The Complainant is Orexo AB, Sweden, represented by Potter Clarkson AB, Sweden.
The Respondent is nicholas petrucci, United States of America (“United States”).
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2021. On December 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 23, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 27, 2021 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 December 30, 2021.
The Center verified that the Complaint together with 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 January 5, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2022. On January 5, 2022, the Center received an email communication from the Respondent, indicating his willingness to discuss the dispute. The Center sent an email communication to the Parties regarding possible settlement on January 6, 2022. The Complainant requested suspension of the proceeding in order to explore settlement options on January 12, 2022. The Center transmitted by email the Notification of Suspension to the Parties, and the proceeding was suspended as of January 12, 2022. On February 10, 2022, the Complainant requested for an extension of the suspension, and the proceeding was further suspended until March 14, 2022. On March 9, 2022, the Complainant requested for reinstitution of the proceeding, and the proceeding was reinstituted as of March 9, 2022. The Response due date was March 22, 2022. The Respondent did not submit any response, and the Center notified the commencement of panel appointment process on March 23, 2022.
The Center appointed Gareth Dickson as the sole panelist in this matter on March 25, 2022. 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 BackgroundThe Complainant is a pharmaceutical company based in Sweden, producing and developing pharmaceutical products and therapies.
ZUBSOLV is a prescription medicine produced by the Complainant for the treatment of opioid dependence. It is predominantly sold in the United States.
The Complainant is the owner of a number of trade mark registrations for ZUBSOLV (the “Mark”) around the world, including:
- European Union Trade Mark number 010760321, registered on August 9, 2012; and
- United States registration number 4307243, registered on March 26, 2013.
The disputed domain names
The Complainant argues that it has rights in the Mark by virtue of its ownership of various trade mark registrations for the Mark around the world. It contends that the Disputed Domain Names are confusingly similar to the Mark since they each incorporate the Mark (which is recognisable within each of the Disputed Domain Names) in its entirety with the addition of either the word “doctors” or the word “clinics”, under the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant confirms that the Disputed Domain Names were registered by the Respondent without its permission and that the Respondent is not a licensee of the Complainant. It alleges that the Respondent has been using the Disputed Domain Names to give the false impression that the Disputed Domain Names are related to the Complainant, in order to divert and/or attract customers to websites which contain click‑through links for the Respondent’s commercial gain, contrary to the Policy.
In addition, the Complainant notes that it is recommended that patients use the medication ZUBSOLV as part of a holistic treatment plan, which also includes services including counselling, medical information, advice, and psychosocial support. The Complainant submits that the use of the additional words “doctors” and “clinics” in the Disputed Domain Names is intended to attract Internet users who might conduct Internet searches for “ZUBSOLV doctors” and “ZUBSOLV clinics”, with the intention to mislead visitors into thinking that the Disputed Domain Names are related to the Complainant.
The Complainant submits that there is no evidence to suggest that the Respondent: has been commonly known by the Disputed Domain Names; is making, or intends to make, a legitimate noncommercial or fair use of them; or has ever used or demonstrated preparations to use them in connection with a bona fide offering of goods or services.
The Complainant submits that the Respondent must have known of the Complainant and the Mark when it registered the Disputed Domain Names and therefore registered them and is using them in bad faith. The Mark, according to the Complainant, is recognised and identified as being connected to the Complainant and has no independent meaning, making a coincidental adoption of the Disputed Domain Names by the Respondent virtually impossible.
Together, the Complainant submits that the Respondent has registered and is using the Disputed Domain Names in bad faith.
B. RespondentThe Respondent did not reply substantively to the Complainant’s contentions. He did, however, send an email to the Center on January 5, 2022. This email alleged that there was a “misunderstanding” and that the “intention of the site is to promote [the Complainant’s] product [sic]”. The Respondent suggested that the Parties have a preliminary discussion and accordingly the Complainant requested a suspension of the proceedings so that the Parties could explore settlement.
