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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Brystol-Myers Squibb Company, Westwood-Squibb Pharmaceuticals Inc. v. Johnny Carpela
Case No. D2007-0354
1. The Parties
The Complainants are Brystol-Myers Squibb Company and Westwood-Squibb Pharmaceuticals Inc., both of New York, in the United States of America, represented by Gowling Lafleur Henderson, LLP, Canada.
The Respondent is Johnny Carpela, Washington, United States of America.
2. The Domain Name and Registrar
The disputed domain name <ultravate.com> is registered with Go Daddy Software (the “Domain Name”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2007. On March 9, 2007, the Center transmitted by e-mail to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On March 14, 2007, Go Daddy Software transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, 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 March 20, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 12, 2007.
The Center appointed Andrew Mansfield as the sole panelist in this matter on May 2, 2007. 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 Bristol-Myers Squibb Company is the owner of the Canadian trademark ULTRAVATE for a pharmaceutical preparation that is a prescriptive dermatological topical steroid in cream and ointment for the treatment of skin diseases. The registration number for this trademark is TMA 532,894. The declaration of use was filed on July 27, 2000 and the registration date is September 19, 2000.
Complainant Westwood-Squibb Pharmaceuticals Inc., a subsidiary of Complainant Bristol-Myers Squibb Company, is the owner of the United States Federally registered trademark ULTRAVATE for pharmaceuticals (namely, a topical steroid). The registration number for this trademark is 1,647,847. While the first use in commerce was December 23, 1989, the trademark registration date is June 18, 1991.
5. Parties’ Contentions
Complainants allege that Bristol-Myers Squibb Company is a leading global pharmaceutical and related health care products company. Complainant Bristol-Myers Squibb Company is the owner of the Canadian trademark registration ULTRAVATE, registration No. TMA 532,894, which matured to registration on September 19, 2000. Complainant Bristol-Myers Squibb Company alleges that its subsidiary Westwood-Squibb Pharmaceuticals, Inc. is the owner of the corresponding U.S. trademark registration ULTRAVATE, registration No. 1,647,847, which matured to registration on June 18, 1991.
Complainants allege that on February 26, 2002, without the permission of the Complainants, the Respondent registered the domain name <ultravate.com>. The <ultravate.com> domain name was made to resolve to “www.canadapharmacy.com”, an online pharmacy promoting the sale of the Complainants’ ULTRAVATE product, as well as products of businesses that compete with the products of the Complainants. The Complainants allege that they issued two letters to the Respondent requiring the assignment of the domain name, but indicate they never received a response to either letter.
Complainants allege that the ULTRAVATE trademark is a coined term and highly distinctive. As a result of alleged extensive and continuous use preceding the registration date of <ultravate.com>, the ULTRAVATE trademarks have, according to Complainants, become well-known and attracted considerable reputation and goodwill.
After Respondent registered the <ultravate.com> domain name, Complainants allege that <ultravate.com> was made to hyperlink to Canada Pharmacy’ s website located at “www.canadapharmacy.com”. The site promoted the sale of various pharmaceutical preparations, including the ULTRAVATE product, as well as products of competitors of the Complainants.
On information and belief, Complainants allege that Respondent is and/or was an affiliate of Canada Pharmacy, which would have made the Respondent eligible for a referral fee each time an end user was linked to Canada Pharmacy' s website by way of <ultravate.com>. Complainants allege that irrespective of the relationship between Canada Pharmacy and Respondent, Respondent commercially benefited from the linking arrangement with Canada Pharmacy.
Complainants allege that shortly after Complainants’ legal counsel contacted Respondent in January of 2007, the domain name <ultravate.com> was rendered inactive.
Complainants allege that the Domain Name and their trademark ULTRAVATE are identical and confusingly similar because respondent incorporated the whole of Complainants’ trademark in the Domain Name.
Further, Complainants allege that there has never been any relationship between the Complainants and the Respondent, and the Respondent has never been licensed, or otherwise authorized, to register or use the ULTRAVATE trademark in any manner whatsoever, including in, or as part of, a domain name.
Complainants allege next that there is no evidence to suggest that Respondent has ever used, or prepared to use, the Domain Name in connection with a bona fide offering of goods or services. Complainants draw the attention of the Panel to prior WIPO Panels’ decisions that found that it is not a bona fide offering of goods to use a trademark in a domain name to link to a commercial website that offers the trademarked good as well as other goods, including competing products.
Additionally, Complainants allege that there is no evidence to suggest that the Respondent has been commonly known by ULTRAVATE, or that the Respondent is making, or intends to make, a legitimate non-commercial or fair use of <ultravate.com>.
