national arbitration forum

 

DECISION

 

Ferring B. V. v. Melrock LTD

Claim Number: FA1206001451135

 

PARTIES

Complainant is Ferring B. V. (“Complainant”), represented by Arne M. Olson, Illinois, USA.  Respondent is Melrock LTD (“Respondent”), represented by Elizabeth Brock of Harness, Dickey & Pierce PLC, Michigan, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <menopursideeffects.com>, <bravellesideeffects.com>, and <repronexsideeffects.com>, registered with Tucows.com Co.

 

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

 

Fernando Triana, Esq. as Chair of the Panel

Professor David E. Sorkin as Co-Panelist

Honorable Judge Karl V. Fink as Co-Panelist

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 28, 2012; the National Arbitration Forum received payment on June 29, 2012.

 

On June 28, 2012, Tucows.com Co. confirmed by e-mail to the National Arbitration Forum that the <menopursideeffects.com>, <bravellesideeffects.com>, and <repronexsideeffects.com> domain names are registered with Tucows.com Co. and that Respondent is the current registrant of the names.  Tucows.com Co. has verified that Respondent is bound by the Tucows.com Co. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On July 2, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 23, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@menopursideeffects.com, postmaster@bravellesideeffects.com, and postmaster@repronexsideeffects.com.  Also on July 2, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on July 24, 2012.

 

On July 30, 2012 Complainant filed an Additional Submission.

 

On August 1, 2012, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Fernando Triana, Esq. Chair of the Panel, Professor David E. Sorkin and Judge Karl V. Fink, as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

This complaint is based upon Complainant’s long time use and irrefutable ownership of the MENOPUR, BRAVELLE and REPRONEX marks since at least 2002. Complainant alleges it holds numerous trademark registrations for pharmaceutical products, especially fertility medications, throughout the world, duly proved under the Exhibits enclosed in the Complaint. Complainant likewise relies herein on its several domain name registrations incorporating the MENOPUR, BRAVELLE and REPRONEX marks, which it deems sufficient enough to invoke protection.

 

Complainants main contentions are as follows:

 

1.    According to the Exhibits, among others, Complainant registered the MENOPUR mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,989,995 registered August 30, 2005); and with the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Reg. No. 2,218,225 registered December 23, 1999). Complainant also registered the BRAVELLE mark with the USPTO (e.g., Reg. No. 2,667,119 registered December 24, 2002) and with the World Intellectual Property Office (“WIPO”) under the Madrid Protocol (e.g., Reg. No. 786,611 registered June 20, 2002). Finally, Complainant registered the REPRONEX mark with the USPTO (e.g., Reg. No. 2,256,371 registered June 29, 1999) and with the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA590,758 registered September 25, 2003).

 

The filing dates for these registrations and the others enclosed in the Complaint predate the registration of the disputed domain names.

 

2.    Regarding the MENOPUR trademark Complainant further contends that it is the owner of the following domain names registrations: <menopur.com>, <menopur.net>, <menopur.org>, <menopur.biz>, <menopur.info>, <menopur.co>, <menopur.asia>, <menopur.dk>, <menopur.co.uk>, <menopur.ie>, <menopur.it>, <menopurbestilling.dk>, <menopurevidens.dk>, <menopurinstruktion.dk>, <menopur-nyt.dk>, <menopurpatient.dk>, <menopurpen.dk>, <menopurforsale.com>, <menopur.us>, <menopure.com> and <buymenopur.com>. The aforementioned registrations date back to at least 2000.

 

Considering the BRAVELLE trademark Complainant further contends that it is the owner of the following domain names registrations: <bravelle.com>, <bravelle.dk>, <bravelle.info>, <bravelle.it>, <bravelle.net>, <bravelle.org>, <bravelle.ch>, <bravelle.co.uk>, <bravele.com> and <buybravelle.com>. The aforementioned registrations date back to at least 2001.

 

Concerning the REPRONEX trademark, Complainant further contends that it is the owner of the following domain names registrations: <repronex.be>, <repronex.ch>, <repronex.co.uk>, <repronex.dk>, <repronex.info>, <repronex.it>, <repronex.net>, <repronex.org>, <repronexhp.info> and <buyrepronex.com>. The aforementioned registrations date back to at least 2001.

 

3.    The disputed domain names <menopursideeffects.com>, <bravellesideeffects.com> and <repronexsideeffects.com>, incorporate the trademarks MENOPUR, BRAVELLE and REPRONEX respectively, adding only generic or descriptive terms such as “side effects”, and the generic top-level-domain “.com,” which are not sufficient to avoid a likelihood of confusion with the Complainant’s trademarks. Thus, Respondent’s domain names are confusingly similar to Complainant’s trademarks, pursuant to Policy ¶ 4(a)(i).

 

4.    Respondent lacks of rights or legitimate interests in the disputed domain names:

a.    Respondent has never been commonly known by the disputed domain names or the trademarks MENOPUR, BRAVELLE, or REPRONEX;

b.    Respondent failed to create a bona fide offering of goods or services through the disputed domain names or a legitimate noncommercial or fair use.

c.    Respondent is not affiliated with Complainant in any way: Complainant has never authorized, contracted, licensed or otherwise permitted Respondent to use the MENOPUR, BRAVELLE, or REPRONEX marks, nor is Respondent an authorized vender, supplier or distributor of Complainant’s goods and services.

d.    Respondent owns the CONCEPTIONKIT.COM domain name which advertises a product named CONCEPTION KIT that allegedly aids in conception. Therefore, Respondent’s product competes with Complainant’s fertility products.

