C.P. Pharmaceuticals International C.V.
v. David Pfeffer a/k/a JeMM Productions
Claim
Number: FA0501000409479
Complainant C.P. Pharmaceuticals International C.V. (“Complainant”),
is 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”), 575 8th Ave., 11th
floor, New York, NY 10018.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <caduet.us>, registered with Register.com,
Inc.
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, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <caduet.us> is registered
with Register.com, Inc. and that Respondent is the current registrant of the
name. Register.com, Inc. 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 the U. S. Department of Commerce’s
usTLD Dispute Resolution Policy (the “Policy”).
On
January 31, 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.us 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 3, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <caduet.us>
domain name is identical to Complainant’s CADUET mark.
2. Respondent does not have any rights or
legitimate interests in the <caduet.us> domain name.
3. Respondent registered and/or used the <caduet.us>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, C.P.
Pharmaceuticals International C.V. is an affiliate of Pfizer Inc., a global
pharmaceutical company that discovers, develops, manufactures and makes leading
prescription medicines for humans and animals, including many of the world’s
best-known consumer brands. Complainant
has used its CADUET mark to market its brand of treatment for high blood
pressure pills since January 2003.
Complainant owns
trademark rights in the CADUET mark through registration with the United States
Patent and Trademark Office (Reg. No. 2,767,460, issued September 23, 2003).
Respondent
registered the <caduet.us> domain name on February 17, 2004. That same day Respondent also registered the
<caduet.info> and <caduet.biz> domain names, which are the subject
of a separate UDRP Complaint that was filed with the Forum. Respondent is using the disputed domain to
resolve to a search engine website that provides information and hyperlinks to
commercial websites on various subjects such as finance, health, and
travel.
Complainant sent
Respondent a cease and desist letter upon discovering Respondent’s use of
Complainant’s CADUET mark. Respondent’s
counsel responded asserting that the purpose of the domain name was to provide
information about high cholesterol, high blood pressure and related diseases
and treatment to prevent the disease and their side effects.
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 UDRP, 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 or is
being used in bad faith.
Given the
similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”)
and the usTLD Policy, the Panel will draw upon UDRP Precedent as applicable in
rendering its decision.
Complainant has
established that it has rights in the CADUET through registration with the
United States Patent and Trademark Office.
See Men’s Wearhouse, Inc. v.
Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark
law, registered marks hold a presumption that they are inherently distinctive
and have acquired secondary meaning.”); see
also Janus Int’l Holding
Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) finding that Panel
decisions have held that 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.
Respondent’s <caduet.us>
domain name is identical to Complainant’s CADUET mark. Respondent’s second-level domain does not
deviate from Complainant’s mark in any significant respect. The addition of a country-code, such as
“us.” has been determined by previous panels to be inconsequential when
conducting an analysis under Policy ¶ 4(a)(i); thus, Respondent’s domain name
is identical to Complainant’s mark. See World Wrestling Fed’n Entm’t, Inc. v.
Rapuano, DTV2001-0010 (WIPO May 23, 2001) (“The addition of the
country code top level domain (ccTLD) designation <.tv> does not serve to
distinguish [the disputed domain] names from Complainant’s marks since ‘.tv’ is
a common Internet address identifier that is not specifically associate with
Respondent”); see also Tropar Mfg.
Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) finding the
addition of the country-code “.us” fails to add any distinguishing
characteristic to the domain name, therefore the <tropar.us> domain name
is identical to Complainant’s TROPAR mark.
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(i).
Respondent
has failed to submit a Response in this proceeding. Therefore, Complainant’s submission is unopposed and the
arguments unrefuted. In the absence of
a Response, the Panel is permitted to accept as true all reasonable allegations
contained in the Complaint unless clearly contradicted by the evidence. Because Respondent has failed to submit a
Response, Respondent has failed to propose any set of circumstances that could
substantiate its rights or legitimate interests in the disputed domain
name. See Parfums
Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) finding that by
not submitting a Response, Respondent has failed to invoke any circumstance
which could demonstrate any rights or legitimate interests in the domain name; see also Vertical Solutions Mgmt., Inc.
v. webnet-marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000)
holding that Respondent’s failure to respond allows all reasonable inferences
of fact in the allegations of the complaint to be deemed true.
Respondent is
using the disputed domain to resolve to a search engine website that provides
information and hyperlinks to various subjects such as finance, health, and
travel. The Panel infers that
Respondent receives click-through fees by redirecting Internet users to
commercial websites. Respondent’s use
of a domain name that is identical to Complainant’s mark for commercial gain is
not a use in connection with a bona fide offering of goods or services pursuant
to Policy ¶ 4(c)(ii) and is not a legitimate noncommercial or fair use of the
domain name pursuant to Policy ¶ 4(c)(iv).
