The Complainant is Gland Pharma Limited of Hyderabad, India, represented by Wordict IP, India.
The Respondents are Narasimha Sagi of Romeoville, Illinois, United States of America and Rama Kodanda, Sri Ranganadhaswamy-Kodanda Rama Rameswaram Trust, Andhra Pradesh, India, self-represented. 2. The Domain Names and Registrars
The disputed domain names and are registered with FastDomain, Inc. (“FastDomain”).
The disputed domain name is registered with D, LLC (the “D”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2018. On July 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 12, 2018, the Registrars transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amendment to the Complaint on July 18, 2018.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2018. The Response was filed with the Center on July 19, 2018.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on July 25, 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
The Complainant is a leading pharmaceutical company based in Hyderabad, India founded by Mr. P.V.N Raju in 1978. The Complainant owns the domain name and uses it in connection with its business from 2003. The Complaint claims unregistered or common law trademark rights in GLAND PHARMA since 1978.
The Respondents named in the registration records are Narashima Sagi and Rama Kodanda. However, for all practical purposes, the Respondent is evidently Raju Sagi, the son-in-law of P.V.N Raju, the founder of Gland Pharma. The Response in these proceedings was sent by Raju N Sagi. No response was received from the second Respondent Rama Kodanda. The administrative contact for the disputed domain name is Raju Sagi.
The address and email address of Narashima Sagi and Raju N Sagi are the same. Although the names of the Respondents are different, the common addresses provided by the Respondents indicate there is common control over the disputed domain names. The Respondents Narashima Sagi / Raju N Sagi and Rama Kodanda are hereafter collectively referred to as the “Respondent” in these proceedings.
The disputed domain names and were registered on October 29, 2011 and disputed domain name was registered on January 29, 2014. The disputed domain names and are parked and have pay-per-click (“PPC”) links and are not being used for any other specific purpose, and aside from the PPC links there is no website content associated with these domain names.
The website linked to the disputed domain name appears to have been used at one point for a criticism site. The website did not then contain any sponsored links or any content that suggests that the Respondent is earning any revenue from the said disputed domain name or from the corresponding website; it does not currently resolve. 5. Parties’ Contentions A. Complainant
The Complainant states that it has world class and world scale facilities for the manufacture of injectables at Hyderabad and Vizag in India. The Complainant contends it is a leader in Heparin technology and Glycos Amino Glycans (GAGs) range of molecules and the first Indian company to get United States Food and Drug Administration (“USFDA”) clearance in 2003 for liquid injectables. The Complainant also produces anti-coagulants, anesthesia products, oncology products, cardio-vascular products, anti-biotics, anti-inflammatory, psycho therapeutic agents, and anti-arrhythmic products. The Complainant states it exports its products to more than 90 countries including United States of America, European Union, Australia, Canada, Latin American, and Asian countries.
The Complainant argues that the disputed domain names are identical or confusingly similar to its trademark GLAND PHARMA, which it has used continuously since 1978. The Complainant states that it has a strong online presence and has used the domain name since March 27, 2003. The Complainant asserts that it has acquired substantial goodwill and reputation in the GLAND PHARMA mark. The Complainant states that its net sales were INR 15,560 million (USD 239 million) in 2017 and it has about 3,000 to 3,500 employees. The Complainant has provided evidence of media recognition and news reports to establish that it has acquired substantial goodwill and reputation under the mark. As further evidence of goodwill acquired under the GLAND PHARMA mark, the Complainant refers to the Pharmexil Awards (Pharmaceuticals Export Promotion Council of India) Export Awards that it has received for five consecutive years from 2009 to 2014 and again in 2016. The Complainant states its mark has acquired secondary meaning as a distinctive identifier of its products and it has unregistered or common law rights in the mark.
The Complainant states that the disputed domain names contain the trademark in its entirety, and the use of the term “sociopaths” could indicate the Respondent’s site is used for criticism and free speech.
