Complainant is Prenzamax, LLC of New Jersey, United States of America (“U.S.”), represented by Lowenstein Sandler LLP, U.S..
Respondent is Vasju Pere of Paris, France. 2. The Domain Name and Registrar
The disputed domain name (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 December 12, 2014. On December 15, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 17, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on December 29, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 19, 2015.
The Center appointed Isabel Davies as the sole panelist in this matter on January 21, 2015. 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’s SUPRENZA trademark was registered on August 28, 2012 by the United States Patent and Trademark Office.
The Disputed Domain Name was registered on January 17, 2013.
Complainant owns multiple top-level domain names incorporating the SUPRENZA trademark (the “SUPRENZA Mark”). 5. Parties’ Contentions A. Complainant Complainant’s Rights with Respect to its SUPRENZA Mark
Complainant evidences that it is the exclusive licensee of the SUPRENZA trademark which is owned by Citius Pharmaceuticals, LLC (“Citius”).
Therefore, as exclusive licensee of the SUPRENZA Mark, Complainant is entitled, with the consent of Citius, to take any necessary action to protect the Mark as trademarks licensees and entities related to the actual trademark holder possess rights under the UDRP.
Complainant evidences that Citius consents to Complainant’s action.
Complainant states that, through its marketing efforts, in 2013, Complainant received approximately $1.5 million in revenue from sales of Suprenza. Since April 2012, Complainant has spent approximately $2 million in marketing and promotional activities in support of the SUPRENZA Mark. Complainant employs pharmaceutical sales representatives, distributes promotional materials to both doctors and potential patients, including providing “leave behind materials” and patient coupon offers, among other marketing activities.
Complainant evidences that it currently owns multiple domain names incorporating the SUPRENZA Mark, including , , , , , , and . Respondent’s Activities
Complainant provides evidence that Respondent registered the Disputed Domain Name on January 17, 2013 and that Respondent has established a site under the Disputed Domain Name that purports to sell Suprenza products “without prescription.” It states that, when visitors to the site attempt to “Buy Now,” they are redirected to , a site that instead offers for sale Phentemine 375, a “Prescription strength, pharmaceutically produced” diet pill that does not require a prescription. Complainant is licensed to market and sell Suprenza, which is a prescription drug. Complainant contends that Respondent’s deceptive use of the SUPRENZA trademark not only presents issues of cybersquatting, but considerable patient safety issues as well. The Disputed Domain Name is confusingly similar to the SUPRENZA Mark
(Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1))
Complainant submits that the Disputed Domain Name should be transferred to Complainant because, within the meaning of paragraph 4 of the Policy, the Disputed Domain Name is confusingly similar to the SUPRENZA Mark.
It states that there can be no dispute that the Disputed Domain Name is confusingly similar to Complainant’s SUPRENZA Mark. The only difference is that the Disputed Domain Name adds the term “now.” It is established by numerous decisions made under the Policy that if a domain name incorporates a distinctive mark, such as Complainant’s, in its entirety, it is confusingly similar to that mark despite the addition of other words.
It contends that Internet users are likely to believe that the Disputed Domain Name is related to, associated with, or authorized by Complainant, which is why Respondent registered the Disputed Domain Name.
Complainant contends that Respondent can have no purpose for registering the Disputed Domain Name other than to cause confusion and take unfair advantage of Complainant’s goodwill in the SUPRENZA Mark and is a case of initial-interest confusion.
Complainant avers that Respondent appropriated the Disputed Domain Name with the intent of causing confusion, mistake, and deception as to Complainant and Respondent. Because the Disputed Domain Name is confusingly similar to the SUPRENZA Mark, Complainant contends that it satisfies the requirements under paragraph 4(a)(i) of the Policy, and Respondent’s registration of the Disputed Domain Name should be canceled and transferred to Complainant. Respondent has no rights or legitimate interests in the Disputed Domain Name
(Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))
Complainant states that Respondent cannot demonstrate any legitimate interest in the Disputed Domain Name as Respondent registered the Disputed Domain Name well after Complainant had established its rights in its SUPRENZA Mark.
It states that Respondent is not commonly known by the Disputed Domain Name and has never conducted a legitimate offline business under the Disputed Domain Name.
Complainant states that Respondent has been granted no license or other rights to use Complainant’s Mark as part of any domain name or for any other purpose and that Complainant is in no way associated or affiliated with Respondent.
Complainant contends that Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name, and is using the Disputed Domain Name misleadingly to attract customers to its webpage for its own commercial gain. It points out that under the Policy, there is no legitimate interest in “click-through” and “parking” sites, especially where, as here, users are diverted to a page selling products in competition with Complainant.
