National
Arbitration Forum
DECISION
Ranbaxy Laboratories Inc. v.
Satoshi Shimoshita
Claim Number: FA0902001247091
PARTIES
Complainant is Ranbaxy Laboratories Inc. (“Complainant”), represented by Lynda
J. Zadra-Symes, of Knobbe Martens Olson & Bear LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eurax.com>, registered with Enom, 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 February 11, 2009; the
National Arbitration Forum received a hard copy of the Complaint on February 12, 2009.
On February 11, 2009, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <eurax.com> domain name is registered
with Enom, Inc. and that the Respondent
is the current registrant of the name. Enom, Inc. has verified that Respondent is
bound by the Enom, 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 February 13, 2009, a
Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of March 5, 2009 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@eurax.com by e-mail.
A Response was received electronically on February 13, 2009, however, a hard copy was not received prior to the
Response deadline of March 5, 2009.
On March 16, 2009, 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 name be transferred from
Respondent to Complainant.
PRELIMINARY ISSUE: Deficient Response
Respondent’s Response was submitted only in electronic format prior to the Response deadline; a hard copy was not subsequently received. Thus the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5.
The Panel, in its discretion,
chooses to accept and consider this Response.
PARTIES’ CONTENTIONS
Complainant is one of the world’s top 10 generic pharmaceutical
companies. This Complaint is based on the 101RAX(8) mark, which Complainant has
used in connection with at least antipsoric ointment. Complainant’s EURAX®
antipsoric ointment is a well known and well-respected brand. From July 2007
through December 2008, EURAX® branded products generated gross sales of $2
million.
Complainant’s EURAX® mark was first registered with the United States
Patent and Trademark Office in 1947 (Reg. No. 434,497). Complainant acquired
the EURAX® mark from Westwood-Squibb Pharmaceuticals in 2007.
Ownership of a registered trademark satisfies the threshold requirement
of having ownership rights. Complainant
has such ownership and therefore has such rights pursuant to Policy ¶ 4(a)(i).
Since acquiring the EURAX® mark, Complainant has prominently promoted
the mark and products branded with the mark.
On 15 December 2008, Complainant sent Respondent a cease-and-desist
letter demanding transfer of the disputed domain name. The letter was sent by
certified mail and email to the address and email address then listed for the
registrant of <eurax.com>: Satoshi Shimoshita, 1-12-3-304, Furuishiba,
Koto-ku,
Complainant has received no response to the cease-and-desist letter.
The disputed domain name <eurax.com> is letter-for-letter identical
to Complainant’s mark EURAX® except for the inclusion of the TLD “.com.” The
addition of “.com” is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
Respondent’s domain name is thus identical to or confusingly similar to
Complainant’s mark.
It is generally accepted by UDRP panelists that Complainant need only
establish a prima facie case that
Respondent lacks rights or legitimate interests in the disputed domain name: to
hold otherwise is to require Complainant to prove a negative.
According to WHOIS records, <eurax.com> was
registered on 10 March 2003. Respondent does not own the EURAX® mark and is not
licensed or authorized to use it.
Respondent has not been commonly known by the domain name, either as an
individual, as a business, or as any other organization.
Respondent is not using <eurax.com>
in any bona fide offering of goods or
services. The web page at this domain (displayed in Annex J) is densely
populated with links to <searchportal.information.com>, and Respondent
profits when users follow those links. The web page induces users to click on
links purporting to link to information about Complainant’s products but
instead linking to pages with information about Claimant’s competitors.
The entire configuration of the web pages and links to <searchportal.information.com>
at <eurax.com> serves to associate Complainant’s EURAX® mark with a
disreputable spam and search redirection operation.
Respondent has been found to have registered domain names in violation
of UDRP policy before.
Respondent’s use of <eurax.com> as described above is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii).
Respondent’s use of the disputed domain name
<eurax.com> demonstrates that Respondent is attempting to profit from
Complainant’s mark by hosting advertisements for Complainant’s competitors and
earning money from click-through linking. Respondent is creating a likelihood
of confusion as to the source, sponsorship, affiliation, or endorsement of the
web site at the disputed domain and is using such confusion to attract, for
commercial gain, users to his web site. Respondent is directing users to
Complainant’s competitors by invoking as his own the authority and reputation
associated with Complainant’s mark. This unauthorized use of the <eurax.com> domain name is likely to disrupt
Complainant’s business and shows Respondent’s bad faith registration and use
pursuant to Policy ¶ 4(b)(iii).
