The Complainant is Alvogen IPCO S.á.r.l., Luxembourg, represented by Lerner, David, Littenberg, Krumholz & Mentlik, LLP, United States of America (“United States” or “US”).
The Respondent is Registration Private, Domains by Proxy, LLC, United States / Md Motin Paik, Bangladesh. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2019. On April 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 10, 2019, 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 April 11, 2019, 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 April 11, 2019.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 3, 2019.
The Center appointed Theda König Horowicz as the sole panelist in this matter on May 14, 2019. 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 in this administrative proceeding is Alvogen IPCO S.à.r.l., a Luxembourg company that holds intellectual property, including the mark ALMATICA, which is licensed to Alvogen Pharma U.S. Inc., the parent company of Almatica Pharma Inc.
Alvogen Inc. is a global, privately owned pharmaceutical company. Almatica Pharma Inc. is a US subsidiary of Alvogen which focuses on the development, acquisition, and commercialization of brand named pharmaceutical products.
The Complainant owns the following ALMATICA trademark registration in the United States:
Registration No 4,533,841 for pharmaceuticals and other preparations for medical purposes, in class 5, of May 20, 2014.
The domain name was registered in 2010 by Norwich Pharmaceuticals, a company of the Alvogen Group. The said domain name promotes the activity of Almatica Pharma Inc.
The disputed domain name was registered by the Respondent on November 14, 2018. It was linked to a website entitled “Almatica Pharamceuticals” on which different types of medication was sold. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name contains identical portions to the Complainant’s US trademark registration and is combined with the word “pharmaceuticals”. The disputed domain name is therefore similar and nearly identical to the Complainant’s trademark. Furthermore the disputed domain name is used in connection with various products including drugs. There is thus a likelihood of confusion.
The Complainant further alleges that the Respondent uses the disputed domain name to provide more affordable medications from Canadian pharmacies without the need for a prescription from a medical professional, thus circumventing the regulations in place that control distribution of dangerous prescription drugs. The Respondent is not affiliated with the Complainant or Almatica in any way and has not been authorized by the the Complainant or Almatica to register or use the disputed domain name. The Respondent’s conduct is simply seeking to mislead and divert customers to its site and services for profit at the expense of the Complainant.
The Complainant is of the opinion that the disputed domain name was registered and is being used in bad faith. Through its registration and use of the disputed domain name, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the goods sold on the Respondent’s website. More specifically, the Complainant mentions that the disputed domain name confuses consumers and draws Internet users to the Respondent’s website, thinking it is associated with the Complainant’s mark and Almatica website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant showed that it has trademark rights in ALMATICA through a US trademark registration.
This trademark is reproduced in its entirety in the disputed domain name. Furthermore, the disputed domain name contains the descriptive word “pharmaceuticals” which refers to the field of activity of the Complainant and its parent company Almatica Pharma Inc.
Under these circumstances, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s mark. B. Rights or Legitimate Interests
Paragraph 4 (c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(i) the use of the domain name in connection with a bona fide offering of goods and services;
(ii) being commonly known by the domain name; or
(iii) the making of a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden of production shifts to the Respondent to rebut it.
The Respondent linked the disputed domain name to a website reproducing the ALMATICA word mark of the Complainant. Furthermore, the disputed domain name and the ALMATICA mark were used by the Respondent in relation to the alleged sale of pharmaceuticals, providing services and goods similar to those of the Complainant and its parent group of companies, including Almatica Pharma Inc.
The Complainant indicates that it has not authorized the Respondent to use the ALMATICA mark in any manner.
Under the circumstances, the Panel finds that the Complainant made a prima facie case out against the Respondent.
The Respondent submitted no reply to the case against it. There is otherwise no evidence in the case file to suggest that the Respondent might have some rights or legitimate interests in the disputed domain name.
The Panel in particular considers that the trademark ALMATICA is distinctive and constitutes a clear reference to the Complainant’s and Almatica Pharma Inc.’s business.
The use of this distinctive ALMATICA mark on the Respondent’s website which was linked to the disputed domain name therefore falsely suggests an affiliation with the trademark owner and business. Furthermore, it gives the false impression to the public that it is operated or sponsored by the Complainant.
All these elements tend to indicate that the Respondent has indeed no rights or legitimate interest in the disputed domain name.
For these reasons, the Panels finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The third criterion the Complainant needs to evidence is that the disputed domain name was registered and subsequently used in bad faith.
The Complainant has shown that its ALMATICA trademark is registered and is used by the Complainant and its parent companies on the Internet in order to promote the goods and services of Almatica Pharma Inc.
The disputed domain name could thus not have been registered in good faith by the Respondent.
Paragraph 4(b)(iv) of the Policy sets out one example of bad faith registration and use, where the Respondent “by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line 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”.
As already stated above, the Respondent used the Complainant’s ALMATICA mark on the website which was linked to the disputed domain name. The Respondent was selling drugs under the said disputed domain name (commercial use) and clearly gave the impression to be affiliated or sponsored by the Complainant which is not true.
The Respondent does therefore obviously seek to cause confusion in the public’s mind.
The Panel notes that the Respondent has not evidenced the contrary and chose to remain silent within these proceedings. Furthermore, the Respondent registered the disputed domain name through privacy services and its identity did not appear on the website linked to the disputed domain name; this is a further indication of bad faith registration and use.
For these reasons, the Panel finds that the Complainant has established its case 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 the Complainant.
Theda König Horowicz
Sole Panelist
Date: May 31, 2019
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