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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Valeant Pharmaceuticals International and Valeant Canada Limited v. Johnny Carpela

Case No. D2005-0786

 

1. The Parties

Complainants are Valeant Pharmaceuticals International, Costa Mesa, California, United States of America and Valeant Canada Limited, Montreal, Quebec, Canada, both represented by Hogan & Hartson, L.L.C., United States of America.

Respondent is Johnny Carpela, Sumas, Washington, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names:

<cesamet.com>
<eldopaque.com>
<eldoquin.com>
<kinerese.com>
<solaquin.com>

are registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2005. On July 22, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On July 22, 2005, 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 for the administrative, billing, and technical contact. 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 July 28, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was August 17, 2005. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 18, 2005.

The Center appointed Kenneth A. Genoni as the Sole Panelist in this matter on August 26, 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

This Complaint is based on the CESAMET, SOLAQUIN, KINERASE, ELDOQUIN and ELDOPAQUE trademarks, owned by Valeant International.

Valeant International is a global research-based pharmaceutical company that manufactures, markets and distributes a broad range of prescription and non-prescription pharmaceuticals. Formerly known as ICN Pharmaceuticals, Inc., Valeant International changed its name to Valeant Pharmaceuticals International on November 12, 2003.

Valeant Canada is a wholly-owned subsidiary of Valeant International operating within Canada.

Valeant International owns common law trademark rights as well as two U.S. trademark applications, Ser. Nos. 78/368,968 and 78/485,067, for the CESAMET mark in connection with pharmaceutical preparations. Valeant Canada owns common law trademark rights as well as a Canadian trademark registration, Reg. No. TMA275501, for the CESAMET mark in connection with pharmaceutical preparations. Valeant and its predecessor-in-interest, Eli Lilly and Company, have used the CESAMET mark continuously and exclusively in Canada for almost 25 years, since 1981.

Valeant International also owns common law trademark rights as well as a U.S. trademark registration, Reg. No. 1,247,545, for the mark SOLAQUIN in connection with topical pharmaceutical preparations. Valiant and its predecessor-in-interest, Elder Pharmaceuticals, Inc. have used the SOLAQUIN mark continuously and exclusively in the United States for over 25 years, since 1980.

Valiant International owns common law trademark rights as well as a U.S. trademark registration, Reg. No. 2,306,645, and a Canadian trademark registration, Reg. No. TMA545912, for the mark KINERASE in connection with a line of cosmetics and facial creams and cleansers. Valeant has used the KINERASE mark continuously and exclusively in the United States since 1998, and in Canada since 2001.

Valeant International also owns common law trademark rights as well as a U.S. trademark registration, Reg. No. 1,117,062, and a Canadian trademark registration, Reg. No. TMA 188768, for the mark ELDOQUIN in connection with topical pharmaceutical preparations. Valeant and its predecessor-in-interest, Thomas C. Elder, Inc., have used the ELDOQUIN mark continuously and exclusively in the United States since 1962, and in Canada since 1963.

Valeant International also owns common law trademark rights as well as a U.S. trademark registration, Reg. No. 1,117,061, and a Canadian trademark registration, Reg. No. TMA 192264, for the mark ELDOPAQUE in connection with topical pharmaceutical preparations. Valeant and its predecessor-in-interest, Thomas C. Elder, Inc., have used the ELDOPAQUE mark continuously and exclusively in the United States since 1966, and in Canada since 1970.

 

5. Parties’ Contentions

A. Complainants

Valeant International and Valeant Canada are the owners of the trademark CESAMET. Valeant International is the owner of the trademarks SOLAQUIN, KINERASE, ELDOQUIN and ELDOPAQUE.

Respondent’s domain names <cesamet.com>, <solaquin.com>, < eldoquin.com>, and <eldopaque.com> are based upon and wholly incorporate Complainants’ marks. The domain names are identical to Complainants’ marks, but for the mere addition of the top level domain designation “.com”, which is insufficient to distinguish the domain names from Complainants’ marks.

