National Arbitration Forum
DECISION
Santarus,
Inc. v. KME Solutions a/k/a Globe411.com
Claim Number: FA0806001210751
PARTIES
Complainant is Santarus, Inc. (“Complainant”), represented by Dave
Deonarine, of Wilson Sonsini Goodrich & Rosati,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <zegrid.com> and <zegered.com>,
registered with Godaddy.com, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Timothy D. O’Leary as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 18, 2008; the
National Arbitration Forum received a hard copy of the Complaint on June 19, 2008.
On June 19, 2008, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <zegrid.com>and <zegered.com>
domain names are registered with Godaddy.com,
Inc. and that the Respondent is the current registrant of the names. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 25, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of July 15, 2008 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent via e-mail,
post and fax, to all entities and persons listed on Respondent’s registration
as technical, administrative and billing contacts, and to postmaster@zegrid.com and postmaster@zegered.com by e-mail.
A timely Response was received and determined to be complete on July 15, 2008.
On July 28, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Timothy D. O’Leary as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
Complainant, based in
Complainant and its authorized licensees market pharmaceutical preparations under the ZEGERID mark for the treatment of upper gastrointestinal diseases and disorders.
Complainant has continuously and extensively used the ZEGERID mark since at least as early as 2004 in connection with its pharmaceutical preparations for the treatment of upper gastrointestinal diseases and disorders.
Complainant holds
Complainant has invested significant amounts in advertising and promoting its products under the ZEGERID mark. Complainant’s ZEGERID products have been featured in print advertisements in leading trade publications. Since its introduction in 2004, Complainant’s ZEGERID products have been very successful and have annually averaged millions of dollars in sales.
Complainant’s ZEGERID mark has acquired tremendous commercial strength and goodwill, and the mark has become closely linked with Complainant.
For all of these reasons, Complainant has substantial
rights in the ZEGERID mark, including
The <zegered.com> domain name contains Complainant’s mark but changes the “i” to an “e” and adds the generic top-level domain (“gTLD”) “.com.” The <zegrid.com> domain name also contains Complainant’s mark but omits the letter “e” and adds the generic top-level domain (“gTLD”) “.com.” Such minor alterations of the mark constitute typosquatting since Respondent is attempting to take advantage of common spelling and/or typographical errors made by Internet users. These minor alterations made to Complainant’s mark do not negate the confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July 23, 2002) (finding that the <neimanmacus.com> domain name was a simple misspelling of the complainant’s NEIMAN MARCUS mark and was a classic example of typosquatting, which was evidence that the domain name was confusingly similar to the mark).
Respondent is using the <zegrid.com> and <zegered.com> domain names to redirect Internet users to Respondent’s commercial, pay-per-click websites featuring sponsored links to various third party websites, including websites where products competitive with Complainant’s products are sold. This is not a use in connection with a bona fide offering of goods and services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Further, Respondent’s registration of domain names that take advantage of common spelling and/or typographical errors made by Internet users also indicates a lack of rights and legitimate interests under Policy ¶ 4(a)(ii).
Respondent is not authorized to use Complainant’s ZEGERID mark, or any mark confusingly similar thereto, and is not associated with Complainant in any way. Further, the WHOIS information identifies Respondent as “KME Solutions” and “Globe411.com.” Thus, Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Respondent has registered and is using the disputed domain names to redirect Internet users to Respondent’s commercial, pay-per-click websites featuring sponsored links to various third party websites, including websites where products competitive with Complainant’s products are sold. This constitutes bad faith under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv).
Moreover, the use of domain names that take advantage of common spelling and/or typographical errors made by Internet users indicates bad faith registration and use under Policy ¶ 4(a)(iii).
Finally, the disputed domain names resolve to Respondent’s websites that include links with titles such as: “How I Cured Acid Reflux,” “Acid Reflux 3 Day Cure,” “Stop Heart Burn,” and “Amazing Acid Reflux Cure.” There is no reason, other than knowledge of Complainant’s ZEGERID mark, why Respondent would have terms relating to gastrointestinal disorders on its websites. Further, Respondent’s “typosquatting” also indicates that it had knowledge of Complainant’s distinctive ZEGERID mark when it registered the disputed domain names.
Respondent acknowledges that the domain names in question ARE in fact identical and confusingly similar to the trademark of “Zegerid.”
The Complainant picked a very unusual name and
spelling for the Complainant’s trademark, which meant it was very obvious to
the Complainant that numerous domain names and spelling combinations could be
deemed similar to the trademark, and which the Complainant could have easily
secured but did not. And for that I do fault the Complainant.
