Patrick McIntosh – Renaissance Pharmaceuticals, Inc. v. PrivacyProtect.org / Domain Admin / ID#10760
Claim Number: FA1301001482995
Complainant is Patrick McIntosh – Renaissance Pharmaceuticals, Inc. (“Complainant”), represented by Michael Peroff of Strategic Domain, Inc., New York, USA. Respondent is PrivacyProtect.org / Domain Admin / ID#10760 (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <elimite.com>, registered with BigRock Solutions Ltd.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 31, 2013; the National Arbitration Forum received payment on February 6, 2013.
On February 14, 2013, BigRock Solutions Ltd. confirmed by e-mail to the National Arbitration Forum that the <elimite.com> domain name is registered with BigRock Solutions Ltd. and that Respondent is the current registrant of the names. BigRock Solutions Ltd. has verified that Respondent is bound by the BigRock Solutions Ltd. 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 February 19, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 11, 2013 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@elimite.com. Also on February 19, 2013, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 25, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons 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.
The Panel has issued its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in ELIMITE.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant is a pharmaceutical company which markets an FDA-approved prescription drug for the treatment of human scabies by reference to the product name ELIMITE.
2. The disputed domain name was registered on September 10, 2012.
3. The domain name resolves to a website that features third-party links to sellers of skin creams, including ELIMITE marked cream.
4. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
For reasons which quickly emerge, paragraph 4(a)(i) of the Policy is dispositive of these proceedings.
Paragraph 4(a)(i) of the requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Panel notes that Complainant makes no submissions as to the identity or confusing similarity of the trademark and the disputed domain name. In other circumstances, Panel may have itself drawn its own conclusions on that matter (see, for example, Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar) however in this case Complainant has done nothing to prove its trademark rights.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003). Complainant does not provide evidence of, or allude to, any trademark registration. Panel has inspected the exhibits to the Complaint and can find no reference to a registered trademark.
A trademark registration is not necessary if Complainant can establish common law rights in the trademark (see, for example, SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000)). Panel notes here that it is not just the National Arbitration Forum which administers the Policy. So, too, does the World Intellectual Property Organisation (WIPO). In addition to publishing its decisions under the Policy, WIPO also publishes a so-called “Overview of WIPO Panel Views on Selected UDRP Questions”, the Second Edition[1] of which asks at paragraph 1.7: What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights? In answer, the consensus view of former UDRP panelists is that:
The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. …
The evidence consists of exhibits of the cream tube and its packaging (both bearing the name ELIMITE) and some promotional material. The evidence indicates that FDA approval was first given in August 1989. Adjacent the use of the name ELIMITE on the actual product and product packaging is the “TM” symbol together with the statement that “Elimite is a trademark of Prestium Pharma Inc.” Although the Complaint states that this company is connected with Complainant there is no evidence whatsoever from either Complainant or that company of the kind or nature required to prove common law trademark rights.
Panel can not credit Complainant with trademark rights on the information provided and so finds that Complainant has failed to satisfy the first limb of the Policy.
No findings required (see Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002).
No findings required (see Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002).
Having failed to establish at least one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <elimite.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: April 9, 2013
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