Respondent’s use of the disputed domain name is
also likely to create confusion among customers searching for Complainant’s
business or products. This confusion is heightened by the fact that the
disputed domain name is identical to Complainant’s mark. Respondent is
attempting to capitalize on the goodwill associated with Complainant’s mark,
and this evidences bad faith registration and use.
Respondent did not make any contentions regarding this policy.
I do not know this company name, even this
company products “EURAX”.
Is this item famous all over the world right ?
Everybody knows this items? But I did not know.
I registered this domain for development website
near future. imaging “
Euro x
If thier EURAX is world famous brand name, I did
not register this domain.
But I think nobody knows Ranbaxy Laboratories Inc
and their EURAX items in
I do not have any bad faith registered my
EURAX.com for them. I will development website near future use this domain, so
keep domain parking site.
Trade mark are many many field, this is one of
them. And not wellknown brand all over the world.
Once again, I do not have any bad faith and .com
domain name is not equal trademark, except wellknown world wid famous
brand.
DISCUSSION
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.
FINDINGS
I find the issues on this element in favor of
Complainant.
Complainant has provided evidence of the
registration of its EURAX mark with the United States Patent and Trademark
Office (“USPTO”) on November 18, 1947 (Reg. No. 434,497), and the subsequent
assignment of the EURAX mark to Complainant.
The Panel finds Complainant has established rights in its EURAX mark
pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan,
FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark
is registered with the USPTO, [the] complainant has met the requirements of
Policy ¶ 4(a)(i).”); see also remithome Corp v. Pupalla, FA 1124302 (Nat. Arb. Forum Feb. 21, 2008) (finding the
complainant held the trademark rights to the federally registered mark
REMITHOME, by virtue of an assignment).
Complainant alleges Respondent’s <eurax.com> domain name is
identical to Complainant’s EURAX mark because it contains the mark in its
entirety with the addition of the generic top-level domain “.com.” The Panel finds Respondent’s <eurax.com> domain name is
identical to Complainant’s EURAX mark under Policy ¶ 4(a)(i). See
SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008) (concluding that
“the domain name at issue is identical to [the] complainant’s SCOLA mark, as
the only alteration to the mark is the addition of the generic top-level domain
“.com.”).
I find the issues on this element in favor of
Complainant.
The Panel is reminded 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.
Complainant contends Respondent is not
commonly known by the <eurax.com>
domain name. Complainant states neither
Complainant nor its predecessors have authorized Respondent to use its EURAX
mark in any manner. Furthermore, the
WHOIS information lists Respondent as “Satoshi Shimoshita.” Therefore, the Panel finds Respondent is not
commonly known by the <eurax.com>
domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7,
2006) (concluding that the respondent was not commonly known by the disputed
domain names where the WHOIS information, as well as all other information in
the record, gave no indication that the respondent was commonly known by the
disputed domain names, and the complainant had not authorized the respondent to
register a domain name containing its registered mark).
Complainant has provided evidence that
Respondent is using the <eurax.com>
domain name to display links to the <searchportal.information.com>
domain, which purports to offer information about Complainant but instead links
to pages with information about Complainant’s competitors and commercial search
engines. Complainant alleges Respondent
is profiting from this use of the disputed domain name. The Panel finds Respondent’s use of the
disputed domain name is not 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
Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the
respondent was not using a disputed domain name in connection with a bona fide
offering of goods or services or a legitimate noncommercial or fair use by
redirecting Internet users to a commercial search engine website with links to
multiple websites that may be of interest to the complainant’s customers and
presumably earning “click-through fees” in the process).
I find the issues on this element in favor of
Complainant.
Complainant alleges Respondent is using the disputed domain name to display links to third-party websites that compete with Complainant’s business and direct Internet users to a commercial search engine. The Panel finds Respondent’s actions constitute a disruption of Complainant’s business, which the Panel finds is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). 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)).
Complainant asserts
Respondent is profiting from its use of the identical disputed domain
name. The Panel finds Respondent is
attempting to profit from the goodwill Complainant has established in its EURAX
marks. The Panel finds this is evidence
of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc.
v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that
the respondent engaged in bad faith registration and use by using a domain name
that was confusingly similar to the complainant’s mark to offer links to
third-party websites that offered services similar to those offered by the
complainant).
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 <eurax.com> domain name be TRANSFERRED
from Respondent to Complainant.
Timothy D. O’Leary, Panelist
Dated: March 30, 2009
National
Arbitration Forum
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