C.P. Pharmaceuticals International C.V.
v. David Pfeffer a/k/a JeMM Productions
Claim
Number: FA0501000409476
Complainant is C.P. Pharmaceuticals International C.V. (“Complainant”),
represented by Tara M. Vold, of Fulbright & Jaworski L.L.P., 801 Pennsylvania Avenue, N.W., Washington, DC 20004-2623. Respondent is David Pfeffer a/k/a JeMM Productions (“Respondent”), P.O. Box 10023, Jerusalem
91100, Israel.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <caduet.info> and <caduet.biz>,
registered with Register.com.
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.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
25, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 26, 2005.
On
January 27, 2005, Register.com confirmed by e-mail to the National Arbitration
Forum that the domain names <caduet.info> and
<caduet.biz> are registered with Register.com and that Respondent is
the current registrant of the names. Register.com
has verified that Respondent is bound by the Register.com 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 1, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 21, 2005 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@caduet.info and
postmaster@caduet.biz by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
March 1, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Sandra Franklin
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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <caduet.info> and
<caduet.biz> domain names are identical to Complainant’s CADUET
mark.
2. Respondent does not have any rights or
legitimate interests in the <caduet.info> and <caduet.biz>
domain names.
3. Respondent registered and used the <caduet.info>
and <caduet.biz> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is
an affiliate of Pfizer Inc., a global pharmaceutical company that discovers,
develops, manufactures and markets leading prescription medicines for humans
and animals. Complainant is the owner
of the CADUET mark, registered with the U.S. Patent and Trademark Office on
September 23, 2003 (Reg. No. 2,767,460) in connection with “pharmaceutical
preparations for the treatment of cardiovascular disease.” Early in 2004, the United States Food and
Drug Administration approved Pfizer’s CADUET preparation. The CADUET brand has achieved sales of $5
million in the third quarter of 2004 and $35 million year-to-date.
Respondent
registered the <caduet.info> and <caduet.biz> domain
names on February 17, 2004. The <caduet.info>
domain name resolves to a website that contains an informational page
relating to Pfizer’s CADUET product. In
addition, the website contains advertisements relating to various
health-related books and other products.
The <caduet.biz>
domain name resolves to a website that contains a variety of links, including
“Health,” “Health Insurance,” and “Men’s Health,” among other links.
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."
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.
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.
Complainant has
established a presumption of rights in the CADUET mark as the result of its
registration with the U.S. Patent and Trademark Office. See
Janus Int’l Holding Co. v.
Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration
of a mark is prima facie evidence of
validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption); see also
Am. Online, Inc. v. Thomas P.
Culver Enters.,
D2001-0564 (WIPO June 18, 2001) finding that successful trademark registration
with the United States Patent and Trademark Office creates a presumption of
rights in a mark.
The disputed
domain names incorporate the unmodified CADUET mark in its entirety. The addition of such top-level domains as
“.info” and “.biz” are immaterial in determining the level of similarity
between a name and mark. Therefore, the <caduet.info>
and <caduet.biz>
domain names are identical to Complainant’s CADUET mark pursuant to paragraph
4(a)(i) of the Policy. See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22,
2000) finding that the addition of a top-level domain is without legal
significance; see
also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA
204063 (Nat. Arb. Forum Dec. 6, 2003) (“It
has been established that the addition of a generic top-level domain is
irrelevant when considering whether a domain name is identical or confusingly
similar under the Policy.”).
Complainant has
established Policy ¶ 4(a)(i).
Complainant has
asserted in the Complaint that Respondent lacks rights and legitimate interests
in the disputed domain names.
Respondent has failed to respond to the Complaint. The analysis under paragraph 4(a)(ii) of the
Policy ultimately depends upon information that is “uniquely within the knowledge
and control of the respondent.”
G.D. Searle
v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002).
For that reason, the failure of a respondent to advance evidence of
possible rights or legitimate interests allows a presumption under paragraph
4(a)(ii) of the Policy that Respondent lacks rights and legitimate interests in
a domain name. See Allergan Inc. v. MedBotox Inc., FA
170639 (Nat. Arb. Forum Sept. 9, 2003) (“Respondent has not challenged the allegations in the Complaint.
Under these circumstances it is appropriate for the Panel to accept all
reasonable allegations and inferences in the Complaint as true.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) finding that failing to respond
allows a presumption that Complainant's allegations are true unless clearly
contradicted by the evidence.
Indeed, the fact
that Respondent failed to respond may also be construed as substantive evidence
that Respondent lacks rights and legitimate interests in the domain names. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interests
in the domain names; see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s reasonable
allegations are true.”).
