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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Medimmune, Inc. v. Jason Tate

Case No. D2006-0159

 

1. The Parties

The Complainant is MedImmune, Inc., Gaithersburg, Maryland, United States of America, represented by Abelman Frayne & Schwab, New York, New York, United States of America.

The Respondent is Jason Tate, San Diego, California, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names <synagisisbadforyou.com> and <synagisisnotsafe.com> are registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2006. On February 7, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On February 8, 2006, Go Daddy Software transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on February 21, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 13, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2006.

The Center appointed the undersigned, Michael A. Albert, as the Sole Panelist in this matter on March 30, 2006. 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 evidence submitted by Complainant, which, in the absence of any response by the Respondent, is undisputed, indicates that Complainant is a well-known manufacturer of pharmaceutical products. It has its headquarters in Maryland, and offices throughout the United States and in the United Kingdom and the Netherlands. Complainant employs over 2,000 people and has annual sales in excess of 1 billion United States dollars.

Complainant first began using the trademark SYNAGIS for its brand of palivizumab pharmaceutical in commerce on September 10, 1998. Complainant has secured a valid United States trademark registration for SYNAGIS, registered on May 25, 1999. Complainant has appended to its complaint evidence of this registration.

The SYNAGIS pharmaceutical product accounts for the largest portion of Complainant’s business, with sales in 2005 greater than 1 billion United States dollars. Complainant has invested large sums of money in promoting the SYNAGIS mark. In addition, Complainant registered the domain name <synagis.com> on December 23, 2004. It has maintained a web page at that location since that date, focusing on providing information and services related to its SYNAGIS product.

Respondent registered the domain name <synagisisbadforyou.com> on June 13, 2005. Respondent registered the domain name <synagisisnotsafe.com> on July 27, 2005. Since registration, both of these domains names resolve to pages that include only the following disclaimers:

- “This site is not sponsored by, endorsed by, or otherwise affiliated or associated with the manufacturer of SYNAGIS.”

- “The domain name <synagisisbadforyou.com> or <synagisisnotsafe.com> is not now, nor ever will be, for sale. Don’t ask.”

- “Soon, this notice will be replaced by a website that will provide a forum for criticism of the product SYNAGIS. Both positive and negative commentary regarding SYNAGIS will be posted on this site.”

Respondent has registered a variety of domain names that contain trademarks owned by others, including <bbcwebcams.com>, <cnnwebcams.com>, <mtvwebcam.com>, <mtvwebcams.com>, <abilifyisbadforyou.com>, <actonelisbadforyou.com>, <adderallxrisbadforyou.com>, and <altaceisbadforyou.com>. The last four domain names listed contain well-known pharmaceutical trademarks. A number of these domain names, including <adderallxrisbadforyou.com>, and <altaceisbadforyou.com>, resolve to web pages that contain pay-per-click advertising links.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain names are identical or confusingly similar to its federally registered SYNAGIS mark. Complainant contends that it has rights in the mark as a result of its federal registration, the large sums it has invested in advertising and promoting the mark, and as a result of its significant sales using the mark. Complainant maintains that the addition of ordinary dictionary terms following its mark does not distinguish the domain names from the mark.

Complainant also argues that Respondent has no rights or legitimate interests in the domain names, as Respondent is not commonly known by these names. Respondent has not been operating a bona fide “comment” website related to Complainant’s SYNAGIS mark, as Respondent has not created such a website, and as Respondent has been engaging in a pattern of registering domain names including the well-known trademarks of others and then exploiting them for commercial gain.

Finally, Complainant contends that Respondent registered and is using the domain names in bad faith. Respondent has not operated a genuine “comment” website at the domain names. Instead, Respondent hopes to exploit the domain names by installing pay-per-click advertising on them at some point in the future. Respondent has engaged in this behavior before, where Respondent registered domain names including well-known trademarks of others and set up advertising sites at the resultant web pages. Respondent’s disclaimers on the disputed domain names cannot be credited.

B. Respondent

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

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

(3) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel concludes, first, that Complainant has sufficiently shown that it has rights in its SYNAGIS mark.

