitimate interest in the Disputed Domain Name. As alleged more fully below (a) the Respondent has not made use of the Disputed Domain Name in connection with a bona fide offering of goods or services, (b) the Respondent is not commonly known by the Disputed Domain Name, and (c) the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. See Policy, para. 4(c).
First, the Respondent has not made use of the Disputed Domain Name in connection with a bona fide offering of goods or services. The Respondent is not authorized or licensed to use the Complainant’s trademark. The Respondent is not an authorized reseller of the Complainant’s pharmaceuticals. Rather, the Respondent appears to be utilizing the Complainant’s DIBENZYLINE mark to sell, without a prescription, phenoxybenzamine hydrochloride, which is available in the United States only with a prescription. In any event, the Respondent’s use of the Complainant’s mark also in connection with competing products without authorization is not bona fide. See Schering Corporation, a subsidiary of Merck & Co., Inc. v. RLS Holding / M Lamghari,WIPO Case No. D2012-0196 (“[S]everal of the products offered by the Respondent appear to be products that directly compete with the Complainant’s Claritin products. The Respondent’s use of the disputed domain name is therefore prima facie not bona fide, because it does not use the Complainant’s trade mark to sell the Complainant’s Claritin products, but uses it to sell products that compete directly with those products.”) A true and correct copy of a printout of the website available at the Disputed Domain Name retrieved on June 20, 2012, has been provided to the Panel.
This unauthorized use of the Complainant’s DIBENZYLINE trademark cannot be a legitimate use; use that infringes a valid trademark does not constitute legitimate use under the UDRP. See, e.g., Playboy Enterprises International Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768 (“An infringing use of complainant’s trademark can not give rise to a legitimate right or interest on the part of respondent, as prior WIPO UDRP Panels have ruled.”).
Registering and using the Disputed Domain Name in this manner — i.e., to profit by intentionally creating confusion with the Complainant’s trademark — does not constitute use of the Disputed Domain Name “in connection with a bona fide offering of goods or services,” and cannot give the Respondent rights or legitimate interest in the Disputed Domain Name. Volvo Trademark Holding AB v. Unasi, Inc.,WIPO Case No. D2005-0556 (finding that registering and using a domain name for the purpose of illegitimately benefiting from a renowned trademark cannot constitute a bona fide offering of goods and services).
Second, to the Complainant’s knowledge, the Respondent has not been commonly known by the Disputed Domain Name. The Respondent is identified as “RLS Holding” in the WhoIs registration information record for the Disputed Domain Name. On information and belief, the Respondent did not use the Disputed Domain Name in connection with any legitimate business or offering of goods or services before it registered the Disputed Domain Name. Accordingly, the Respondent cannot now claim that it is commonly known by the Disputed Domain Name. See Compañía de Radiocomunicaciones Móviles S.A. and BellSouth Corporation v. Juan Bolinhas d/b/a "MOVICOM BELLSOUTH",WIPO Case No. D2000-0915 (holding that “commonly known” means “that the person or entity in whose name the domain name is registered was effectively known by third parties by the domain name before the moment of registration”) (emphasis added); National Spiritual Assembly of the Baha’is v. Buy This Name,WIPO Case No. 2001-1302.
Finally, the Respondent is not making legitimate noncommercial or fair use of the Disputed Domain Names. As described above, the Respondent appears to be operating the DIBENZYLINE.NET domain name as a front to sell prescription phenoxybenzamine hydrochloride under the Complainant’s DIBENZYLINE mark without a prescription. Clearly, this use is not a noncommercial fair use. The Sports Authority Michigan, Inc. v. Internet Hosting, NAF Claim No. FA124516 (“Respondent is not using the disputed domain names for a legitimate noncommercial fair use if it is profiting from every approaching Internet user.”).
The above factors support a finding that the Respondent has no legitimate rights or interests in the Disputed Domain Name. To the contrary, the evidence demonstrates that the Respondent was aware of the Complainant’s well-established and long-standing mark prior to registering and using the Disputed Domain Name, and the Respondent’s actions evidence intent to profit commercially from the Disputed Domain Name by creating consumer confusion and misleadingly diverting customers without making a bona fide offering of goods or services.
iii. The Disputed Domain Name was registered and is being used in bad faith
All of the circumstances support the conclusion that the Disputed Domain Name was registered and have been used in bad faith by the Respondent. Paragraph 4(b) of the Policy enumerates four non-exhaustive circumstances that constitute evidence of bad faith:
(i) the Respondent has registered the Disputed Domain Name primarily for the purpose of selling the domain name registration to the Complainant who is the owner of the trademark;
(ii) the Respondent has registered the Disputed Domain Name “in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that [the Respondent has] engaged in a pattern of such conduct”;
(iii) the Respondent has registered the Disputed Domain Name “primarily for the purpose of disrupting the business of a competitor”; or
(iv) “by using the domain name, [the Respondent has] intentionally attempted 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 [its] website or location or of a product or service on [its] website or location.”
