Novartis AG, Novartis Corporation, and Novartis International Pharma, Ltd. v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1210001466527
Complainants are Novartis AG, Novartis Corporation, and Novartis International Pharma, Ltd. (“Complainants”), 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 <buyonlinediovan.com>, <buyfemara.com>, <discountvoltarenemulgel.com>, <bestbuylamisil.com>, <buylamisil1.com>, <buylamisiltablets.com>, <lamisilonlinesales.com>, <buy-tegretol-online.com>, <buystarlix-online.com>, <buyreclast-online.com>, <buydiscountzometa.com>, <wwwzometa.com>, <buycheapritalin.com>, <buyfamvir.com>, and <buy-famvir-online.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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 9, 2012; the National Arbitration Forum received payment on October 9, 2012.
On October 11, 2012, Internet.Bs Corp. confirmed by e-mail to the National Arbitration Forum that the <buyonlinediovan.com>, <buyfemara.com>, <discountvoltarenemulgel.com>, <bestbuylamisil.com>, <buylamisil1.com>, <buylamisiltablets.com>, <lamisilonlinesales.com>, <buy-tegretol-online.com>, <buystarlix-online.com>, <buyreclast-online.com>, <buydiscountzometa.com>, <wwwzometa.com>, <buycheapritalin.com>, <buyfamvir.com>, and <buy-famvir-online.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 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 6, 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@buyonlinediovan.com, postmaster@buyfemara.com, postmaster@discountvoltarenemulgel.com, postmaster@bestbuylamisil.com, postmaster@buylamisil1.com, postmaster@buylamisiltablets.com, postmaster@lamisilonlinesales.com, postmaster@buy-tegretol-online.com, postmaster@buystarlix-online.com, postmaster@buyreclast-online.com, postmaster@buydiscountzometa.com, postmaster@wwwzometa.com, postmaster@buycheapritalin.com, postmaster@buyfamvir.com, and postmaster@buy-famvir-online.com. Also on October 17, 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 19, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registrations for the DIOVAN (Reg. No. 2,177,116 registered July 28, 1998), FEMARA (Reg. No. 2,182,663 registered August 18, 1998), VOLTAREN (Reg. No. 3,767,722 registered March 20, 2010), LAMISIL (Reg. No. 1,567,931 registered November 28, 1989), TEGRETOL (Reg. No. 788,091 registered April 13, 1965), STARLIX (Reg. No. 2-152,672 registered April 21, 1998), RITALIN (Reg. No. 517,928 registered November 22, 1949), FAMVIR (Reg. No. 1,882,779 registered March 7, 1995), RECLAST (Reg. No. 2,895,114 registered October 19, 2004), and ZOMETA (Reg. No. 2,393,885 registered October 10, 2000) trademarks.
i. Each disputed domain name consists of the entirety of one of Complainant’s trademarks, with the addition of a variety of terms such as “buy” or “online” together with the generic top-level domain (“gTLD”) “.com.”
ii. Past panels have held that the addition of a gTLD does not sufficiently differentiate the resulting domain name from the trademark, and makes the disputed domain confusingly similar to the registered trademark.
iii. Several past panels have found that a respondent’s addition of generic or merely descriptive words to an otherwise registered trademark creates a likely confusion amongst Internet users because of the similarities between the disputed domain names and a complainant’s marks.
i. There is no evidence that Respondent has ever been commonly known by any of the disputed domain names.
(a)The disputed domain names are registered to a proxy server and operated under the business name “NorthWestPharmacy.com.”
(b)Complainant has no connection with Respondent, nor has Complainant provided permission or authorization of Respondent’s use of Complainant’s registered marks.
ii. Respondent fails to create a bona fide offering of goods or services.
Iii. Respondent has also failed to establish a legitimate noncommercial or fair use of the disputed domain names.
(a)The disputed domain names function variously: some purport to sell “cheap” or “generic” versions of Complainant’s FDA-approved pharmaceuticals, some offer click-through-sites that include hyperlinks to websites featuring competing products.