See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000)
finding no rights or legitimate interests in the famous MSNBC mark where
Respondent attempted to profit using Complainant’s mark by redirecting Internet
traffic to its own website; see also
Am. Online, Inc. v. Tencent
Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) finding that use of
Complainant’s mark “as a portal to suck surfers into a site sponsored by
Respondent hardly seems legitimate”; see
also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb.
Forum Dec. 31, 2002) finding that Respondent’s diversionary use of
Complainant’s marks to send Internet users to a website which displayed a
series of links, some of which linked to competitors of Complainant, was not a
bona fide offering of goods or services; see
also Black & Decker Corp. v. Clinical Evaluations, FA 112629
(Nat. Arb. Forum June 24, 2002) holding that Respondent’s use of the disputed
domain name to redirect Internet users to commercial websites, unrelated to
Complainant and presumably with the purpose of earning a commission or
pay-per-click referral fee did not evidence rights or legitimate interests in
the domain name.
Respondent has
not produced evidence suggesting that it has rights in the CADUET mark or is
commonly known by the disputed domain name.
Such circumstances fail to support a finding that Respondent has rights
or legitimate interests in the <caduet.us> domain name pursuant to
Policy ¶¶ 4(c)(i) or (iii). See
CDW Computer Centers, Inc. v. The Joy Comp., FA 114463 (Nat. Arb
Forum July 25, 2002) finding that, because Respondent did not come forward with
a Response, the Panel could infer that Respondent had no trademark or service
marks identical to <cdw.us> and therefore had no rights or legitimate
interests in the domain name; see also
Gallup Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) finding that Respondent
does not have rights in a domain name when Respondent is not known by the mark.
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(ii).
Respondent is
using the disputed domain to resolve to a revenue generating portal site that
purports to provide information on various subjects such as finance, health,
and travel. Respondent’s intentional
registration of a domain name that is identical to Complainant’s CADUET mark
for commercial gain constitutes bad faith registration and use pursuant to Policy
¶ 4(b)(iv). See Bank of Am. Corp. v. Out Island Props., Inc., FA
154531 (Nat. Arb. Forum June 3, 2003) stating that “[s]ince the disputed domain
names contain entire versions of Complainant’s marks and are used for something
completely unrelated to their descriptive quality, a consumer searching for
Complainant would become confused as to Complainant’s affiliation with the
resulting search engine website” in holding that the domain names were
registered and used in bad faith pursuant to Policy ¶ 4(b)(iv); see also G.D. Searle & Co. v.
Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
finding that Respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly
similar domain name to attract Internet users to its commercial website; see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) finding bad faith where Respondent directed Internet users
seeking Complainant’s site to its own website for commercial gain.
Complainant’s
registration of the CADUET mark with the United States Patent and Trademark
Office serves as constructive knowledge of Complainant’s mark. Additionally, Respondent’s registration of a
domain name that is identical to Complainant’s registered mark suggests that
Respondent had actual knowledge of Complainant’s rights in the CADUET
mark. Therefore, the Panel finds
Respondent registered the disputed domain name in bad faith pursuant to Policy
¶ 4(a)(iii). See Orange Glo Int’l v. Jeff Blume, FA 118313 (Nat. Arb.
Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal
Register of the USPTO, a status that confers constructive notice on those
seeking to register or use the mark or any confusingly similar variation
thereof”); see also Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration; see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) finding that the ICQ mark is so obviously connected with
Complainant and its products that the use of the domain names by Respondent,
who has no connection with Complainant, suggests opportunistic bad faith.
Respondent’s <caduet.us> domain name is
identical to Complainant’s CADUET mark, therefore, the Panel concludes that
Respondent’s mark prevents Complainant from reflecting its mark in a domain
name and evidences Respondent’s bad faith registration and use pursuant to
Policy ¶ 4(b)(ii). See Gamesville.com, Inc. v. Zuccarini, FA 95294 (Nat. Arb. Forum Aug.
30, 2000) finding that Respondent engaged in a pattern of conduct of
registering domain names to prevent the owner of the trademark from reflecting
the mark in a corresponding domain name, which is evidence of registration and
use in bad faith; see also Armstrong Holdings, Inc. v. JAZ Assoc.,
FA 95234 (Nat. Arb. Forum Aug. 17, 2000) finding that Respondent violated
Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon
others’ famous and registered trademarks.
The Panel finds
that Complainant fulfilled 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.us> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
March 17, 2005
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