WIPO Domain Name Decision: D2005-0979

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Biofarma v. UltimateDomains.com/Jarred Cohen

Case No. D2005-0979

1. The Parties

The Complainant is Biofarma, of Neuilly-sur-Seine, France.

The Respondent is UltimateDomains.com/Jarred Cohen, of Davie, Florida, United States of America.

2. The Domain Names and Registrars

The disputed domain names: <diamicron.org>, <genericdiamicron.com>, <genericgliclazide.com> and <gliclazide.org> are registered with Moniker Online Services, LLC, while the disputed domain name <gliclazide.net> is registered with Fabulous.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2005. On September 14, 2005, the Center transmitted by email to Moniker Online Services, LLC and Fabulous.com a request for registrar verification in connection with the domain names at issue. On September 15, 2005, Fabulous.com sent its verification response as regards the disputed domain name <gliclazide.net>. Moniker Online Services, LLC sent its verification response as regards the other four disputed domain names on September 23, 2005. Pursuant to a request of the Complainant, the proceedings in this case were suspended on September 26, 2005, and reinstated on October 27, 2005. 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 the Respondent of the Complaint, and the proceedings commenced on October 31, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 23, 2005.

The Center appointed Dr. Torsten Bettinger as the Sole Panelist in this matter on December 6, 2005. 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.

4. Factual Background

Complainant is a corporate body incorporated pursuant to the laws of France, with its head office in Neuilly Sur Seine, France.

Complainant is the owner of the French registered trademark DIAMICRON and various national and international trademarks DIAMICRON in many other countries.

Complainant is the producer of a pharmaceutical product which was given the International Nonproprietary Name (“INN”) GLICLAZIDE. The INN system is operated by the World Health Organization (“WHO”) to identify pharmaceutical substances or active pharmaceutical ingredients. Each INN is unique and provides health professionals with a universally available designated name to identify pharmaceutical substances.

Respondent is an unincorporated organization, based in the US. Respondent registered the domain names <diamicron.org>, <gliclazide.org> and <gliclazide.net> on September 17, 2004, and the domain names <genericdiamicron.com> and <genericgliclazide.com> on November 17, 2006.

The domain name <diamicron.org> resolved to a website which displays the domain name <diamicron.org> and contains various links to other commercial sites on various topics such as “Voyage, “Ordinateur”, “Electronique” etc. The domain name <genericdiamicron.com>, <genericgliclazide.com> resolved to a website on which the Complainant’s pharmaceutical product DIAMICRON and other medication was offered for sale.

The domain name <gliclazide.net> resolved to a website which contains various links to other commercial sites on which Complainant’s pharmaceutical products were offered for sale.

The website to which the domain name <gliclazide.org> resolves displays the domain name <gliclazide.org> and contains various links to other commercial sites on various topics such as “Airline Tickets”, “Car Rentals”, “Hotels” etc.

Respondent offered the disputed domain names for sale on a domain auction website at “www.ultimatedomains.com” for the following prices:

- <diamicron.org>: 20,000 United States dollars,

- <genericgliclazide.com>: 2000 United States dollars and

- <gliclazide.org> <gliclazide.net> and <genericdiamicron.com>: 1,500 United States dollars.

After the commencement of this administrative proceeding, Respondent agreed by e-mail dated September 13, 2005, to transfer the domain names <genericdiamicron.com> and <diamicron.com> to Complainant, but refused to transfer the domain names <gliclazide.org>, <gliclazide.net> and <genericgliclazide.com>.

5. Parties’ Contentions

A. Complainant

Domain Names <diamicron.org> and <genericdiamicron.com>

In reference to the element in paragraph 4(a)(i) of the Policy, Complainant argues that the addition of the top level domain and generic terms such as “generic” do not affect the domain name for the purpose of determining whether it is identical or confusingly similar to a trademark and that the trademark DIAMICRON is identical to the disputed domain names <diamicron.org>, and <genericdiamicron.com>.