Respondent’s domain name <kinerese.com> is merely a common misspelling of Complainants’ KINERASE mark, replacing the “a” with an additional “e”. The mere addition of a minor misspelling does not create a new or different mark in which Respondent has rights. Instead, it results in a domain name that is confusingly similar to Complainants’ mark.

Respondent is not engaged in any legitimate use of the Domain Names. Specifically, paragraph 4(c) of the Policy provides that evidence of one or more of the following shall demonstrate a respondent’s rights or legitimate interests to a domain name:

(i) before any notice to respondent of the dispute, respondent used, or made 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;

(ii) respondent (as an individual, business, or other organization) had been commonly known by the domain name; or

(iii) respondent is not 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.

In the case at hand, prior to notice of the dispute, the Domain Names were not used in connection with a bona fide offering of goods or services by Respondent under paragraph 4(c)(i) of the Policy.

Respondent does not maintain websites at either the <cesamet.com>, <solaquin.com> or <eldoquin.com> domain names. Typing the <cesamet.com>, <solaquin.com>, <eldoquin.com> and <eldopaque.com> domain names into a web browser results in the execution of a HTTP 302 redirect code, which redirects the user to the URL “http://www.canadapharmacy.com/affiliates/index.cfm?fuseaction= affiliate_entry&aid424”. From there, the source code located at the URL listed above contains a refresh command that ultimately results in the URL resolving to either the homepage (or index) of the “canadapharmacy.com” website, as in the case of <cesamet.com>, or a “deep link” within the “canadapharmacy.com” website, as in the case of <solaquin.com>, <eldoquin.com> and <eldopaque.com>. As a prior WIPO UDRP panel has found in a previous case involving Mr. Carpela, Respondent in this case, such use of the Domain Names does not constitute a bona fide offering of goods or services by Respondent under paragraph 4(c)(i) of the Policy. See CVS Pharmacy, Inc. v. Johnny Carpela, WIPO Case No. D2004-0038 (March 31, 2004).

Furthermore, offered for sale at the “canadapharmacy.com” website are various prescription medications, including the products Anzemet (dolasetron mesylate) and Zofran (ondansetron), which are competitive with Valeant’s CESAMET medication, as well as the product Lustra (hydroquinone topical) which is competitive with Valeant’s SOLAQUIN topical medication. Such actions lead to the inference that “Respondent was aware of Complainant’s well-known business and its mark and intended to exploit the mark” See Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319 (February 1, 2002). It is well-established that “use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services”. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (October 12, 2000); Delta Corporate Identity, Inc. v. Ameriasa National Arbitration Forum Case No. FA114657 (July 30, 2002) (“any use by Respondent of the <delta-airline-reservation.com> domain name, confusingly similar to Complainants’ famous mark, would be an opportunistic attempt to attract customers via Complainants’ famous mark and therefore not considered to be a bona fide offering of goods or services pursuant to Policy Paragraph 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy Paragrapah 4(c)(iii)”).

Respondent’s use of the <kinerese.com> domain name differs significantly from his use of the <cesamet.com>, <solaquin.com> and <eldoquin.com> domain names as outlined above, but such use of the <kinerese.com> domain name likewise does not constitute use in connection with a bona fide offering of goods or services by Respondent under paragraph 4(c)(i) of the Policy.

As one can see from the printout of the website located at <kinerese.com>, a consumer who mistypes Valeant International’s KINERASE mark encounters Respondent’s website at “kinerese.com”, which is deliberately designed to mislead consumers into believing that the website is, in fact, Valeant International’s website for its KINERASE product.

Specifically, Respondent’s website at “kinerese.com” prominently features Valeant International’s KINERASE trademark (even including the ® symbol), and is designed to mimic an “official” website for the KINERASE product by including sections entitled “About Kinerase”, “How to Use Kinerase”, and “How to Order Kinerase”. In fact, on the page entitled “About Kinerase”, Respondent displays a photograph of an older version of Valeant International’s KINERASE product, including the ICN logo in the bottom center of the web page.

Such deliberate attempts to “pass off” Respondent’s website as that of Valeant International appear to be aimed at defrauding customers, as Respondent’s website provides a telephone number and e-mail address through which a consumer can “order” the KINERASE product. However, Respondent is not an authorized distributor of the KINERASE product, which is only available through Valeant International’s website, or from licensed medical professionals.