The Complaint was not settled and upon the resumption of the proceedings the Respondent was invited to respond to the Complainant’s contentions. The Respondent did not avail himself of that opportunity.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
a) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
b) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
c) the Disputed Domain Names have been registered and are being used in bad faith.
These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied.
A. Identical or Confusingly SimilarThe Panel accepts that the Complainant is the owner of, and therefore has rights in, the Mark.
Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides that: “[I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
Section 1.8 of the WIPO Overview 3.0 further provides that: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
The Panel therefore finds that the Disputed Domain Names are confusingly similar to the Mark, since they each incorporate the Mark in its entirety. The addition of “clinics” and “doctors” in the Disputed Domain Names does not prevent a finding of confusing similarity, nor does the use of the gTLD “.com”.
Accordingly, the Panel finds that the Disputed Domain Names are confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate InterestsAlthough a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
In the current proceeding, the Complainant has established its prima facie case. The evidence before the Panel is that the Mark is neither generic nor descriptive but enjoys a degree of inherent distinctiveness that makes a coincidental adoption by the Respondent highly unlikely. The Complainant states that it has not given the Respondent permission to use the Mark, in a domain name or otherwise, and submits that the Respondent has not been commonly known by the Disputed Domain Names.
There is no evidence that the Respondent has acquired any common law rights to use the Mark, is commonly known by the Mark or has chosen to use the Mark in the Disputed Domain Names in any descriptive manner or is making any use of the Disputed Domain Names that would establish rights or legitimate interests as a result of a noncommercial or fair use of them.
The Disputed Domain Names appear to direct Internet users to websites offering pay-per-click links to parties other than the Complainant, which does not constitute a bona fide sale of goods or services or a legitimate noncommercial or fair use within the meaning of the Policy. Section 2.9 of the WIPO Overview 3.0 states that: “[P]anels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”. This is relevant here, since the Respondent’s selection of the Disputed Domain Names for their similarly to the Mark is intended to create confusion and to reap commercial gain by trading on the Complainant’s goodwill in the Mark.
The Respondent’s allegation, contained only in its informal email to the Complainant and the Center, that “the intention of the site is to promote [the Complainant’s] product” does not assist the Respondent under the second limb, not least because it lacks any corroboration. Furthermore, such an intent, even if it could be proved, does not necessarily provide a respondent with rights or legitimate interests in respect of a dispute domain name.
In light of the above, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element.
As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”. Having reviewed and weighed the available evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
C. Registered and Used in Bad FaithThe Panel notes that the Disputed Domain Names were registered in 2021, several years after the Mark was first registered in 2012, and that the Respondent has tacitly admitted in its informal email to the Complainant and the Center that the Disputed Domain Names were chosen by reference to the Mark. That in itself is sufficient to create a presumption of bad faith: see section 3.1.4 of the WIPO Overview 3.0.
The Respondent’s contention that it registered the Disputed Domain Names with the intent to use them for the benefit of the Complainant is insufficient to rebut that presumption, in part because it is a self-serving allegation unsupported by any corroborating evidence, and in part because even if such an intent had been proven it would not negate the impermissible likelihood of confusion caused by the Respondent’s use of the Mark in the Disputed Domain Names.
The Panel therefore finds that the Respondent’s registration of the Disputed Domain Names was in bad faith.
The Disputed Domain Names are also being used in bad faith. They are being used for a commercial purpose that involves using the Marks to redirect Internet users (in particular those seeking the Complainant) to third parties and competitors of the Complainant through pay‑per‑click links.
Therefore, and on the basis of the information available to it, the Panel finds that the Respondent’s use of the Disputed Domain Names is without justification and is inconsistent with the Complainant’s exclusive rights in the Mark. Consideration of these and other factors militates in favour of a finding of bad faith.
The Panel finds that the Respondent has registered and is using the Disputed Domain Names in bad faith.
7. DecisionFor 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,
Gareth Dickson
Sole Panelist
Date: April 8, 2022