Purdue Pharma L.P. v. BANAGHER McTernan
Claim
Number: FA0403000250000
Complainant is Purdue Pharma L.P. (“Complainant”), represented
by Elizabeth A. Alquist, of Day, Berry & Howard LLP,
CityPlace, Hartford, CT 06103.
Respondent is BANAGHER McTernan (“Respondent”),
507 Charles Place, Malta, ID 83342.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <oxycontinonline.com>, registered with Enom,
Inc.
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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on March 26, 2004; the Forum received a hard copy of the
Complaint on March 30, 2004.
On
March 29, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain
name <oxycontinonline.com> is registered with Enom, Inc. and that
Respondent is the current registrant of the name. Enom, Inc. has verified that
Respondent is bound by the Enom, Inc. registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
April 5, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 26, 2004 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@oxycontinonline.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
May 12, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Ralph Yachnin as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <oxycontinonline.com>
domain name is confusingly similar to Complainant’s OXYCONTIN mark.
2. Respondent does not have any rights or
legitimate interests in the <oxycontinonline.com> domain name.
3. Respondent registered and used the <oxycontinonline.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant has
developed and markets many well-known products, including the prescription
medication OxyContin Tablets (“OxyContin”).
The drug has been marketed in the U.S. since December 15, 1995. Complainant holds two registrations for the
OXYCONTIN mark with the U.S. Patent and Trademark Office (“USPTO”), Reg. Nos.
2,033,914 and 2,004,586 (registered on January 28, 1997 and October 1, 1996,
respectively).
Respondent
registered the <oxycontinonline.com> domain name on September 10,
2002. The domain name resolves to an
online pharmacy called Trusted Canadian Pharmacy.
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."
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.
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.
Complainant has
established rights in the OXYCONTIN mark through registration with the
USPTO. See Men’s Wearhouse, Inc. v.
Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark
law, registered marks hold a presumption that they are inherently distinctive
and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption).
Respondent’s <oxycontinonline.com>
domain name is confusingly similar to Complainant’s OXYCONTIN mark because the
domain name fully incorporates the mark and merely adds the generic term
“online.” The addition of the generic
word “online” is insufficient to distinguish the domain name from Complainant’s
mark. 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 Complainant combined with a generic word or term); see also Am.
Online, Inc. v. Anytime Online Traffic School, FA 146930 (Nat. Arb. Forum
Apr. 11, 2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and
merely added the descriptive terms “traffic school,” “defensive driving,” and
“driver improvement” did not add any distinctive features capable of overcoming
a claim of confusing similarity).
Furthermore, the
addition of the generic top-level domain “.com” to the mark is irrelevant in
determining whether the <oxycontinonline.com> domain name is
confusingly similar to Complainant’s mark.
See Pomellato S.p.A v.
Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com>
identical to Complainant’s mark because the generic top-level domain (gTLD)
“.com” after the name POMELLATO is not relevant); 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 Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to contest the allegations of the Complaint; therefore, the Panel
presumes that Respondent lacks rights and legitimate interests in the <oxycontinonline.com>
domain name. See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interest
in the domain names).
Furthermore,
nothing in the record establishes that Respondent is commonly known by the <oxycontinonline.com>
domain name. Moreover, Respondent
is not licensed or authorized to register or use domain names that incorporate
Complainant’s mark. Therefore, the
Panel concludes that Respondent lacks rights and legitimate interests in the
domain name pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where
(1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights
in the domain name precede Respondent’s registration; (3) Respondent is not
commonly known by the domain name in question).
In addition,
Respondent’s <oxycontinonline.com> domain name is confusingly
similar to Complainant’s mark and Respondent profits from the domain name by
redirecting Internet users to a website that that sells pharmaceutical
drugs. Respondent’s use of the domain
name does not constitute a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See MSNBC
Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights
or legitimate interests in the famous MSNBC mark where Respondent attempted to
profit using Complainant’s mark by redirecting Internet traffic to its own
website); see also G.D. Searle & Co. v. Mahoney, FA 112559
(Nat. Arb. Forum June 12, 2002) (finding Respondent’s use of the disputed
domain name to solicit pharmaceutical orders without a license or authorization
from Complainant does not constitute a bona fide offering of goods or services
under Policy ¶ 4(c)(i)).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
commercially benefits from using a domain name confusingly similar to
Complainant’s mark, which is evidence that Respondent registered and used the
domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto.,
FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name
was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through
Respondent’s registration and use of the infringing domain name to
intentionally attempt to attract Internet users to its fraudulent website by
using Complainant’s famous marks and likeness); see also Kmart v.
Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent
profits from its diversionary use of Complainant's mark when the domain name
resolves to commercial websites and Respondent fails to contest the Complaint,
it may be concluded that Respondent is using the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv)).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <oxycontinonline.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: May 17, 2004