As a gastroenterologist, I am very familiar with Santarus Corporation and its drug, Zegerid. Many precedents have been set in the preceding years of the trouble trademark owners have had with similar domain names to their trademarks, and I am familiar with the concept of “cyber squatting”. I am also familiar with prior incidents where big corporations were able to wrestle ownership of rightfully purchased domain names from their owners by claiming “cyber squatting”. However I do not agree with that premise. It might have made sense many years ago when nascent businesses didn’t have the knowledge or the sophistication to purchase all “typo variations” of their Trade Marks. Zegerid, however, is the latest comer of all the group of acid-suppressing medications known as Proton Pump Inhibitors (PPIs) on the market. To my memory, it was launched around 2000. By then any business that knew anything about doing business on the Internet would have had the common sense to secure all similar domain names to its brand name. And I find it inexcusable of the owners of the Zegerid trademark to have failed to do so.
In this particular situation of the Zegerid trademark, what happened was not a trademark infringement by a cyber squatter. It was, in my opinion, capitalization on small case of market inefficiency by a domain name entrepreneur. I have rightfully purchased those 2 domain names out of my own funds and I do affirm my ownership of them.
DISCUSSION
Preliminary
Issues: Multiple Respondents
The Panel must first consider whether these proceedings have been properly instituted. UDRP ¶ 3(c) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that Respondent is operating under various asserted alleged aliases.
The WHOIS information for each of the disputed domain names contain the same name, “Khaled Elraie,” and email address, “ski@cyberdude.com,” for the administrative contact and technical contact. For each disputed domain name, the address and phone numbers between the registrant, technical, and administrative contact are identical. Respondent asserts himself to be Khaled Elraie and to currently reside at the same address as that listed for the <zegered.com> domain name. Respondent has not disputed that it is the current owner of both of the disputed domain names. The websites for both of the disputed domain names are nearly identical. Accordingly, the Panel finds that the listed aliases “Kme Solutions” and “Globe411.com” are the same person or entity, or entities controlled by the same person or entity, so that the filing of this Complainant is justified, proper and pursuant to Supplemental Rule ¶ 4(f)(ii) and chooses to proceed with the instant proceeding. See Yahoo!, Inc. v. Soksripanich & Others., D2000-1461 (WIPO Jan. 29, 2001) (finding multiple aliases to be the same respondent when the administrative contact information of the various subject domain names was the same or quite similar).
Primary Issues
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute
Resolution Policy (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.
Identical
and/or Confusingly Similar
I find the
issues on this element in favor
of Complainant.
The Panel
finds that Complainant has sufficiently established rights in the ZEGERID mark for the purpose of Policy ¶ (a)(i) through its registration with
the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,929,881
issued March 1, 2005). See Bloomberg L.P. v. Johnston, FA
760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had
established rights in the BLOOMBERG mark through registration with the United
States Patent and Trademark Office).
Both of the disputed domain names contain the generic
top-level domain (“gTLD”) “.com.”
However, the
Panel finds this to be irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis.
See
Jerry Damson, Inc. v.
The Panel
additionally finds that the <zegrid.com>
and
<zegered.com>
domain names are both close
misspellings of Complainant’s ZEGERID mark.
Both of the disputed domain names differ by one letter from the mark. The <zegrid.com> domain name omits the second “e” in Complainant’s
mark. The <zegered.com> domain
name replaces the “i” in Complainant’s mark with an “e.” Such small variations are generally regarded
by UDRP panels to insufficiently distinguish a disputed domain name. See
Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000)
(finding that a domain name which differs by only one letter from a trademark
has a greater tendency to be confusingly similar to the trademark where the
trademark is highly distinctive). Accordingly, the
Panel finds that the <zegrid.com> and <zegered.com> domain names are confusingly similar to
Complainant’s ZEGERID mark pursuant to Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075
(Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name
confusingly similar to the BELKIN mark because the name merely replaced the
letter “i” in the complainant’s mark with the letter “e”).
Rights or
Legitimate Interests
I find the
issues on this element in favor
of Complainant.
The Panel is aware that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.
There is nothing in the record that indicates that Respondent is or ever was commonly known by the disputed domain names. Moreover, Respondent presents no opposition to Complainant’s assertions that Respondent is not commonly known by the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by either of the <zegrid.com> or <zegered.com> domain names pursuant to Policy ¶ 4(c)(ii).