As previous panels have found, such use of the <kinerese.com> domain name is likely to “create confusion as to the source, sponsorship and affiliation” of Respondent’s website. See Google Inc. v. E. D. Havik, National Arbitration Forum Case No. FA14604 (July 18, 2002). Such attempts to “pass off” Respondent’s website as Valeant International’s does not constitute a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. See, e.g., Google Inc. v. E. D. Havik, National Arbitration Forum Case No. FA14604 (July 18, 2002); Medestea Internazionale S.r.l. v. Chris Gaunt, WIPO Case No. D2003-0011 (February 28, 2003) (“although genuine goods of Complainant were on offer, the use of the domain name and the general set-up of the website created the impression that there was a relationship, such as that of a distributorship, between the parties”); Countryside Alliance Limited v. Ian Mac, Unfinished Business, WIPO Case No. D2001-0861 (August 28, 2001).

Likewise, as outlined above, Respondent is not making any “legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish” Valeant’s CESAMET, SOLAQUIN, KINERASE, ELDOQUIN and ELDOPAQUE trademarks under paragraph 4(c)(iii) of the Policy. The CESAMET, SOLAQUIN, KINERASE, ELDOQUIN and ELDOPAQUE trademarks are coined terms, and thus not descriptive of pharmaceutical or cosmetic goods or services, or in fact any type of goods or services. Accordingly, Respondent is not using the CESAMET, SOLAQUIN, KINERASE, ELDOQUIN and ELDOPAQUE marks in a descriptive manner. Likewise, the Domain Names are not being used to fairly refer to Valeant or its goods and services, but instead are being used to redirect browsers to commercial entities with which Valeant has no affiliation or control. In addition, each of the Domain Names is used for commercial purposes, namely, to sell pharmaceutical or cosmetic products — not for non-commercial purposes. Moreover, Respondent’s use of each of the Domain Names is made for the specific purpose of diverting consumers by misleading them to Respondent’s websites through the use of domain names that are identical to or confusingly similar to Valeant’s trademarks, as discussed above. Again, such usage is not a fair use of the CESAMET, SOLAQUIN, KINERASE, ELDOQUIN and ELDOPAQUE marks, and further demonstrates that Respondent is not making any legitimate noncommercial or fair use of the domain names. See CVS Pharmacy, Inc. v. Johnny Carpela, WIPO Case No. D2004-0038 (March 31, 2004).

Finally, to Valeant’s knowledge, Respondent has not commonly been known by the Domain Names or any variation thereof prior to Respondent’s registration of the Domain Names, as contemplated under paragraph 4(c)(ii) of the Policy.

In light of Valeant’s rights in and to the CESAMET, SOLAQUIN, KINERASE, ELDOQUIN and ELDOPAQUE trademarks and Respondent’s registration of the Domain Names wholly incorporating the CESAMET, SOLAQUIN, ELDOQUIN and ELDOPAQUE marks, and incorporating a confusingly similar version of the KINERASE mark, without any legitimate basis for registration and use thereof, it is clear that Respondent lacks any legitimate rights or interests in the Domain Names under paragraph 4(c) of the Policy.