 

5.    Respondent intends to profit off of the disputed domain names since both companies produce goods to aid conception.

 

6.    Respondent’s registration of multiple domain names incorporating trademarks of another indicates bad faith, especially since Respondent resolves the disputed domain names to websites void of content.

 

7.    Respondent is attempting to trade off of the goodwill of the MENOPUR, BRAVELLE, and REPRONEX trademarks.

 

B. Respondent

The Respondent is an intellectual property holding company and operates in a field related to animal and human conception. Respondent is a shareholder of Conceivex, Inc., who allegedly owns CONCEPTIONCAP.COM and CONCEPTIONKIT.COM domain names.  CONCEPTION KIT is a fertility method while CONCEPTION CAP is a medical device to use on their own or in conjunction with fertility drugs.

 

 

Respondents main contentions are as follows:

 

1.    Respondent’s <menopursideeffects.com>, <bravellesideeffects.com>, and <repronexsideeffects.com> domain names are readily distinguishable from Complainant’s marks due to the addition of the term side effects, which distinguishes the domain names from Complainant’s marks.

 

2.    Respondent allegedly is developing a forum website to correspond with the disputed domain names for individuals taking the fertility drugs sold by Complainant where the takers of the drugs can share their experiences with the side effects associated with the treatments. Thus, Respondent must use the drug names, marks, in the disputed domain names because the content that will be offered relates directly to the drugs.

 

3.    Respondent’s intended use is a fair use of the disputed domain names, since Respondent will not use any logos or other designs of Complainant’s on the website and Respondent does not suggest sponsorship or endorsements of its website by Complainant.

 

4.    Complainant has failed to establish bad faith registration and use.

 

5.    Respondent’s preparations to use the disputed domain names in conjunction with a fair use preclude a finding of bad faith.

 

6.    Respondent has not yet used the disputed domain names in a substantial fashion prohibiting a finding of bad faith registration and use.

 

C. Additional Submissions

Complainant

1.    In its additional submission, Complainant states and proves that between April and May of 2012 Respondent has purchased at least 30 other domain names containing the terms “side effects” alongside a fertility drug name of third parties and Complainant’s other marks.

 

2.    Both Complainant and Respondent offer competitive products used to overcome infertility and to aid conception. Complainant produces FDA approved pharmaceuticals and Respondent produces FDA approved medical devices. Therefore, Complainant and Respondent are competitors in the fertility treatment industry.

 

3.    There mere assertion of the possible use is not evidence of legitimate use; consequently, Respondent has failed to establish that it has made demonstrable preparations to use the disputed domain names in a fair manner.

 

4.    Respondent owns multiple other domain names that do not include the marks of any company or person that may be used to make the same offering of forum services Respondent’s claims are upcoming through the disputed domain names. Hence, Respondent has established that the possible and intended services can be provided without using Complainant’s trademarks, through websites such as, <fertilitydrugssideeffects.com>.

 

5.    Respondent owns other domain names that include the drug’s generic name and not the trademark, i.e., Trademark: CLOMID®, Domain name: clomiphinesideeffects.com. Thus, Respondent establishes that the intended service can be provided without using Complainant’s trademarks.

 

6.    Both domain names including the generic name of the drug and general domain names regarding fertility provide sufficient opportunity to identify Respondent’s intended services through technical features such as group pages and search engines.

 

7.    Respondent’s intended use will falsely suggest a sponsorship and/or endorsement by Complainant of Respondent’s website and use of the disputed domain names due to the linkages between CONCEPTIONKINT.COM and the disputed domain names.

 

8.    Respondent’s intended use of the disputed domain names will disrupt Complainant’s business by misleading and diverting consumers to Respondent’s products. Respondent uses generalized expression to describe Complainant’s drugs side effects; however, those assertions do not correspond with reality.

 

FINDINGS

1.    Complainant owns the MENOPUR, BRAVELLE, and REPRONEX trademarks in the United States of America, the European Community, and other jurisdictions since before the disputed domain names were registered by Respondent. Complainant owns a variety of domain names with the marks MENOPUR, BRAVELLE, and REPRONEX.

 

2.    Respondent was aware of the Complainant’s rights in the marks MENOPUR, BRAVELLE, and REPRONEX, yet he incorporated it in the disputed domain names. Thus, Respondent used the marks MENOPUR, BRAVELLE, and REPRONEX to create a likelihood of confusion aimed to divert consumers to Respondent’s products.

 

3.    Respondent has never been commonly known by the disputed domain names or the trademarks MENOPUR, BRAVELLE, or REPRONEX.

 

4.    Respondent is not affiliated with Complainant in any way: Complainant has never authorized, contracted, licensed or otherwise permitted Respondent to use the MENOPUR, BRAVELLE, or REPRONEX marks, nor is Respondent an authorized vender, supplier or distributor of Complainant’s goods and services.

 

5.    Before any notice, Respondent neither used the disputed domain names nor demonstrated that preparations have been made in connection with a bona fide offering of goods or services.

 

6.    Complainant and Respondent offer competitive products used to overcome infertility and to aid conception. Therefore, Complainant and Respondent are competitors in the fertility treatment industry.

 

7.    Respondent might use different domain names to the possible and intended use described in its response.

 

8.    Respondent registered several domain names combining “side effects” with third parties fertility drug’s trademarks.

 

9.    Respondent has the intention to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant's mark due to the linkages Respondent pretends between domain name CONCEPTIONKINT.COM and the disputed domain names.