The Complainant argues that the disputed domain name may however create confusion for Internet users who are not fluent in English. As the Complainant exports products to both English and non-English speaking countries, its customers and stakeholders are likely to be confused. The Complainant also argues that a domain name containing a trademark and a negative term can be considered confusingly similar to the trademark. The Complainant argues that the word “sociopaths” generally indicates a medical condition, but is less offensive than the word “sucks”, and therefore reduces the negative connotation.
The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain names and asserts that the Respondent is not known by the mark and has no trademark rights and is not licensed or authorized by the Complainant to use the mark. The Complainant further argues that the Respondent is not making legitimate, noncommercial fair use of the disputed domain names. The Complainant states the Respondent was aware of the Complainant’s mark when registering the disputed domain names, as the Respondent Raju Narasimha Sagi is the son-in-law of the Founder Chairman of Gland Pharma.
The Complainant argues that the Respondent registered the first two disputed domain names to prevent the Complainant from registering the disputed domain names. The Complainant argues that the Respondent has registered the disputed domain name to pressurize the Respondent’s wife Durga Sagi to sue her father and to pressurize the Complainant and Founder Chairman. The verbatim quote from the website that is reproduced in the Complaint is given here:
“The creation of www. is to alleviate Mrs. Durga Sagi’s ‘psychologically programmed’ fear for going to COURT to recover her majority shareholding in Gland Pharma may trigger PVN Raju or Ravi Penmetsa or both to opt for seppuku driven by public humiliation and disgrace”.
The Complainant argues that the website misleads the public and misrepresents the Complainant to visitors of the website. As the site has articles titled “Gland Chemicals was promoted in 1974 to manufacture Heparin Sodium in Bangalore, India” and “Gland Pharma was promoted in 1978 as part of forward integration strategy to manufacture Heparin Sodium Injections – high value product – and significantly improve Gland Chemicals business success”. The Complainant argues that the topics do not indicate criticism and customers may believe the disputed domain name is an official website that is used and authorized by the Complainant. The Complainant argues that even if the disputed domain name is used for a criticism site, the Respondent does not have the right to use the trademark for this purpose.
The Complainant argues that the disputed domain names were registered and used in bad faith, as the Respondent was aware of the trademark when he registered the disputed domain names. The Complainant states and were registered to prevent the Complainant from registering the disputed domain names and has engaged in a pattern of such conduct which is bad faith under the Policy. The Complainant reiterates the argument that the titles of some articles on the website of the disputed domain name do not indicate criticism and the “defamatory” material can be viewed only after scrolling down. Finally, the Complainant argues that the paragraph 4(b) of the Policy is merely illustrative and not exhaustive, therefore bad faith registration and use may be found where registrant seeks to profit from or exploit the trademark.
The Complainant argues that the disputed domain name site does not provide any legitimate criticism and it was registered after the Respondent’s business and personal relationship with the Complainant went wrong. The Complainant states that content on the website makes allegations to bring disrepute to the Complainant and its Founder Chairman. The Complainant states that content on the website mentions that the Respondent has tried to extort money in the form of cash and kind from the Complainant its Founder Chairman and his family. The Complainant adds that even if the Respondent’s motive was not to sell the disputed domain name to the Complainant, his motive was to pressurize the Complainant and its Founder Chairman, which is bad faith. The Complainant has requested for the transfer of the disputed domain names. B. Respondent
The Respondent did not file a formal response but sent an email to the Center on July 19, 2018. In a subsequent email dated July 21, 2018, the Respondent confirmed the July 19, 2018 email can be treated as the Response. The email response does not address the issues raised in the Complaint. It is a brief half page submission consisting of a series of unrelated sentences. It mentions some legal notices that the Respondent had apparently received from the Complainant and the concluding statement mentions Mrs. Durga Sagi has filed a legal suit in Hyderabad. One document has been filed with the Response, which is a letter dated November 17, 2011 sent from Gland Pharma to iP, requesting for the suspension of the account , due to hate mail being sent from the said account.
