Watson Pharmaceuticals, Inc. v. WhoisGuard
c/o WhoisGuard Protected
Claim Number: FA0510000588321
PARTIES
Complainant is Watson
Pharmaceuticals, Inc. (“Complainant”), represented by Gabrielle Roth, of Dickstein Shapiro Morin & Oshinsky LLP, 2101 L Street NW, Washington, DC
20037-1526. Respondent is WhoisGuard c/o WhoisGuard Protected (“Respondent”),
8939 S. Sepulveda Blvd., Westchester, CA 90045.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <watson-pharmaceuticals.com>,
registered with Enom, Inc.
PANEL
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.
Honourable Sir Ian Barker, QC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 27, 2005; the National Arbitration Forum received a
hard copy of the Complaint on October 31, 2005.
On October 28, 2005, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <watson-pharmaceuticals.com>
domain name is registered with Enom, Inc. and that the Respondent is the
current registrant of the name. Enom,
Inc. has verified that Respondent is bound by the Enom, Inc. 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 November 4, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 24, 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@watson-pharmaceuticals.com
by e-mail.
The National Arbitration Forum did
not receive a hard copy format of the response by the response submission
deadline of November 24, 2005, pursuant to ICANN Supplemental Rule #5(a). A Response dated November 23, 2005 was
received on November 29, 2005.
Despite its late filing (i.e. on November 29, 2005) the Panel has
considered the Respondent’s Submission in the interests of justice. The Panel notes that the Response was not
received in hard copy form as required by Supplemental Rule 5(a).
The Complainant filed an Additional Submission in response to the
Respondent’s submission. This was
received on November 30, 2005,.
On December , 2005, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Hon. Sir Ian Barker, QC as Panelist.
The Panel notes that the Response was filed by Mr Kumar Patel with an
address in the United Kingdom. The
registered owner of the disputed domain name and nominated Respondent is
WhoisGuard with an address in California.
The Complainant stated in its Complaint that the Whois contact information
originally identified Mr Patel as the owner of the disputed domain name. No explanation for this discrepancy was
given by the Respondent. The Panel,
accordingly, treats Mr Patel as if he were the registrant of the disputed
domain name.
In Trs. of Trust Number SR-1 v. Turnberry, Scotland Golf & Leisure, FA 122224 (Nat. Arb. Forum Nov. 3, 2002) it was said:
“The register maintained by an ICANN
registrar must provide accurate information as to the identity of domain registrants. The human person or other
legal entity shown as the registrant must be assumed to be such by third
parties seeking to ascertain a registrant’s identity by such means as a Whois
search. There is no place for the registration of bare trustees or agents for
unnamed beneficiaries, principals or would-be purchasers . . . the
register is everything: no unregistered interests can prevail against the
interests of bona fide third parties relying on information available on the
register for all the world to see”; see also Quixtar Invs., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19,
2000) (finding that use of false registration information constitutes bad
faith).”
The present Panel respectfully agrees with the above statement.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant owns the following United States registered trademarks.
i. WATSON – U.S. Trademark Registration
No. 2,384,629 registered for the use of a full line of pharmaceutical products,
including tablets, capsules, injectable products, transdermal products (i.e.,
patches) and others.
ii WATSON PHARMA – U.S. Trademark
Registration No. 2,387,161 registered for the use of a full line of
pharmaceutical products, including tablets, capsules, injectable products,
transdermal products (i.e., patches) and others.
iii W (a design mark) – U.S. Trademark
Registration No. 2,531,611 registered for the use of a full line of
pharmaceutical products, including tablets, capsules, injectable products,
transdermal products (i.e., patches) and others.
iv VISION & QUALITY – A LEGACY IN
PHARMACEUTICAL CARE – U.S. Trademark Registration No. 2,792,288, a slogan
used by the Complainant and registered for a website that features medical information
and links to other medical information websites.
Complainant alleges common law marks for WATSONS PHARMACEUTICALS
INCORPORATED and WATSONS PHARMACEUTICALS, INC. by reason of its history over 20
years as a specialty pharmaceutical company developing, manufacturing and
marketing brand and generic pharmaceutical products. It has some 4,000 employees and markets over 100 pharmaceutical
products. The WATSON and WATSON PHARMA
marks and the slogan have been used by Complainant continuously since 1986,
1985 and 1998, respectively.
On or about June 7, 2005 Complainant became aware that the disputed
domain name website linked viewers to a website with a heading that contained
several of Complainant’s trademarks, including its W design, the WATSON mark and
the slogan VISION & QUALITY – A LEGACY IN PHARMACEUTICAL CARE. The heading found on this website appeared
to have been copied from the home page (that existed at the time) of
Complainant’s website. Following the
header, the website contained a statement that the site would become a focal
point for people to share their bad experiences about Watson. There was a statement that “This was not the
website of Watson Pharmaceuticals Inc., nor is it affiliated with them…”
On June 13, 2005, counsel for Complainant sent a letter to Mr Patel
explaining that Mr Patel’s site violated Watson’s rights and constituted
copyright and trademark infringement.