Respondent has engaged in a pattern of registering domain names containing the trademarks of third parties, as anticipated by paragraph 4(b)(ii) of the Policy. As mentioned previously, in addition to Respondent’s registration of domain names Valeant’s CESAMET, SOLAQUIN, KINERASE, ELDOQUIN and ELDOPAQUE marks, Respondent previously registered the domain name <cvspharmacy.net>, which Respondent likewise used to redirect traffic to the commercial website located at “canadapharmacy.com”. See CVS Pharmacy, Inc. v. Johnny Carpela, WIPO Case No. D2004-0038 (March 31, 2004). Furthermore, Respondent has registered domain names corresponding to the trademarks of other third parties, including <lipitar.com> (a misspelling of Pfizer’s LIPITOR trademark), <wellbutran.com> (a misspelling of Burroughs Welicome’s WELLBUTRIN trademark), <cvs-pharmacy.net> (another registration of CVS Pharmacy’s CVS PHARMACY mark), and <canadianclaritin.com> (a combination of the generic word “Canadian” with Schering’s CLARITIN mark), among many others. It is well–established that repeated registration of the trademarks of third parties results in a presumption that such registrations were performed in bad faith. See Research in Motion Limited v. Pacific Rim System, WIPO Case No. D2001-0408 (June 3, 2001) (registration of multiple domain names incorporating the trademarks of third parties raises presumption of bad faith registration and use); Encyclopaedia Britannica Inc. v. Shedon.com, WIPO Case No. D2000-0753 (September 6, 2000) (finding bad faith where Respondent engaged in the practice of registering domain names containing the trademarks of others); Armstrong Holdings, Inc. v. JAZ Associates, National Arbitration Forum Case No. FA95234 (August 17, 2000) (finding that Respondent violated paragraph 4(b)(ii) of the Policy by registering multiple domain names which infringe upon others’ famous and registered trademarks); Pep Boys Manny, Moe, and Jack v. E-Commerce Today, Ltd. AF-0145 (eResolution May 3, 2000).

Respondent’s registration of the Domain Names was further made for the purpose of intentionally attracting, for commercial gain, Internet users to either a third party website at “canadapharmacy.com”, or Respondent’s own website at “kinerese.com”, by creating a likelihood of confusion with Valeant’s trademarks in violation of paragraph 4(b)(iv) of the Policy. As noted previously, the coined terms CESAMET, SOLAQUIN, KINERASE, ELDOQUIN and ELDOPAQUE have no meaning other than in connection with Valeant’s pharmaceutical and cosmetic products. Yet, Respondent uses the Domain Names to redirect browsers to commercial websites which are unaffiliated with Valeant or the CESAMET, SOLAQUIN, K1NERASE, ELDOQUIN and ELDOPAQUE products. The operators of these websites profit from the sale of goods in the same field of commerce as Valeant and the CESAMET, SOLAQUIN, KINERASE, ELDOQUIN and ELDOPAQUE products.

It is thus clear that Respondent merely intended to capitalize on the goodwill associated with the CESAMET, SOLAQUIN, KINERASE, ELDOQUIN and ELDOPAQUE trademarks by misdirecting consumers to commercial websites unaffiliated with Valeant. Respondent clearly knew or should have known about the prior existence and use of the CESAMET, SOLAQUIN, KINERASE, ELDOQUIN and ELDOPAQUE marks, as demonstrated not only by Respondent’s registration of multiple domain names that are identical and confusingly similar to Valeant’s trademarks, but also by the fact that Respondent included the ® symbol next to Valeant’s KINERASE mark. UDRP panels have repeatedly held that use of a domain name to confuse Internet consumers as to the source, sponsorship, affiliation, or endorsement of a Respondent’s website demonstrates Respondent’s bad faith registration and use of the domain name. See Infospace, Inc. v. Siavash Jimmy Behain, et al., WIPO Case No. D2000-1631 (March 30, 2001); Kohler Co. v. Chris Friedland d/b/a/ Faucet Direct Inc., National Arbitration Forum Case No. FA115043 (August 8, 2002); Delta Corporate Identity, Inc. v. Ameriasa, National Arbitration Forum Case No. FA114657 (July 30, 2002) (“the <delta-airlines-reservations.com> domain name is confusingly similar to Complainant’s mark and the Internet user will likely believe that there is an affiliation between Respondent and Complainant”, and “registration of the confusingly similar delta-airline-reservations.com domain name is evidence of bad faith”).