The domain names incorporate the entirety of Complainant’s SYNAGIS mark, with the additions of either “isbadforyou” or “isnotsafe” and the “.com” top level domain name. The “.com” top level domain is easily disposed of, as top level domains are irrelevant to a finding that a domain name and trademark are identical. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493 (addition of a generic top-level domain is “not relevant” to a determination of similarity, as it is required, necessary, and functional).

The additions of “isbadforyou” or “isnotsafe” present significantly more difficult issues, and implicate a question that has divided a number of UDRP panels: does the addition of a pejorative term or phrase to a trademark or service mark dispel the likelihood of confusion? Some panels have concluded that any use of a mark, even with a pejorative term appended, meets the first element of the Policy, and that any issues regarding nominative fair use or rights to speech or commentary are addressed when considering the second and third elements (legitimate use and bad faith). Other panels have concluded that the addition of a pejorative descriptor to a mark prevents a complainant from meeting the first element required by the Policy because few if any reasonable Internet users would be likely to believe that a trademark owner would make derogatory comments about itself or its products. See Wachovia Corporation v. Alton Flanders, WIPO Case No. D2003 - 0596 (noting split in UDRP cases). The Panel notes that each case must be decided on its own merits, see Cabela’s Inc. v. Cupcake Patrol, FA 95080 (Nat. Arb. Forum Aug. 29, 2000).

The Complainant’s primary argument on this point is that “isbadforyou” or “isnotsafe” are descriptive, dictionary words, and that the combination of such words with an inherently distinctive mark such as SYNAGIS does not suffice to distinguish domain names. See Quixtar Investments, Inc. v. Scott A. Smithberger (a.k.a. Scott Smithy) and QUIXTAR-IBO, WIPO Case No. D2000-0138 (“Because the domain name incorporates in its entirety this distinctive mark, the Panel finds that the domain name quixtar-sign-up.com is confusingly similar to the mark QUIXTAR.”). This argument misses the point. The descriptive words “is bad for you” or “is not safe” suggest commentary or criticism of the product provided under or in connection with the trademark. The commentary or criticism may, of course, be entirely unfounded – in which case a cause of action might exist for trade libel, defamation, or other possible torts. But those are not issues for consideration, let alone resolution, by this Panel. Rather, this Panel is constrained by the language of the Policy to determine, as a threshold matter, whether the domain names are confusingly similar to the Complainant’s mark. Often, the addition of words to a mark does not suffice to distinguish the mark from the domain name and obviate confusion. But here, if the result of combining the mark SYNAGIS with these additional words indicates to an Internet user that the domain name owner is critical of the SYNAGIS product, it seems unlikely that such a user would be confused into believing that the domain name is associated with Complainant. Rather, it would appear to be associated with someone who wished to comment negatively upon the Complainant’s product. Few Internet users would expect a company to use, as its domain name, words that inherently communicate a negative message about it.

While that principle may be relatively well-established in the context of genuine speech and commentary sites, it becomes murkier when, as here, the site does not even seem to carry any genuine message at all. So-called “sham speech” domain names, selected not for any genuine purpose of providing critical commentary about a product or company but rather solely for the purpose of avoiding transfer under the Policy while accomplishing some unrelated business purpose (e.g. obtaining click-through revenue), test the limits of what the Policy can accomplish. Some panels are, understandably, drawn to the view that an overwhelming showing of lack of legitimate interest (factor two) or of bad faith (factor three) should reduce the need for a showing of factor one.

An interesting UDRP decision on this issue is Wal-Mart Stores, Inc. v. Wallmartcanadasucks.com and Kenneth J. Harvey, WIPO Case No. D2000-1104. In that case, the respondent was a serial cybersquatter who registered the domain name <wallmartcanadasucks.com> in apparent retaliation for having lost a further case to Wal-Mart Stores, Inc. In rejecting the complainant’s contention of confusing similarity, the panel noted:

“The [Policy] has a narrow scope. It is meant to protect against trademark infringement, not to provide a general remedy for all misconduct involving domain names. Posting defamatory material on a Website would not justify revocation of a domain name under the UDRP. Posting indecent material on a Website would not justify domain name revocation under the UDRP. . . . Bad faith, no matter how egregious, cannot supply a likelihood of confusion where it does not otherwise exist.”