 

DISCUSSION

Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  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.

 

This discussion, based on the evidentiary support submitted by the parties, will be developed as follows:

 

First of all, the Panel will determine whether or not the disputed domain names are identical or confusingly similar to the trademark in which Complainant has rights. Secondly, the Panel will verify if Respondent has any rights or legitimate interests in respect of the disputed domain names; and thirdly, the Panel will establish whether or not the disputed domain names have been registered and are being used in bad faith by Respondent.

 

Identical and/or Confusingly Similar

 

Complainant contends to be the owner of the marks MENOPUR, BRAVELLE, and REPRONEX in the United States of America and the European Community, among other jurisdictions, which has been continuously used since 2002 to identify pharmaceutical products, especially fertility drugs.

 

a)    Existence of a trademark or service mark in which the Complainant has rights

 

Firstly, it is important to point out that Paragraph 4(a) of the Policy requires the existence of a trademark or a service mark. The industrial property rights are only acquired by registration before the competent office in a number of many jurisdictions of the world.

 

The worldwide-accepted definition of a trademark, involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.

 

When a sign is registered as a mark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right over the mark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it.

 

However, the UDRP does not discriminate between registered and unregistered trademarks[1] and thus, it is well established that a Complainant does not require owning a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that Complainant has rights over an unregistered trademark as to deserve legal protection, based solely on its use in commerce.

 

 

 

In this case, Complainant proved its rights in the marks MENOPUR, BRAVELLE, and REPRONEX. Exhibits 2, 3 and 4 to the Complaint include:

 

Regarding MENOPUR trademark copies of the following registration certificates:

 

·        United States Trademark Registration No. 2,989,995 issued on August 30, 2005, for “Pharmaceuticals for treatment in the field of fertility”;

·        Argentina Trademark Registration No. 1.835.356 issued on June 28, 2001, for “Una hormona estimulante de la fertilidad” (a hormone stimulating fertility);

·        Australia Trademark Registration No. 819,351 issued on January 10, 2000, for “Fertility stimulating hormone”;

·        Benelux Trademark Registration No. 657,329 issued on December 23, 1999, for “Farmaceutische produkten en substanties” (pharmaceutical products and substances);

·        Bolivia Trademark Registration No. 95137-C issued on July 30, 2004, for “Hormonas estimulantes de fertilidad” (fertility stimulating hormone);

·        Brazil Trademark Registration No. 821,930,575 issued on November 8, 2005, for “Hormônio para estimular a fertilidade” (hormone to stimulate fertility);

·        Canada Trademark Registration No. TMA753,541 issued on November 20, 2009, for “Pharmaceutical products in the field of fertility, namely a fertility stimulating hormone” and “Pharmaceutical products and substances, namely a fertility stimulating hormone”;

·        Chile Trademark Registration No. 638.414 issued on August 6, 2002, for “Hormona que estimula la fertilidad” (hormone that stimulates fertility);

·        China Trademark Registration No. 3,245,355 (Chinese Characters) issued on October 28, 2003, for “Pharmaceuticals, fertility stimulating hormone”;

·        Colombia Trademark Registration No. 329,927 issued on March 28, 2007, for “Preparaciones y sustancias farmacéuticas” (pharmaceutical preparations and substances);

·        Community Trademark Registration No. 008695694 issued on April 28, 2010, for “Pharmaceutical products and substances”;

·        Germany Trademark Registration No. 30.2008.031.179 issued on November 4, 2008, for “rezeptpflichtige Arzneimittel zur hormonellen Stimulierung der Fruchtbarkeit” (prescription drugs for the hormonal stimulation of fertility);

·        Denmark Trademark Registration No. VR 2000 01608 issued on March 27, 2000, for “ Farmaceutiske” (pharmaceutical) and other goods;

·        Ecuador Trademark Registration No. 5920-09 issued on September 1, 2009, for “Productos farmaceuticos y vetrerinarios” (pharmaceutical and veterinary products) and other goods;

·        Finland Trademark Registration No. 219,587 issued on November 30, 2000, for “Farmaseuttiset valmisteet ja aineet” (pharmaceutical preparations and substances);

·        France Trademark Registration No. 99,832,233 issued on December 30, 1999, for “Préparations pharmaceutiques” (pharmaceutical preparations);

·        Great Britain Trademark Registration No. 2,218,225 issued on December 23, 1999, for “Pharmaceutical, veterinary and sanitary preparations and substances”;

·        Greece Trademark Registration No. 143,062 issued on August 17, 2001, for “Fertility stimulating hormone”;

·        Hong Kong Trademark Registration No. 301,286,028 issued on February 12, 2009, for “Fertility stimulating hormones”;

·        Ireland Trademark Registration No. 217,239 issued on January 10, 2000, for “Fertility stimulating hormone”;

·        Israel Trademark Registration No. 218,012 issued on August 8, 2010, for “Fertility stimulating hormone”;

·        Palestinian National Authority Trademark Registration No. 7,971 issued on December 22, 2004, for “Fertility stimulating hormone”;

·        India Trademark Registration No. 896,388 issued on January 6, 2000 for “Medicinal, pharmaceuticals and veterinary preparations”;