(b)Respondent’s use of the disputed domain names to provide websites advertising and promoting products that are in competition with Complainant is not within what previous panels have declared to be bona fide offerings of goods or services, nor have past panels found such a use to constitute a legitimate noncommercial of fair use of the disputed domain names.
Such patterns of mass registration of domain names reveal a bad faith registration and use under Policy ¶ 4(b) (ii).
(a)Respondent is using the purchase sites to advertise discounted alternate or generic versions of Complainant’s products for a profit. The click-through-sites further divert Internet users to competing products.
(b)Respondent’s use of Complainant’s marks in offering the competing products is an attempt to mislead and/or divert Internet users seeking Complainant’s products.
(a)Respondent’s attempts to sell alternative versions of the products Complainant sold under the marks show that Respondent had knowledge of the trademark rights, and sought to use the domain names to sell products in competition to those sold under Complainant’s respective trademarks.
(b)Complainant’s federal registrations serve as constructive notice of the Complainant’s rights in the respective marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent international company that develops, manufactures and distributes many well known medications for the treatment of a variety of medical conditions.
2. Complainant has rights in various trademarks registered with the USPTO and other national trademark offices and in particular the following trademarks:
DIOVAN (Reg. No. 2,177,116 registered July 28, 1998)
FEMARA (Reg. No. 2,182,663 registered August 18, 1998)
VOLTAREN (Reg. No. 3,767,722 registered March 20, 2010)
LAMISIL (Reg. No. 1,567,931 registered November 28, 1989)
TEGRETOL (Reg. No. 788,091 registered April 13, 1965)
STARLIX (Reg. No. 2-152,672 registered April 21, 1998)
RITALIN (Reg. No. 517,928 registered November 22, 1949)
FAMVIR (Reg. No. 1,882,779 registered March 7, 1995)
RECLAST (Reg. No. 2,895,114 registered October 19, 2004)
ZOMETA (Reg. No. 2,393,885 registered October 10, 2000) (“Complainant’s registered marks.”).
3. Respondent registered the <buyonlinediovan.com> domain name on August 3, 2012, the <buyfemara.com> domain name on September 19, 2011, the <discountvoltarenemulgel.com> domain name on August 8, 2010, the <bestbuylamisil.com> domain name on July 13, 2012, the <buylamisil1.com> domain name on June 22, 2012, the <buylamisiltablets.com> domain name on September 13, 2011, the <lamisilonlinesales.com> domain name on September 17, 2011, the <buy-tegretol-online.com> domain name on March 3, 2012, the <buystarlix-online.com> domain name on August 17, 2010, the <buyreclast-online.com> domain name on August 17, 2010, the <buydiscountzometa.com> domain name on September 12, 2010, the <wwwzometa.com> domain name on June 23, 2005, the <buycheapritalin.com> domain name on February 14, 2012, the <buyfamvir.com> domain name on October 29, 2009, and the <buy-famvir-online.com> domain name on March 3, 2012. The domain names resolve to various websites which purport to sell “cheap” or “generic” versions of Complainant’s products and/or resolve to click-through-sites that include hyperlinks to websites featuring competing products;
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 International Pharma, Ltd. Complainants base their filing as co-complainants upon the contention that both Novartis Corporation, and Novartis International Pharma, Ltd are wholly-owned subsidiaries of Novartis AG.
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any 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 Paralymic Games and International 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 American Family Health Services Group, 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. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint establishes a sufficient nexus or link between the Complainants, and accordingly will treat them all as a single entity in this proceeding and will refer to them collectively in this decision as “Complainant.”
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant bases its rights in the marks upon registration with the USPTO and other national trademark offices. A review of the record illustrates the registration of the marks as follows:
· DIOVAN (Reg. No. 2,177,116 registered July 28, 1998)
· FEMARA (Reg. No. 2,182,663 registered August 18, 1998)
· VOLTAREN (Reg. No. 3,767,722 registered March 20, 2010)
· LAMISIL (Reg. No. 1,567,931 registered November 28, 1989)
· TEGRETOL (Reg. No. 788,091 registered April 13, 1965)
· STARLIX (Reg. No. 2-152,672 registered April 21, 1998)
· RITALIN (Reg. No. 517,928 registered November 22, 1949)
· FAMVIR (Reg. No. 1,882,779 registered March 7, 1995)
· RECLAST (Reg. No. 2,895,114 registered October 19, 2004)
· ZOMETA (Reg. No. 2,393,885 registered October 10, 2000) (“Complainant’s registered marks.”).