The Panel in that case concluded that appending the word “sucks” at the end of a trademark does not create confusion with the owner of the trademark as to the source or sponsor of the site. Other cases have followed, concluding that the appending of derogatory words after a trademark weighs against a finding of confusing similarity. See Homer TLC, Inc. v. GreenPeople, FA550345 (Nat. Arb. Forum Oct. 25, 2005); KB Home v. RegisterFly.com, FA506771 (Nat. Arb. Forum Aug. 30, 2005); Paul Petrovich and Petrovich Dev. Co. and Petrovich, Inc. v. Barry Hinesle, FA417765 (Nat. Arb. Forum Mar. 31, 2005); American Express Co. v. Amexsux.com, FA356410 (Nat. Arb. Forum Dec. 27, 2004); CryptoLogic, Inc. v. Internet Billions Domains Inc., FA318925 (Nat. Arb. Forum Nov. 5, 2004); FMR Corp. v. Native American Warrior Society, WIPO Case No. D2004-0978; Asda Group Ltd. v. Mr. Paul Kilgour, WIPO Case No. D2002-0857 ; America Online, Inc. v. Johuathan Invs., Inc., WIPO Case No. D2001-0918; The Royal Bank of Scotland Group plc v. Umang Malhotra, WIPO Case No. D2001-0212; Lockheed Martin Corp. v. Dan Parisi, WIPO Case No. D2000-1015; McLane Co., Inc. v. Fred Craig, WIPO Case No. D2000-1455.

While the majority of these cases deal with “sucks” as the additional, derogatory, term, the holding of these cases extends to other derogatory terms or phrases. See America Online, Inc. v. Johuathan Invs., Inc., supra (no likelihood of confusion with regard to the domain name <fucknetscape.com>); FMR Corp. v. Native Am. Warrior Soc’y, supra (no likelihood of confusion as to domain names that append “fraud” or “theft” to a trademark); The Royal Bank of Scotland Group plc v. natwestfraud.com, supra (same conclusion as to <natwestfraud.com>); Compusa Mgmt. Co. v. Customized Computer Training, FA95082 (Nat. Arb. Forum Aug. 17, 2000) (same conclusion as to <stopcompusa.com> and <bancompusa.com>). In the context of pharmaceutical drugs, the words “is bad for you” or “is not safe” are sufficiently negative to be encompassed by the same principle.

In addition, courts of law in the United States (where both Complainant and Respondent are domiciled), in dealing with tests that require a plaintiff to establish a likelihood of confusion, have come to the same conclusion where a derogatory word is appended to the end of a trademark to make an internet domain name. See Taubman Co. v. Webfeats, 319 F.3d 770, 778 (6th Cir. 2003) (in dealing with <taubmansucks.com>, court concludes that “although economic damage may be an intended effect of Mishkoff’s expression, the First Amendment protects critical commentary when there is no confusion as to source, even when it involves the criticism of a business.”); Lucent Techs., Inc. v. Lucentsucks.com, 95 F. Supp. 2d. 528, 535 (E.D. Va. 2000) (dictum noting that <lucentsucks.com> is unlikely to create consumer confusion); Bally Total Fitness Holding Corp. v. Faber, 29 F. Supp. 2d 1161, 1165 n.2 (C.D. Cal. 1998) (“no reasonably prudent Internet user would believe that ‘Ballysucks.com’ is the official Bally site or is sponsored by Bally”).

Many cases on this issue under the Policy have come to the opposite result. Each case needs to be decided on its own facts. However if one looks only at recent cases between American parties, it is frequently held that the addition of derogatory terms to a trademark minimizes a likelihood of confusing similarity.¹ Furthermore, some of the typical rationales of the cases finding confusing similarity simply do not apply to the particular circumstances of this case.

One of the most common rationales is the argument that non-English speakers will not understand the meaning of pejorative terms like “sucks”, and so will click on the link because they recognize the trademark without understanding the derogatory meaning of the other words in the domain name. See, e.g., Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465 (confusing similarity found as to <berlitzsucks.com> where complainant’s core business was teaching English to non-English speakers who would likely be unable to understand the nuances of American slang). By contrast, “is bad for you” or “is not safe” are not slang, but instead simple, common English words that even those with only a basic proficiency in English are likely to understand. In any event, Complainant is headquartered in the United States, and has made no showing that the domain names are directed to non-English speakers, or even that non-English speakers form a significant customer base.