Complainant argues that the <zegrid.com> and <zegered.com> domain names resolve to a commercial pay-per-click website featuring sponsored links to various third party websites, including websites where products and services competitive with Complainant are advertised and sold. Respondent neither confirms nor denies that this is occurring. The Panel presumes that the various links to direct competitors of Complainant financially benefits Respondent for each Internet user who clicks upon one of them. Accordingly, the Panel finds that this does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
Complainant additionally agues that Respondent is engaging in typosquatting, the taking advantage of Internet users who mistakenly misspell a complainant’s mark by typing an incorrect letter. See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant’s <indymac.com> website but mistakenly misspell Complainant’s mark by typing the letter ‘x’ instead of the letter ‘c’”). The <zegrid.com> and <zegered.com> domain names are both close misspellings of Complainant’s ZEGERID mark. Moreover, the websites they resolve to display links relating to and competing with Complainant’s mark. Consequently, the Panel finds that Respondent is engaging in typosquatting and therefore does not have any rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”).
Registration
and Use in Bad Faith
I find the
issues on this element in favor
of Complainant.
The <zegrid.com>
and
<zegered.com> domain names both resolve to a website with
the header: “Zegrid is a proton pump inhibitor.
It is designed to decrease acid secretion to relieve acid reflux
disease.” Underneath the header a series
of advertisements and links to various third-parties offering information,
services, and products all relating to acid-reflux are displayed. Many of these third-party websites offer
services or products that are in direct competition with the product
Complainant sells under its ZEGERID
mark. Accordingly, the Panel finds that
Respondent has registered and is using the disputed domain names in bad faith
pursuant to Policy ¶ 4(b)(iii) for the purpose of disrupting Complainant’s
business. See Tesco Pers. Fin. Ltd. v.
Domain Mgmt. Servs., FA
877982
(Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly
similar domain name to attract Internet users to a directory website containing
commercial links to the websites of a complainant’s competitors represents bad
faith registration and use under Policy ¶ 4(b)(iii)).
Moreover, Complainant argues that the disputed domain
names must be commercially benefiting Respondent through pay-per-click or
similar “click-through” fees. Both of
the disputed domain names feature only links to third-parties and most of these are competitors of
Complainant. The Panel finds that
Complainant is commercially benefiting from this use of the two confusingly
similar disputed domain names, and finds this to be further evidence that
Respondent registered and is using the <zegrid.com> and <zegered.com>
domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See
Complainant also alleges that Respondent is engaged in typosquatting. Previous panels have also found this to be sufficient to establish that a respondent registered and is using a disputed domain name in bad faith. The Panel finds that Respondent has engaged in typosquatting and has registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See also Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
And finally, Respondent admits that it was aware of Complainant’s mark when it registered the disputed domain names. It states that it is a doctor and is interested in medicines such as those of Complainant’s. Respondent specifically states that it was aware of Complainant’s website regarding the ZEGERID mark in 2000, five years prior to Respondent’s registration of the <zegrid.com> domain name. The Panel finds that Respondent’s actual notice of Complainant’s rights in the mark before Respondent registered the disputed domain names is additional evidence of Respondent’s bad faith registration and use of the disputed domain names pursuant to Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) (“Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse.”).
Reverse
Domain Name Hijacking
While Respondent does not specifically accuse Complainant of reverse
domain name hijacking, it appears to the Panel that Respondent’s arguments can
be interpreted to make such an assertion so the Panel rules on the issue.
Respondent argues that Complainant is attempting to “wrestle the
ownership of those domain names from their rightful owner,” and implies that
Complainant has filed this Complaint in bad faith because it was Complainant that “inexcusably” did
not registered all the variations on its mark into domain names when it first
introduced the ZEGERID mark in commerce.
However, Respondent’s assertions as to Complainant’s bad faith do not
allege that Complainant knew that Respondent had any rights or legitimate
interests in the domain names. Further,
there is no evidence that Complainant is using the Policy other than to declare
its rights. Complainant has proven all
the elements of the Policy and that alone defeats any allegation of reverse
domain hijacking.
The Panel finds for Complainant on this issue.
See World
Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO
Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the
Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Watson Pharm., Inc. v. WhoisGuard,
FA 588321 (Nat. Arb. Forum Dec. 19, 2005) (rejecting the respondent’s assertion
of reverse domain name hijacking because there was no evidence that the
complainant was using the Policy other than to declare its rights); see also Microsoft Corp. v. Domain Registration
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zegrid.com>
and <zegered.com>
domain names be TRANSFERRED from Respondent to Complainant.
Timothy D. O’Leary, Panelist
Dated: August 8, 2008
National Arbitration
ForuM
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