Complainant therefore submits that Respondent registered the Disputed Domain Name solely for deceptive purposes and draws the inference in part, from the following facts. First, that Respondent has no connection or affiliation with Complainant, which has not consented to Respondent’s use of the Disputed Domain Name. Second, Respondent is not commonly known as the Disputed Domain Name. Third, Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.
Complainant therefore submits that because Respondent has no rights or legitimate interests in the Disputed Domain Name, Complainant satisfies the requirements under paragraph 4(a)(ii) of the Policy. The Disputed Domain Name was registered and is being used in bad faith
(Policy, para. 4(a)(iii), Rules, para. 3(b)(ix)(3))
Complainant contends that bad faith is found where “it appears more likely than not from the evidence offered by Complainant that Respondent has registered the domain name in a deliberate attempt to attract users to its website for commercial gain due to confusion with Complainant’s mark.”
Here, Complainant states Respondent’s Disputed Domain Name incorporates Complainant’s Mark and therefore Respondent clearly registered the Disputed Domain Name with the intent of diverting Internet traffic of end users seeking to locate websites owned or authorized by Complainant, to capitalize on consumers’ assumption that the Disputed Domain Name is Complainant’s domain name or that of one of Complainant’s authorized resellers, and/or to suggest to potential customers that Complainant is somehow related to or affiliated with Respondent. In any case, Respondent’s registration is disrupting and diverting Complainant’s business and such registration was undertaken in bad faith.
It is contended by Complainant that use by Respondent of the Disputed Domain Name constitutes initial-interest confusion which arises when a junior user adopts a senior user’s trademark to gain attention in a crowded field in the hope of attracting “a first look.” Such confusion, Complainant submits, is actionable under U.S. trademark law and is further evidence of bad faith.
Moreover, Complainant states, Respondent has demonstrated flagrant bad faith by registering the Disputed Domain Name with the SUPRENZA Mark and redirecting users to a competitor’s website. Such disruption of competition, it states, plainly qualifies as bad faith registration and use under the Policy.
Finally, Complainant states that Respondent is a repeated transgressor of bad faith registration of domain names containing third party trademarks. Respondent has been engaging in a pattern of conduct where it has registered several distinctive names for improper purposes. Complainant evidences that Respondent has been a respondent in at least two other previous disputes in relation to domain names that were alleged to be identical or confusingly similar to well-known pharmaceutical brands. One proceeding resulted in a transfer of the domain name, and the other resulted in a partial transfer and a partial dismissal based upon an unrelated procedural ground. See Hoffman-LaRoche, Inc. v. Vasju Pere / Domain ID Shield Service Co., Ltd.,WIPO Case No. D2012-2234; Valeant Pharmaceuticals International, Inc. / iNova Pharmaceuticals (Australia) Pty Limited v. Luca Radu / Fundacion Private Whols / Maxim Conovalov / Vasju Pere,WIPO Case No. D2013-1918.
Complainant states that on November 20, 2014, Complainant obtained through this Policy a judgment against Respondent, which ordered transfer of based upon facts essentially identical to those alleged here. Prenzamax, LLC v. Domain ID Shield Service CO., Limited / Vasju Pere,WIPO Case No. D2014-1772 (ordering transfer of disputed domain name and finding Vasju Pere registered and used in bad faith). Complainant states that, if it was aware of Respondent’s registration and use of at the time of filing the complaint involving it would have sought action against Respondent under a single complaint.
Complainant contends that Respondent has had at least two years of constructive notice of Complainant’s registered trademark, under U.S. law 15 U.S.C. § 1072.
Complainant contends that all of these facts indicate that Respondent has clearly registered and is using the Disputed Domain Name in bad faith within the meaning of paragraph 4(b)(iii) and (iv) of the Policy, and establish that this Complaint satisfies the requirements under paragraph 4(a)(iii) of the Policy. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
The Policy establishes three elements, specified in paragraph 4(a) that must be established by Complainant to obtain relief. These elements are:
(i) The Disputed Domain Name is identical or confusingly similar to the trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
Each of these elements will be addressed below.
Complainant must establish these elements even if Respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of or requirement under, the Rules, including Respondent’s failure to file a Response.
In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009)).