Another common rationale is based on the doctrine of “initial interest confusion” in trademark law, and suggests that, even if an Internet searcher sees and understands the derogatory meaning of the additional words, the user may be curious enough to follow a link to the domain name anyway, and that the respondent will thus have achieved its objective of diverting potential customers of the complainant by use of the complainant’s trademarks. See, e.g., Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477. In this case, however, no showing has been made as to initial interest confusion or its potential significance. Cf. America Online, Inc. v. Johuathan Investments, Inc., supra (“If there is any confusion, it will be because people expecting to visit a protest site will find themselves at a porn site.”). Furthermore, although more relevant under the bad faith discussion, in this case Respondent placed a disclaimer on the webpages at <synagisisbadforyou.com> and <synagisisnotsafe.com> that stated that the site was not affiliated with the manufacturer of SYNAGIS, reducing the possibility of consumer confusion. See Action Instruments, Inc. v. Technology Associates, WIPO Case No. D2003-0024. Finally, Complainant in this case has not shown any evidence of actual consumer confusion. A Google search of the word “synagis” returns about 208,000 results. The disputed domain names do not appear anywhere in the first twenty pages of results. The Panel finds it unlikely that an Internet searcher looking for information on SYNAGIS would come across the disputed domain names by mistake.

In reaching this conclusion, the Panel remains troubled by the fact that, as discussed below, that the Respondent does not appear to have adopted the domain names for purposes of genuine commentary or criticism. Indeed, as discussed below, Complainant has met its burden of showing that Respondent has no rights or legitimate interests in the domain names and that Respondent registered and is using them in bad faith. Such a showing, however, cannot as such sustain a finding of confusing similarity without a sufficient showing as to that factor. See American Express Co. v. Amexsux.com, supra (“Bad faith on the part of Respondent is but one of three distinct elements of proof that Complainant must establish in order to prevail in this proceeding”); CryptoLogic, Inc. v. Internet Billions Domains Inc., supra (no confusing similarity despite lack of rights or legitimate interests in site by respondent and respondent bad faith); America Online, Inc. v. Johuathan Investments, Inc., supra (same); Wal-Mart Stores, Inc. v. wallmartcanadasucks.com and Kenneth J. Harvey, supra (“Bad faith, no matter how egregious, cannot supply a likelihood of confusion where it does not otherwise exist.”). This is such a case.

The Panel concludes that Complainant has failed to show under the first element of the Policy that the disputed domain names are identical or confusingly similar to its SYNAGIS mark.

B. Rights or Legitimate Interests

Because Complainant has failed to establish the first element of its claim under the Policy, this Panel need not resolve the questions of Respondent’s rights or legitimate interests in the domain names or of Respondent’s bad faith. Nevertheless, the Panel concludes that Complainant has met its burden as to both elements.

Respondent does not appear to have any trademark or other intellectual property rights in the Domain Name. Complainant has provided undisputed evidence that it has not licensed, authorized, contracted, or otherwise permitted Respondent to use the SYNAGIS mark in any way. There is also no evidence before the Panel that Respondent has commonly been known by the domain names or any variant of them. See RMO, Inc. v. Burbridge, FA96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy Paragraph 4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail”); Gallup Inc. v. Amish Country Store, FA96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that when a respondent was not known by a mark it did not have rights in a domain name incorporating that mark).

The use of a domain name for the purposes of commenting upon an entity mentioned in the domain name, as Respondent’s disclaimers on the disputed domain names purport to do, could constitute a noncommercial or fair use under Policy Paragraph 4(c)(iii). See Tom Papania v. Fraud Expose’, WIPO Case No. D2001-0978 (use by respondent of complainant’s personal name as domain name found to be a right or legitimate interest where respondent used domain name to comment on complainant’s alleged criminal history). However, such is not the case here. Respondent has only written an intention on the website of placing such commentary, but has failed to take any steps to do so. This lack of any substantive comments on Complainant’s products at the domain names suggests that Respondent’s actions are a mere pretext.