The Respondent’s registration of a term that has no common meaning, and represents only the Complainant’s products or services, supports an inference of bad faith. See Laboratoire Nutergia v. Jeongyong Cho,WIPO Case No. D2007-1582 (noting that NUTERGIA was an arbitrary term created by the complainant, and that the Respondent’s registration of supported an inference that the respondent had no legitimate purpose for registration and did so in bad faith); see also Sodexho Alliance v. Stephane Pacaud,WIPO Case No. D2007-0910 (“In view of the distinctive quality of the SODEXHO mark and its worldwide recognition as a trade symbol of the Claimant's business activities, the Panel finds that the Respondent's bad faith is undeniable in securing registration of the disputed domain name that creates a likelihood of confusion among Internet users from which profit is presumably derived and dilutes the distinctive power of the Complainant's mark SODEXHO”).
The term DIBENZYLINE does not have any common meaning. The term was created half a century ago as a trade name for use on phenoxybenzamine hydrochloride; it continues to be used as such by the Complainant and is only used as a trade symbol for the Complainant’s business activities. Thus, as in Sodexho, the Respondent’s bad faith is undeniable.
As further evidence of the Respondent’s bad faith, the Complainant notes two previous cases in which the Respondent engaged in similar tactics and was held to have acted in bad faith. See Schering Corporation v. RLS Holding / M Lamghari,WIPO Case No. D2012-0196 (where the respondent registered Schering’s CLARITIN mark as part of the domain name , the panel held “[t]he only plausible explanation for the Respondent including the Complainant’s trade mark in the disputed domain name (absent any indication to the contrary from the Respondent), is that the Respondent was seeking to attract Internet users to its website by falsely suggesting that this website has some connection with the Complainant or its [CLARITIN] products”); Roche Products Limited.v. RLS Holding,WIPO Case No. D2012-0217 (same with Roche’s ACCUTANE mark).
The Respondent’s purpose in registering the Disputed Domain Name is to intentionally attempt to attract users to its website to profit from the likelihood of confusion created by the Disputed Domain Name. In addition to the cases referenced above, the Complainant has provided the Panel with a true and correct printout of a listing of the results of a reverse WhoIs search, showing other domain names registered by the Respondent. In addition to the marks referenced in the cases above, these results show a plethora of similar drug-related marks registered as domain names, such as , and . See Seiko Epson Corporation v. JIT Consulting, NAF Claim No. FA95476 (finding that bad faith intent can be inferred from registration of multiple domain names incorporating trademarks of third parties). The Complainant believes that this evidence shows a pattern of bad faith on the Respondent’s part in attempting to profit off of the consumer confusion arising from its use of the Complainant’s trademark. The Complainant submits that the information described above is more than sufficient to justify a finding of bad faith registration and use. B. Respondent
The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant’s contentions or take any part in these proceedings. 6. Discussion and Findings
To qualify for cancellation or transfer of the Disputed Domain Name, the Complainant must prove each of the following elements 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 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 is being used in bad faith.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the 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.
In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and under paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.
In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
In previous UDRP cases in which the respondents failed to file a response, the panels’ decisions have been based upon the complainants’ assertions and evidence, as well as inferences drawn from the respondents’ failure to reply. See The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros Telekom Corp.,WIPO Case No. D2001-0936.
Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default. See Cortefiel, S.A. v. Miguel García Quintas,WIPO Case No. D2000-0140. In this case, the Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true. A. Identical or Confusingly Similar
It is well established in previous UDRP cases that, where a disputed domain name incorporates a complainant’s registered trademark, this may be sufficient to establish that the disputed domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525.
In the present case, the Disputed Domain Name incorporates in its entirety the Complainant’s well-known and well-established registered trademark DIBENZYLINE. This, in the view of the Panel, is bound to lead to confusion on the part of consumers and Internet users seeking information on the Complainant’s company and its pharmaceutical product marketed under its well-known and well-established registered trademark DIBENZYLINE.