Respondent is
using the <caduet.info> domain name to resolve to a website that
contains information about Pfizer’s CADUET product, as well as advertisements
relating to various health-related books and other products. Respondent would not have registered the <caduet.info>
domain name but for Complainant’s investment in the CADUET
trademark. The fact that Respondent is
hosting advertisements at the resolved website, which presumably provide
revenue to Respondent, does not evidence a bona fide offering of goods
or services pursuant to paragraph 4(c)(i) of the Policy. See
eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) ("[Using]
Complainant’s entire mark in infringing domain names makes it difficult to infer
a legitimate use"); see also
Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar.
17, 2003) finding that Respondent’s diversionary use of Complainant’s mark to
attract Internet users to its own website, which contained a series of hyperlinks
to unrelated websites, was neither a bona fide offering of goods or services
nor a legitimate noncommercial or fair use of the disputed domain names; see also U.S. Fran. Sys., Inc. v. Howell,
FA 152457 (Nat. Arb. Forum May 6, 2003) holding
that Respondent’s use of Complainant’s mark and the goodwill surrounding that
mark as a means of attracting Internet users to an unrelated business was not a
bona fide offering of goods or services.
The fact that
Respondent has not challenged Complainant’s assertion that the <caduet.biz>
domain name is not being used in connection with a bona fide offering of
goods or services pursuant to paragraph 4(c)(i) of the Policy allows
Complainant’s assertion to prevail under the paragaph 4(a)(ii) analysis. See Allergan Inc. v. MedBotox Inc., FA
170639 (Nat. Arb. Forum Sept. 9, 2003); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000).
There is simply
no evidence in the record, other than the attached websites themselves, that
Respondent is commonly known by the <caduet.info> and <caduet.biz>
domain names pursuant to paragraph 4(c)(ii) of the Policy. See
RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail"; see also Ian
Schrager Hotels, L.L.C. v. Taylor, FA
173369 (Nat. Arb. Forum Sept. 25, 2003) finding that without demonstrable evidence to support the notion
that a respondent is commonly known by a domain name, the notion must be
rejected.
Complainant has
established Policy ¶ 4(a)(ii).
As evidenced by
the contents of the website attached to the <caduet.info> domain
name, Complainant is fully aware of Complainant’s CADUET product. The fact that Respondent registered a domain
name identical to the CADUET mark is strong evidence Respondent had notice of
Complainant’s mark prior to registering both the disputed domain names on
February 17, 2004. A general rule under
paragraph 4(a)(iii) of the Policy is that bad faith registration and use is
established when one registers a domain name, which it knows to be identical to
a third-party mark, in order to commercially benefit from the goodwill
surrounding that mark, without a legitimate justification such as concurrent
rights. See Paws, Inc. v. Odie,
FA 96206 (Nat. Arb. Forum Jan. 8, 2001) ("Given the uniqueness and the
extreme international popularity of the [ODIE] mark, Respondent knew or should
have known that registering the domain name in question would infringe upon the
Complainant's goodwill"); see
also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24,
2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably
should have been aware of Complainant’s trademarks, actually or
constructively.”); see also
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir.
2002) ("Where an alleged infringer chooses a mark he knows to be similar
to another, one can infer an intent to confuse.").
Moreover,
Respondent’s registration of the <caduet.info> and <caduet.biz>
domain names prevents Complainant from registering its CADUET mark in a
corresponding domain name within the top-level domains “.info” and “.biz.” Bad faith registration and use pursuant to
paragraph 4(b)(ii) of the Policy is established where one registers a domain
name to prevent the owner of a mark from reflecting that mark in a
corresponding domain name, which is the state of events here.
The caveat to
paragraph 4(b)(ii) of the Policy is that a respondent must “have engaged in a
pattern of such conduct.” The plain
language of paragraph 4(b)(ii) does not require the “pattern” to occur at any
specific point in time. For example,
past panels have held that a single instance of registering more than one
domain name is capable of fulfilling the “pattern” requirement. In the instant case, Respondent registered
both the <caduet.info> and <caduet.biz> domain names,
which are identical to Complainant’s mark, on February 17, 2004. Therefore, Respondent’s registration of the
disputed domain names may be interpreted as a “pattern” of preventing
Complainant from reflecting its mark in corresponding domain names. Consistent with prior decisions under the
Policy, the Panel finds Respondent registered and used the <caduet.info>
and <caduet.biz> domain names in bad faith pursuant to
paragraph 4(b)(ii) of the Policy. See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000)
finding that one instance of registration of several infringing domain names
satisfies the burden imposed by the Policy ¶ 4(b)(ii); see also YAHOO! Inc. v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) finding a bad
faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two
domain names incorporating Complainant's YAHOO! mark; see also Caterpillar
Inc. v. Miyar, FA 95623
(Nat. Arb. Forum Dec. 14, 2000) finding that registering multiple domain
names in a short time frame indicates an intention to prevent the mark holder
from using its mark and provides evidence of a pattern of conduct.
Complainant has
established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <caduet.info> and <caduet.biz>
domain names be TRANSFERRED from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
March 15, 2005
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