The facts indicate that Respondent registered the Domain Names with full knowledge of the proprietary nature of the CESAMET, SOLAQUIN, KINERASE, ELDOQUIN and ELDOPAQUE trademarks, without any legitimate rights or interests in the Domain Names, and for the purposes of causing consumer confusion to achieve commercial gain. This set of facts alone is sufficient to evidence bad faith on the part of Respondent. Previous UDRP panels have held that “of a domain name incorporating another entity’s mark, despite knowledge of that entity’s interest in the mark represents bad faith registration”. Kohler Co. v. Chris Friedland d/b/a/ Faucet Direct Inc., National Arbitration Forum Case No. FA115043 (August 8, 2002). See also Samsonite Corporation v. Colony Holding, National Arbitration Forum Case No. FA94313 (April 17, 2000 (respondent acted in bad faith if it had either actual or constructive knowledge of a commonly known mark at the time of registration); Exxon Mobil Corporation v. Joseph Fisher, WIPO Case No. D2000-1412 (December 18, 2000) (respondent had actual and constructive knowledge of EXXON mark given its world-wide prominence and thus respondent registered the domain name in bad faith); Ticketmaster Corporation v. Spider Web Design. Inc., WIPO Case No. D2000-1551 (February 4, 2001). Here, registration of Valeant’s entire CESAMET, SOLAQUIN, ELDOQUIN and ELDOPAQUE marks, as well as a common misspelling of Valeant’s KINERASE mark, further points towards the fact that the registrations were done in bad faith.

This conclusion is further buttressed by Respondent’s use of the <cesamet.com>, <solaquin.com>, <eldoquin.com> and <eldopaque.com> domain names to redirect consumers to a website selling products competitive with Valeant’s CESAMET and SOLAQUIN products. Edmunds.com, Inc. v. Ult. Search, Inc., WIPO Case No. D2001-1319 (February 1, 2002); NetWizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768 (April 4, 2001); Cisco Systems, Inc. v. Mike Haag AF-0585a-b (eResolution December 29, 2000), Zwack Unicum Rt. v. Erica J. Duna, WIPO Case No. D2000-0037 (March 10, 2000), Oly Holigan, L.P. v. Private, National Arbitration Forum Case No. FA95940 (December 4, 2000).

Finally, Respondent’s bad faith registration and use of the Domain Names are further illustrated by Respondent’s continued use of the <cesamet.com> domain name after receiving cease and desist letters from counsel for Valeant. On January 25, 2005, counsel for Valeant sent Respondent a letter demanding that Respondent cease using the <cesamet.com> domain name and transfer it to Valeant. Despite reminders, no response was received to such letter, and Respondent’s use of the <cesamet.com> domain name persists. Respondent’s complete non responsiveness to such a written request represents even further evidence of bad faith on the part of Respondent. See Infospace, Inc. v. Siavash Jimmy Behain et al., WIPO Case No. D2000-1631 (March 30, 2001).

Based on the foregoing, the facts show that Respondent registered and is using the Domain Names in bad faith, and the Domain Names should be transferred to Valeant.

B. Respondent

Respondent did not reply to Complainants’ contentions. Given Respondent’s failure to file a Response to the Complaint, the Panel may accept as true and accurate all supported statements of fact relating to the domain names made by Complainants in their submissions. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (February 29, 2000); EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096 (April 9, 2000). The Panel may draw negative inferences from Respondent’s default. However, Respondent’s default does not automatically result in a decision in favor of Complainants. Complainants must establish each of the three elements required by paragraph 4(a) of the Policy.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires Complainants to make out three elements:

(i) Complainants have rights in a trade or service mark, with which Respondent’s domain names are identical or confusingly similar (paragraph 4(a)(i));

(ii) Respondent has no rights or legitimate interests in respect of the domain names (paragraph 4(a)(ii)); and

(iii) Respondent registered and is using the domain name in bad faith (paragraph 4(a)(iii)).

A. Complainants have Rights in a Trade or Service Mark, With Which Respondent’s Domain Name is Identical or Confusingly Similar

There are two requirements that Complainants must establish under this paragraph; that they have rights in a trade or service mark, and that the domain names are identical or confusingly similar to the marks.

