The Complainant is Prenzamax, LLC of Cranford, New Jersey, United States of America, represented by Lowenstein Sandler PC, United States of America.
The Respondent is Domain ID Shield Service CO., Limited of Hong Kong, China / Vasju Pere of Paris, France. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 9, 2014. On October 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 13, 2014, the Registrar 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 the Complainant on October 13, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 15, 2014.
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 October 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 11, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 12, 2014.
The Center appointed Adam Samuel as the sole panelist in this matter on November 19, 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 the exclusive licensee of the trademark SUPRENZA pursuant to the Exclusive License Agreement between it and Citius Pharmaceuticals LLC dated November 15, 2011 and brings the Complaint with the consent of Citius Pharmaceuticals LLC. The Complainant uses this trademark to sell the slimming product, Suprenza. The Complainant owns a number of domain names for this purpose including , registered by its sister company, Akrimax Pharmaceuticals, LLC, on May 19, 2011. Citius Pharmaceuticals LLC is the owner of a United States of America trademark registration for the name SUPRENZA, number 4199746, registered on August 28, 2012.
The Respondent registered the disputed domain name on April 22, 2013. 5. Parties' Contentions A. Complainant
As the exclusive licensee of the SUPRENZA mark, the Complainant is entitled to take any necessary action to protect the mark, with the consent of Citius Pharmaceuticals, LLC. Trademark licensees possess rights under the UDRP.
The Respondent has established a site under the disputed domain name which purports to sell Suprenza products without a prescription. When visitors to the site select the option "Buy Now", they are redirected to . The redirected site offers for sale "Phentemine 375". This poses patient safety issues.
The only difference between the disputed domain name and the trademark of which the Complainant is the exclusive licensee is the addition of the term "pills". Adding words to a mark in which the Complainant has rights does not preclude a finding of confusing similarity.
The Respondent is not commonly known by the disputed domain name, has received no license or other entitlement to use the SUPRENZA mark for any purpose and is not in any way connected with the Complainant.
The Respondent clearly registered the disputed domain name with the intention of diverting Internet traffic of users seeking to locate websites owned or authorized by the Complainant in order to capitalize on consumers' assupmtipon that the disputed domain name is the Complainant's or that of one of its authorized resellers or other affiliates. The Respondent has demonstrated flagrant bad faith by registering the disputed domain name and redirecting users to the website of one of the Complainant's competitors. The Respondent has been ordered to transfer domain names in two other cases involving well-known pharmaceutical brands. The Respondent has had at least two years constructive notice of the trademark of which the Complainant is the exclusive licensee. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it 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. A. Identical or Confusingly Similar
The Complainant has rights in the trademark SUPRENZA under the exclusive distribution agreement with the owner of the mark, Citius Pharmaceuticals, LLC. The Policy does not require the Complainant to own the trademark. Bringing the Complaint as the exclusive licensee with the consent of the trademark owner, the Complainant is able to show that it has rights in the trademark SUPRENZA for the purpose of the first element of the Policy.
The disputed domain name consists of the SUPRENZA mark, the word "pills" which describes the nature of the product which is the subject of the trademark and the generic Top-Level-Domain (gTLD) ".com". For these reasons, the Panel concludes that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Respondent is not called "Suprenza Pills" or anything similar and does not appear to engage in a legitimate trade under that or any related name. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. For these reasons, and in the absence of any response on this point, notably one contradicting the Complainant's claim that the Respondent has never been connected to it in any way, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
SUPRENZA is a made-up word which describes a brand of pills. In this Panel's view, the decision to register the disputed domain name seems likely to have been made by the Respondent, knowing of the brand concerned and wishing to reflect it in a domain name that reflected the mark concerned and the type of product to which it related.
One is left with only three possible motives for the Respondent's decision to register the disputed domain name: to disrupt the Complainant's relationship with its customers or potential customers, attempt to attract Internet users for potential gain or persuade the Complainant to buy the disputed domain name from it for an amount in excess of the Respondent's out-of-pocket expenses. These all constitute evidence of registration and use in bad faith. The Respondent's motivation may have been more than one of these and perhaps all three.
In the past, the disputed domain name resolved to a page which enabled users to buy a competitor's product without a prescription. This confirms the conclusion that the Respondent registered the disputed domain name with the intention of disrupting the Complainant's relationship with its customers or potential customers or attempting to attract Internet users for potential gain.
For all these reasons, the Panel concludes that the disputed domain name was registered and is being used in bad faith. It is unnecessary in the circumstances to reach a conclusion about the other points made in the Complaint. 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.
Adam Samuel
Sole Panelist
Date: November 20, 2014
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