WIPO Domain Name Decision: D2007-0624

Complainant is Ivax Research, Inc., Horsham, Pennsylvania, United States of America, represented by Kenyon & Kenyon, United States of America.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2007. On April 27, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On April 27, 2007, Go Daddy Software transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 2, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2007. Respondent did not submit any response. Accordingly, the Center notified the Respondent of his default on May 24, 2007.

The Center appointed Frederick M. Abbott, Steven L. Snyder and Neil, J. Wilkof as panelists in this matter on June 27, 2007. The Panel finds that it was properly constituted. Each member of 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.

Further to its preliminary review of the Complaint, the Panel on July 2, 2007 issued its Procedural Order No. 1 requesting Complainant to submit additional evidence to support its claim of ownership of the trademark registration relied upon it in this proceeding. On that same date, Complainant submitted its response (including attached documentation) via email to the Center.

Complainant is the owner by assignment of registration of the trademark PROGLYCEM on the Principal Register of the United States Patent and Trademark Office (USPTO), registration no. 1688709, dated May 26, 1992, in International Class 5, covering “hyperglycemic agent”, claiming date of first use and first use in commerce of August 1976. (Complaint, Exhibit 3, and Complainant’s response to Procedural Order No. 1.)

The PROGLYCEM trademark is used by Complainant to identify a pharmaceutical product used in the treatment of hypoglycemia, the active ingredient in which is “diazoxide”. Complainant indicates that PROGLYCEM is the leading seller worldwide of diazoxide, with Complainant’s worldwide sales of the product for 2004-2006 totaling approximately $10,800,000. (Complaint). Complainant asserts that PROGLYCEM is a term coined by the assignor of the mark.

According to Complainant, the disputed domain name incorporating Complainant’s PROGLYCEM mark has been used by Respondent to direct Internet users to a website headed “Canada Pharmacy”, which is identified on its website as “one of Canada’s leading online mail order pharmacies” (Complaint, Exhibit 4). The website of Canada Pharmacy offers a wide range of prescription pharmaceutical products, including those of pharmaceutical manufacturers other than Complainant. (Id.)

As of July 11, 2007, the link between the disputed domain and Respondent’s website was not operational. (Panel visit of July 11, 2007).

According to the Registrar’s verification report, Respondent is the registrant of the disputed domain name. According to that report, the record of registration for the disputed domain name was created on February 26, 2002.

There is no evidence in the record of this proceeding identifying the relationship between Respondent (“Johnny Carpela”) and the Internet enterprise identified as “Canada Pharmacy.”

The Registration Agreement in effect between Respondent and Go Daddy Software subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

Complainant asserts rights in the trademark PROGLYCEM based on long use in commerce and as evidenced by registration at the USPTO (see Factual Background, supra). Complainant argues that based on long use in commerce and as evidenced by its substantial dollar volume of sales worldwide, the PROGLYCEM trademark is well-known in the field of medicines.

Complainant claims that the disputed domain name is identical for purposes of the Policy to its well-known trademark.

Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant states that Respondent’s use of the disputed domain name to divert Internet users to its pharmacy website is a “blatant attempt to cause confusion and free ride off the accumulated fame of Ivax’s well known mark for Respondent’s own commercial gain. Respondent can therefore have no right or legitimate interest in the Disputed Domain Name.” Complainant argues that Respondent could not be using the disputed domain name in good faith prior to notice of a dispute because Respondent had constructive notice of its trademark based on registration, and because Respondent presumably would have known of Complainant’s well-known mark. Complainant states, based on information and belief, that Respondent has no ground on which to establish rights or legitimate interests in the disputed domain name.

Complainant contends that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent is using Complainant’s well-known, distinctive trademark to promote sales of other pharmaceutical products; and (2) Respondent is deliberately attracting for commercial gain Internet users to Respondent’s website by creating confusion regarding Complainant’s sponsorship of, or affiliation with, Respondent’s website.

Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) respondent has no rights or legitimate interests in respect of the domain name; and

(iii) respondent’s domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

Complainant has demonstrated ownership of registration of the PROGLYCEM trademark on the Principal Register of the USPTO. Information listed on the USPTO certificate of registration for PROGLYCEM supports long use in commerce of that term in connection with Complainant’s diazoxide pharmaceutical product. The Panel determines that Complainant has rights in the PROGLYCEM trademark.

Without prejudice to a determination that might be based on a more complete submission by Complainant, on the basis of the limited submission by Complainant in this proceeding, the Panel is not prepared to make a determination that Complainant’s trademark is well-known in the field of medicines in the United States or worldwide. However, the Panel accepts that the term PROGLYCEM is arbitrary and inherently distinctive.

The disputed domain name, <proglycem.com>, incorporates Complainant’s distinctive trademark and adds the generic top level domain (gTLD) identifier “.com”. It is by now well-established, for purposes of the Policy, that the mere addition of the gTLD “.com” to a trademark does not create a new or different mark. The Panel determines that the disputed domain name is identical to Complainant’s PROGLYCEM trademark.

The Panel determines that Complainant has rights in the PROGLYCEM trademark and that the disputed domain name is identical to that mark. Complainant has established the first element necessary for a finding of abusive domain name registration and use under the Policy.

The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))

Complainant has argued that Respondent may not establish bona fide use of the disputed domain name prior to notice of a dispute because the sole use of that name has been to divert Internet users to a website offering Complainant’s branded product alongside products of competing manufacturers. Complainant has also argued that Respondent had notice of a dispute when it registered the disputed domain name because trademark registration constitutes constructive notice of a mark, and that Respondent had notice of a dispute because Complainant’s mark was well-known at the time the disputed domain name was registered.

Respondent has not submitted a response to the Complaint. However, Respondent’s use of the disputed domain name to direct Internet users to the Canada Pharmacy website implicitly raises the question whether this constitutes fair use of the disputed domain name.

The Panel does not consider that Respondent’s use of the disputed domain name, whether prior or subsequent to notice of a dispute, constitutes bona fide use in the context of the Policy because Respondent for commercial gain has used the disputed domain name to direct Internet users to a website prominently offering products of competitors of Complainant. Respondent has registered and used the most obvious domain name formulation of Complainant’s trademark, <proglycem.com>. This is the term which Internet users seeking Complainant’s product would most likely enter into the address line of their browsers, and/or would be most likely to associate with Complainant if returned as a search engine result.

The Panel determines that Respondent’s use of Complainant’s trademark in (and as) the disputed domain name is not bona fide use prior to notice of a dispute (within the meaning of paragraph 4(a)(i) of the Policy), because the use is one that is intended to take advantage of Complainant’s mark to sell products of Complainant’s competitors. The Panel need not address the issue of constructive notice, or notice based on the well known or distinctive character of Complainant’s mark.

The Panel also determines that Respondent’s use of Complainant’s mark is not “fair use” because it creates confusion for Internet users regarding Complainant’s affiliation with or sponsorship of Respondent’s website (where products of Complainant’s competitors are prominently offered for sale).

Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name, and it has satisfied the second element necessary for a finding of abusive domain name registration and use under the Policy.

The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include circumstances indicating that “by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on your website or location” (id., paragraph 4(b)(iv)) .

Respondent has used the disputed domain name, which is identical to Complainant’s distinctive mark, for the purpose of intentionally attracting for commercial gain Internet users to Respondent’s website by creating confusion as to Complainant’s sponsorship of or affiliation with Respondent and its website. Internet users entering Complainant’s trademark into their browsers in the most obvious formulation, <proglycem.com>, or who come upon <proglycem.com> using a search engine, are directed to Respondent’s online pharmacy selling a broad range of pharmaceutical products, including those of Complainant’s competitors. Such use of the disputed domain name takes unfair advantage of Complainant’s rights in its trademark. Such use constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

Complainant has established the third element necessary for a finding of abusive domain name registration and use under the Policy.

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <proglycem.com>, be transferred to the Complainant.

Frederick M. Abbott
Presiding Panelist

Steven L. Snyder
Panelist

Neil J. Wilkof
NAF Panelist