The addition of a generic top-level domain (gTLD) “.net”, to the Disputed Domain Name does not constitute an element in the Disputed Domain Name which would avoid confusing similarity for trademark purposes. Its use is purely for registration purposes. See The Coca-Cola Company v. David Jurkiewicz,WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc,WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. See also Aktiebolaget Electrolux v. Jose Manuel,WIPO Case No. D2010-2031.
In view of the above, the Panel finds that the Disputed Domain Name is identical or confusingly similar to the Complainant’s registered trademark DIBENZYLINE, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights in and prior and lengthy commercial use of the same.
The first element of the Policy, therefore, has been met. B. Rights or Legitimate Interests
In order to determine whether the Respondent has any rights or legitimate interests in respect of the Disputed Domain Name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:
- whether there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute;
- whether the Respondent (as an individual, business, or other organization) has been commonly known by the Disputed Domain Name, even if the Respondent has acquired no trademark or service mark rights;
- whether the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the Disputed Domain Name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to the Complaint or taking any part in these proceedings. See Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
There is no evidence before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant’s well-known and well-established registered trademark DIBENZYLINE. In fact, in the view of the Panel, the adoption by the Respondent of a domain name identical or confusingly similar to the Complainant’s registered trademark DIBENZYLINE, which the Panel agrees with the Complainant was probably not by chance but by design, inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products. Further, the Panel finds that the Respondent may be tarnishing the Complainant’s well-known and, therefore, valuable registered trademark DIBENZYLINE and also the valuable goodwill that the Complainant has established in this trademark through prior lengthy commercial use of the same, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so.
Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services.
Likewise, no evidence has been adduced that the Respondent has commonly been known by the Disputed Domain Name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name.
Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris,WIPO Case No. D2003-0366.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [the respondent’s] web site or location or of a product or service on [its] web site or location.”
Based on the evidence provided on the record, the Panel considers that the Respondent, by registering the Disputed Domain Name, is trading unfairly on the Complainant’s valuable goodwill established in its well-known and well-established registered trademark DIBENZYLINE.
By registering and using the Disputed Domain Name incorporating in its entirety the registered trademark DIBENZYLINE, the effect is to mislead Internet users and consumers into thinking that the Respondent may, in some way or another, be connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which the Panel can find, on the basis of the evidence provided in the record, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet,WIPO Case No. D2004-0649.
Furthermore, see also Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493, in which it was stated that “consumers expect to find a company on the Internet at a domain name address comprised of the company’s name or trademark”. As this is not, in fact, the situation in the present case, the use by the Respondent of the Disputed Domain Name is confusing and misleading and, in the view of the Panel, this is a further indication that the Disputed Domain Name was registered and is being used in bad faith.
Again, in the absence of any explanation to the contrary by the Respondent, of which none is forthcoming on the record, the Panel agrees with the Complainant’s contention that the Respondent did not register and use the Disputed Domain Name, which incorporates in its entirety the Complainant’s well-known and well-established registered trademark DIBENZYLINE, by chance, but, as noted above, on the basis of being aware of the notoriety of the Complainant‘s trademark and its business activities in the pharmaceutical industry over a long period of time.
Also, the Panel agrees with the Complainant’s contentions that the Respondent's use of the Disputed Domain Name by redirecting Internet users interested in the Complainant's products to the Respondent’s own website for presumed commercial gain, not only does not constitute legitimate noncommercial or fair use; but also constitutes bad faith on the part of the Respondent. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr.Cartwright,WIPO Case No. D2007-0267.
Finally, the failure of the Respondent to answer the Complaint or take any part in the present proceedings, again, in the view of the Panel, is another indication of bad faith on the part of the Respondent (see Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787).
Therefore, taking all these particular facts and circumstances into account and for all the above mentioned reasons, as well as all the other arguments advanced by the Complainant in its contentions, as set out above, including the recent instances cited by the Complainant of previous similar conduct on the part of the Respondent in relation to the registration and use in bad faith of other trademarks identifying other pharmaceutical formulations, and supported by the previous UDRP cases cited by the Complainant, the Panel concludes that the Respondent has registered and is using the Disputed Domain Name in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to the Complainant.
Ian Blackshaw
Sole Panelist
Dated: August 6, 2012
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