The Complainants are Norgine BV of Amsterdam, the Netherlands and Norgine Limited of Uxbridge, United Kingdom of Great Britain and Northern Ireland (the “Complainant”), represented by Selarl Marchais & Associés, France.
The Respondent is Dynamic Business Solution, Raheel Wasim of Sindh, Pakistan / Genix Pharma (Pvt.) Ltd. of Karachi, Pakistan, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with N LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2013. On December 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 2013, 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. On December 23, 2013, the Complainant filed an amendment to the Complaint.
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 January 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2014. The Center received an email communication from Dynamic Business Solution, Raheel Wasim on January 15, 2014, advising that it acted solely in the capacity of an agent for Genix Pharma in registering the disputed domain name. The Response was submitted to the Center on January 27, 2014, by Genix Pharma (Pvt.) Ltd.
The Center appointed William R. Towns as the sole panelist in this matter on February 3, 2014. 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 products company headquartered in the Netherlands, with group companies located throughout Europe, and in Australia, New Zealand, Egypt, and South Africa. The Complainant sells its pharmaceutical products in over fifty (50) countries. The Complainant markets an osmotic laxative product under the MOVICOL mark, sold in many of these countries, and accounting for more than half of the Complainant’s overall sales in 2010 and 2011, reported as being excess of EUR 200 million annually. The MOVICOL mark has been registered in numerous jurisdictions throughout the world, including as early as 1955. The Complainant is the parent company of Velinor AG, the owner of these MOVICOL registrations, and is the exclusive licensee of the MOVICOL mark under license from Velinor AG. The Complainant registered the domain names and in 2000 and 2006 respectively.
The Respondent1 is a pharmaceutical company located in Karachi, Pakistan. The disputed domain name was created on August 5, 2010, according to WhoIs information maintained by the Registrar. The Respondent is using the disputed domain name with a website “www.”, advertising a laxative product marketed as “Movcol.” The Respondent’s product also is an osmotic laxative. The Respondent specifically directed its agent to register the disputed domain name only with the “.com” generic Top-Level domain (“gTLD”), and not to register using the second level domain name “.” available in Pakistan.2
The Pakistan Ministry of Health registered the Respondent’s “Movcol” product for manufacture in July 2010. The Ministry of Health’s registration was made under certain express conditions, including that the drug’s “name shall be changed in case it has resemblance with already registered drugs” and that the product’s packaging and labeling “should not resemble with any of the drug(s) which has or have already been registered.” 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to the MOVICOL mark, in which the Complainant asserts rights as the exclusive licensee of the mark from its affiliated company. The Complainant urges that the MOVICOL mark is highly distinctive and well-known, and that the omission of the letter “i" in the disputed domain name does not dispel the confusing similarity of the disputed domain name to the MOVICOL, when visually and aurally compared. Further, the Complainant contends that the Respondent’s omission of the letter “i” was intentional, and amounts to typosquatting.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant submits that the Respondent is not commonly known by the disputed domain name, and has not been licensed or otherwise authorized to use the Complainant’s MOVICOL mark. The Complainant contends that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, but to the contrary has registered and is using the disputed domain name in bad faith, through the creation of Internet user confusion, to divert consumers to the Respondent’s website, where a laxative product competing with the Complainant’s well-known MOVICOL product is promoted. According to the Complainant, there is also no basis on which the Respondent can claim to be making a legitimate noncommercial or fair use of the disputed domain name, without intent to misleadingly divert consumers.
In view of the foregoing, the Complainant maintains that the Respondent registered and is using the disputed domain name in order to exploit and profit from the goodwill and reputation developed in the MOVICOL mark. According to the Complainant, the Respondent likely was aware of the Complainant’s distinctive and well-known MOVICOL mark when registering the disputed domain name, suggesting that the Respondent acted with opportunistic bad faith in an attempt to profit from and exploit the Complainant’s rights but also to disrupt the Complainant’s business.
According to the Complainant, the product offered on the Respondent’s website contains the same active ingredients and in the same quantities as the Complainant’s MOVICOL product, and also claims to treat the same conditions. The Complainant further submits that the Respondent’s website contains false and misleading information, such as a claim that the Respondent’s competing product is “FDA Approved”, when in fact it is not. The Complainant indicates it has filed an opposition in respect of a trademark application filed by the Respondent seeking to register MOVCOL in Pakistan, which proceeding is pending. B. Respondent
The Respondent submits that “Movcol” is a registered product in Pakistan, and that the Respondent accordingly is entitled to register and use a domain name reflecting the product’s name in marketing and promotion. The Respondent asserts rights or legitimate interests in the disputed domain name on this basis. The Respondent maintains that the disputed domain name was not registered to cause confusion with the Complainant’s “Movicol” product.