·        International Trademark Registration No. 728,815 issued on January 19, 2000, designating Albania, Austria, Bosnia and Herzegovina, Bulgaria, Belarus, Switzerland, China, Cuba, Cyprus, Czech Republic, Algeria, Estonia, Egypt, Spain, Georgia, Croatia, Hungary, Iceland, Italy, Kazakhstan, Lithuania, Latvia, Montenegro, The Former Yugoslav Republic of Macedonia, Morocco, Poland, Portugal, Romania, Russian Federation, Serbia, Slovenia, Slovakia, Turkmenistan, Turkey, Ukraine, Uzbekistan, and Vietnam for “Pharmaceutical products and substances”;

·        Japan Trademark Registration No. 4,453,571 (with Katakana) issued on February 16, 2001, for “Hormones, other pharmaceutical preparations”;

·        South Korea Trademark Registration No. 0490676 issued on April 2, 2001, for “Fertility stimulating hormone for medical purposes”;

·        Macau Trademark Registration No. N/013,961 issued on September 9, 2004, for “Produtos farmaceuticos, veterinários" (pharmaceutical, veterinary products) and other goods;

·        Mexico Trademark Registration No. 643,898 issued on February 25, 2000, for “Productos farmaceuticos, veterinaros e higienicos” (pharmaceutical, veterinary, and hygienic products) and other goods;

·        Malaysia Trademark Registration No. 00000070 issued on January 5, 2000, for “Pharmaceutical preparations and substances, fertility stimulating hormone”;

·        Nigeria Trademark Registration No. 71,059 issued on September 24, 2003, for “Pharmaceutical, veterinary and sanitary substances” and other goods;

·        Norway Trademark Registration No. 204,573 issued on September 7, 2000, for “Farmasøytiske, veterinære, hygieniske preparater” (pharmaceutical, veterinary, hygienic preparations) and other goods;

·        New Zealand Trademark Registration No. 805,673 issued on April 28, 2009, for “Fertility stimulating hormone”;

·        Peru Trademark Registration No. 0083973 issued on October 17, 2002, for “Hormonas estimulantes de la fertilidad” (fertility stimulating hormone);

·        Pakistan Trademark Registration No. 180,751 issued on October 5, 2002, for “Pharmaceutical preparation, which stimulate fertility in men and women”;

·        Paraguay Trademark Registration No. 256,432 issued on April 22, 2003, for “Hormonas estimuladoras de la fertilidad” (Fertility stimulating hormone);

·        Saudi Arabia Trademark Registration No. 593/1 issued on October 24, 2001, for “Fertility stimulating hormone”;

·        Sweden Trademark Registration No. 344,022 issued on January 19, 2001, for “Fertilitetsstimulerande hormon” (fertility stimulating hormone);

·        Singapore Trademark Registration No. T00/00784J issued on January 20, 2000, for “Fertility stimulating hormone”;

·        Thailand Trademark Registration No. TM126717 issued on January 18, 2001, for “Fertility stimulating hormone”;

·        Tunisia Trademark Registration No. EE021699 issued on April 13, 2004, for “Preparation pharmaceutique, qui stimule la fertilite chez les hommes et les femmes” (pharmaceutical preparation, which stimulates fertility in men and women);

·        Uruguay Trademark Registration No. 342,713 issued May 16, 2003, for “Hormona estimulante de la fertilidad” (Fertility stimulating hormone); and

·        South Africa Trademark Registration No. 2000/00005 issued January 10, 2000, for “Fertility stimulating hormone”.

·        Copies of the registration certificates Nos. 3,975,040 and 3,883,548 granted by the United States Patent and Trademark Office (USPTO) for the mark BING in international classes 9[2], 35[3], 38[4], 39[5], 41[6] and 42[7]. According to these documents, Complainant has used the mark BING in the US commerce since May 28, 2009. 

 

 Regarding BRAVELLE trademark copies of the following registration certificates:

 

·        United States Trademark Registration No. 2,667,119 issued on December 24, 2002, for "Pharmaceutical preparations for human use which stimulates fertility in men and women";

·        Australia Trademark Registration No. 921,811 issued on July 31, 2002, for "Pharmaceutical preparation and substances for human use which stimulate fertility in men and women";

·        Benelux Trademark Registration No. 0708758 issued on April 4, 2002, for "Farmaceutische, diergeneeskundige en hygiënische producten" (pharmaceutical, veterinary, and sanitary products) and other goods;

·        Bolivia Trademark Registration No. 95466-C issued on August 16, 2004, for "Preparaciones farmaceuticas, los cuales estimulan la fertilidad en hombres y mujeres" (pharmaceutical preparations, which stimulate fertility in men and women);

·        Canada Trademark Registration No. TMA 620,612 issued on September 24, 2004, for "Pharmaceutical preparation for human use which stimulates fertility in men and women";

·        Chile Trademark Registration No. 648.694 issued on November 14, 2002, for "Preparacion farmaceutica para uso humano que se utiliza para la estimulacion de la fertilidad femenina y masculina" (pharmaceutical preparation for human use used for the stimulation of female and male fertility);

·        China Trademark Registration No. 7,054,672 (Chinese Characters) issued on August 7, 2010, for "Pharmaceuticals products and substances";

·        Colombia Trademark Registration No. 266,029 issued on April 22, 2003, for "Preparaciones farmaceuticas para estimular la fertilidad en las mujeres y en los hombres" (pharmaceutical preparations for stimulating fertility in women and men);

·        Community Trademark Registration1 No. 002531952 issued on April 3, 2003, for "Pharmaceutical preparations and substances";

·        Costa Rica Trademark Registration No. 171,312 issued on November 13, 2007, for "Fármacos para uso humano" (drugs for human use);