Finally, Complainants allege that Respondent registered and is using the Domain Name in bad faith. In particular, Complainants allege that Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainants’ mark as to source, sponsorship, affiliation, or endorsement. Complainants argue that it is a well-established principle that the unauthorized linking from a domain name comprised of, or containing, a complainant’s pharmaceutical trademark to an online pharmacy constitutes evidence of bad faith.
As another indicia of bad faith registration and use, Complainants present evidence that Respondent has been a respondent in five other UDRP proceedings. In each, Respondent allegedly used a trademark as a domain name to link to Canada Pharmacy.
Complainants alternatively allege that Respondent is attempting to disrupt their businesses as a competitor. Complainants allege that the knowing disruption of their businesses constitutes bad faith under the Policy.
Again referring to Respondent’s multiple UDRP proceedings, Complainants further allege that Respondent is engaged in a pattern or practice of registering domain names that contain the trademarks of third parties. Such conduct, Complainants allege, evidences bad faith under the Policy.
In their conclusion, Complainants urge the Panel to examine the entirety of the circumstances surrounding the use and registration of the Domain Name. Complainants urge the Panel to find that Respondent had constructive knowledge of their trademark rights as a result of the United States and Canadian trademark registrations.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Complainant has the burden of proof in showing that each element within paragraph 4(a) of the Policy is present. These are as follows:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name was registered and is being used by Respondent in bad faith.
Even when a respondent defaults, as is the case here, the Complainant must establish and carry the burden of proof on each of the three elements identified above with regard to each of the disputed domain names. See Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan,
WIPO Case No. D2004-0383.
The Panel proceeds to deal with each of these elements in turn.
A. Identical or Confusingly Similar
The possession of United States Federally registered trademark rights by a complainant meets the threshold requirement of possessing trademark rights sufficient to satisfy paragraph 4(a)(i) of the Policy. Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano,
WIPO Case No. D2003-0661. Complainant Bristol-Myers Squibb Company has a United States Federally registered trademark in the word ULTRAVATE. For that reason alone, Complainants possess trademark rights sufficient to satisfy the Policy. In addition, Complainants possess a Canadian registered trademark in the same term.
The Domain Name is identical to Complainants’ trademark ULTRAVATE. It is a well established principle that the addition of a generic top level domain, such as “.com,” is without legal significance in determining the issue of similarity. J.P. Morgan v. Resource Marketing, WlPO Case No. D2000-0035. After dropping the “.com” top level domain signifier, the Domain Name and Complainants’ trademark ULTRAVATE are identical on a character-by-character basis.
B. Rights or Legitimate Interests
Complainants assert that they are aware of no rights or legitimate interests that Respondent has in the disputed domain name. The disputed domain name is not the name of the Respondent. The Panel is satisfied that Complainants have made out an initial prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating a right or legitimate interest in the disputed domain name. By matter of default, Respondent has failed to do so, and Complainants are deemed to have satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides the following non-exclusive examples of registration and use in bad faith:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your website 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 website or location or of a product or service on your website or location.”
Respondent’s conduct in this matter is similar to the indicia of bad faith registration and use set forth in Paragraph 4(b)(iv). Internet users seeking information on Complainants’ product Ultravate may type the name directly into a web browser as a URL. Such users may add the “.com” top level domain, the most common top level domain, or some web browsers do so automatically. Such users would, prior to the deactivation of the Domain Name, be taken to Canada Pharmacy and offered information and the ability to purchase products that compete with Ultravate. In addition, many users could arrive at the Domain Name by searching for information on Ultravate through various Internet search engines.
After considering Respondent’s pattern of registering domain names consisting of other’s trademarks and taking into account the nearly non-existent chance that the Domain Name was selected without knowledge of Complainants’ trademarks, the Panel finds that the Domain Name was registered and is being used in bad faith.
This finding is further strengthened by the fact that numerous prior Panels have found similar conduct (a domain name consisting of a trademarked drug name linking to a pharmacy or competing drug website) to constitute bad faith registration and use under the Policy. See, e.g., Hoffmann-LaRoche Inc, v. #1 Viagra Propecia Xenical & More Online Pharmacy,
WIPO Case No. D2003·0793; Pfizer Inc, v, Enamecorp.com,
WIPO Case No. D2001-0791; and, G.D. Searle & Co, v. Kevin Dunham, NAF, Case No. FA12390l.
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 <ultravate.com> be transferred to the Complainants.
Dated: May 8, 2007