Valeant International and Valeant Canada are the owners of the trademark CESAMET, as evidenced by their ownership of a Canadian trademark registration and two U.S. trademark applications for such mark. Respondent’s domain name <cesamet.com> is based upon and wholly incorporates Complainants’ CESAMET mark. The domain name is in fact identical to Complainants’ CESAMET mark, but for the addition of the top level domain designation “.com”, which is insufficient to distinguish the <cesamet.com> domain name from Valeant’s CESAMET trademark. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493 (July 7, 2000) (finding <pomellato.com> identical to Complainants’ mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); Blue Sky Software Corp. v. Digital Sierra Inc. and Abdullah Khan, WIPO Case No. D2000-0165 (April 27, 2000) (holding that the domain name <robohelp.com> is identical to Complainants’ registered ROBOHELP trademark, and that the “addition of .com is not a distinguishing difference”); AT&T Corp. v. Xinzhiyuan Management Consulting Co., Ltd., WIPO Case No. DCC2004-0001 (May 3, 2004) (“The addition of the top level domain extension ‘.com’ does not render the signs non-identical”). The <cesamet.com> domain name is, thus, identical to Complainants’ CESAMET mark.

Valeant International is the owner of the trademark SOLAQUIN, as evidenced by its ownership of a U.S. trademark registration for such mark. Respondent’s domain name <solaquin.com> is based upon and wholly incorporates Complainants’ SOLAQUIN mark. The domain name is in fact identical to Valeant International’s SOLAQUIN mark, but for the addition of the top level domain designation “.com”, which is insufficient to distinguish the <solaquin.com> domain name from Valeant International’s SOLAQUIN trademark. The <solaquin.com> domain name is, thus, identical to Valeant International’s SOLAQUIN mark.

Valeant International is the owner of the trademark KINERASE, as evidenced by its ownership of U.S. and Canadian trademark registrations for such mark, as previously discussed. Respondent’s domain name <kinerese.com> is merely a common misspelling of Valeant International’s KINERASE mark, replacing the “a” with an additional “e”. As prior panels have noted, “[t]he mere addition of a minor misspelling… does not create a new or different mark in which Respondent has rights. Instead it results in a domain name that is confusingly similar to Complainant’s mark” (American Online Inc. v. John Zuccarini, also known as Cupcake Message, Cupcake Messenger, The Cupcake Secret, Cupcake Patrol, Cupcake City, and The Cupcake Incident, WIPO Case No. D2000-1495 (January 22, 2001)). See also Ticketmaster Corporation v. Polanski, WIPO Case No. D2002-0166 (April 8, 2002); Google Inc. v. Namerental.com and Leonard Bensonoff, WIPO Case No. D2001-0060 (February 27, 2001). The <kinerese.com> domain name is, thus, confusingly similar to Valeant International’s mark.

Valeant International is the owner of the trademark ELDOQUIN, as evidenced by its ownership of U.S. and Canadian trademark registrations for such mark, as previously discussed. Respondent’s domain name <eldoquin.com> is based upon and wholly incorporates Complainants’ ELDOQUIN mark. The domain name is in fact identical to Valeant International’s ELDOQUIN mark, but for the addition of the top level domain designation “.com”, which is insufficient to distinguish the <eldoquin.com> domain name from Valeant International’s ELDOQUIN trademark. The <eldoquin.com> domain name is, thus, identical to Valeant International’s ELDOQUIN mark.

Valeant International is the owner of the trademark ELDOPAQUE, as evidenced by its ownership of U.S. and Canadian trademark registrations for such mark. Respondent’s domain name <eldopaque.com> is based upon and wholly incorporates Complainants’ ELDOPAQUE mark. The domain name is in fact identical to Valeant International’s ELDOPAQUE mark, but for the addition of the top level domain designation “.com”, which is insufficient to distinguish the <eldopaque.corn> domain name from Valeant International’s ELDOPAQUE trademark. The <eldopaque.com> domain name is, thus, identical to Valeant International’s ELDOPAQUE trademark.

B. Respondent has No Rights or Legitimate Interest in Respect of the Domain Names

There is no evidence to suggest that Respondent has any rights or legitimate interest in the domain names at issue. While the overall burden of proof rests with Complainants, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore, Complainants are required to make out an initial prima facie case.

The facts and evidence described in Complainants’ contentions recited herein clearly satisfy Complainants’ burden. Since Respondent did not reply to this prima facie case, Complainants are deemed to have satisfied paragraph 4(a)(ii) of the Policy.