·        Dominican Republic Trademark Registration No. 131,825 issued on December 30, 2002, for "Preparacion farmaceutica para estimular la fertilidad de los hombres y las mujeres" (pharmaceutical preparation to stimulate the fertility of men and women);

·        Ecuador Trademark Registration No. 22,499 issued on April 8, 2003, for "Todos los productos comprendidos en la clase, en especial una preparación farmacéutica para estimular la fertilidad en hombres y mujeres" (all goods in the class, including pharmaceutical preparation to stimulate fertility in men and women);

·        Guatemala Trademark Registration No. 123,394 issued on April 15, 2003, for "Preparaciones farmaceuticas que estimulan la fertilidad en hombres y mujeres" (pharmaceutical preparations that stimulate fertility in men and women);

·        Hong Kong Trademark Registration No. 200316622 issued on July 29, 2002, for "Pharmaceutical preparations for stimulation of fertility in men and women, all for human consumption; all included in Class 5";

·        Israel Trademark Registration No. 158,431 issued on May 5, 2004, for "Pharmaceutical preparation, for human use, which stimulates fertility in men and women";

·        India Trademark Registration No. 1,123,285 issued on August 1, 2002, for "Medicinal, pharmaceutical and veterinary preparations";

·        International Trademark Registration No. 786,611 issued on June 20, 2002, designating Albania, Bosnia and Herzegovina, Bulgaria, Belarus, Switzerland, China, Cuba, Cyprus, Czech Republic, Algeria, Estonia, Egypt, Georgia, Croatia, Hungary, Iceland, Kazakhstan, Lithuania, Latvia, Morocco, Montenegro, The Former Yugoslav Republic of Macedonia, Norway, Poland, Romania, Russian Federation, Serbia, Slovenia, Slovakia, Turkmenistan, Turkey, Ukraine, Uzbekistan, and Vietnam for "Pharmaceutical products and substances";

·        Japan Trademark Registration No. 4,782,364 (with Katakana) issued on June 25, 2004, for "Medicines which is used by men and women to promote pregnancy";

·        Jordan Trademark Registration No. 80,522 issued on June 26, 2005, for "Pharmaceutical products and substances";

·        South Korea Trademark Registration No. 0566200 issued on November 21, 2003, for "Pharmaceutical preparation, for human use, which stimulates fertility in men and women";

·        Mexico Trademark Registration No. 788,124 issued on April 25, 2003, for "Productos farmaceuticos, veterinaros e higienicos" (pharmaceutical, veterinary, and sanitary preparations) and other goods;

·        Malaysia Trademark Registration No. 08000515 issued on January 9, 2008, for "Pharmaceutical preparation, for human use which stimulate fertility in men and women";

·        New Zealand Trademark Registration No. 661,687 issued on January 30, 2003, for "Pharmaceutical preparation, for human use which stimulate fertility in men and women";

·        Panama Trademark Registration No. 123,320 issued on September 30, 2002, for "Preparaciones farmaceuticas que estimulan la fertilidad en hombres y mujeres" (pharmaceutical preparations that stimulate fertility in men and women);

·        Peru Trademark Registration No. 00085577 issued on December 10, 2002, for "Preparaciones farmaceuticas que estimulan la fertilidad en hombres y mujeres" (pharmaceutical preparations that stimulate fertility in men and women);

·        Pakistan Trademark Registration No. 179,420 issued on July 31, 2002, for "Pharmaceutical preparation, for human use which stimulates fertility in men and women";

·        Paraguay Trademark Registration No. 257,439 issued on May 26, 2003, for "Preparaciones farmaceuticas que estimulan la fertilidad en hombres y mujeres" (pharmaceutical preparations that stimulate fertility in men and women);

·        Saudi Arabia Trademark Registration No. 702/63 issued on November 5, 2003, for "Pharmaceutical preparation, for human use which stimulates fertility in men and women";

·        Singapore Trademark Registration No. T02/16788H issued on October 25, 2002, for "Pharmaceutical preparations for human use, pharmaceutical preparations for the treatment of fertility problems";

·        El Salvador Trademark Registration No. 00201/125 issued on February 27, 2009, for "Productos y sustancias farmacéuticas" (pharmaceutical products and substances);

·        Thailand Trademark Registration No. TM178853 issued on April 17, 2003, for "Pharmaceutical preparation, for human use which stimulates fertility in men and women";

·        Tunisia Trademark Registration No. EE021702 issued on April 13, 2004, for "Preparation pharmaceutique, qui stimule la fertilite chez les hommes et les femmes" (pharmaceutical preparation, which stimulate fertility in men and women);

·        South Africa Trademark Registration No. 2009/14205 issued July 28, 2009, for "Pharmaceutical and veterinary preparations" and other goods.

 

Regarding REPRONEX trademark copies of the following registration certificates:

 

·        United States Trademark Registration No. 2,256,371 issued on June 29, 1999, for "Pharmaceutical preparation for use in the induction of ovulation in women and the stimulation of spermatogenesis in men";

·        Canada Trademark Registration No. TMA590,758 issued on September 25, 2003, for "Pharmaceutical preparation for use in the induction of ovulation in humans";

·        Argentina Trademark Registration No. 2.379.571 issued on July 8, 2010, for "Preparaciones farmaceuticas para uso en la induccion de la ovulacion en humans" (pharmaceutical preparations for use in the induction of ovulation in humans);

·        Mexico Trademark Registration No. 1013751 issued on November 27, 2007, for "Pharmaceutical for use in the induction of ovulation in women and the stimulation of spermatogenesis in men" and other goods; and

·        Turkey Trademark Registration No. 2004 38117 issued on November 23, 2004, for "İnsan ve hayvan sağliği için ilaçlar" (medicines for human and animal health) and other goods.

