Complainant is Hoffmann-La Roche Inc. of New Jersey, United States of America, represented by Lathrop & Gage L.C., United States.
Respondent is Alexander Kravtsov of Khabarovsk, Russian Federation.
The disputed domain name <cellcept.org> is registered with Todaynic.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2009. On February 27, 2009, the Center transmitted by email to Todaynic.com, Inc. a request for registrar verification in connection with the disputed domain name. On March 9, 2009, Todaynic.com, Inc. 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” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 10, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 1, 2009.
The Center appointed Nayiri Boghossian as the sole panelist in this matter on April 9, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant, together with its affiliated companies, is one of the leading manufacturers of pharmaceutical and diagnostic products in the world.
Complainant owns various trademark registrations in the CELLCEPT mark for pharmaceutical preparations of immunosuppressive agents, including United States Patent and Trademark Office Reg. No. 1,889,130 in International Class 5, with a registration date of April 11, 1995.
The disputed domain name was registered on December 2, 2008, and presently routes to a website offering for sale and displaying information respecting an alleged generic form of Complainant's Cellcept pharmaceutical preparation.1 The website also displays links to other online pharmaceutical websites, offering, among other things, products of competitors of Complainant.
Complainant avers that its mark CELLCEPT has been extensively promoted, including through print advertisement, promotional materials, packaging, medical informational materials and direct mailings. Complainant avers that Complainant and its predecessors have used the mark for their immunosuppressive preparation since June 1994 in the United States and that sales of the CELLCEPT preparation have exceeded millions of dollars in the United States.
Complainant avers that the disputed domain name <cellcept.org> contains Complainant's entire CELLCEPT trademark. In light of Complainant's registered trademark, Complainant contends that Respondent's registration and use of the disputed domain name creates a strong likelihood of confusion as to source, sponsorship, association or endorsement of Respondent's website by Complainant.
Complainant continues that the added descriptive term “.org” does not prevent the likelihood of confusion created by the disputed domain name, citing the authority of Thomas McCarthy, 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998), and the decision in General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087.
Therefore, Complainant alleges, the disputed domain name is identical or confusingly similar to the trademark of Complainant.
Complainant alleges that Respondent has registered and used the disputed domain name without legitimate right, license or authorization. Complainant alleges that neither Respondent nor its website has been commonly known by the domain name <cellcept.org> pursuant to the Policy, paragraph 4(c)(ii). Complainant further alleges that the use of the disputed domain name is not in connection with a bona fide offering of goods or services because Complainant has not authorized Respondent to use the name and because Respondent is advertising an allegedly generic form of the Cellcept preparation, which is not licensed for distribution or permitted by United States. Pharmaceutical law.
Complainant also contends that because Respondent is infringing Complainant's United States trademark, Respondent's use of the disputed domain name cannot under any circumstance be bona fide, citing Alta Vista Company v. James A. Maggs, Claim Number FA0008000095545 (October 24, 2000).
Complainant avers that the website to which the disputed domain name routes offers for sale an allegedly generic form of Cellcept and also links to other online pharmacies that offer other products of Complainant's competitors.2 Complainant alleges therefore that there is no evidence that Respondent is making a legitimate non-commercial or fair use of the disputed domain name, as found in Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814 and cases there cited.
Relying on most of the points above, Complainant contends that Respondent registered and is using the disputed domain name in bad faith. Complainant argues that Respondent's “true purpose” in registering the disputed domain name was to “capitalize on the reputation of Complainant's CELLCEPT mark by diverting Internet users to Respondent's own web site through which orders for an illegal non-FDA approved generic version of Complainant's CELLCEPT prescription drug are solicited.”
Complainant alleges that bad faith use is demonstrated because Respondent used “the <cellcept.org> domain name to promote sales of such products and to promote other products of competitors,” again citing the decision in Hoffmann-La Roche Inc. v. Samuel Teodorek, supra.
Reciting a number of factual circumstances, including Respondent's use of Complainant's invented and coined mark CELLCEPT for both its website and, allegedly, as its company name, Complainant concludes that “Respondent has intentionally attempted to attract for financial gain Internet users to Respondent's web site by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's web site or the goods on or through Respondent's web site.”
