Novartis AG, Novartis Corporation, Novartis Vaccines and Diagnostics, Inc. v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1210001466292
Complainant is Novartis AG, Novartis Corporation, Novartis Vaccines and Diagnostics, Inc. (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <buyexforgecheap.com>, <buyeucreas.com>, <buyexjade.com>, <buyexelonoralsolution.com>, <exelongeneric.com>, <buyexforge.com>, <buyeucreascheap.com>, <buyexelon-patches.com>, <buyexelononline.com>, <buyexelonpatches.com>, <exelonoralsolutioncheap.com>, <buygalvus.com>, <buygalvuscheap.com>, <buyvoltarencheap.com>, <buyvoltarenemulgel.com>, <buyvoltarenemulgelonline.com>, <buyvoltarengel.com>, <buyvoltarenopthalmic.com>, <cheapvoltarengel.com>, <buydiscountvoltarenemulgel.com>, <discountvoltarengel.com>, <purchasevoltarengel.com>, <ordervoltarengel.com>, <voltarenemulgelonline.com>, <voltarenemulgelsite.com>, <buy-lamisil-cheap.com>, <buystarlixonline.com>, <buyreclastonline.com>, <gleevecgeneric.com>, <gleeveconline.com>, <buyexjadecheap.com>, <buyzometa.com>, <diovanresources.com>, <diovanhctonline.com>, <diovanhctgeneric.com>, <buydiovangeneric.com>, <femarainformation.com>, <femarageneric.com>, <buytrileptal.com>, <buytrileptalgeneric.com>, <buytegretol-chewable.com>, <buytegretolcheap.com>, <buytegretolchewable.com>, <buytegretolonline.com>, <buytegretolxr.com>, <cheaptegretolxr.com>, <discounttegretolcheap.com>, <buylotrelonline.com>, and <buytobionline.com>, registered with Internet.bs Corp.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 8, 2012; the National Arbitration Forum received payment on October 8, 2012.
On October 9, 2012, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <buyexforgecheap.com>, <buyeucreas.com>, <buyexjade.com>, <buyexelonoralsolution.com>, <exelongeneric.com>, <buyexforge.com>, <buyeucreascheap.com>, <buyexelon-patches.com>, <buyexelononline.com>, <buyexelonpatches.com>, <exelonoralsolutioncheap.com>, <buygalvus.com>, <buygalvuscheap.com>, <buyvoltarencheap.com>, <buyvoltarenemulgel.com>, <buyvoltarenemulgelonline.com>, <buyvoltarengel.com>, <buyvoltarenopthalmic.com>, <cheapvoltarengel.com>, <buydiscountvoltarenemulgel.com>, <discountvoltarengel.com>, <purchasevoltarengel.com>, <ordervoltarengel.com>, <voltarenemulgelonline.com>, <voltarenemulgelsite.com>, <buy-lamisil-cheap.com>, <buystarlixonline.com>, <buyreclastonline.com>, <gleevecgeneric.com>, <gleeveconline.com>, <buyexjadecheap.com>, <buyzometa.com>, <diovanresources.com>, <diovanhctonline.com>, <diovanhctgeneric.com>, <buydiovangeneric.com>, <femarainformation.com>, <femarageneric.com>, <buytrileptal.com>, <buytrileptalgeneric.com>, <buytegretol-chewable.com>, <buytegretolcheap.com>, <buytegretolchewable.com>, <buytegretolonline.com>, <buytegretolxr.com>, <cheaptegretolxr.com>, <discounttegretolcheap.com>, <buylotrelonline.com>, and <buytobionline.com> domain names are registered with Internet.bs Corp. and that Respondent is the current registrant of the names. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 15, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 5, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@buyexforgecheap.com, postmaster@buyeucreas.com, postmaster@buyexjade.com, postmaster@buyexelonoralsolution.com, postmaster@exelongeneric.com, postmaster@buyexforge.com, postmaster@buyeucreascheap.com, postmaster@buyexelon-patches.com, postmaster@buyexelononline.com, postmaster@buyexelonpatches.com, postmaster@exelonoralsolutioncheap.com, postmaster@buygalvus.com, postmaster@buygalvuscheap.com, postmaster@buyvoltarencheap.com, postmaster@buyvoltarenemulgel.com, postmaster@buyvoltarenemulgelonline.com, postmaster@buyvoltarengel.com, postmaster@buyvoltarenopthalmic.com, postmaster@cheapvoltarengel.com, postmaster@buydiscountvoltarenemulgel.com, postmaster@discountvoltarengel.com, postmaster@purchasevoltarengel.com, postmaster@ordervoltarengel.com, postmaster@voltarenemulgelonline.com, postmaster@voltarenemulgelsite.com, postmaster@buy-lamisil-cheap.com, postmaster@buystarlixonline.com, postmaster@buyreclastonline.com, postmaster@gleevecgeneric.com, postmaster@gleeveconline.com, postmaster@buyexjadecheap.com, postmaster@buyzometa.com, postmaster@diovanresources.com, postmaster@diovanhctonline.com, postmaster@diovanhctgeneric.com, postmaster@buydiovangeneric.com, postmaster@femarainformation.com, postmaster@femarageneric.com, postmaster@buytrileptal.com, postmaster@buytrileptalgeneric.com, postmaster@buytegretol-chewable.com, postmaster@buytegretolcheap.com, postmaster@buytegretolchewable.com, postmaster@buytegretolonline.com, postmaster@buytegretolxr.com, postmaster@cheaptegretolxr.com, postmaster@discounttegretolcheap.com, postmaster@buylotrelonline.com, and postmaster@buytobionline.com. Also on October 15, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Complainants Novartis Corporation and Novartis Vaccines and Diagnostics, Inc. are wholly owned subsidiaries of Complainant Novartis AG.
2. Complainant owns various trademarks with the United States Patent and Trademark Office (“USPTO”) for its pharmaceutical preparations:
EXFORGE Reg. No. 2,764,146 registered September 16, 2003;
EUCREAS Reg. No. 3,183,216 registered December 12, 2006;
DIOVAN Reg. No. 2,177,116 registered July 28, 1998;
FEMARA Reg. No. 2,182,663 registered August 18, 1998;
EXJADE Reg. No. 2,875,038 registered August 17, 2004;
TOBI Reg. No. 2,155,165 registered May 5, 1998;
EXELON Reg. No. 2,112,658 registered November 11, 1997;
GALVUS Reg. No. 3,141,700 registered September 12, 2006;
VOLTAREN Reg. No. 3,767,722 registered March 30, 2010;
LAMISIL Reg. No. 1,567,931 registered November 28, 1989;
TRILEPTAL Reg. No. 2,186,101 registered September 1, 1998;
TEGRETOL Reg. No. 788,091 registered April 13, 1965;
LOTREL Reg. No. 1,939,013 registered November 28, 1995;
STARLIX Reg. No. 2,152,672 registered April 21, 1998;
RECLAST Reg. No. 2,895,114 registered October 19, 2004;
GLEEVEC Reg. No. 2,675,047 registered January 14, 2003; &
ZOMETA Reg. No. 2,393,885 registered October 10, 2000.
3. Respondent is using each of the disputed domain names to sell medications to U.S. citizens in violation of Complainant’s rights.
4. The resolving websites use Complainant’s registered trademarks to promote the sale of competing drugs or generic versions that are not manufactured, approved or endorsed by Complainant.
5. The disputed domain names are confusingly similar to Complainant’s trademarks because they contain Complainant’s entire trademark with the addition of a variety of descriptive terms, such as “buy” or “online” together with the generic top-level domain (“gTLD”) “.com.”
6. Respondent has no connection or affiliation with Complainant and Complainant has not provided Respondent with permission, authorization or license to use its trademarks in the disputed domain names.
7. Neither Respondent nor his business is known by the trademarked names contained in any of the disputed domain names.
8. The domain names are registered to a proxy server and operated under the business name NorthWestPharmacy.com.
9. The disputed domain names resolve to websites displaying what purports to be informational articles about Complainant’s FDA-approved pharmaceuticals and simultaneously promoting competing alternative products or generic versions of Complainant’s medication. Providing website advertising and promoting competing products is not consistent with a bona fide offering of goods or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii).