 

This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited marks and the exclusive right to use them in connection with the stated goods. The registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.[2]

 

Thus, Complainant established its rights in the marks MENOPUR, BRAVELLE, and REPRONEX.[3]

 

Therefore, the Panel concludes that Complainant has demonstrated rights in the marks MENOPUR, BRAVELLE, and REPRONEX for purposes of Paragraph 4(a)(i) of the Policy. 

 

b)   Identity or confusing similarity between the Disputed Domain Name and the Complainant’s trademark

 

Complainant alleges that the disputed domain names incorporate the marks MENOPUR, BRAVELLE, and REPRONEX, adding only the generic or descriptive terms “side” and “effects” and the generic top-level domain name “.com”. According to the Complainant, these changes are not sufficient to avoid a likelihood of confusion with the marks MENOPUR, BRAVELLE, and REPRONEX.

 

On the first place, before establishing whether or not the domain names <menopursideeffects.com>, <bravellesideeffects.com>, and <repronexsideeffects.com> are confusingly similar to the Complainant’s marks MENOPUR, BRAVELLE, and REPRONEX, the Panel wants to point out that the addition of generic top-level domains (gTLD), i.e., “.com,” “.biz,” “.edu,” “.org”, cannot be considered when determining if the registered domain name is identical or confusingly similar to the registered trademark[4]. Neither the addition of country code top-level domains (“ccTLD”), i.e., “.co.,” “.de,” “.cr,” “.es,” nor the insertion of a gTLD have a distinctive function[5].

 

UDRP Panels have unanimously accepted that the inclusion of the “.com” (gTLD), in the disputed domain name is not a factor in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks, D2000-0477 (WIPO July 20, 2000), the Panel stated that:

 

[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services.

 

Furthermore, the Panel considers that the reproduction of the trademarks MENOPUR, BRAVELLE, and REPRONEX, by the domain names <menopursideeffects.com>, <bravellesideeffects.com>, and <repronexsideeffects.com>, respectively, is sufficient grounds to establish that the disputed domain names are confusingly similar to the trademarks[6]. Especially since the disputed domain names reproduce entirely the Complainant’s marks without any other distinctive elements. Consequently, consumers will assume that the owner of the domain name is the pharmaceutical’s manufacturer.

 

In addition, the Panel agrees with the Complainant on the conclusion that including the terms “side” and “effects” at the end of the domain names is not sufficient to make the disputed domain names different from the MENOPUR, BRAVELLE, and REPRONEX marks.

 

In fact, the expression “side effects” is commonly associated with the use of medicines. MENOPUR, BRAVELLE, and REPRONEX marks identify pharmaceuticals especially fertility drugs, which may have side effects. Consequently, the expression “side effects” is generic and descriptive regarding pharmaceuticals[7], especially since “side effects” does not add distinctiveness or a source of origin to the domain names. Moreover, regarding pharmaceutical products, the comparison must be strict, because it is the consumer’s health what is at risk. When the first letters of the domain name correspond with Complainant’s trademarks and the remaining part of them represents the English expression “side effects”, which, as stated before, is commonly associated with the use of medicines; hence, consumers are likely to expect the domain names to be related to the side effects of the products MENOPUR, BRAVELLE or REPRONEX, respectively. Thus, the domain names are confusingly similar to the Complainant’s trademarks.

 

The Respondent merely adds a generic or descriptive expression “side effects” to distinctive trademarks -MENOPUR, BRAVELLE or REPRONEX. This addition rather than distinguishing the domain names from the Complainant’s trademarks makes them confusingly similar to the trademarks. Hence, the domain names should be deemed as confusingly similar to the registered trademarks[8].

 

Generic and descriptive terms, as “side effects” with an obvious relationship to Complainant’s business operation, i.e., pharmaceuticals, derive in likelihood to create confusion between the disputed domain names and the marks[9]. In this case, the consumer creates an obvious relationship between the trademarks and the domain names that contain them since the expression “side effects” relates to medicine and the possible effects they might produce. Thus, by registering the disputed domain names, Respondent creates a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the domain names.

 

In consequence, as per this reasoning, the Panel finds that, in the present case, the disputed domain names are confusingly similar to the Complainant’s marks and thus, the requirement set forth in Paragraph 4(a)(i) of the Policy is duly complied with.

 

Rights or Legitimate Interests

 

a)  Prima Facie Case.

 

Regarding this second element of Paragraph 4(a) of the Policy, UDRP Panels have unanimously consented that requiring the Complainant to prove the lack of rights or legitimate interests of the Respondent in the disputed domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of the Respondent[10].

 

In Julian Barnes v. Old Barn Studios Ltd., D2001-0121 (WIPO Mar. 30, 2001), the Panel stated that:

 

Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panels view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head”.

 

Therefore, a Complainant is required to make a prima facie case that Respondent lacks of rights or legitimate interests in the disputed domain name. Once this prima facie case is made, the burden of production shifts to Respondent, who must come forward with concrete evidence of its rights or legitimate interests[11].  If Respondent fails to do so, Complainant is deemed to have met the second element of Paragraph 4(a) of the Policy.