Complainant represents that in December 2008, Complainant's attorneys sent a letter by courier, fax and e-mail to Respondent at the addresses indicated in the WhoIs record. The letter advised Respondent that the disputed domain name infringed trademark rights and requested transfer of the disputed domain name to Complainant. The fax sent to Respondent returned a message to Complainant's attorneys “check condition of remote fax”; the couriered letter was returned to Complainant with the indication “Customer not available or business closed.” Complainant hypothesizes that the email was received but provides no proof to that effect. Complainant states that there was no response to these communications by Respondent.
Complainant also states in its Complaint that the required notice of these proceedings was sent by courier and email to Respondent at the addresses indicated in the WhoIs record.
Based on the above contentions, Complainant seeks transfer of the disputed domain name.
Respondent did not reply to Complainant's contentions.3
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if the respondent does not reply. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. However, in the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
The Panel agrees with Complainant that the disputed domain name is identical to the CELLCEPT trademark, in which Complainant has rights.
Panels disregard the gTLD suffix in determining whether a disputed domain name is identical or similar to a complainant's marks. See, e.g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-13l5.
The Panel concludes, therefore, that Complainant has established the first element of Paragraph 4(a) of the Policy.
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i)(iii).
Complainant must show a prima facie case proving the negative that a respondent lacks rights or legitimate interests. E.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
Complainant avers that Respondent was not commonly known by the disputed domain name, and that Respondent had no license or authorization to use the CELLCEPT trademark. In the absence of a response, the Panel accepts Complainant's undisputed factual averments as true.
Screens from Respondent's website presently accessible to the Panel online show that the disputed domain name is being used to promote sales of an allegedly generic version of Complainant's Cellcept preparation. Such sales would necessarily be in direct competition with Complainant's business. Respondent's website also provides links to other online pharmacies, which promote products of Complainant's competitors.
The Panel infers that Respondent receives revenues when it diverts traffic through link advertisements on Respondent's website. E.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit […] in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya ILtd, WIPO Case No. D2006-1079.
The Panel therefore finds that Respondent's use of the disputed domain name demonstrates Respondent's lack of a legitimate non-commercial interest in, or fair use of, the domain name. E.g., Hoffmann-La Roche Inc. v. Onlinetamiflu.com, WIPO Case No. D2007-1806 (citing Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784); Hoffmann-La Roche Inc. v. Samuel Teodorek, supra.
The Panel also finds there is no bona fide offering of goods or services by Respondent. The product promoted on Respondent's website through the use of the disputed domain name is not Complainant's trademarked preparation, but instead is alleged to be a generic pharmaceutical, represented by Respondent to be equivalent to the trademarked goods.
Respondent's commercial activities undertaken through use of the disputed domain name are neither fair use nor bona fide under the Policy. Id.; see, e.g. America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 (“it would be unconscionable to find that a bona fide offering of services in a respondent's operation of web-site using a domain name which is confusingly similar to the complainant's mark and for the same business”), cited in Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629.
Filing no response, Respondent has not invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the domain name.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.4
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether there is no response to the complaint, and other circumstances. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel infers that Respondent registered the disputed domain name in attempts to trade on the fame of Complainant's trademark, which was registered and used in the 1990s, and widely promoted before Respondent registered the disputed domain name. The Panel finds that it is inconceivable under the circumstances that Respondent would have been unaware of Complainant's coined trademark or product name. Respondent is deliberately attempting to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant's mark. Therefore, the Panel finds that Respondent registered the domain name in bad faith.5
Respondent's website shows that the disputed domain name is used not only to promote sales of Respondent's allegedly generic version of Complainant's preparation, but also displays links to promote unrelated pharmaceutical products of Complainant's competitors. The Panel concludes that this activity demonstrates bad faith use. Hoffmann-La Roche Inc. v. AZ Marketing Inc., Thomas Brennan, WIPO Case No. D2007-1843; Pfizer Inc. v. jg a/k/a Josh Green, supra (citing Google, Inc v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240; Casio Keisanki Kabushiki (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH, WIPO Case No. D2003-0088).
The Panel therefore concludes that the disputed domain name was registered and is being used by Respondent in bad faith under paragraph 4(b)(iv) of 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 <cellcept.org> be transferred to Complainant.
Nayiri Boghossian
Sole Panelist
Dated: April 20, 2009