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. As the proceeding is an administrative one, Complainant bears the onus of proving its case on the balance of probabilities. Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the Disputed Domain Name. Complainant’s Rights with Respect to its SUPRENZA Mark
The Panel accepts that Complainant is the exclusive licensee of the SUPRENZA Mark, which is owned by Citius and that, as exclusive licensee of the SUPRENZA Mark, Complainant is entitled, with the consent of Citius, to take any necessary action to protect the Mark.
Trademarks licensees and entities related to the actual trademark holder possess rights under the UDRP. See, e.g., Komatsu Deutschland GmbH v. Ali Osman/ANS,WIPO Case No. D2009-0107 (finding complainant to be a beneficiary of the mark at issue, as a wholly-owned subsidiary of a company that was a wholly-owned subsidiary of the actual trademark holder, thus giving it rights under the UDRP); Teva Pharmaceutical USA, Inc. v. US Online Pharmacies,WIPO Case No. D2007-0368 (“As the controlling parent corporation and exclusive licensee of the trademark owner, Complainant has sufficient rights to satisfy Policy, paragraph 4(a)(i).”); Toyota Motor Sales U.S.A. Inc. v. J. Alexis Productions,WIPO Case No. D2003-0624 (“As a matter of U.S. law, which governs these proceedings, even a non-exclusive licensee has the right to assert trademark rights in a licensed mark and to take action to protect the licensed mark.”).
The Panel notes that Citius consents to Complainant’s action.
The Panel accepts that through Complainant’s marketing efforts, in 2013, Complainant received approximately $1.5 million in revenue from sales of Suprenza. Since April 2012, Complainant has spent approximately $2 million in marketing and promotional activities in support of the SUPRENZA Mark. Complainant employs pharmaceutical sales representatives, distributes promotional materials to both doctors and potential patients, including providing “leave behind materials” and patient coupon offers, among other marketing activities.
The Panel accepts that Complainant currently owns multiple top-level domain names incorporating the SUPRENZA Mark, including , , , , , , and . Respondent’s Activities
The Panel accepts that Respondent registered the Disputed Domain Name on January 17, 2013 and that Respondent established a site under the Disputed Domain Name that purported to sell Suprenza products “without prescription.” And that, when visitors to the site attempt to “Buy Now,” they were redirected to , a site that instead offers for sale Phentemine 375, a “Prescription strength, pharmaceutically produced” diet pill that does not require a prescription and that Complainant is licensed to market and sell Suprenza, which is a prescription drug. The Panel accepts that Respondent’s use of the SUPRENZA trademark not only presents issues of cybersquatting, but considerable patient safety issues as well. The Disputed Domain Name is confusingly similar to the SUPRENZA Mark
(Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)
The Panel finds that the domain name is confusingly similar to Complainant’s SUPRENZA Mark. The only difference is that the Disputed Domain Name adds the term “now.” It is established under the Policy that if a domain name incorporates a distinctive trademark, such as Complainant’s, in its entirety, it may be confusingly similar to that trademark despite the addition of other words. Roche Therapeutics Inc. v. Venkateshwara Distributor Private Limited/ PrivacyP,WIPO Case No. D2010-1391. Adding words to a complainant’s mark will not preclude a finding of confusing similarity. See Experian Information Solutions, Inc. v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans),WIPO Case No. D2002-0367 (involving the domain name ). See also Viacom International, Inc., Paramount Pictures Corporation, and Blockbuster Inc. v. TV, Inc. f/k/a Affinity Multimedia,WIPO Case No. D2000-1253 (“Although the domain names at issue are not identical to the Complainant’s marks, a finding of similarity cannot be avoided by adding a common or generic term to the complainant’s mark.”).
Moreover, the Panel accepts that Internet users are likely to believe that the Disputed Domain Name is related to, associated with, or authorized by Complainant. Respondent has no Rights or Legitimate Interests in the Disputed Domain Name
(Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))
The Panel accepts that Respondent cannot, in the circumstances of this case, demonstrate any legitimate interest in the Disputed Domain Name as Respondent registered the Disputed Domain Name well after Complainant had established its rights in its SUPRENZA Mark.
The Panel accepts that Respondent is not commonly known by the Disputed Domain Name and Respondent has failed to provide evidence to show that it has ever conducted a legitimate offline business under the Disputed Domain Name.
The Panel accepts that Respondent has been granted no license or other rights to use Complainant’s Mark as part of any domain name or for any other purpose and that Complainant is in no way associated or affiliated with Respondent.