In reference to the element in paragraph 4(a)(ii) of the Policy, Complainant states that none of the situations described in paragraph 4(c) of the Policy can be established in this case. In support of this assertion, Complainant states that:

- Respondent has acquired no trademark rights in the mark DIAMICRON and Complainant has not licensed or in any other way authorized Respondent to use its trademark as a domain name;

- Respondent is not making a legitimate non-commercial or fair use and is not using the domain names in connection with a bona fide offering of goods or services as the disputed domain names are used for websites on which Complainant’s trademark is used and medication is sold under the trademark DIAMICRON without Complainant’s authorisation.

In reference to the element in paragraph 4(a)(iii) of the Policy, Complainant asserts that the disputed domain names were registered or acquired primarily for the purpose of selling them to the Complainant, for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the domain names. In support of this assertion, Complainant contends that:

- Respondent was aware of Complainant’s trademark DIAMICRON when it registered the domain names <diamicron.org> and <genericdiamicron.com>;

- Respondent offered the domain names for sale for an excessive price at “www.ultimatedomains.com”;

- Respondent has registered various other domain names which are identical to well-known trademarks or INNs.

Domain Names <gliclazide.net>, <gliclazide.org> and <genericgliclazide.net>

In reference to the element in paragraph 4(a)(i) of the Policy, Complainant argues that the disputed domain names <gliclazide.net>, <gliclazide.org> and <genericgliclazide.net> are identical to the International Nonproprietory Name (INN) GLICLAZIDE, it being established that the addition of the top level domain and a generic terms such as “generic” do not affect the domain names for the purpose of determining whether such are identical or confusingly similar to a trademark.

- Respondent is neither known under the name GLICLAZIDE nor does he sell any products under the name GLICLAZIDE;

- Respondent is not making a legitimate non-commercial or fair use and is not using the domain names <gliclazide.net>, <gliclazide.org> and <genericgliclazide.net> in connection with a bona fide offering of goods or services as the disputed domain names are used for websites on which Respondent uses Complainant’s trademark DIAMICRON and sells products under the trademark DIAMICRON without authorisation by the Complainant.

In reference to the element in paragraph 4(a)(iii) of the Policy, Complainant asserts that the disputed domain names were registered or acquired primarily for the purpose of selling them to the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain names. In support of this contention, Complainant states that:

- Respondent was aware of Complainant’s name GLICLAZIDE when he registered the domain names <gliclazide.net>, <gliclazide.org> and <genericgliclazide.net>;

- Respondent offered the domain names for sale for an excessive price at “www.ultimatedomains.com”;

- Respondent has registered other domain names which are identical to well- known trademarks or INNs.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or confusingly similar to a Trademark or Service Mark in which the Complainant has rights

Domain Names <diamicron.org> and <genericdiamicron.com>

The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, such as the “Sleekcraft factors” – AMF Inc. v. Sleekcraft Boats, 599 F.2d 341,346 (9th Cir. 1979), usually considered in trademark infringement (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698 <guiness.com>; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, <ansellcondoms.com>; Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843, <dixons-online.net>; AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327, <attinternet.com>, <attuniversal.com>; BWT Brands, Inc. and British Am. Tobacco (Brands), Inc. v. NABR, WIPO Case No. D2001-1480, <kool.com>; Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505,<britanniabuildingsociety.org>).

The disputed domain name <diamicron.org> wholly incorporates Complainant’s trademark DIAMICRON. It is well-established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. (See Magnum Piering, Inc. v. The Mudjackers and Garwood & Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429). The Panel thus finds that the domain name <diamicron.org> is identical to Complainant’s trademark DIAMICRON.