The entire email response that was sent by the Respondent is reproduced here:
“Almost seven years ago, Gland Pharma filed a complaint with iPage about its domain. iPage Legal department forwarded the complaint asking us to address cyber domain related issues raised by Managing Director of Gland Pharma for helping its Lawyers to make a determination as to the Legal merits of our arguments in light of 11-17-2011 e-mail.
iPage is still hosting our domain.
Walter& Haverfield LLP attorneys at law – served legal notice on 12-7-2011 regarding Registration of complaints@.et al. This is a very confusing legal notice for it makes several claims that are not supported by facts.
Advocate AVKS Prasad of Moosamrambagh, Hyderabad- served legal notice on 3-12-2013 replete with innuendo and slander.
NEAL, GERBER & EISENBERG LLP of Chicago, USA – served legal notice on 12-7-2015 regarding ‘Unlawful Misconduct Directed against Gland Pharma Limited, et. al.’
Followed by invitations to settle all the ownership related issues to Raju & Durga Sagi time and again leading nowhere resulting in Mrs. Durga Sagi filing suit OS 234 of 2018, allotted to the 2nd Senior Civil Judge, Hyderabad”. 6. Discussion and Findings
It is an essential requirement under the Policy for a complainant to establish three elements under paragraph 4(a) of the Policy to obtain the transfer of the disputed domain name, in seriatim these are:
(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 lacks rights or legitimate interests in the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith by the Respondent. A. Identical or Confusingly Similar
The first element requires the Complainant to establish that the disputed domain names are identical or confusingly similar to a trademark or a service mark in which it has rights.
The term “trademark or service mark” as used in paragraph 4 (a)(i) of the Policy encompasses both registered and unregistered or common law marks. See Section 1.1.1, The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). To establish unregistered or common law rights in a trademark for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. Section 1.3, WIPO Overview 3.0.
The Panel finds that the Complainant has provided evidence of use of the GLAND PHARMA mark, such as media recognition and news reports to establish that it has acquired substantial goodwill and reputation due to its use of the mark in commerce for a number of years. The Complainant has also filed evidence to establish that it is a globally known company in pharmaceuticals and has acquired substantial goodwill and reputation in the mark. Such evidence includes the Pharmexil Export Awards that it has received in 2016 and previously for five consecutive years from 2009 to 2014, awarded by the Pharmaceuticals Export Promotion Council of India. The Panel recognizes that the mark has become a distinctive identifier that consumers associate with the Complainant’s goods and products. The Panel finds on the basis of the evidence, that the Complainant has successfully evidenced unregistered or common law rights in the GLAND PHARMA mark.
The Panel notes that the Complainant has also filed trademark applications on March 4, 2018:
TRADEMARK
CLASS
APPLICATION NUMBER
GLAND PHARMA
5
3769004
GLAND PHARMA
35
3769005
GLANDPHARMA.COM
5
3769006
GLANDPHARMA.COM
35
3769007
GLAND PHARMA (Logo)
35
3769008
The disputed domain names and contain the GLAND PHARMA mark in its entirety. Inclusion of a hyphen as part of a domain name is considered as insufficient to prevent confusion. See Ulysse Nardin S. A. v. Wang Xin,WIPO Case No. D2015-0541, where it was found that a hyphen has no distinctiveness by itself. It is well established that the generic Top-Level Domain (“gTLD”) “.org” is generally not considered for the purposes of determination of identical or confusingly similarity. The Panel accordingly finds that the disputed domain names and are identical or confusingly similar to the GLAND PHARMA trademark, in which the Complainant has rights.
Regarding the disputed domain name , the disputed domain name wholly incorporates the GLAND PHARMA trademark with the addition of the negative term “sociopath”. In these circumstances, the addition of the term “sociopath” does not prevent a finding of confusing similarity. Accordingly, the disputed domain name is confusingly similar to the GLAND PHARMA trademark, in which the Complainant has rights. B. Rights or Legitimate Interests
The second element under paragraph 4(a) of the Policy requires the Complainant to make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names. Once the Complainant has made a prima facie showing that the Respondent lack rights, the Respondent has the opportunity to rebut the Complainant’s contentions and demonstrate any rights or legitimate interests in the disputed domain names.