Instead, Respondent’s likely motive was instead to register domain names containing well-known trademarks, and to have those domain names resolve to websites containing pay-per-click advertising links. Complainant has provided substantial evidence that Respondent has engaged in just such activity with regard to other trademarks. Indeed, Respondent has registered similar domain names relating to four other pharmaceutical drugs: <abilifyisbadforyou.com>, <actonelisbadforyou.com>, <adderallxrisbadforyou.com>, and <altaceisbadforyou.com>. Two of these, <adderallxrisbadforyou.com> and <altaceisbadforyou.com>, currently resolve to web pages that contain pay-per-click advertising links. The Respondent’s strategy appears to be for Internet searchers who are looking for information on these drugs (or, alternatively, for problems associated with these drugs) to be pointed to Respondent’s unrelated web pages, where they will hopefully click on one of the paid advertising links. Such a strategy cannot be considered a right or legitimate interest in the domain names. See RX America, LLC. v. Matthew Smith, WIPO Case No. D2005-0540 (redirection of domain name to pay-per-click website not a legitimate right or interest); Sociйtй Air France v. Virtual Dates, Inc., WIPO Case No. D2005-0168 (same).

Complainant also correctly argues that its United States federal registration of the SYNAGIS mark provides Respondent, a United States entity, with constructive notice of Complainant’s interest in the mark and prior rights, see Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028, and that Complainant’s activities in establishing the SYNAGIS mark as well-known in the pharmaceutical field make it unlikely that Respondent can establish legitimate interests in the domain names, See Victoria’s Secret et al. v Asdak, St Johns, AG, FA96542 (Nat. Arb. Forum February 28, 2001). Respondent has provided no evidence to contradict these points.

The Panel finds that Respondent has no rights or legitimate interests in the domain names under Policy Paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

As noted above, Respondent is not using the disputed domain names to run a legitimate “comment” website about Complainant’s SYNAGIS product. Instead, Respondent’s registration appears to be part of a pattern where Respondent registers domain names containing well-known trademarks of other parties (occasionally appending negative descriptive words like “is not safe”), and then links them to web pages containing pay-per-click advertising unrelated to Complainant. Such activity constitutes bad faith registration and use. See RX America, LLC. v. Smith, supra; Societй Air France v. Virtual Dates, Inc., supra. The fact that Respondent has engaged in this behavior in regard to multiple other domain names further supports a finding of bad faith. See Philip Morris Incorporated v. r9.net, WIPO Case No. D2003-0004; The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113.

The web pages accessed by the disputed domain names contain disclaimers that “This site is not sponsored by, endorsed by, or otherwise affiliated or associated with the manufacturer of SYNAGIS”. Such a disclaimer does not prevent a finding of bad faith. “It is tantamount to committing a tortious act but then seeking to avoid liability after the event. It is only by unauthorized use of the trademark that the potential customer is brought to the website (containing the disclaimer) in the first place”. ISL Worldwide and The Federal Internationale de Football Association.v Western States Ticket Service, WIPO Case No. D2001-0070 (emphasis in original).

The Panel finds that Respondent has registered and used the Domain Name in bad faith under Policy Paragraph 4(a)(iii).

 

7. Decision

For the foregoing reasons, the Panel concludes that the Complaint is denied.

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Michael A. Albert
Sole Panelist

Dated: April 14, 2006

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¹ The Panel is aware of Societй Air France v. Virtual Dates, Inc., WIPO Case No. D2005-0168, filed by the French airline, in which a majority of the Panel concluded that <airfrancesucks.com> was confusingly similar to the AIR FRANCE trademark, due to the fact that a number of Internet users would not be familiar with English and so would not understand the derogatory meaning of the word “sucks”. The dissenter argued that the domain name was not confusingly similar. Unlike Air France, nothing about the domain names in this case suggests that they are directed at non-English speakers. Cf. FMR Corp. v. Native American Warrior Society, WIPO Case No. D2004-0978 (noting that most decisions finding no protection for even good-faith “cyber-gripe” sites “involved non-U.S. parties or panelists”).