10. Respondent registered the disputed domain names with the intent to divert Internet users seeking information about Complainant’s pharmaceutical products. Respondent’s use of confusingly similar domain names combined with the blatant offer to sell cheaper versions of, or alternatives to, these medications is clearly an attempt to mislead Internet users.
11. Respondent is using the disputed domain names to profit by advertising discounted alternate or even generic versions of Complainant’s products.
12. Discussing and promoting competing products disrupts Complainant’s business.
13. Owning multiple versions of domain names indicates that Respondent has a pattern of registering domain names intending to prevent Complainant from fully utilizing its trademarks, which reveals bad faith registration and use under Policy ¶ 4(b)(ii).
14. Respondent’s constructive knowledge of Complainant’s marks prior to registering the domain names further supports an inference of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainants Novartis Corporation and Novartis Vaccines and Diagnostics, Inc. are wholly owned subsidiaries of Complainant Novartis AG. Complainant owns various trademarks with the United States Patent and Trademark Office (“USPTO”) for its pharmaceutical preparations.
Respondent, Fundacion Private Whois / Domain Administrator, is using each of the disputed domain names to sell medications to U.S. citizens in violation of Complainant’s rights. The resolving websites use Complainant’s registered trademarks to promote the sale of competing drugs or generic versions that are not manufactured, approved or endorsed by Complainant. Respondent registered the disputed domain names no earlier than March 12, 2010.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Preliminary Issue: Multiple Complainants
There are three Complainants in this matter: Novartis AG, Novartis Corporation, and Novartis Vaccines and Diagnostics, Inc. Complainant Novartis Corporation and Complainant Novartis Vaccines and Diagnostics, Inc. are wholly owned subsidiaries of Complainant Novartis AG.
Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Organizing Committee for the 2010 Olympic and Paralympic Games and Int’l Olympic Committee v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Servs. Grp, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
The evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, therefore, the Panel treats them all as a single entity in this proceeding. Throughout this Decision, the Complainants will be collectively referred to as “Complainant.”
Complainant owns various trademarks with the USPTO for its pharmaceutical preparations. The Panel finds that these trademark registrations with the USPTO are sufficient evidence that Complainant has rights in these trademarks, even though the marks may not be registered in the country where Respondent is located. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant argues that the disputed domain names are all confusingly similar to one of Complainant’s identified trademarks. Comparing the <buyexforgecheap.com> and <buyexforge.com> domain names with the EXFORGE mark, the Panel notes that the disputed domain names differ from the mark only in the addition of the terms “buy” and/or “cheap” and the gTLD “.com.” The Panel concludes that neither the addition of a generic or descriptive term nor the attachment of a gTLD can distinguish a disputed domain name from a mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The Panel finds that the <buyexforgecheap.com> and <buyexforge.com> domain names are confusingly similar to the EXFORGE mark pursuant to Policy ¶ 4(a)(i).
Comparing the <buyeucreas.com> and <buyeucreascheap.com> domain names with the EUCREAS mark, the disputed domain names differ from the mark only in the addition of the terms “buy” and/or “cheap” and the gTLD “.com.” The Panel finds that the <buyeucreas.com> and <buyeucreascheap.com> domain names are confusingly similar to the EUCREAS mark pursuant to Policy ¶ 4(a)(i).
Comparing the <buyexjade.com> and <buyexjadecheap.com> domain names with the EXJADE mark, the disputed domain names differ from the mark only in the addition of the terms “buy” and/or “cheap” and the gTLD “.com.” The Panel finds that the <buyexjade.com> and <buyexjadecheap.com> domain names are confusingly similar to the EXJADE mark pursuant to Policy ¶ 4(a)(i).