The Panel accepts that Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name, and has been using the Disputed Domain Name misleadingly to attract customers to its webpage for its own commercial gain. Under the Policy, there is no legitimate interest in “click-through” and “parking” sites, especially where, as here, users are diverted to a page selling products in competition with Complainant. See, e.g., Legacy Health System v. Nijat Hassanov,WIPO Case No. D2008-1708 (holding that “the generation of click-through revenue [does] not constitute a bona fide offering of goods and services or a legitimate non-commercial or fair use”); Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415 (“Respondent’s websites offer links to and advertisements for Complainant’s competitors. That does not constitute nominative fair use; rather, it appears to constitute deceptive bait and switch advertising practices”).
The Panel finds that Respondent registered the Disputed Domain Name solely for deceptive purposes and that Respondent has no rights or legitimate interests in the Disputed Domain Name. Complainant therefore satisfies the requirements under paragraph 4(a)(ii) of the Policy. The Disputed Domain Name was Registered and is being Used in Bad Faith
(Policy, para. 4(a)(iii), Rules, para. 3(b)(ix)(3))
Bad faith is found where “it appears more likely than not from the evidence offered by Complainant that Respondent has registered the domain name in a deliberate attempt to attract users to its planned website for commercial gain due to confusion with Complainant’s mark.” I v. Tenenbaum Ofer,WIPO Case No. D2000-0075.
The Panel accepts that Respondent’s Disputed Domain Name incorporates Complainant’s Mark and that Respondent registered the Disputed Domain Name with the intent of diverting Internet traffic of end users seeking to locate websites owned or authorized by Complainant, to capitalize on consumers’ assumption that the Disputed Domain Name is Complainant’s domain name or that of one of Complainant’s authorized resellers, and/or to suggest to potential customers that Complainant is somehow related to or affiliated with Respondent.
The Panel accepts that Respondent’s registration is disrupting and diverting Complainant’s business and such registration was undertaken in bad faith.
The Panel also accepts that use by Respondent of the Disputed Domain Name creates a likelihood of confusion with Complainants Mark as to the source or affiliation of the website. See Charles Schwab & Co., Inc. v. Polanski,WIPO Case No. D2001-0959 (“While an Internet user clicking on [the Disputed Domain Name] might realize fairly quickly that the websites at which the user arrives are unlikely to be connected with the Complainant’s [business], the state of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location, necessary for the application of paragraph 4(b)(iv) of the Policy, will already exist”).
The Panel finds that Respondent has demonstrated bad faith by registering the Disputed Domain Name with the SUPRENZA Mark and redirecting users to a competitor’s website. Such disruption of competition qualifies as bad faith registration and use under the Policy. See, e.g., Global Espirit Inc. v. Living 4,WIPO Case No. D2004-0318; MedTel Outcomes, LLC v. IT HealthTrack, Inc.,WIPO Case No. D2004-0282; Six Continents Hotels, Inc. v. Ramada Inn,WIPO Case No. D2003-0658; Ticketmaster Corporation v. Woofer Smith,WIPO Case No. D2003-0346; Bartercard Ltd & Bartercard International Pty Ltd. v. Ashton-Hall Computer Services,WIPO Case No. D2000-0177.
The Panel accepts that Respondent is a repeated transgressor of bad faith registration of domain names containing third party trademarks, that Respondent has been engaging in a pattern of conduct where it has registered several distinctive names for improper purposes and that Respondent has been a respondent in at least two other previous disputes in relation to domain names that were alleged to be identical or confusingly similar to well-known pharmaceutical brands. One proceeding resulted in a transfer of the domain name, and the other resulted in a partial transfer and a partial dismissal based upon an unrelated procedural ground. See Hoffman-LaRoche, Inc. v. Vasju Pere / Domain ID Shield Service Co., Ltd.,WIPO Case No. D2012-2234; Valeant Pharmaceuticals International, Inc. / iNova Pharmaceuticals (Australia) Pty Limited v. Luca Radu / Fundacion Private Whols / Maxim Conovalov / Vasju Pere,WIPO Case No. D2013-1918.
The Panel accepts that on November 20, 2014, Complainant obtained through this Policy a decision against Respondent, which ordered transfer of based upon facts essentially identical to those alleged here. Prenzamax, LLC v. Domain ID Shield Service CO., Limited / Vasju Pere,WIPO Case No. D2014-1772 (ordering transfer of disputed domain name and finding Vasju Pere registered and used in bad faith).
These facts lead to the Panel finding that Respondent has registered and is using the Disputed Domain Name in bad faith within the meaning of paragraph 4(b)(iii) and (iv) of the Policy, and that this Complaint satisfies the requirements under 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 Complainant.
Isabel Davies
Sole Panelist
Date: January 27, 2015
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