N.V. Organon and Schering Plough Corporation v. Fields Law Firm and Stephen Fields
Claim Number: FA0904001259266
Complainant is N.V. Organon
and Schering Plough Corporation (“Complainant”), represented by Peter
D. Raymond, of Reed Smith LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nuvaringsideeffects.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Charles A. Kuechenmeister (Ret.), as Panelist
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 23, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 24, 2009.
On April 24, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <nuvaringsideeffects.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. 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 May 4, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 26, 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on May 26, 2009.
Complainants filed an Additional Submission on June 1, 2009. Respondents filed an Additional Submission on
June 8, 2009.
On June 2, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Charles A. Kuechenmeister (Ret.), as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
N.V. Organon, has federally registered the marks NUVARING (Registration No.
2,262,941) and NUVARING (stylized) (Registration No. 2,645,485), hereinafter
the “NUVARING Mark,” for oral contraceptives and contraceptive devices in the
2. Complainant, Schering Plough Corporation, parent company of Complainant N.V. Organon, is the owner of the domain name registration for <nuvaring.com>.
The NUVARING Mark is well-known and
enjoys a reputation as a high quality product in the field of
contraception. Complainants have
expended tremendous time, money and resources to build this goodwill and, as a
result, the NUVARING Mark has become a property of incalculable value.
Section 4(a)(i) of the Policy, the Complainant contends that the Respondents’
domain name incorporates Complainant’s
4. Based upon the virtual identity between Respondents’ domain name and Complainants’ NUVARING Mark, internet users and consumers are likely to be confused into believing that there is some relation, affiliation, connection, approval or association between Respondents and Complainants when, in fact, no such affiliation exists.
5. Following the decision in Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000), Respondents have no legitimate rights or interest in the domain name if they (i) are not licensees of Complainant, nor have they received any permission or consent to use Complainants’ trademark; (ii) Complainants have prior rights in that trademark which precedes Respondents’ registration of their domain name; and (iii) Respondents are not commonly known by the trademark.
6. With regard to Section 4(a)(ii) of the Policy, Complainant, N.V. Organon, asserts that it is the owner of two (2) federal service mark registrations for NUVARING and NUVARING (stylized), as well as the common law rights therein; Complainant, Schering Plough Corporation, is the owner of the <nuvaring.com> domain name; neither Complainant has licensed or otherwise permitted Respondents to use the NUVARING Mark or to apply for or use any domain name incorporating the NUVARING Mark; and neither has authorized the sale or offer for sale of goods or services in connection with the NUVARING Mark.
7. Aside from the rights derived from its incontestable federal registrations, Complainants have acquired substantial reputation under common law by virtue of their substantially exclusive and continuous use of the NUVARING Mark since at least as early as 2001.
contend that Respondents are not making legitimate non-commercial or fair use
of the subject domain name in that they are intentionally luring consumers
under false pretenses and only seek to tarnish the goodwill and reputation
associated with the NUVARING Mark. As
held in American International Group, Inc. v. Debra Speyer, FA 422815
(Nat. Arb. Forum Apr. 7, 2005), American International Group, Inc. v. Debra
Speyer, FA 481752 (Nat. Arb. Forum June 28, 2005), and American
International Group, Inc. v.
regard to Section 4(a)(iii) of the Policy, Complainants rely on the express
“bad faith” threshold set out in Section 4(b).
Respondents make false and misleading statements regarding Complainants’
NuvaRing product in an effort to solicit clients for whom they can initiate
product liability actions against Complainants and in doing so use the NUVARING
Mark without authorization or license from Complainants and to Complainants’
detriment. Specifically, Respondents use
the website <nuvaringsideeffects.com> to solicit customers to file
lawsuits against Complainants’ on the basis of falsified claims of hazardous
side effects resulting from the use of the NuvaRing product. In fact, a user encountering the <nuvaringsideeffects.com>
web page immediately comes across the headings “NuvaRing Class Action
Information,” “NuvaRing Side Effects – NuvaRing Law Suit,” “NuvaRing Warnings,”
by adopting a mark and domain name registration that incorporates Complainants’
NUVARING Mark in its entirety, Respondents are, in effect, trading on the
goodwill established by Complainants under the NUVARING Mark, providing a
further basis for the presumption of bad faith.
Indeed, registration of a domain name that incorporates another
trademark with actual or constructive knowledge of its use as a mark suggests
no rights and legitimate interest in the domain name and can serve as evidence
of bad faith. See The Prudential
Insurance Company of
11. In sum, Respondents’ <nuvaringsideeffects.com> domain name is confusingly similar to Complainants’ federally registered NUVARING Mark, Respondents have no legitimate interest in the domain name, are using the NUVARING Mark without Complainants’ consent, seeks commercial gain in the use of same, and has acted in bad faith in doing so.
1. Respondent Stephen Fields is the owner of Respondent Fields Law Firm. Respondents offer legal services in the areas of personal injury, consumer protection and other areas.
2.. Among Respondents’ clients are consumers of Complainants’ NuvaRing product who have allegedly experienced medical problems during and following the use of that product, and have filed numerous actions against Complainants on behalf of such clients.