The Panel notes that all of Complainant’s registered marks were registered before the registration of any of the disputed domain names that Complainant alleges contains elements of its trademarks. Previous panels have found that the registration of any mark with the USPTO satisfies the required showing of Policy ¶ 4(a) (i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). The Panel also notes that it does not matter that Respondent is located in a different country than Complainant. See See 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).Therefore, the Panel finds that Complainant has established rights in all of Complainant’s registered marks under Policy ¶ 4(a)(i).
The second question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s registered marks. In that regard, Complainant generally argues that each of the disputed domain names is confusingly similar to one of the Complainant’s registered marks. The Panel notes that for the purposes of this section, the disputed domain names have been divided insofar as each disputed domain name is connected with each of Complainant’s marks.
In regards to the DIOVAN mark, the Panel refers to the disputed domain name <buyonlinediovan.com>. Complainant specifically argues that terms such as “buy” and “online” coupled with a gTLD such as “.com” make a disputed domain name confusingly similar. Previous panels have held, as a general rule, that the addition of a gTLD of any kind is irrelevant in trying to distinguish a disputed domain from a complainant’s registered mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Previous panels have also determined that the addition of “buy” to a complainant’s mark amplifies a confusing similarity. See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end). The Panel also finds the term “online” to increase the confusing similarity as well. See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark). Thus, the Panel finds that the <buyonlinediovan.com> domain name is confusingly similar to Complainant’s DIOVAN mark under Policy ¶ 4(a) (i).
In regards to the FEMARA mark, the Panel refers to the <buyfemara.com> domain name. As noted above, the addition of a gTLD of any kind is irrelevant in trying to distinguish a disputed domain from a complainant’s registered mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). As noted in the Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) case, the addition of “buy” to a complainant’s mark in a disputed domain name amplifies the confusing similarity between a respondent’s domain name and a complainant’s mark. Thus, the Panel finds that the <buyfemara.com> domain name is confusingly similar to the FEMARA mark under Policy ¶ 4(a) (i).
In regards to the VOLTAREN mark, the Panel refers to the <discountvoltarenemulgel.com> domain name. The Panel notes that Complainant has not offered evidence to indicate why or how “emulgel” contributes to confusing similarity. Previous panels have concluded that the addition of “discount” does not distinguish a disputed domain name from a complainant’s mark. Qwest Comm. Intl., Inc. v. Chase, FA 223006 (Nat. Arb. Forum Feb. 13, 2004) (“Discount” is a generic addition, with no distinctiveness. The term “discount” refers to the trademark . . . in a way indicating a low-price or discount offer for products/services of the said trademark.). Although Complainant does not argue specifically as to why “emulgel” contributes to confusing similarity, the Panel finds that Complainant’s allegation that Respondent is offering competing products, coupled with Respondent’s decision not to provide a Response with its own rationale behind the disputed domain name, infers the term is merely descriptive of products sold under Complainant’s VOLTAREN mark. See Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004) (“[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity with regard to Policy ¶ 4(a)(I).”). In any event, the dominant feature of the domain name is the word “voltaren”, as it so well known and the objective internet user is therefore more likely than not to take the domain name to be referring to the product sold under the trademark VOLTAREN. The Panel therefore finds that the <discountvoltarenemulgel.com> domain name is confusingly similar to the VOLTAREN mark under Policy ¶ 4(a) (I).