The <buyexelonoralsolution.com>, <exelongeneric.com>, <buyexelon-patches.com>, <buyexelononline.com>, <buyexelonpatches.com>, and <exelonoralsolutioncheap.com> domain names differ from the EXELON mark only in the addition of the gTLD “.com” and one or more of the following terms: “buy,” “oral,” “solution,” “generic,” “patches,” “online,” and/or “cheap.” The <buyexelon-patches.com> domain name inserts a hyphen. The addition of a generic or descriptive term, the attachment of a gTLD, and the insertion of a hyphen do not prevent a finding of confusing similarity. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"). The Panel finds that the <buyexelonoralsolution.com>, <exelongeneric.com>, <buyexelon-patches.com>, <buyexelononline.com>, <buyexelonpatches.com>, and <exelonoralsolutioncheap.com> domain names are confusingly similar to the EXELON mark pursuant to Policy ¶ 4(a)(i).
Comparing the <buygalvus.com> and <buygalvuscheap.com> domain names with the GALVUS mark, the disputed domain names differ from the mark only in the addition of the terms “buy” and/or “cheap” and the gTLD “.com.” The Panel finds that the <buygalvus.com> and <buygalvuscheap.com> domain names are confusingly similar to the GALVUS mark pursuant to Policy ¶ 4(a)(i).
Comparing the <buyvoltarencheap.com>, <buyvoltarenemulgel.com>, <buyvoltarenemulgelonline.com>, <buyvoltarengel.com>, <buyvoltarenopthalmic.com>, <cheapvoltarengel.com>, <buydiscountvoltarenemulgel.com>, <discountvoltarengel.com>, <purchasevoltarengel.com>, <ordervoltarengel.com>, <voltarenemulgelonline.com> and <voltarenemulgelsite.com> domain names with the VOLTAREN mark, the disputed domain names differ from the mark only in the addition of the gTLD “.com” and one or more of the following terms: “buy,” “cheap,” “emul,” “gel,” “online,” “opthalmic,” “discount,” “order,” “purchase,” and/or “site.” The Panel finds that the <buyvoltarencheap.com>, <buyvoltarenemulgel.com>, <buyvoltarenemulgelonline.com>, <buyvoltarengel.com>, <buyvoltarenopthalmic.com>, <cheapvoltarengel.com>, <buydiscountvoltarenemulgel.com>, <discountvoltarengel.com>, <purchasevoltarengel.com>, <ordervoltarengel.com>, <voltarenemulgelonline.com> and <voltarenemulgelsite.com> domain names are confusingly similar to the VOLTAREN mark pursuant to Policy ¶ 4(a)(i).
The only differences between the LAMISIL mark and the <buy-lamisil-cheap.com> domain name are the addition of the generic terms “buy” and “cheap,” the insertion of hyphens, and the attachment of the gTLD “.com.” The Panel finds that the <buy-lamisil-cheap.com> domain name is confusingly similar to the LAMISIL mark pursuant to Policy ¶ 4(a)(i).
Comparing the <buystarlixonline.com> domain name with the STARLIX mark, the disputed domain name differs from the mark only in the addition of the terms “buy” and “online” and the gTLD “.com.” The Panel finds that the <buystarlixonline.com> domain name is confusingly similar to the STARLIX mark pursuant to Policy ¶ 4(a)(i).
Comparing the <buyreclastonline.com> domain name with the RECLAST mark, the disputed domain name differs from the mark only in the addition of the terms “buy” and “online” and the gTLD “.com.” The Panel finds that the <buyreclastonline.com> domain name is confusingly similar to the RECLAST mark pursuant to Policy ¶ 4(a)(i).
The <gleeveconline.com> and <gleevecgeneric.com> domain names differ from the GLEEVEC mark only in the addition of the terms “generic” or “online” and the gTLD “.com.” The Panel finds that the <gleeveconline.com> and <gleevecgeneric.com> domain names are confusingly similar to the GLEEVEC mark pursuant to Policy ¶ 4(a)(i).
The <buyzometa.com> domain name differs from the ZOMETA mark only in the addition of the term “buy” and the gTLD “.com.” The Panel finds that the <buyzometa.com> domain name is confusingly similar to the ZOMETA mark pursuant to Policy ¶ 4(a)(i).