3. Respondents registered the Domain Name in August 2007 and shortly thereafter began operating a website in connection with the Domain Name that offers information on Complainants’ contraceptive device, possible side effects associated with the device, pending litigation against Complainants, and information regarding legal rights and remedies. Respondents do not provide information regarding legal rights and remedies in connection with other pharmaceutical products.
4. Respondents take no position regarding the similarities between Complainants’ Mark and the Domain Name.
5. Respondents are using the Domain Name in connection with a bona fide offering of goods and services and commenced this use prior to notice of any dispute from Complainants.
6. Respondents’ use of the
Domain Name constitutes a nominative fair use of Complainants’ Mark in that
they use it for the sole purpose of referring to Complainants and their
products, in accordance with the standards set forth by the Ninth Circuit Court
of Appeals in New Kids on the
7. Respondents’ use of the Complainants’ Mark conforms with each of these standards.
8. Complainants are not entitled to foreclose against the non-competitive, fair uses of the NUVARING Mark being made by Respondents.
9. Respondents have rights and legitimate interests in respect of the Domain Name based upon the foregoing facts and circumstances.
10. Complainants have failed to demonstrate bad faith in connection with Respondents’ registration and use of the Domain Name: There is no evidence that Respondents registered the Domain Name in order to sell or transfer it to Complainants. There is no evidence that Respondents registered the Domain Name for the purpose of preventing Complainants from registering it. There is no evidence that Respondents registered the Domain Name for the purpose of disrupting Complainants’ business, in that Respondents do not offer either Complainants’ or any competitive methods of contraception for sale at their web site, nor do they provide links to third parties who do sell such goods.
11. Complainants’ allegations that Respondents make false and misleading statements regarding their products by means of headings used on the <nuvaringsideeffects.com> website are not relevant to the dispute about the Domain Name. The purpose of the Policy is to prevent abusive registration of Domain Names, not to determine the truth or falsity of statements appearing in websites.
12. Respondents are not using the Domain Name to attract users to their website by intentionally creating a likelihood of confusion. The website clearly states that Respondents are personal injury lawyers not affiliated with Complainants and identifies Organon as the manufacturer of the products. No reasonable consumer reaching this site looking for Complainants’ products would be confused as to any sponsorship or endorsement of the website by Complainants.
13. Similarly, a reasonable consumer searching for information on NuvaRing is unlikely to experience initial interest confusion upon encountering the Domain Name and website. Such consumers would not find these products for sale but would find only information about the possible side effects and risks of using them, as well as information regarding seeking counsel about their legal rights in connection with such products.
14. Even if there is initial interest confusion when, as here, a respondent uses a complainant’s mark in a domain name, such confusion is not sufficient to overcome the respondent’s right to use the domain name as a nominative fair use.
C. Additional Submission—Complainant
1. Respondents have conceded that the Domain Name is confusingly similar to Complainants’ NUVARING Mark.
2. Respondents’ registration and use of the NUVARING Mark may have commenced before Complainants sent their cease and desist demand to Respondents in January of 2009, but Respondents did have notice of Complainants’ rights in the name, existing since 2001, and this precludes them from asserting that they registered the Domain Name without notice of a dispute.
3. Initial interest confusion exists because a consumer is likely to enter the Respondents’ website in order to locate information offered by Complainants about its own products. Immediate Internet user perception upon encountering that website is source, sponsorship or affiliation with Complainants.
4. Respondents’ alleged nominative fair use is defeated because the Domain Name creates confusion by implying an affiliation with the Complainants. Even if the consumer looking for Complainants’ products immediately realizes that the site is unrelated to Complainants, the website owner will still have gained a customer by appropriating the goodwill associated with the registered trademark. Here, a consumer seeking to buy Complainants’ product, having been diverted to Respondents’ website, may instead refrain from doing so and may even be falsely induced to seek legal action against Complainants.
5. Respondents’ disclaimer in their website does not negate the likelihood of confusion.
6. Respondents’ have failed to demonstrate that they employ a nominative fair use of the NUVARING Mark. They could have used other alternatives to identify Complainants’ products and thus have avoided the confusion the Domain Name creates.
7. Respondents have in fact registered and are using the Domain Name in bad faith, for the purpose of disrupting Complainants’ business and by intentionally attempting to attract, for commercial gain, internet users to their site by creating a likelihood of confusion as to the source, sponsorship or affiliation with Complainants and their NUVARING Mark.
D. Additional Submission—Respondent
Respondents’ Additional Submission addresses the specific points set forth in Complainants’ Additional Submission, and amplifies in that context the Respondents’ claim of nominative fair use and their use of disclaimer.
DISCUSSION AND FINDINGS
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 interest in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainants have sufficiently established their rights
in the NUVARING mark because they hold a registration of the mark with the
USPTO (Reg. No. 2,262,941 issued July 20, 1999). See Miller
The <nuvaringsideeffects.com> domain name is confusingly similar to Complainant’s NUVARING mark under Policy ¶ 4(a)(i) because it contains Complainant’s entire mark and adds the generic terms “side” and “effects” and the generic top-level domain (“gTLD”) “.com.” See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel finds that the Domain Name is identical or confusingly similar to the NUVARING Mark, in which the Complainants have substantial and demonstrated rights.