 

Complainant asserts that Respondent has no rights or legitimate interests in the domain names <menopursideeffects.com>, <bravellesideeffects.com>, and <repronexsideeffects.com>: i) Respondent is not commonly known by the disputed domain name; ii) Respondent has not been authorized by Complainant to use the trademarks MENOPUR, BRAVELLE and REPRONEX in any manner; iii) Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services, because the disputed domain names are inactive websites that offer no content, hence, Respondent is not making a legitimate noncommercial or fair use of the domain names; iv) Respondent pretends to create a linkage between its product’s website CONCEPTIONKIT.COM and the disputed domain names; and v) Respondent is Complainant’s competitor within the fertility treatment market since they both operate in the field related to human conception.

 

The Panel accepts these assertions as a prima facie case made by Complainant that shifts the burden of production to Respondent.

 

b)  Respondents rights or legitimate interests in the disputed Domain Name.

 

Paragraph 4(c) of the Policy includes an enunciative listing of circumstances that prove Respondent’s rights or legitimate interests in a disputed domain name:

 

(i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

 

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

 

(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Respondent states that the domain names are going to be used as a Forum Site to facilitate access to information regarding conception and fertility enabling women to cope with drugs side effects. However, there is no evidence of the use or preparation of use on this regard.

 

This Panel believes that Respondent failed to prove his rights or legitimate interests in the domain names <menopursideeffects.com>, <bravellesideeffects.com>, and <repronexsideeffects.com>. Simply stating that the domain names are going to be used as an Online Forum is not evidence of Respondent’s rights or legitimate interest in them. Since their registration, Respondent has had enough time to prepare and use the website of the disputed domain names; notwithstanding, it has not use them or prove that it has been preparing them to be used.

 

Accordingly, Respondent failed to prove that before receiving the written notice of the Complaint he was using or preparing a website to use the domain names in connection with a bona fide offering of goods.

 

The Panel conducted searches Ex Officio in the search engines Google and BING to confirm that Respondent is not commonly known by the disputed domain names <menopursideeffects.com>, <bravellesideeffects.com>, and <repronexsideeffects.com>[12], concluding that the respondent was not and has never been commonly known by the disputed domain names, which fails to comply with the defense set forth under Policy ¶ 4(c)(ii).

 

Respondent has not used the disputed domain names, each of them revert to inactive websites. Consequently, Respondent is not making a legitimate noncommercial or fair use of the domain names. Failing to actively use the disputed domain names does not qualify as 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)[13]

 

Finally, Respondent asserts that its registrations and intended use of the domain names, which incorporate Complainant’s Mark, constitute nominative fair use.  As Respondent has not come forward with concrete evidence of its alleged intended use of the domain names, the Panel declines to address this assertion. 

 

Therefore, the second requirement of paragraph 4(b) of the Policy is met.

 

Registration and Use in Bad Faith

 

According to paragraph 4(b) of the Policy, 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:

 

(1)   Circumstances indicating that Respondent has registered or has 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 Respondents documented out-of-pocket costs directly related to the domain name; or

 

(2)   Respondent has 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 Respondent has engaged in a pattern of such conduct; or

 

(3)   Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(4)   By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her 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 his/her website or location or of a product or service on his/her website or location.

 

Complainant contends that Respondent’s registration of multiple domain names might demonstrates bad faith. Complainant also contends, in its Additional Submission, that Respondent registered at least 30 other domain names containing the terms “side effects” alongside a fertility drug name between April and May of 2012 (Exhibit 12 to the Complainant’s Additional Submission), such as, FOLLISTIMSIDEEFFECTS.COM, CETROTIDESIDEEFFECTS.COM, CRINONESIDEEFFECTS.COM, GONAL-FSIDEEFFECTS.COM, among other domain names. Complainant argues that these third-party domain names infringe the marks of third parties and Complainant’s several other marks. Complainant proved that Respondent registered three additional domain names with Complainant’s trademarks and the expression “side effects”, which are also not used by the Respondent (REPRONEXSIDEFFECTS.COM, ENDOMETRINSIDEEFFECTS.COM, NOVARELSIDEEFFECTS.COM) (Exhibit 13 to the Complainant’s Additional Submission).

 

As stated by the panel in State Farm Mut. Auto. Ins. Co. v. Sotelo,  the requirement of use in bad faith does not require that it prove in every instance that a respondent is taking positive action.

 

The mere failure to make an active use of the <menopursideeffects.com>, <bravellesideeffects.com>, and <repronexsideeffects.com> domain names is indicative of bad faith registration and use pursuant to Policy ¶ 4(a)(iii)[14].

 

The passive holding of the <menopursideeffects.com>, <bravellesideeffects.com>, and <repronexsideeffects.com> domain names in sum with Respondent’s registration of multiple domain names incorporating Complainant’s trademarks, establishes a pattern of bad faith registration. 

 

In Complainant’s Additional Submission, Complainant also contends that Respondent’s intended use of the disputed domain names will disrupt Complainant’s business. Complainant states that Respondent’s intended use will falsely suggest a sponsorship and/or endorsement by Complainant of Respondent’s website and use of the disputed domain names. Complainant also states that Respondent is a competitor in the fertility industry because Respondent sells medical devices to improve fertility whereas Complainant sells fertility drugs. On the other hand, Respondent confirms he operates in the field relating to animal and human conception. Respondent owns a fertility method called CONCEPTION KIT and a medical device called CONCEPTION CAP. Respondent stated in his response that his websites may contain links to the disputed domain name websites, as follows:

 

“Conceivex websites (such as www.conceptionkit.com) may contain links to the Forum Websites, for Conceivex customers to interact with other people discussing side effect concerns.”