The Respondent points out that its “www.” website states that “the site is intended for use by Pakistan residents only.” The Respondent further explains that the Complainant’s product is not registered and is not available in Pakistan, and asserts on this basis, that the Complainant’s goodwill is not directly or indirectly affected by the Respondent’s use of the disputed domain name. 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. See e.g 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 First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 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 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 name is 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 a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP 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) of the Policy shifts the burden of production 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.
The Panel is satisfied that the present dispute falls within the scope of the Policy and will therefore proceed to render a decision on the merits of the case. As indicated above, the Panel’s jusrisdiction is limited to providing a remedy in cases of “abusive registration of domain names” and its decision shall therefore be intrepreted accordingly. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s MOVICOL mark. The Complainant has established rights in the MOVICOL mark for purposes of the Policy by virtue of its status as an exclusive licensee of the mark.3 In considering the issue of identity or confusing similarity, the first element of the Policy serves essentially as a standing requirement.4 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. In this case, the disputed domain name, when compared in terms of sight and sound, is confusingly similar to the Complainant’s mark.
Accordingly, the Panel finds 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 of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s mark. The disputed domain name, however, is confusingly similar to the Complainant’s mark, and the Respondent is using the disputed domain name with a commercial website offering a product directly competing with the product sold by the Complainant under its MOVICOL mark.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a 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 disputed 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 he 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.
Based on the record in this proceeding, the Panel considers it highly likely that the Respondent was aware of the Complainant and the Complainant’s MOVICOL mark when registering the disputed domain name. The Panel concludes that the Respondent most likely registered the disputed domain name in order to trade on the goodwill and reputation of the Complainant’s mark through the creation of Internet user confusion, in order to divert traffic to the Respondent’s website. The record reflects that the Respondent’s product is comprised of the same active ingredients as the Complainant’s “Movicol” product, and in the same quantities. Internet users arriving at the Respondent’s website could easily be confused as to the source of the product offered on the Respondent’s website, given that it appears identical to the Complainant’s “Movicol” product and is marketed under a confusingly similar name.
In the judgment of the Panel, it is immaterial to the creation of such confusion whether, as the Respondent asserts, its “site is intended for use by Pakistan residents only.” The Respondent made a deliberate decision not to register the disputed domain name in the “.pk” ccTLD domain space, an act that may suggest otherwise. Nor does the Panel find that the Respondent’s registration of its drug by the Pakistan Ministry of Health serves to establish rights or legitimate interests in the disputed domain name, given that this registration was expressly conditioned on a requirement that the drug’s “name shall be changed in case it has resemblance with already registered drugs.”
In view of the foregoing, the Respondent in the Panel’s view has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Nor, in the circumstances of this case, can it be said that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers. The Respondent has not been authorized to use the Complainant’s mark, and there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.
Accordingly, the Panel finds 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 the respondent’s 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 is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online 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 seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. In the circumstances of this case, the Panel finds that the Respondent in all likelihood was aware of the Complainant and the Complainant’s MOVICOL mark when registering the disputed domain name. The record is convincing that the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights. The Panel is of the view that the Respondent registered and is using the disputed domain name in bad faith to intentionally attract for commercial gain Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to source or sponsorship of the Respondents’ website and the product on the website. See E, Inc. v. Ult. Search Inc.,WIPO Case No. D2001-1319.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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.
William R. Towns
Sole Panelist
Date: February 17, 2014
1 Based on documents submitted with the Response, which was filed by Genix Pharma (Pvt.) Ltd., the Panel finds that Genix Pharma (Pvt.) Ltd. is the beneficial owner and registrant of the disputed domain name. Dynamic Business Solution, Raheel Wasim, was directed by Genix Pharma (Pvt.) Ltd. to register the disputed domain on its behalf. As this agency relationship has been disclosed and is not disputed, the designation “Respondent”, as used herein, is a reference to Genix Pharma (Pvt.) Ltd. unless otherwise indicated.
2 The Internet country code top level domain (ccTLD) for Pakistan is “.pk”. Certain second level domains are available in the “.pk” ccTLD domain space, including “.”, used by individuals and organizations in Pakistan.
3 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.8.
4 See WIPO Overview 2.0, paragraph 1.2.
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