Comparing the <diovanresources.com>, <diovanhctonline.com>, <diovanhctgeneric.com>, and <buydiovangeneric.com> domain names with the DIOVAN mark, the disputed domain names differ from the mark only in the addition of the gTLD “.com.” and one or more of the following terms or letters: “resources,” “hct,” “buy,” “online,” and “generic.” The addition of a generic or descriptive term, the addition of extra letters, and the attachment of a gTLD cannot distinguish a disputed domain name from a mark. The Panel finds that the <diovanresources.com>, <diovanhctonline.com>, <diovanhctgeneric.com>, and <buydiovangeneric.com> domain names are confusingly similar to the DIOVAN mark pursuant to Policy ¶ 4(a)(i).
The <femarainformation.com> and <femarageneric.com> domain names only differ from the FEMARA mark in the addition of the terms “information” or “generic” and the gTLD “.com.” The Panel finds that the <femarainformation.com> and <femarageneric.com> domain names are confusingly similar to the FEMARA mark pursuant to Policy ¶ 4(a)(i).
Comparing the <buytrileptal.com> and <buytrileptalgeneric.com> domain names with the TRILEPTAL mark, the only differences between the disputed domain names and the mark are the addition of the gTLD “.com” and the generic terms “buy” and/or “generic.” The Panel finds that the <buytrileptal.com> and <buytrileptalgeneric.com> domain names are confusingly similar to the TRILEPTAL mark pursuant to Policy ¶ 4(a)(i).
Comparing the <buytegretol-chewable.com>, <buytegretolcheap.com>, <buytegretolchewable.com>, <buytegretolonline.com>, <buytegretolxr.com>, <cheaptegretolxr.com>, and <discounttegretolcheap.com> domain names with the TEGRETOL mark, the only differences between the disputed domain names and the mark are the additions of one or more of the following: a hyphen, the gTLD “.com,” and the terms “buy,” “chewable,” “online,” “xr,” “discount,” and/or “cheap.” The addition of a generic or descriptive term or extra letters, the attachment of a gTLD, and the insertion of a hyphen do not prevent a finding of confusing similarity. The Panel finds that the <buytegretol-chewable.com>, <buytegretolcheap.com>, <buytegretolchewable.com>, <buytegretolonline.com>, <buytegretolxr.com>, <cheaptegretolxr.com>, and <discounttegretolcheap.com> domain names are confusingly similar to the TEGRETOL mark pursuant to Policy ¶ 4(a)(i).
The <buylotrelonline.com> domain name differs from the LOTREL mark only in the addition of the terms “buy” and “online” and the gTLD “.com.” The Panel finds that the <buylotrelonline.com> domain name is confusingly similar to the LOTREL mark pursuant to Policy ¶ 4(a)(i).
The <buytobionline.com> domain name differs from the TOBI mark only in the addition of the terms “buy” and “online” and the gTLD “.com.” The Panel finds that the <buytobionline.com> domain name is confusingly similar to the TOBI mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant asserts that Respondent has no connection or affiliation with Complainant and Complainant has not provided Respondent with permission, authorization or license to use its trademarks in the disputed domain names. Complainant contends that neither Respondent nor his business is known by the trademarked names contained in any of the disputed domain names. Complainant argues that the domain names are registered to a proxy server and operated under the business name NorthWestPharmacy.com. The WHOIS information for the disputed domain names indicates that the registrant is “Fundacion Private Whois / Domain Administrator,” which suggests no nominal relationship with the disputed domain names. Based on this evidence and Complainant’s allegations, the Panel finds that Respondent is not commonly known by these disputed domain names under Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant argues that all of the disputed domain names resolve to websites displaying what purports to be informational articles about Complainant’s FDA-approved pharmaceuticals and simultaneously promoting competing products or generic versions of Complainant’s medications. Complainant contends that Respondent uses the disputed domain names to sell medications to U.S. citizens in violation of Complainant’s rights. Complainant asserts that Respondent uses Complainant’s registered trademarks to promote the sale of competing drugs or generic versions and to promote and sell products that are not manufactured, approved or endorsed by Complainant. The Panel finds that using confusingly similar domain names to promote and sell competing products does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
Complainant alleges that the number of Respondent’s domain names including Complainant’s marks evidences bad faith registration and use. Complainant contends that owning multiple versions of domain names indicates that Respondent has a pattern of registering domain names intending to prevent Complainant from fully utilizing its trademarks. Complainant argues that this pattern of mass registration of domain names containing Complainant’s marks reveals bad faith registration and use pursuant to Policy ¶ 4(b)(ii). The Panel finds that Respondent’s registration of the numerous disputed domain names involved in this proceeding indicates a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)).