 

Since the Complainant’s trademarks are used along with the generic and descriptive terms “side effects” “it is reasonable to conclude that many Internet users would suppose that the website, to which the disputed domain name resolves, has a connection with the Complainant”[15]. This conclusion might disrupt Complainant’s business, especially since Complainant and Respondent are competitors in the fertility industry and both of them own products used to overcome infertility and to aid conception.

 

Likewise, only an authorized source or its manufacturer should be able to refer to pharmaceutical product side effects. In this case, Respondent is no apparent expert on MENOPUR, BRAVELLE and REPRONEX. Respondent is a mere competitor seeking a better position in the fertility aid market. Hence, it is dangerous to allow a competitor to use these tools, such as, the disputed domain names, to procure the confusion among consumer public regarding the authorized source of information of third parties products. The fact that Respondent stated that Complainant’s trademarks “cause nausea” is evidence of the danger that this kind of behavior might produce. As Complainant explains, nausea is a possible side effect that some users might experience. To state that MENOPUR, BRAVELLE and REPRONEX “cause nausea” without explaining that it does not affect all consumers, is a competitors strategy, disregarding consumers health and best interests.

 

Respondent contents that he must use the drugs names to describe the purpose of the online forum; notwithstanding, from its own domain name registrations (see Exhibit 12 to the Complainant’s Additional Submission) it is shown that such purpose can be met incorporating generic and descriptive terms relating to fertility such as <fertilitydrugssideeffects.com> owned by the Respondent. Also the use of domain names containing the generic name of the drug such as <clomiphinesideeffects.com> also owned by the Respondent can be used with the same purpose. Thus, the Respondent has the capacity of offering Online Forum services or any kind of services pertaining conception drugs without using third parties trademarks in the domain names.

 

Consequently, the disputed domain names incorporating Complainant’s trademarks along with the generic expression “side effects”, being currently inactive and the possible disruption of Complainant’s business, evidenced bad faith registration and use pursuant to Policy ¶¶ 4(b)(iii) and (iv).

 

Therefore, the three elements of the Policy 4(a)(iii) are satisfied in the present case in respect to Respondent of the disputed domain names.

 

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 <menopursideeffects.com>, <bravellesideeffects.com>, and <repronexsideeffects.com> domain names respectively be TRANSFERRED from Respondent to Complainant.

Fernando Triana, Esq.

Chair of the Panel

_______________________                                                  __________________________

Professor David E. Sorkin                                                   Honorable Judge Karl V. Fink

Co-Panelist                                                                               Co-Panelist

 

Dated:  August 15, 2012

 

COLO 1308 0960 55173/SAG

4290210243686



[1] See MatchNet PLC. v. MAC Trading, D2000-0205 (WIPO May 11, 2000); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO March 23, 2000).

[2] See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO May 5, 2002).

[3] 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 Royal Bank of Scot. Group plc & Nat. Westminster Bank plc v. Soloviov, FA 787983 (Nat. Arb. Forum November 3, 2006) (“Complainant’s trademark registrations for the NATWEST mark with the United Kingdom Patent Office . . . establish Complainant’s rights in the mark pursuant to Policy ¶4(a)(i)”.); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum August 4, 2004) (“finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world”).

[4] See Altec Industries, Inc. v. I 80 Equipment, FA 1437753 (Nat. Arb. Forum May 18, 2012).

[5] See YottaMark, Inc. v. Lukasz Chudy, FA 1392357 (Nat. Arb. Forum July 15, 2011)

[6] See ER Marks, Inc. and QVC, Inc. v. Hansmann, FA 1381755 (Nat. Arb. Forum May 6, 2011); see also Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001).

[7] See F. Hoffmann-La Roche AG v. MedCenter Canada, D2005-1291 (WIPO January 19, 2006); see also Sanofi-Aventis v. Darko,  D2005-1357 (WIPO February 24, 2006); see also Minn. Mining and Mfg. Co. v. Overbey, D2001-0727 (WIPO October 15, 2001).

[8] See Forest Laboratories, Inc. v. candrug, D2008-0382 (WIPO April 24, 2008) (“when a respondent merely adds generic or descriptive terms to a distinctive trademark, the domain name should be considered confusingly similar to the registered trademark”.); see also Bayer Aktiengesellschaft v. Monseen, D2003-0275 (WIPO May 30, 2003).

[9] See Liberty Mut.Ins.Co. v. Kanter Assocs. SA a/k/a Admin, FA1299743 (Nat. Arb. Forum February 22, 2010).

[10] See Arla Foods amba v. Bel Arbor / Domain Admin, PrivacyProtect.org, D2012-0875 (WIPO June 7, 2012); see also F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Servs., D2012-0474 (WIPO April 24, 2012).

[11] See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO August 1, 2000).

[12] See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006).

[13] See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”); see also Household Int’l, Inc. v. Cyntom Enters., FA 95784 (Nat. Arb. Forum November 7, 2000) (“holding that the respondent’s “vague and unsupported assertion of ‘plans to sell household goods, supplies and appliances over the Internet’” was insufficient to be considered proof of a legitimate business plan”).

[14] See State Farm Mut.Auto. Ins. Co. v. Sotelo, FA 1008269 (Nat. Arb. Forum July 17, 2007); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000).

[15] See Forest Labs., Inc. v. candrug, D2008-0382 (WIPO April 24, 2008)

 

 

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