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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

King Pharmaceuticals, Inc. v. Great Wall Domains

Case No. D2006-0342

 

1. The Parties

The Complainant is King Pharmaceuticals, Inc., Bristol, Tennessee, United States of America, represented by Jenner & Block LLP, United States of America.

The Respondent is Great Wall Domains, Guiyang, China.

 

2. The Domain Name and Registrar

The disputed domain name <kingpharmaceuticals.com> is registered with Intercosmos Media Group d/b/a directNIC.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2006. On March 21, 2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On March 29, 2006, Intercosmos Media Group d/b/a directNIC.com 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 4, 2006. The Center verified that the Complaint together with the amendment to 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 April 7, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 27, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 28,2006.

The Center appointed Nasser A. Khasawneh, Mark Partridge and Yong Li as panelists in this matter on May 31, 2006. The Panel finds that it was properly constituted. Each member of 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 has four trademark registrations of KING PHARMACEUTICALS and KING PHARMACEUTICALS AND DESIGN in class 5. These trademarks were registered in 2004, and 2005 in the United States for pharmaceuticals for human and veterinary, prescription pharmaceuticals and other items in the same class. The first registration obtained is dated August 17, 2004. The Complainant had started using the registered trademark as of 1994, as recorded in the registration certificates. In fact, according to the presented certificates, two of the trademark registrations were filed in 1995

The Complainant has registered domain names including the whole wordmark KING PHARMACEUTICALS or elements thereof. The Panel verified the registration of the domain name <kingpharm.com> and accessed the web-site belonging to the Complainant. The Panel also verified the domain names <kingpharmaceuticals.net>, <kingpharmaceuticals.org> and <kingpharmaceuticals.info> which all direct to the web-site of the Complainant under the domain name <kingpharm.com>. It appeared from the Whois records that the Complainant registered the domain name <kingpharmaceuticals.info>, <kingpharmaceuticals.org> and <kingpharmaceuticals.net> on March 26, 2003. The Complainant has registered the domain name <kingpharm.com> on October 3, 1996.

The disputed domain name was registered on December 13, 2004.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Respondent has no right or legitimate interests in the disputed domain name for the following reasons:

- There does not seem to exist anything which indicates a use or preparation to use by the Respondent for a bona fide offering of goods or services.

- The disputed domain name shows the trademark and trade name of the Complainant as well as other trademarks belonging to the Complainant. This use by the Respondent is without permission or authorization by the Complainant. By such use, the Respondent is trying to create the impression of an association with the Complainant.

- The Respondent has no rights in the disputed domain name or the trademark KING PHARMACEUTICALS and was never known by the domain name.

- The Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. But only using the trademark belonging to the Complainant as part of the disputed domain name for the purpose of diverting users of the internet to the web-site of the Respondent and the other sites linked thereto;

- The Complainant also contends that the disputed domain name was registered and is being used in bad faith for the following reasons:

- The Complainant had sent through its attorneys a letter to Ali Fark whose name appeared as the registrant of the disputed domain name. No response to the letter, which was also sent by e-mail, was received and the Complainant has no reason to believe the e–mail was not delivered. Immediately after sending the letter, the name of the registrant in the Whois Database was changed and, at a later stage, this was changed to the name currently appearing on the database. The Respondent is providing false information.

- The Respondent must have been aware of the Complainant’s rights in the trademark King Pharmaceuticals as it was registered with the United States Patent and Trademark Office (USPTO).

- The disputed domain name creates confusion and deceives the consumer as to the source of the web-site of the Respondent. It may lead the public to associate the Complainant with the Respondent and its web-site.

- The Respondent is attempting to attract, for commercial gain, Internet users by creating the likelihood of confusion and the impression of endorsement of the web-site by the Complainant.

- The Respondent is trying to benefit from the reputation and the goodwill of the Complainant.

B. Respondent

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

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The trademark KING PHARMACEUTICALS belongs to the Complainant who registered it for the first time on August 17, 2004. According to the available documentation, the trademark was used by the Complainant prior to that date since 1994. The various trademark and domain name registrations by the Complainant establish its ownership of the trademark KING PHARMACEUTICALS. Based on these facts, the Complainant is the legitimate owner of the trademark KING PHARMACEUTICALS and has proven use thereof for the past decade. While the Panel notes that the Complainant did not submit proof of its current use of the trademark, the Panel relied on the four certificates of registration of the KING PHARMACEUTICALS trademarks with the USPTO which stated the following: “First Use 6-30-94.” The Panel was not presented with any documentation or proof to dispute this statement.

