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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

AstraZeneca AB v. MedCenter Canada / FIFO org.

Case No. D2005-0280

 

1. The Parties

The Complainant is AstraZeneca AB, Sцdertдlje, Sweden, represented by Willoughby & Partners, United Kingdom of Great Britain and Northern Ireland.

The Respondent is MedCenter Canada / FIFO org., Winnipeg, Canada, represented by Gideon Kimbrell.

 

2. The Domain Name and Registrar

The disputed domain name <toprol.net> is registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2005.

Said Complaint identified MedCenter Canada as the registrant and Respondent.

On March 18, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue.

From the registrar’s reply to said request, it became apparent that there had been a recent change in registrant and according to the details on Go Daddy Software files, the domain name had been transferred from MedCenter Canada to FIFO.org.

On March 31, 2005, the Complainant submitted a further annex to the Complaint dealing specifically with issues raised by the purported change in registrant.

The Center verified that the Complaint, including said additional annex, 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 both MedCenter Canada and FIFO.org of the Complaint, and the proceedings commenced on March 31, 2005.

In accordance with the Rules, paragraph 5(a), the due date for Response was April 20, 2005. No response was submitted. Accordingly, the Center notified both MedCenter Canada and FIFO.org of the Respondent’s default on April 27, 2005.

The Center appointed James Bridgeman as the sole panelist in this matter on May 2, 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

The Complainant is a member of the AstraZeneca group that is one of the largest groups of pharmaceutical companies in the world.

The Complainant is the manufacturer of a pharmaceutical preparation for the treatment of cardiovascular diseases and disorders that is sold under the TOPORL-XL trademark.

The Complainant is the registered owner of the CTM registration No. 2,078,343 for the word mark TOPROL-XL, registered on May 3, 2002, in class 5 for “pharmaceutical preparations for the treatment of cardiovascular diseases and disorders”.

A related company, ASTRA ZENECA LP of Delaware, USA, is the owner of USA trade mark registration No. 2102441 TOPROL-XL, registered on October 10, 1997, in international class 5 of the Principal Register for goods being “pharmaceuticals, namely, an anti-hypertensive” and has filed USA trademark application No. 78385300 TOPROL in class 5 for goods being “pharmaceutical preparations for the treatment of of cardiovascular diseases and disorders”.

The Complainant is the owner of the domain names <toprol-xl.com> and <toprol.com>.

No Response has been filed. From the information provided in the Complaint and the registrar’s WHOIS database and the registrar’s reply to the verification request made by the Center, it is possible to conclude that: MedCenter Canada registered the domain name <toprol.net> on November 14, 2003; on March 18, 2005, immediately upon receipt of the Complaint, the registration details were changed and FIFO.org was registered as the owner of the registration.

It would appear that MedCenter Canada is engaged in the retail sales of pharmaceutical products through its web site. It would also appear that FIFO.org is a fictitious name and on the balance of probabilities the purported transfer of the domain name to FIFO.org was done by the Respondent merely to frustrate these Administrative Proceedings. For the purposes of this decision, this Panel is treating both MedCenter Canada and FIFO.org as one and the same legal person.

 

5. Parties’ Contentions

A. Complainant

The Complainant claims that its product sold under the TOPROL-XL trademark is commonly referred to simply as TOPROL. By way of illustration, the Complainant points to the fact that the Respondent on its web site identifies the primary name of the drug as TOPROL. The Complainant has also furnished the results of two Internet searches against the word “toprol” on Google and the “www.drugs.com” Internet site in support of this claim.

The Complainant submits that total sales of its TOPROL-XL branded product in the United States market amounts to US$ 1 billion to date.

The Complainant’s main web site relating specifically to its TOPROL-XL branded product is connected to the domain name <toprol-xl.com>. Recognising that the drug is often referred to as TOPROL without the “-XL” suffix, the Complainant has also registered the <toprol.com> domain name and arranged for said <toprol.com> domain name to resolve to the same web site.

The Complainant consequently claims to have acquired a reputation and unregistered rights in the trademark TOPROL and contends that no pharmaceutical company could lawfully use the name TOPROL as a trademark without infringing the Complainant’s rights at common law.

The Complainant submits that the Respondent could not deny that that it knew that the Complainant has such unregistered rights in the TOPROL trademark given that the Respondent has registered the <toprol.net> domain name as an intentional reference to the Complainant’s trade mark.