C. Respondent Registered and is Using the Domain Names in Bad Faith

In order to satisfy the requirements of paragraph 4(a)(iii) of the Policy, Complainants must establish that Respondent registered the domain names in bad faith and continues to use them in bad faith. The Panel has concluded that Complainants have proved that Respondent registered and has continued to act in bad faith. The Panel relies primarily on the following factors:

The CESAMENT, SOLAQUIN, KINERASE, ELDOQUIN AND ELDOPAQUE trademarks are coined terms, and thus not descriptive of pharmaceutical or cosmetic goods or services, or in fact descriptive of any type of goods or services. Accordingly, it is clear that Respondent registered the domain names with full knowledge of the proprietary nature of Complainants’ trademarks.

The Domain Names are not being used to fairly refer to Valeant or its goods and services, but instead are being used to redirect browsers to commercial entities with which Valeant has no affiliation or control in order to sell pharmaceutical or cosmetic products. Respondent attracted Internet users to either a third party website at “canadapharmacy.com” or to Respondent’s own website at “kinerase.com”.

Respondent has engaged in a pattern of registering domain names containing the trademarks of third parties, as anticipated by paragraph 4(b)(ii) of the Policy. In addition to Respondent’s registration of domain names Valeant’s CESAMET, SOLAQUIN, KINERASE, ELDOQUIN and ELDOPAQUE marks, Respondent previously registered the domain name <cvspharmacy.net>, which Respondent likewise used to redirect traffic to the commercial website located at “canadapharmacy.com”. See CVS Pharmacy, Inc. v. Johnny Carpela, WIPO Case No. D2004-0038 (March 31, 2004). Furthermore, Respondent has registered domain names corresponding to the trademarks of other third parties, including <lipitar.com> (a misspelling of Pfizer’s LIPITOR trademark), <wellbutran.com> (a misspelling of Burroughs Welicome’s WELLBUTRIN trademark), <cvs-pharmacy.net> (another registration of CVS Pharmacy’s CVS PHARMACY mark), and <canadianclaritin.com> (a combination of the generic word “Canadian” with Schering’s CLARITIN mark), among many others. It is well–established that repeated registration of the trademarks of third parties results in a presumption that such registrations were performed in bad faith. See Research in Motion Limited v. Pacific Rim System, WIPO Case No. D2001-0408 (June 3, 2001) (registration of multiple domain names incorporating the trademarks of third parties raises presumption of bad faith registration and use); Encyclopaedia Britannica Inc. v. Shedon.com, WIPO Case No. D2000-0753 (September 6, 2000) (finding bad faith where Respondent engaged in the practice of registering domain names containing the trademarks of others); Armstrong Holdings, Inc. v. JAZ Associates, National Arbitration Forum Case No. FA95234 (August 17, 2000) (finding that Respondent violated paragraph 4(b)(ii) of the Policy by registering multiple domain names which infringe upon others’ famous and registered trademarks); Pep Boys Manny, Moe, and Jack v. E-Commerce Today, Ltd. AF-0145 (eResolution May 3, 2000).

Respondent’s bad faith registration and use of the Domain Names are further illustrated by Respondent’s continued use of the <cesamet.com> domain name after receiving cease and desist letters from counsel for Valeant. On January 25, 2005, counsel for Valeant sent Respondent a letter demanding that Respondent cease using the <cesamet.com> domain name and transfer it to Valeant. Despite reminders, no response was received to such letter, and Respondent’s use of the <cesamet.com> domain name persists. Respondent’s complete non responsiveness to such a written request represents even further evidence of continuing bad faith on the part of Respondent. See Infospace, Inc. v. Siavash Jimmy Behain, et. al., WIPO Case No. D2000-1631 (March 30, 2001).

 

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 <cesamet.com>, <eldopaque.com>, <eldoquin.com>, <kinerese.com>, and <solaquin.com> be transferred to Valeant International.


Kenneth A. Genoni
Sole Panelist

Dated: September 2, 2005

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-0786.html

 

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