Orphan Medical, Inc. v. Carlos Soto c/o
Paradise Digital, LLC
Claim Number: FA0510000575658
Complainant is Orphan Medical,
Inc. (“Complainant”), represented by Stephen
R. Baird of Winthrop &
Weinstine, P.A., 225 South
Sixth Street, Minneapolis, MN, 55402.
Respondent is Carlos Soto c/o Paradise Digital, LLC (“Respondent”), Santa Cruz, P.O. Box 20622,
Libertad, Corozal Di, Belize.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xyrem.us>,
registered with BulkRegister.Com, Inc..
PANEL
The undersigned certifies that she acted independently and impartially
and that to the best of her knowledge she has no known conflict in serving as
Panelist in this proceeding. Hon.
Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically October 11, 2005; the Forum received a hard copy
of the Complaint October 12, 2005.
On October 12, 2005, BulkRegister.Com, Inc. confirmed by e-mail to the
Forum that the domain name <xyrem.us>
is registered with BulkRegister.Com, Inc. and that Respondent is the current
registrant of the name.
BulkRegister.Com, Inc. verified that Respondent is bound by the
BulkRegister.Com, Inc. registration agreement and thereby has 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 October 19, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 8, 2005, by which Respondent could file a Response to the
Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of
the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On November 14, 2005, pursuant to Complainant’s request to have the
dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel
(the “Panel”) finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any
rules and principles of law that the Panel deems applicable, without the
benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the
following assertions:
1. The domain name that Respondent registered, <xyrem.us>, is identical to Complainant’s XYREM mark.
2. Respondent has no rights to or legitimate interests in the <xyrem.us> domain name.
3. Respondent registered and used the <xyrem.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Orphan Medical, Inc., is a
wholly owned subsidiary of Jazz Pharmaceuticals. Complainant registered the XYREM mark on June 1, 1999, with the
U.S. Patent and Trademark Office (“USPTO”) (Reg. No. 2,249,959).
The generic name for Complainant’s XYREM brand
pharmaceutical product is Sodium Oxybate or Gamma-Hydroxybutyrate (“GHB”). Sodium Oxybate has gained notoriety as the
so-called “date rape” drug, and is the subject of the Hillory J. Farias and
Samantha Reid Date-Rape Drug Prohibition Act of 2000. The Controlled Drug and Substances Act designates Sodium Oxybate
as a Schedule 1 substance.
Complainant’s XYREM pharmaceutical product is the only authorized
medical use of Sodium Oxybate.
Respondent
registered the <xyrem.us> domain name May 15, 2003. The <xyrem.us> domain
name refers Internet users to a website that propones to offer “THE REAL TRUTH
ABOUT OBTAINING XYREM (GHB).” The
website displays text that argues that the U.S. government chose to control GHB
to give Complainant a monopoly and sell its XYREM product for $220. per
bottle. The website specifically
criticizes the Department of Justice’s Operation Webslinger, which targeted
on-line distributors of GHB:
Talk about an expensive bottle of
GHB! No wonder Operation Webslinger
went into effect. To wipe out the
competition! Now Orphan Medical can
sell their GHB- Xyrem [for] 50x more than the competition!
The frame for
Respondent’s website reads “By Xyrem Get Xyrem Xyrem Online Xyrem Source Xyrem
Suypplier Xyrem Info.” In addition, the
website includes a link to make GHB, and a banner that alternately offers a
link to a company called “ANABOLIC SUPPLY,” which is purportedly: “The Web’s #1
Rated Steroid Source,” or to a company that offers: “$1,500 Cash Loan.”
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.”
