The Complainant is iNova Pharmaceuticals (Singapore) Pte. Limited of Singapore, Singapore, internally represented.
The Respondent is Wuxi Yilian LLC of Xiamen, Fujian, China. 2. The Domain Names and Registrars
The disputed domain names , , and are registered with CNOBIN Information Technology Limited; the disputed domain name is registered with B, Inc. (the "Registrars"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 20, 2018. On March 21, 2018, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On March 22, 2018, the Registrars transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 25, 2018.
The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on May 11, 2018. 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 A. Complainant
The Complainant is a pharmaceuticals company registered in Singapore. It is active in Australasia, Asia and South Africa. Two of the pharmaceutical products the Complainant sells are sold under the trade marks DUROMINE and METERMINE. Both products utilise the active ingredient phentermine. The products are prescribed by doctors to patients as hunger suppressants as part of patients' "long-term weight management". They are prescribed for consumption by patients in 15, 30 or 40 mg doses.
The Complainant owns the following relevant trade mark registrations:
Trade mark
Registration number
Jurisdiction
Registration Date
Class(es)
DUROMINE
162353
Australia
September 9, 1960
5
DUROMINE
69024
New Zealand
March 8, 1962
5
DUROMINE
T0904581H
Singapore
March 23, 2010
5
METERMINE
1236879
Australia
April 24, 2008
5
The Complainant advertises and markets its DUROMINE product by reference to its website, located at "/products/duromine". As DUROMINE and METERMINE are prescription-based medicines they cannot be purchased from the Complainant's website. Nonetheless the Complainant's website contains consumer and product information relating to its DUROMINE and METERMINE products. B. Respondent
The Respondent is Wuxi Yilian LLC, which has as its registered address a location in Fujian, China. It is not associated with the Complainant. The Complainant has noted that the Respondent has been the respondent in 16 other domain name disputes decided under the Policy. In these proceedings transfer or cancellation was ordered by the Panel.
The Respondent has not responded to any of the steps taken by the Center notifying it of proceedings brought against it under the Policy. C. The Disputed Domain Names
As noted above, the disputed domain names are:
1. (registered on February 6, 2014);
2. (registered on January 24, 2014);
3. (registered on March 7, 2013);
4. (registered on February 5, 2014); and
5. (registered on March 6, 2013).
Each disputed domain name (except ) redirect to different website located at a different URL. With respect to each:
1. the disputed domain name redirects the user to . The website contains information about DUROMINE and offers to sell it to the consumer. The website includes information for consumers who wish to purchase DUROMINE without a prescription, and "alternatives" to DUROMINE in the form of competing products or generic versions of DUROMINE. It contains an express disclaimer that "All the provided information on the site is for guidance only. This site does not have any relation to iNova Pharmaceuticals company" (being a reference to the Complainant).
2. the disputed domain name redirects the user to . This website provides users with information about DUROMINE and purports to provide a way to purchase the DUROMINE product (again in the absence of a prescription). The product actually being advertised is a competing product to DUROMINE.
3. the disputed domain name redirects the user to . This website provides the user with information about competing products to DUROMINE. It also includes a heading titled "ABOUT DUROMINE", reviews of the DUROMINE product, and contains a hyperlink to an online forum for DUROMINE users, .
4. the disputed domain name redirects the user to . This website again provides information about DUROMINE alongside other competing products, described as "OTHER BRANDS". It also contains a link to "BUY NOW!", which takes the user to a competing product.
5. the disputed domain name resolves to a website again offering information about DUROMINE alongside other competing products. It also contains a link allowing the consumer to purchase phentermine in the form of a competing product to DUROMINE.
All of the websites located at the disputed domain names contain substantive information relating to the Complainant's products and purport to provide information about how to obtain those products or similar products of the Complainant's competitors without a prescription. 5. Parties' Contentions A. Complainant
The Complainant has submitted under paragraph 4(a)(i) of the Policy that the disputed domain names are identical or confusingly similar to a trade mark or service in which the Complainant has rights. It relies on its trade marks, set out above, for DUROMINE and METERMINE in class 5. Each of the disputed domain names contains the DUROMINE mark, and contains both. It submits that the additional generic or descriptive terms used in the disputed domain names are insufficient to prevent confusion among consumers.
The Complainant has submitted under paragraph 4(a)(ii) of the Policy that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not authorised to use the DUROMINE or METERMINE marks owned by the Complainant. There is no evidence of the Respondent legitimately operating under the names DUROMINE or METERMINE.
The Complainant has finally submitted under paragraph 4(a)(iii) of the Policy that the disputed domain names were registered and are being used in bad faith by the Respondent. As to registration in bad faith, it submits that its trade marks "enjoy some reputation notably in Australia in the category of weight management", leading to the inference that the Respondent must have been aware of those marks at the date of registration.
As to use in bad faith, the Complainant has submitted that the various websites (to which users are redirected after entering the disputed domain names) are intended to result in users to a third party website advertising the sale of a competitor's products. This is submitted to "reveal the Respondent's phishing or scamming motives and indicates that the Respondent is using the disputed domain names in bad faith".
The Complainant also relies on the Respondent's history of registering confusingly similar domain names which have ultimately been transferred or cancelled by the UDRP panel. As noted above, the Complainant relies on 16 such instances. It submits that this supports an inference of both registration and use of the disputed domain names in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain names in order to succeed in this proceeding:
(i) That the disputed domain names are identical or confusingly similar to a trade mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) That the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the DUROMINE and METERMINE trade marks by virtue of its trade mark registrations set out above, these are registered in Australia, New Zealand and Singapore for DUROMINE.