The disputed domain name <genericdiamicron.com> wholly incorporates Complainant’s trademark DIAMICRON. The fact that the word <generic> is added to Complainant’s trademark does not eliminate the similarity between Complainant’s trademark and the disputed domain name, as <generic> is a descriptive component of the disputed domain name. In numerous cases, it has been held that a domain name that wholly incorporated a complainant’s registered mark may be sufficient to establish confusing similarity for purposes of the Policy despite the addition of other descriptive words to such marks. Being established, as aforementioned, that the specific top level of a domain name such as “.com”, “.org” or “.net” likewise does not affect the domain name for the purpose of determining whether it is identical or confusingly similar the Panel finds that the domain name <genericdiamicron.com> is confusingly similar to the trademark DIAMCIRON in which Complainant has exclusive rights.

Domain Names <gliclazide.net>, <gliclazide.org> and <genericgliclazide.net>

Complainant does not directly assert rights in a mark identical to the Domain Names <gliclazide.net>, <gliclazide.org> and <genericgliclazide.net>, but claims a de facto right to the INN GLICLAZIDE. This raises the question whether an INN is a trademark within the meaning of paragraph 4(a)(i) of the Policy.

The Panels observes the following two contrasting Panelist Decisions under the Policy which have considered the issue of whether an INN is a trademark:

In Boehringer Ingelheim Corporation v. Kumar Bhatt (NAF Case No. FA0006000095011), complainant asserted that it had rights in the INNs “Telmisartan”, which it sold under its “Micardis” trademark, and “Meloxicam”, which it sold under its “Mobic” trademark. Complainant argued that it had rights in the INNs as it had invested substantial amounts of money developing and marketing products which contained these active ingredients, had a US patent for products which contained “Telmisartan” which gave it exclusive rights to such products, and was the only entity approved to market “Telmisartan” and “Meloxicam” by the Food & Drug Administration (FDA).

The Panel accepted complainant’s argument that it had exclusive rights to market the products which corresponded to the INNs and ordered that the disputed domain names <telmisartan.com> and <meloxicam.com> should be transferred to the complainant. However, the decision does not contain any analysis or discussion as to the fact that the entire system of INNs is based upon the premise that INNs are non-proprietary in nature. Indeed, the Panel in the Boehringer case found that the complainant had received approval from the WHO for these terms as “tradenames” and that the complainant had “patent rights in these names”, neither of which, to this Panel, appear to be a correct assessment of the nature of INNs.

The Panel in Teva Pharmaceutical Industries Limited v. BLTC Research (WIPO Case No. D2005-0113, <rasagiline.com>) expressly declined to follow the Boehringer Ingelheim decision, analysing in detail the issue of whether an INN is a trademark within the meaning of paragraph 4(a)(i) of the Policy. The Panel pointed out that in September 2001, WIPO published the Report of the Second WIPO Internet Domain Name Process which, amongst other matters, contained a detailed consideration of the issues relating to INNs and noted that “the current UDRP does not cover INNs”.

Furthermore, the Panel argued that an INN is not a trademark and had been deliberately designed to be a generic and non-proprietary term for describing a particular pharmaceutical. The Panel concluded that it fell outside the scope of the Policy. Accordingly, the Panel concluded that complainant did not have an applicable trademark within the meaning of paragraph 4(a) of the Policy.

This Panel follows the view put forward in the Teva Pharmaceutical case that an INN is not a trademark within the meaning of paragraph 4(a)(1) of the Policy.

The precise nature of an INN is described by the WHO as follows (see Teva Pharmaceutical Industries Limited v. BLTC Research, WIPO Case No. D2005-0113):

“An International Nonproprietary Name (INN) identifies a pharmaceutical substance or active pharmaceutical ingredient by a unique name that is globally recognized and is public property. The system of recommended International Nonproprietary Names was initiated in 1950, by a World Health Assembly resolution (WHA 3.11), and has been in operation since 1953. It is aimed at providing health professionals with a clear mechanism of identification for the safe prescription and dispensing of medicines to patients, and to allow health professionals and scientists worldwide to communicate and exchange information in an unambiguous manner.”

and

“The World Health Organization collaborates closely with INN experts and national nomenclature committees to select a single name of worldwide acceptability for each active substance that is to be marketed as a pharmaceutical. To avoid confusion, which could jeopardize the safety of patients, trade-marks should neither be derived from INNs nor contain common stems used in INNs.”