In regards to the LAMISIL mark, the Panel refers to the <buylamisil1.com>, <bestbuylamisil.com>, <buylamisiltablets.com>, and <lamisilonlinesales.com> domain names. As noted above, past panels have held that the addition of a gTLD of any kind is irrelevant in trying to distinguish a disputed domain from a complainant’s registered mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). As noted in Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001), the addition of “buy” to a complainant’s mark in a disputed domain name amplifies the confusing similarity between a respondent’s domain name and a complainant’s mark. The Panel notes that the <buylamisil1.com> domain name’s only other variation from the LAMISIL mark is the addition of the number “1.” The addition of a random numeral to a disputed domain name is not enough to avoid confusing similarity, as noted by prior UDRP panels. See Nokia Corp. v. Franklin, FA 104592 (Nat. Arb. Forum Mar. 22, 2002) ([T]he addition of a random numeral such as "1" does not create a distinct mark capable of overcoming a claim of confusing similarity.). The Panel finds that because Respondent’s <buylamisiltablets.com> domain name features several of the aforementioned similarities plus the addition of “tablets,” a term that while not applicable to the products sold under LAMISIL applies to many of the kinds of products sold by Complainant in its course of business, this domain name also fails to distinguish itself from the LAMISIL mark. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business). Finally, <lamisilonlinesales.com> adds the gTLD “.com” and the terms “online” and “sales.” The Panel finds that <lamisilonlinesales.com> is confusingly similar to the LAMISIL mark because the only additional terms added compared to the previous domains are generic terms that are placed behind Complainant’s distinct LAMISIL mark. See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark); see also Dr. Ing. h.c. F. Porsche AG v. Anderson, D2004-0312 (WIPO July 2, 2004) (finding the <porschesales.com> domain name to be confusingly similar where the respondent added the generic term “sales” to the complainant’s PORSCHE mark). For these reasons, the Panel finds that the buylamisil1.com>, <bestbuylamisil.com>, <buylamisiltablets.com>, and <lamisilonlinesales.com> domain names are confusingly similar to the LAMISIL mark under Policy ¶ 4(a) (i).
In regards to the TEGRETOL mark, the Panel refers to the <buy-tegretol-online.com> domain name. The Panel notes that the additions of hyphen and/or a gTLD of any kind is irrelevant in trying to distinguish a disputed domain from a complainant’s registered mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). As noted inGoogle Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001), the addition of “buy” to a complainant’s mark in a disputed domain name amplifies the confusing similarity between a respondent’s domain name and a complainant’s mark. Previous panels have held that the addition of “online” to a complainant’s otherwise distinct mark creates a confusing similarity between the mark and respondent’s domain name. See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark). Therefore, the Panel finds the <buy-tegretol-online.com> domain name to be confusingly similar to the TEGRETOL mark under Policy ¶ 4(a) (i).
In regards to the STARLIX mark, the Panel refers to the <buystarlix-online.com> domain name. The Panel notes that the additions of hyphen and/or a gTLD of any kind is irrelevant in trying to distinguish a disputed domain from a complainant’s registered mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). As noted in Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001), the addition of “buy” to a complainant’s mark in a disputed domain name amplifies the confusing similarity between a respondent’s domain name and a complainant’s mark. Previous panels have held that the addition of “online” to a complainant’s otherwise distinct mark creates a confusing similarity between the mark and respondent’s domain name. See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark). Therefore, the Panel finds the <buystarlix-online.com> domain name to be confusingly similar to the STARLIX mark under Policy ¶ 4(a) (i).
In regards to the RITALIN mark, the Panel refers to the <buycheapritalin.com> domain name. As noted above, the addition of a gTLD of any kind is irrelevant in trying to distinguish a disputed domain from a complainant’s registered mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). As noted in Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001), the addition of “buy” to a complainant’s mark in a disputed domain name amplifies the confusing similarity between a respondent’s domain name and a complainant’s mark. The Panel finds that the only other addition in the disputed domain name, “cheap,” implies in this context that Respondent is simply selling products under Complainants’ RITALIN mark for “cheap;” thus, the Panel finds that the <buycheapritalin.com> domain is confusingly similar to the RITALIN mark under Policy ¶ 4(a)(I). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).