Complainant argues that Respondent uses the disputed domain names to advertise and promote, and even sell, discounted alternate or generic versions of Complainant’s prescription pharmaceutical products. Complainant asserts that discussing and promoting competing products under Complainant’s mark disrupts Complainant’s business. The Panel finds that Respondent’s efforts to compete with Complainant at the disputed domain names by advertising and offering competing products disrupts Complainant’s business and illustrates bad faith registration and use according to Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”).
Complainant contends that Respondent clearly registered the disputed domain names with the intent to divert Internet users seeking information about Complainant’s pharmaceutical products to Respondent’s resolving websites. Complainant argues that Respondent uses the disputed domain names to profit by advertising discounted alternate or even generic versions of Complainant’s prescription pharmaceutical products. Complainant asserts that Respondent’s use of domain names so similar to Complainant’s well-known pharmaceutical trademarks, combined with the blatant offer to sell cheaper versions of, or alternatives to, these medications, is clearly an attempt to mislead or divert Internet users seeking Complainant’s products as these users may believe that they have reached a web site sponsored or approved by Complainant. The Panel finds that Respondent’s attempt to attract Internet users by creating confusion for Respondent’s own commercial gain reveals bad faith registration and use according to Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).
Finally, Complainant contends that its federal trademark registrations serve as constructive notice of its rights in the mark. Complainant further argues that Respondent’s constructive knowledge of Complainant’s well-known trademarks prior to registration of the domain names supports an inference of bad faith on the part of Respondent. Prior panels have held that a finding of bad faith cannot be based on constructive knowledge alone. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith). However, as Respondent had actual notice of Complainant’s rights in the marks, the Panel finds that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) (“That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant’s mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).”).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <buyexforgecheap.com>, <buyeucreas.com>, <buyexjade.com>, <buyexelonoralsolution.com>, <exelongeneric.com>, <buyexforge.com>, <buyeucreascheap.com>, <buyexelon-patches.com>, <buyexelononline.com>, <buyexelonpatches.com>, <exelonoralsolutioncheap.com>, <buygalvus.com>, <buygalvuscheap.com>, <buyvoltarencheap.com>, <buyvoltarenemulgel.com>, <buyvoltarenemulgelonline.com>, <buyvoltarengel.com>, <buyvoltarenopthalmic.com>, <cheapvoltarengel.com>, <buydiscountvoltarenemulgel.com>, <discountvoltarengel.com>, <purchasevoltarengel.com>, <ordervoltarengel.com>, <voltarenemulgelonline.com>, <voltarenemulgelsite.com>, <buy-lamisil-cheap.com>, <buystarlixonline.com>, <buyreclastonline.com>, <gleevecgeneric.com>, <gleeveconline.com>, <buyexjadecheap.com>, <buyzometa.com>, <diovanresources.com>, <diovanhctonline.com>, <diovanhctgeneric.com>, <buydiovangeneric.com>, <femarainformation.com>, <femarageneric.com>, <buytrileptal.com>, <buytrileptalgeneric.com>, <buytegretol-chewable.com>, <buytegretolcheap.com>, <buytegretolchewable.com>, <buytegretolonline.com>, <buytegretolxr.com>, <cheaptegretolxr.com>, <discounttegretolcheap.com>, <buylotrelonline.com>, and <buytobionline.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 30, 2012
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