Complainant must first make a prima
facie case that Respondent lacks rights and legitimate interest 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 interest. See Hanna-
Complainants’ evidence establishes that (i) Respondents are not licensees of Complainants, nor have they received permission or consent to use Complainants’ trademark; (ii) Complainants have prior rights in that trademark which precede Respondents’ registration of the Domain Name; and (iii) Respondents are not commonly known by the trademark. Complainants have thus made a prima facie showing that the Respondents have no legitimate rights or interest in the domain name. Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000).
Going forward with their burden to demonstrate their rights in the Domain Name, Respondents prove that they are using it to offer legal services in connection with consumers who may have been harmed by Complainant’s product and to provide information to the public about Complainant’s product.
Respondents’ claim that this use of the Domain Name constitutes a
nominative fair use of Complainants’ Mark in that they use it for the sole
purpose of referring to Complainants and their products. The Ninth Circuit Court of Appeals in New Kids on the
Respondents have established their nominative fair use of the Domain Name. The product under most direct scrutiny in their website is the NuvaRing, which is described in the USPTO registration for it as a “vaginal ring for birth control.” Although the product could accurately be identified as “Organon’s vaginal ring for birth control,” unless the general public is aware that Organon or Schering Plough manufactures the NuvaRing, that description would be inadequate to describe specific product at issue. It would be far less certain than just using its name, NuvaRing. The product is in fact not readily identifiable without using its name. Secondly, Respondents did not use the stylized registered form of the mark for this device, only the word NUVARING. They made no effort to copy any other aspects of the mark.
Finally, as to the key element of confusion about sponsorship or endorsement of the website, Complainant asserts that the mere presence of NUVARING in the Domain Name creates initial interest confusion and suggests Complainants’ sponsorship or endorsement of the Respondents’ website. The Panel is not persuaded. This Domain Name contains nothing to suggest that the related website would be sponsored or endorsed by Complainants or anyone else seeking to pomote the NuvaRing product. The message in the Domain Name tends in the opposite direction. The plain meaning of the words “NuvaRing side effects” is much closer to “the NuvaRing may be dangerous or have risks associated with it” than to the kind of message that would be offered by its manufacturer. A reasonable consumer would not assume that a website by this name would be sponsored by the manufacturer of the named product. A description of “side effects” might be included in a website sponsored by the manufacturer, but “side effects” would not likely be in the name of the website itself.
Additionally, Respondents made demonstrable preparations to
use the Domain Name in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See Chicago
Further, Respondents’ website uses a disclaimer which immediately and sufficiently informs Internet users that neither they nor their website is affiliated with Complainants. This constitutes further evidence of their rights and legitimate interest in the Domain Name pursuant to Policy ¶ 4(a)(ii). See Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent had rights or legitimate interest in the <aoltrafficschool.com> domain name by virtue of the respondent’s prominent use of a disclaimer); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (finding that the respondent’s website contained an express disclaimer of any affiliation with the complainant, and that the respondent had rights or legitimate interest in the <best-of-vanguard.com> domain name and did not register it in bad faith).
Complainants assert that Respondents are not making legitimate
non-commercial or fair use of the Domain Name in that they are intentionally
luring consumers under false pretenses and only seek to tarnish the goodwill
and reputation associated with the NUVARING Mark. They cite several cases, including American
International Group, Inc. v. Debra Speyer, FA 422815 (Nat. Arb. Forum Apr.
7, 2005), American International Group, Inc. v. Debra Speyer, FA 481752
(Nat. Arb. Forum June 28, 2005), and American International Group, Inc. v.
The cases cited by Complainant are distinguishable from the instant case. First, and most importantly, nominative fair use was not asserted by the respondent in any of those cases. Secondly, the fact that the Respondents’ use of the Domain Name here may not fit within the provisions of Policy ¶ 4(c)(iii) does not preclude them from establishing their rights or legitimate interest in some other fashion, which they have. One of the chief advantages of the Internet is to permit and promote a full and inclusive exchange of views on all manner of topics. A person may not, by using a domain name, attempt to trade on the goodwill of a trademark holder by creating confusion or misleading the public about the source or sponsorship of his website, but if his purpose is to offer criticism or express concern about the safety of a given product in the marketplace he is entitled to use the name of that product in his domain name, so long as the domain name, taken as a whole, is clear as to the purpose of the website and does not imply sponsorship or endorsement thereof by the proponents of that product.
In summary, the Panel finds and determines that Respondents have demonstrated their rights and legitimate interest in respect of the Domain Name.
Respondents having prevailed on the issue of rights and legitimate interest in the Domain Name, it is unnecessary for the Panel to consider the issue of registration and use in bad faith.
Hon. Charles A. Kuechenmeister (Ret.)
June 16, 2009
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