In regards to the FAMVIR mark, the Panel refers to the <buy-famvir-online.com>, and <buyfamvir.com> domain names. The Panel notes that the additions of hyphen and/or a gTLD of any kind is irrelevant in trying to distinguish a disputed domain from a complainant’s registered mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). As noted in Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001), the addition of “buy” to a complainant’s mark in a disputed domain name amplifies the confusing similarity between a respondent’s domain name and a complainant’s mark. Previous panels have held that the addition of “online,” as is used in the <buy-famvir-online.com> domain name, to a complainant’s otherwise distinct mark creates a confusing similarity between the mark and respondent’s domain name. See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark). Therefore, the Panel finds the <buy-famvir-online.com> and <buyfamvir.com> domain names to be confusingly similar to the FAMVIR mark under Policy ¶ 4(a) (i).
In regards to the RECLAST mark, the Panel refers to the <buyreclast-online.com> domain name. The Panel notes that the additions of hyphen and/or a gTLD of any kind is irrelevant in trying to distinguish a disputed domain from a complainant’s registered mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). As noted in Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001), the addition of “buy” to a complainant’s mark in a disputed domain name amplifies the confusing similarity between a respondent’s domain name and a complainant’s mark. Previous panels have held that the addition of “online” to a complainant’s otherwise distinct mark creates a confusing similarity between the mark and respondent’s domain name. See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark). Therefore, the Panel finds the <buyreclast-online.com> domain name to be confusingly similar to the RECLAST mark under Policy ¶ 4(a)(i).
Finally, in regards to the ZOMETA mark, the Panel refers to the <buydiscountzometa.com> and <wwwzometa.com> domain names. As noted above, the addition of a gTLD of any kind is irrelevant in trying to distinguish a disputed domain from a complainant’s registered mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). As noted in the Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) case, the addition of “buy” to a complainant’s mark in a disputed domain name amplifies the confusing similarity between a respondent’s domain name and a complainant’s mark. The only other addition made in the <buydiscountzometa.com> domain name is the addition of “discount.” The Panel finds that the term “discount” makes the <buydiscountzometa.com> domain name confusingly similar to the ZOMETA mark. See Qwest Comm. Intl., Inc. v. Chase, FA 223006 (Nat. Arb. Forum Feb. 13, 2004) (“Discount” is a generic addition, with no distinctiveness. The term “discount” refers to the trademark. . . in a way indicating a low-price or discount offer for products/services of the said trademark.). The Panel also finds that the <wwwzometa.com> domain name is confusingly similar to Complainant’s mark in that it seeks to take advantage of typographical errors made by Internet users trying to seek the <zometa.com> domain. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”). The Panel agrees and find that both the buydiscountzometa.com> and <wwwzometa.com> domain names are confusingly similar to the ZOMETA mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s registered marks
and to use them in its domain names, making various minor changes including adding generic and descriptive term to the trademarks before embodying them in the respective domain names;
(b) Respondent has then used the domain names variously to purport to sell “cheap” or “generic” versions of Complainant’s products and/or resolve to click-through-sites that include hyperlinks to websites featuring competing products;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant also argues that there is no evidence that Respondent has ever been commonly known by any of the disputed domain names. Complainant alleges that the disputed domain names are registered to a proxy server and operated under the business name “NorthWestPharmacy.com.” Complainant also claims to have no connection with Respondent nor has Complainant authorized Respondent to use Complainant’s marks. The Panel notes that all disputed domains contain WHOIS information listing the registrant as “Fundacion Private Whois / Domain Administrator.” Although it is unclear where on Complainant’s Exhibit 5 that Complainant noticed the “NorthWestPharmacy.com” name, the Panel nonetheless finds that the absence of evidence linking Respondent to any of the disputed domain names suffices to prove that Respondent is in fact not commonly know by any of the disputed domain names as required under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
(e) Complainant next argues that Respondent has failed to make a bona fide offering of goods or services. Complainant also alleges that Respondent has failed to establish a legitimate noncommercial or fair use for the disputed domain names. Complainant contends that the disputed domain names function variously: some purport to sell “cheap” or “generic” versions of Complainant’s products and some offer click-through-sites that include hyperlinks to websites featuring competing products. Complainant asserts that these uses of the disputed domain names serve to direct Internet users to products in competition with Complainant. The Panel has examined some typical websites to which the disputed domain names resolve and has concluded that the kinds of products that are actually being offered on the websites deriving from the disputed domain names are in substance those articulated by Complainant. The Panel therefore agrees with Complainant and finds that the use of Complainant’s marks in the sale of generic or alternative pharmaceutical products constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from the complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant alleges that Respondent’s registration of multiple domain names featuring Complainant’s marks establishes a pattern of registering domain names with the intent of preventing Complainant fully utilizing its trademarks, and that such patterns of mass registration of domain names reveal a bad faith registration and use under Policy ¶ 4(b)(ii). Previous panels have held that bad faith under Policy ¶ 4(b)(ii) existed when merely two domain names were registered by a respondent incorporating a complainant’s mark. See YAHOO! INC v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in the respondent's registration of two domain names incorporating the complainant's YAHOO! mark). By greater force, the Panel finds that Respondent’s registration of the fifteen disputed domain names that utilize Complainant’s marks is evidence of bad faith under Policy ¶ 4(b)(ii).