The Complainant submits that the Respondent is using the domain name at issue as the address for its web site in which the Respondent has posted information about the Complainant’s TOPROL branded product. Said web site also features advertisements for the sale of the Complainant’s TOPROL branded product.

The Complainant asserts that the Respondent has no rights or legitimate interests in the <toprol.net> domain name and submits that none of the circumstancesrs set out in paragraph 4(c) of the Policy apply. The Respondent is not using the disputed domain name for a bona fide offering of goods or services, is not known by the disputed domain name, and is not making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.

The Complainant submits that the Respondent operates an on-line pharmacy and uses the “www.toprol.net” Internet address to attract users to its web site for commercial gain. The Domain Name resolves to the Respondent’s site on which the Respondent has posted information about the Complainant’s TOPROL product and other drugs offered for sale by the Respondent through its on-line pharmacy.

The Respondent’s web site at “wwwtoprol.net” address has links to other sites including the principal site of the Respondent’s on-line pharmacy at the Respondent’s “www.medcenterstore.com” address.

The Complainant submits that the fact that the Respondent sells the Complainant’s products does not give the Respondent any rights or interests in Complainant’s trademarks or domain name.

In this regard, the Complainant cites the decision of the panel in Nokia Corporation v. Nokia Ringtones, WIPO Case No. D2001-1101. In that case, the ,panel cited earlier decisions ,such as Motorola Inc. v. NewGate Internet Inc., WIPO Case No. D2000-0079, Stanley Works and Stanley Logistics Inc. v. Camp Creek Co., WIPO Case No. D2000-0113, Mikimoto (America) Co. v. Asanti Jewellers Ltd, Case AF-0126, and RT Quaife Engineering Ltd. v. Luton, WIPO Case No. D2000-1201, and held that a licensee or a dealer, agent or distributor of products of the trademark owner or of compatible products does not per se have a right to a domain name which includes that trademark and would only have such a right if the complainant had specifically granted that right.

The Complainant submits that the Respondent was aware of the Complainant’s trademark rights when it registered the disputed domain name and in fact selected said domain name precisely because it was the Complainant’s trademark. The Respondent knew that a number of Internet users would visit its site in order to find information about the Toprol drug, and that most of that category of visitors would also be purchasers or potential purchasers of the drug. Accordingly, the Respondent knew that a significant proportion of Internet users would be deceived on the basis of “initial interest confusion”. Citing the decision of the panels in Autosales Incorporated v. Don Terrill, WIPO Case No. D2001-1341 and Sears, Roebuck and Co. v. Hanna Law Office, WIPO Case No. D2000-0669, the Complainant submits that “initial interest confusion” is a well-recognised phenomenon, the occurance of which will ordinarily deprive a respondent from any right or legitimate interest in a domain name.

The Complainant submits that the Respondent has posted a representation of the Complainant’s TOPROL-XL device trademark in a prominent position at the top of the home page on its web site. Such use of the Complainant’s device mark is likely to add to such initial interest confusion and confirm Internet visitors in their impression that the site is at the very least authorised by the Complainant.

The Complainant submits that a commercial use of a domain name which is so inherently likely to lead to confusion of Internet users cannot constitute a bona fide offering of goods or services, nor can it consitute a legitimate non-commercial or fair use of a domain name.

The Complainant submits that this Panel should conclude that the disputed domain name has been registered and is being used in bad faith. In this regard, the Complainant submits that in using the disputed domain name the Respondent is intentionally attempting to attract for commercial gain, Internet users to the Respondent’s web site by creating a liklihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site within the meaning of paragraphh 4(b)(iv) of the Policy.

In support of this assertion, the Complainant cites the decisions of the panels in Autosales Incorporated v. Don Terrill, WIPO Case No. 2001-1341, NFL Properties v. One Sex Entertainment, WIPO Case No. D2000-0118, Nokia Corporation v. Nokia Ringtones, WIPO Case No. D2001-1101.

The additional annex to the Complaint, filed by the Complainant on April 4, 2005, deals with what the Complainant alleges to be “cyber flight” by the late transfer of the domain name registration from MedCenter to FIFO.org. According to the results of a WHOIS search carried out by the Complainant on March 15, 2005, the disputed domain name was registered in the name of MedCenter Canada of Winnipeg, Canada.