Paragraph 4 (c) of the Policy has provided a non-exhaustive list that a respondent may rely on to demonstrate rights or legitimate interests in a domain name that is in dispute. These are:
(i) Before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) 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.
The Panel finds the disputed domain name is used primarily for the purpose of expressing criticism and is a gripe site. Use of a domain name for purposes of hosting a criticism site is recognized as fair use under paragraph 4(c)(iii) of the Policy, See Section 2.6.1 WIPO Overview 3.0. Where the domain name comprises the mark plus a derogatory term, UDRP panels have found that a respondent could have a legitimate interest in using the trademark as part of the domain name, when the site is used purely as a criticism site, if such use is prima facie noncommercial, genuine fair-use and the respondent does not seek to profit from or exploit the trademark. See Section 2.6.3 WIPO Overview 3.0.
The Panel finds the Complainant’s argument that the site resolving to the disputed domain name is not a criticism site, but are meant as extortion, are unfounded. However, it is not within the scope of this dispute to assess the veracity of the content, or even speculate about the possible interpretations of the content on the website or to delve into whether the views and criticism expressed by the Respondent are correct, the Panel’s assessment and findings are strictly limited to the scope of the Policy. The Complainant’s arguments that people would mistake the site as the Complainant’s official site are untenable.
Based on the material before the Panel, the disputed domain name uses a negative word “sociopath”, with the trademark, and the disputed domain name hosts a criticism site. The Panel finds based on the record before it the site is primarily for criticism. The Panel assesses that the site is a noncommercial criticism site and the Respondent has legitimate interests in the disputed domain name, as it is used for purposes of hosting a criticism site which is recognized as fair-use under paragraph 4 (c) (iii) of the Policy.
The right to set up a criticism site does not mean that a respondent is allowed use the trademark per se without a term that includes a derogatory connotation. See Puravankara Projects Limited v. Saurabh Singh WIPO Case No. D2012-2054. There are cases where the respondent has tried to take advantage of the free speech argument, but it was found that the respondent’s actual use was to take commercial advantage of the trademark in question. Based on the evidence in the case record, such is not the case here, as discussed, it is evident that the Respondent has registered the disputed domain name and used the disputed domain name and the site primarily as a criticism site. The Panel finds the Complainant has not met its burden as to the disputed domain name .
With respect to the disputed domain names and , the Panel finds the Respondent has not developed a website or made any demonstrable preparation to use the disputed domain names in connection with a bona fide offering of goods or services. The Respondent is not commonly known by the disputed domain names. There is no indication that disputed domain names and are used for any legitimate noncommercial or fair use purposes. The disputed domain names are parked with the Registrar, and there are PPC links related to “pharma” business, such as, “Best Pharmaceutical Companies”, “Top Pharmaceutical Companies”, “Pharma Sales Career”. In the light of the above stated facts and circumstances, the Panel finds the Respondent lacks rights or legitimate interests in the disputed domain names and .
The Panel finds the Complainant has established the second element under paragraph 4(a) of the Policy, with respect to the disputed domain names and . C. Registered and Used in Bad Faith
The third element requires the Complainant to establish the disputed domain names have been registered and are being used in bad faith by the Respondent.
The Panel finds that disputed domain names and are not being used by the Respondent who is passively holding these disputed domain names. The disputed domain names resolve to an inactive site that has a few PPC links. Such use is squarely covered by the “passive holding” doctrine laid down by Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Registration and passively holding a disputed domain name containing a known mark, with no apparent reason to do so, is found to be bad faith registration and use of the disputed domain names under the Policy. Accordingly, it is found that that disputed domain names and are registered and are being used in bad faith.
Regarding the disputed domain name , as the Panel has made a determination in the previous section that Complainant has not met its burden, no discussion is needed under this section. 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 , , be transferred to the Complainant.
The Complaint is denied in respect of the disputed domain name .
Harini Narayanswamy
Sole Panelist
Date: August 7, 2018
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