Secondly, Complainant maintains that Respondent is promoting its competing products under Complainant’s mark to disrupt Complainant’s business. Complainant alleges that the disputed domain names resolve to websites that offer generic and alternative products meant to interfere with and disrupt Complainant’s business. The Panel’s examination of relevant websites has satisfied it that Complainant’s submission is valid. The Panel finds that Respondent intended to disrupt the business of Complainant and accordingly finds bad faith registration and use and under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Thirdly, Complainant also contends that Respondent sought to register the disputed domain names for the use of diverting and confusing Internet users, who were initially seeking information about Complainant’s products, into going to websites to which the disputed domain names resolve and creating a commercial gain for Respondent. Complainant maintains that the Respondent is using the disputed domain names and their resolving websites to advertise discounted alternate or generic versions of Complainant’s products for a profit. Complainant contends that Respondent’s click-through-sites further divert Internet users to competing products. Previous panels have held that the use of a domain name to generate click-through-fees is evidence that a respondent was confusing Internet users to attract commercial gain. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). The Panel also finds that the use of a disputed domain name to make an Internet user assume the false belief that Respondent is endorsed or authorized to sell Complainant’s products is indicative of bad faith registration. See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”). Furthermore, the Panel finds that Respondent’s use of the confusingly similar disputed domain names is a bad faith registration and use because Respondent seeks to use Complainant’s marks in the offering of competing and allegedly generic alternatives to Complainant’s products. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). For these reasons, the Panel finds that Respondent registered and is using all of the disputed domain names in bad faith under Policy ¶ 4(b) (iv).
Fourthly, Complainant contends that Respondent had actual and constructive knowledge of Complainant’s registered trademarks prior to registration of the disputed domain names. Complainant maintains that Respondent’s attempts to sell generic and alternative versions of the products Complainant sold under the marks, as well as Respondent’s ability to identify and market competing products through hyperlinks, show that Respondent had actual knowledge of Complainant’s rights under the marks. Finally, Complainant argues that its registration of the trademarks with the USPTO puts Respondent on constructive notice of Complainant’s rights in the marks. Panels have held that constructive knowledge is not sufficient evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel, however, agrees with Complainant regarding Respondent's actual knowledge, and concludes that Respondent registered the domain names in bad faith according to 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).").
Fifthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using Complainant’s registered marks and in view of the conduct that Respondent engaged in when using them, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <buyonlinediovan.com>, <buyfemara.com>, <discountvoltarenemulgel.com>, <bestbuylamisil.com>, <buylamisil1.com>, <buylamisiltablets.com>, <lamisilonlinesales.com>, <buy-tegretol-online.com>, <buystarlix-online.com>, <buyreclast-online.com>, <buydiscountzometa.com>, <wwwzometa.com>, <buycheapritalin.com>, <buyfamvir.com>, and <buy-famvir-online.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC Panelist
Dated: November 22, 2012
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