The Panel finds that the disputed domain names are all confusingly similar to the DUROMINE trade mark, and is confusingly similar to both the DUROMINE and METERMINE trade marks. Each disputed domain name uses the Complainant's distinctive DUROMINE trade mark. The additional words contained in the disputed domain names – "inaustralia", "purchase" (before and after "duromine") and "-30mg" – are insufficient to prevent a finding of confusing similarity with the Complainant's DUROMINE trade mark. Users who saw the disputed domain names would be likely to conclude that the disputed domain names were owned by or linked to the owner of the DUROMINE and METERMINE trade marks ie the Complainant.
The Panel therefore finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain names, among other circumstances, by showing any of the following elements:
(i) That before notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) That the Respondent has been commonly known by the disputed domain names, even if it had acquired no trade mark or service mark rights; or
(iii) That the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert customers or tarnish the trade mark or service mark at issue.
As already noted above, no response or evidence has been provided by the Respondent. However, the overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.
There is no evidence of the Respondent using or making demonstrable preparations to use the disputed domain names or names corresponding to those disputed domain names in connection with a bona fide offering of goods or services. Nor is there any evidence of the Respondent being commonly known by the disputed domain names.
Instead, and contrary to paragraph 4(c)(iii) as quoted above, there is evidence of the Respondent using the disputed domain names with intent for commercial gain to misleadingly divert customers who are searching for the Complainant. The websites displayed at the disputed domain names (or to which users are redirected) have been used by the Respondent to advertise and sell to competing products to those sold by the Complainant to users who are searching for the Complainant's products sold under the DUROMINE and METERMINE marks. In the absence of any evidence of bona fide use of the DUROMINE or METERMINE trade marks by the Respondent, the Panel infers that the disputed domain names were intended to mislead users into believing they were visiting the Complainant's website, and then lure those users into purchasing a third party product.
Further, and also contrary to paragraph 4(c)(iii) as quoted above, the websites at the disputed domain names purported to provide users with a source of DUROMINE or METERMINE that did not require a prescription for purchase. This ability was provided despite each of the websites displayed at the disputed domain names expressly recognising that DUROMINE and METERMINE are prescription medicines. Users who saw this information while believing that the website in question was operated by the Complainant could come to the conclusion that the Complainant was willfully evading the requirement for purchasers of DUROMINE or METERMINE to have a prescription. The Panel finds that the Respondent's conduct in creating this wrongful perception reflects an intent on behalf of the Respondent to tarnish the Complainant's trade marks for DUROMINE and METERMINE.
Accordingly, and in the absence of any response from the Respondent, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the disputed domain names in bad faith:
(i) Circumstances indicating that the Respondent has registered or has acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain names registration to the Complainant who is the owner of the trade mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain names; or
(ii) That the Respondent has registered the disputed domain names in order to prevent the owner of the trade mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) That the Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) That by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's 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 the Respondent's website or location.
The Panel finds that the Respondent has registered the disputed domain names in bad faith as provided for under paragraph 4(b)(iv) of the Policy for the following reasons:
(i) The evidence establishes that the trade marks DUROMINE and METERMINE are distinctive of the Complainant and its weight-loss products. They have no generic or descriptive meaning. There is no evidence of bona fide use by the Respondent of either mark. In those circumstances, the Panel finds that the decision by the Respondent to register the confusingly similar disputed domain names was for the purpose of attracting customers looking for the Complainant, and accordingly in bad faith.
(ii) The fact that the Respondent set up a series of related and sophisticated websites containing information relating to DUROMINE and METERMINE demonstrates that the disputed domain names were registered with that intent.
(iii) The generic and descriptive words used alongside the Complainant's trade marks in four of the disputed domain names ie "in Australia", "purchase", "30mg" and "purchased" suggest that the Respondent's intention at the time of registration was to attract users searching for information relating to the Complainant's marks.
The Panel also finds that the Respondent has usedthe disputed domain names in bad faith as provided for under paragraph 4(b)(iv) of the Policy for the following reasons:
(i) As noted above, each of the websites to which users are re-directed or shown contains a link to a website which is purported to sell DUROMINE or METERMINE. However the link is actually to purchase a third party competing weight-loss product. Taken in combination with the use of the Complainant's trade marks in the disputed domain names, this demonstrates an intent to attract Internet users to the Respondent's websites by creating a likelihood of confusion with the Complainant's mark for the purpose of obtaining commercial gain.
(ii) Also as noted above, each of the websites shown to users after entering the disputed domain names purports to contain information relating to purchasing DUROMINE or METERMINE without a prescription. If the Complainant were genuinely engaging in such activity, it would be in clear violation of statutory and regulatory requirements that prohibit direct sales in the absence of a prescription. Users who gained the perception that the Complainant was attempting to circumvent the requirement for a prescription could be left with a negative view of the Complainant. The creation of this perception by the Respondent again supports a finding of use in bad faith. (The Panel notes that the website to which users are re-directed after entering contains an express disclaimer which notes that the website "does not have any relation to iNova Pharmaceuticals company". This disclaimer is located within a muted red rectangle in the centre of the screen. However, the disclaimer is surrounded by frequent uses of the Complainant's DUROMINE trade mark, a photograph of the product packaging and the website purports to provide the user with ways to purchase DUROMINE without a prescription. In those circumstances, the Panel finds that express disclaimer is insufficient to prevent a likelihood of consumer confusion.)
In the event the Panel is able to make these findings of registration and use in bad faith without needing to refer to the Respondent's history of having 16 other domain name disputes decided against it under 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 names, , , , and be transferred to the Complainant.
Andrew Brown Q.C.
Sole Panelist
Date: May 25, 2018
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