Taking into account this non-proprietary nature of INNs, the Panel concludes that, in its opinion, an INN does not amount to a trademark within the meaning of paragraph 4(a)(i) of the Policy.

Accordingly, the Panel concludes that Complainant does not have an applicable trademark right in the name GLICLAZIDE within the meaning of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Domain Names <diamicron.org> and <genericdiamicron.com>

Paragraph 4(c) of the Policy requires Complainant to prove that Respondent has no right or legitimate interest in the disputed domain name. However, it is the consensus view among Panelists that if complainant makes a prima facie case that respondent has no rights or legitimate interests, and respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then respondent may lack a legitimate interest in the domain name.

Complainant showed that Respondent has neither a license nor any other permission to use the trademark DIAMICRON in which Complainant has exclusive rights. The Panel thus finds that Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the domain names <diamicron.org> and <genericdiamicron.com>.

Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.

Before notice to Respondent of the dispute, there is no evidence of its use, 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. Further, nothing in the record suggests that Respondent is making a legitimate commercial use of the domain name. The disputed domain names are used for websites on which medication is sold under the trademark DIAMICRON without Complainant’s authorisation.

Under these circumstances, the Panel takes the view that Respondent has no rights or legitimate interests in the domain names and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.

Domain Names <gliclazide.net>, <gliclazide.org> and <genericgliclazide.net>

The Policy requires that Complainant prove all elements of paragraphs 4(a)(i-iii) of the Policy. Thus, since Complainant has failed to prove 4(a)(i), the Panel need not discuss whether Respondent has legitimate rights and interests in, or whether Respondent registered and was using the domain names <gliclazide.net>, <gliclazide.org> and <genericgliclazide.net> in bad faith.

C. Registered and Used in Bad Faith

Domain Names <diamicron.org> and <genericdiamicron.com>

Complainant alleges that Respondent has registered or acquired the domain names primarily for the purpose of selling the Domain Name registrations to Complainant for valuable consideration in excess of its out-of-pocket costs directly related to the domain names.

In fact, there are certain circumstances indicating that the Domain Names were registered or acquired primarily for the purpose of selling it to Complainant.

Complainant’s trademark DIAMICRON is an inventive word. It is long-established and widely-known. Is therefore not conceivable that Respondent was not aware of the Complainant’s mark at the time it registered the domain name.

Respondent offered to sell the domain name <diamicron.org> for 20,000 United States dollars and the domain name <genericdiamicron.com> on a domain name auction website for 1,500 United States dollars which is clearly an excessive amount.

When these facts are combined with the fact that Respondent has not provided any plausible argument why it registered the Domain Names, it is possible to infer that Respondent registered the domain name <diamicron.org> and the domain name <genericdiamicron.com> knowing that it was the trademark of Complainant and had the objective to sell it to Complainant for a valuable consideration well in excess of Respondent’s out-of-pocket expenses.

Accordingly, the Panel concludes that Respondent registered and used the domain names <diamicron.org> and <genericdiamicron.com> in bad faith and that also the requirement of paragraph 4(a)(iii) of the Policy has been met.

Domain Names <gliclazide.net>, <gliclazide.org> and <genericgliclazide.net>

For the reasons given above, the Panel is not required to make a finding under this head.

7. Decision

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 names, <diamicron.org> and <genericdiamicron.com> be transferred to Complainant. The request for the cancellation the domain names <gliclazide.net>, <gliclazide.org> and <genericgliclazide.net> is denied.

Dr. Torsten Bettinger
Sole Panelist

Dated: January 4, 2006