The difference between the Complainant’s trademark KING PHARMACEUTICALS and the domain name <kingpharmaceuticals.com> is in the addition of the suffix “.com”, which does not create any distinctiveness that helps eliminate the possibility of confusion (see Nokia Corporation v. Firdaus Adinegoro-Beli Hosting WIPO Case No. D2004-0814). Accordingly, many Internet users who are aware of the Complainant’s activity and its trademark are likely to visit this web-site on the mistaken understanding that it belongs to the Complainant. Such use is confusing to the consumer.

Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant.

B. Rights or Legitimate Interests

The trademark KING PHARMACEUTICALS is owned by the Complainant as established by the facts of this case. The Respondent is not linked to the Complainant or its business in any manner nor does it act on its behalf. The Complainant contends that it had not given any authorization to the Respondent to use the trademark KING PHARMACEUTICALS as part of the disputed domain name nor to use the other trademarks belonging to the Complainant on the web-site. The Panel notes that the claims of the Complainant that the Respondent is using other trademarks belonging to the Complainant, such as ALTACE and SONATA, is not supported by any proof of ownership of these trademarks.

In accordance with Paragraph 4(c) of the Policy, the Respondent can demonstrate its rights or legitimate interest in the disputed domain name by proving one of the following elements:

i) that the Respondent used or presented demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services;

ii) that the Respondent has been commonly known by the domain name;

iii) that the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark of the Complainant.

The Respondent did not submit any evidence that establish its rights or legitimate interests based on any of the above scenarios. While failure to respond does not present conclusive evidence against the Respondent, the Panel did consider this factor as further proof of the Respondent’s failure to demonstrate its rights or legitimate interests in the disputed domain name (see Nokia Corporation v. Firdaus Adinegoro-Beli Hosting WIPO Case No. D2004-0814).

When examining each of the above elements, Panel found that there is no offering of any goods or services done by the Respondent in this case. The disputed domain name directs the user to a web-site that includes links to other web-sites. The web-site of the Respondent includes links to web-sites for job search, various business related material, and a very wide range of topics such as entertainment, airline tickets, dating, ring tones, etc. The Respondent has not submitted any proof demonstrating an intent or preparation to use the domain name in connection with a bona fide offering of goods and services. Its web-site serves as a search portal.

The Panel does not find any association between the Respondent’s name and the disputed domain name which may indicate that the Respondent has been commonly known by the name “King Pharmaceuticals”.

The Panel also found that the Respondent can not argue that the disputed domain name was being used for “legitimate non-commercial or fair use” purposes. In fact, the Respondent is using the disputed domain name to direct the public to a web-site which contains links to other web-sites. The Panel believes that the Respondent receives commercial gains from the display of these links.

Based on all of the above factors, the Panel finds no rights or legitimate interest for the Respondent in the disputed domain name.

C. Registered and Used in Bad Faith

The Respondent whose name appears in the Whois database is different from the name which appeared initially. Presuming the current Respondent is not the same entity as the entity which registered the disputed domain name, the domain name has been transferred to the Respondent. However, even as a transferee the Respondent is bound by the same obligations as the Transferor. The facts submitted in this case show that the acquisition and use of the disputed domain name by the Respondent is in bad faith.

This is demonstrated by the following facts:

1) Paragraph 4(b) of the Policy, which enumerates instances establishing bad faith registration and use, states that: “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” The trademark of the Complainant was registered a few months before the registration of the disputed domain name and its acquisition by the Respondent. However, the use of the trademark by the Complainant has started a decade ago and the registration of the domain names of the Complainant date earlier than the registration of the disputed domain name. Thus, it appears that the Respondent intended to benefit from the reputation of the trademark and divert internet users to its web-site. In InfoSpace.com, Inc. v. Tenenbaum Ofer, WIPO Case No. D2000-0075, the Panel concluded that the Respondent has “registered the domain name in a deliberate attempt to attract users to its planned web site for commercial gain due to confusion with Complainant’s mark”.

The disputed domain name links to a web-site that includes links to other web-sites. The Panel verified the destinations that these links led to and found that they led to web-sites of other companies. The web-site for example includes a tab called “online pharmacy.” By clicking on the tab, the user obtains a list of various links to web-sites which allow purchasing medication. When surfing the web-site of the Respondent, one comes across list of links which are clearly defined as “sponsored links”. Accordingly, the Panel concludes that by providing such links, the Respondent is almost certainly obtaining a financial return from the owners of such web-sites through visitors that were diverted from the Complainant’s internet traffic. This is further confirmed by the fact that a great number of these links are related to pharmaceuticals, whether for the purchase of medication or for the purpose of job hunting and job opportunities in that field.

For all of the above considerations, the Panel finds the bad faith of the Respondent in acquiring and using the disputed domain name established.

 

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, <kingpharmaceuticals.com> be transferred to the Complainant.

Nasser A. Khasawneh Presiding Panelist
Mark Partridge Panelist	Yong Li Panelist

Dated: June 13, 2006