The Complainant has carried out enquiries and submits as follows: the registrant updated the domain name registration and contact information on March 18, 2005, at 8:13 a.m. (MST). The Registrar did not receive the request to verify the WHOIS information from the Center until 9:28 a.m. (MST) on March 18, 2005, by which time the changes had already been made to the registration. On March 19, 2005, the Registrar confirmed that it had locked the domain name registration.

Following the update of the registration details, the disputed domain name is registered in the name FIFO.org., the Administrative Contact and the Technical Contact has been changed to John Wayne with an address at Anywhere St. Winnipeg, Manitoba, Canada and the contact e-mail address is abuse@deeper.in. The Complainant carried out enquiries and submits that this is a fictitious registrant with fictitious contact details.

The Complainant submits that the domain name owner’s details were changed immediately upon MedCenter’s receipt of the Complaint which was served simultaneously on MedCenter, the Center and the Registrar. Following MedCenter’s receipt of the Complaint, it immediately changed the registration details before the Center had the opportunity to contact the Registrar.

The Complainant submits that the above is evidence that MedCenter and FIFO.org are one and the same person and that the change of registration is evidence that the Respondent has registered and is using the disputeddomain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Preliminary Issue Relating to Parties, Procedure and Service.

It is clear from the information filed by the Complainant that, when the Complaint was first filed, MedCenter was the registrant and the appropriate Respondent in these administrative proceedings. Immediately upon receipt of the Complaint, MedCenter arranged to have the registration transferred to a fictitious new registrant, before the Registrar had the opportunity to lock the registration. The Domain Name became registered in the name of FIFO.org, with John Wayne being the Administrative and Technical Contact having an address at 123 Anywhere St. Winnipeg and an e-mail adress at “abuse@deeper.in”.

In the view of this Panel, FIFO.org is likely to be a fictitious registrant and the updated contact details are fictitious. The appropriate Respondent appears to be MedCenter a/k/a FIFO.org. In the view of this Panel, the purported transfer was not bona fide and was done merely to frustrate these administrative proceedings.

A. Identical or Confusingly Similar

The Complainant is the registered owner of the CTM registration No. 2,078,343 for the word mark TOPROL-XL, registered on May 3, 2002, in class 5 for “pharmaceutical preparations for the treatment of cardiovascular diseases and disorders”.

The domain name <toprol.net> is confusingly similar to the Complainant’s registered trademark TOPROL-XL. In the view of this Panel, the dominant element of the trademark is the letters “toprol”.

The Complainant has therefore succeeded in proving the first element of the test in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Respondent has not filed any Response nor has it given any explanation as to the reason why it chose <toprol.net> as a domain name. The Complainant has submitted that the only connection between the Respondent and the disputed domain name was that the Respondent was using the Domain Name as the address of the web site for the Respondent’s pharmaceutical retail business. This has not been denied.

This Panel accepts the submissions of the Complainant and the reasoning of the administrative panels in Nokia Corporation v. Nokia Ringtones, WIPO Case No. D2001-1101 that a retailer of products of the trademark owner or of compatible products does not per se have a right to a domain name which includes that trademark.

In casu the weight of evidence is that the Respondent has no rights or legitimate interests in the domain name <toprol.net>. The Complainant has established that it has both registered trademark rights in TOPROL-XL and has made out a prima facie case that it has common law rights in the TOPROL trademark and the Complainant has not granted any rights whatsoever to the Respondent to use the mark or the domain name.

This Panel therefore concludes that the Complainant has succeeded in establishing the second element of the test in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Having considered the submissions and the evidence adduced, this Panel concludes that when the Domain Name was registered, the Respondent was clearly aware of the Complainant’s trademark rights, its valuable goodwill in the marketplace for pharmaceuticals and its reputation for providing the public with information about its products inter alia by means of its Internet presence.

The Complainant has established that the Respondent is intentionally attempting to attract for commercial gain Internet users to the 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 within the meaning of paragraph 4(b)(iv) of the Policy.

This Panel is fortified in reaching this conclusion by the fact that, rather than putting forward a reasoned Response to the Complaint, the Respondent engaged in what the Complainant describes as “cyber flight” with the clear intention of frustrating these administrative proceedings.

 

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 name <toprol.net> be transferred to the Complainant.


James Bridgeman
Sole Panelist

Date: May 16, 2005

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-0280.html

 

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