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 14(a) and 15(a) of the Rules and
will draw such inferences as the Panel considers appropriate pursuant to
Paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant to prove each of
the following three elements to obtain an order that a domain name should be
cancelled or transferred:
(1) the domain name registered by the Respondent is identical or
confusingly similar to a trademark or service mark in which the Complainant has
rights; 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 demonstrated rights in the XYREM
mark by its registration with the United States Patent and Trademark
Office. The Panel finds that its
trademark registration establishes its rights in the XYREM mark pursuant to
Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); see also Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal
trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
The disputed domain name that Respondent
registered, <xyrem.us>, is identical to Complainant’s XYREM mark
because the only difference is addition of the “.us” top-level domain, which
does not significantly distinguish the domain name from the mark. See Tropar Mfg. Co.
v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the
addition of the country-code “.us” fails to add any distinguishing
characteristic to the domain name, the <tropar.us> domain name is
identical to the complainant’s TROPAR mark); 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).
Complainant established Policy ¶ 4(a)(i).
Complainant established using extrinsic proof
in this proceeding that it has rights in the mark contained in its entirety
within the disputed domain name.
Complainant alleged that Respondent has no such rights. While Respondent is using the website
associated with the disputed domain name to criticize Complainant and air
Respondent’s conspiracy theories, it also offers instructions on how to make
GHB, which is a controlled substance, and provides links to a steroid supplier
and an online money lender. In
addition, the frame associated with the domain name implies that Respondent is
selling Complainant’s XYREM drug: “By Xyrem Get Xyrem Xyrem Online Xyrem Source
Xyrem Supplier Xyrem Info.”
Therefore, the
Panel finds that Respondent it is not using the disputed domain name for a bona
fide offering of a good or service pursuant to Policy ¶ 4(c)(ii) because it is
appropriating Complainant’s mark to offer links to third-party goods and
services and imply that it sells Complainant’s goods. In addition, the Panel also finds that these links and
implications indicate that Respondent is not using the disputed domain name for
a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv). See Wells Fargo & Co.
v. Nadim, FA 127720 (Nat. Arb. Forum Nov. 29, 2002) (finding that
respondent’s use of the complainant’s WELLS FARGO mark to redirect Internet
users to a domain name featuring magazine subscriptions was neither a bona
fide offering of goods or services nor a legitimate noncommercial or fair
use of the domain name); Prudential Ins. Co.of Am. v. Stonybrook Invs., LTD,
FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no rights or legitimate
interests in the disputed domain name where the respondent was using the
complainant’s mark to redirect Internet users to a website offering credit card
services unrelated to those services legitimately offered under the
complainant’s mark).
Respondent has no trademark registration for XYREM and nothing in the record, including the WHOIS registration information, indicates that Respondent is commonly known by the disputed domain name. The WHOIS data indicates that the registrant of the domain name is “Carlos Soto.” Therefore, the Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i) or 4(c)(iii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that UDRP ¶ 4(c)(ii) does not apply); Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant established Policy ¶ 4(a)(ii).
The frame for
Respondent’s website reads “By Xyrem Get Xyrem Xyrem Online Xyrem Source Xyrem
Supplier Xyrem Info.” In addition, the website includes a link to
make GHB and a banner that alternately offers a link to a company called
“ANABOLIC SUPPLY,” purportedly: “The Web’s #1 Rated Steroid Source,” or to a
company that offers: “$1,500 Cash Loan.”
The Panel finds that Respondent is appropriating Complainant’s
mark to divert Complainant’s customers to third-party goods or products and
this constitutes evidence of bad faith registration and use pursuant to UDRP ¶
4(a)(iii). See Philip
Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the
respondent’s registration of an infringing domain name to redirect Internet
users to banner advertisements constituted bad faith use of the domain name); State
Bar of Cal. v. eWebNation.com, Inc., FA 97137 (Nat. Arb. Forum June 14, 2001) (given that the respondent is
an attorney and was well aware of the complainant and its rights before
establishing its own website, an inference can be made that the respondent
sought to trade on confusion with the California State Bar and exploit its
reputation and stature).
Complainant established Policy ¶ 4(a)(iii).
DECISION
Complainant having established all three elements required under ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is
Ordered that the <xyrem.us> domain
name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: November 23, 2005.
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