The letter requested that Mr Patel immediately remove Watson’s copyrighted
material and trademarks from his site.
Mr Patel responded in an e-mail that his use of Complainant’s marks
constituted “fair use” and he was doing nothing wrong by referring to them.
On June 20, 2005, Watson’s counsel responded to Mr Patel to the effect
that use of Complainant’s copyrighted material and trademarks is not “fair use”
since “fair use” only permits the use of another’s intellectual property to the
extent necessary to refer to the other entity.
This does not include Mr Patel’s use of Complainant’s copyrighted
artwork or its trademarked slogans and logos.
Moreover, Complainant counsel noted that Mr Patel’s site was not even
operational. Mr Patel again responded
that he was doing nothing wrong.
Thereafter, the site became unavailable until August 2005. A “new” site prominently displayed the
Watson name, logo and slogan at the top of the page, and also contains
references to a variety of headings similar or identical to those found on
Complainant’s website. Although these
headings appear to be links, the headings are largely passive and, with one
exception, link to nothing. These
headings appear in a series of ovals – the identical design shape that
Complainant had been using on its website in August 2005.
Mr Patel’s website contains the following statement: “A free speech environment for the public to
share their story with others.” There
is no place on this website where a viewer can “share” with others any
information about Watson. It gives the
e-mail address of Watson’s CEO and suggest that users send e-mails to the CEO
if they need assistance with problems.
The disputed domain name is comprised of, and virtually identical to
Watson’s marks. Each contains the word
“Watson”. In addition, in two of the
registered marks, the term “Watson” is followed by the terms “PHARMA” or
“PHARMACEUTICALS.” Similarly, in the
disputed domain name, the term “Watson” is followed by the word
“pharmaceuticals.” The addition of a
dash between the words “Watson” and “Pharmaceuticals” in the disputed domain
name does not cure the confusing similarity that exists between the domain name
and the Complainant’s trademarks.
Mr Patel has no rights or legitimate interests in the disputed domain
name. Mr Patel is not commonly known by
the disputed domain name, has no license to use Complainant’s marks and has no
association with Complainant. Mr Patel
owns no trademark or service mark registration, or any other intellectual
property rights, for the disputed domain name.
Mr Patel has not used the disputed website in connection with any bona fide offering of goods or
services. These factors are sufficient
to constitute a prima facie showing
of absence of rights or legitimate interests in the dispute domain name. See Jenner & Block, supra; see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).
The use of the disputed domain name does nothing to convey to a viewer
that the associated website is for the purpose of free speech. At a minimum, this creates impermissible
interest confusion. See Jenner & Block, supra, (citing Dykema Gossett PLLC v. DefaultData and Brian
Wick, FA 97031 (Nat. Arb. Forum May 29, 2001); see also Robo Enters., Inc. v. Orvin Tobiason, FA
95857 (Nat. Arb. Forum Dec. 24, 2000).
The confusion caused by Mr Patel’s use of the disputed domain name is
not ameliorated when a viewer reaches the website. Rather, the viewer immediately sees Complainant’s name, logo and
slogan, followed by the statement “Logo of Watson Pharmaceuticals, Inc.” This is followed by a series of ovals with
headings that look like links to information for Complainant. With one exception, however, these “links”
do not connect to other web pages.
Thus, a user will be confused and frustrated because the site is largely
non-operational.
Although the website indicates that it is a “free speech environment
for the public to share their story with others,” there is no mechanism for
responding. The website is
passive.
Mr Patel’s website is essentially an inactive site. Even if it were suddenly to become
operational, the use of a domain name that is confusingly similar to
Complainant’s marks is simply not legitimate.
In Nestle Waters North America
Inc. v. JAT a/k/a Jer Ter, FA 0312000220027 (Nat. Arb. Forum Feb. 2, 2004),
the Forum cites Professor McCarthy’s text and cautions that, with respect to
free speech on the Internet:
“[D]omain
names are different. Most cases have
held that regardless of free speech principles, a website containing criticism
of a company or an organization cannot be identified by a domain name
confusingly similar to the name or trademark of the target group. The right to disseminate criticism on the
Internet cannot trump the public’s right not to be deceived by a confusingly
similar domain name. And the critic has
no free speech ‘right’ to confuse web users into thinking they are entering a
website of the target.”
McCarthy, Trademarks and Unfair
Competition, § 31:148.1 (4th ed.2002). Here, Mr Patel has falsely and misleadingly identified his site
as that of the Complainant. He is not
making any fair use of the marks.
A finding of bad faith is appropriate where a respondent “knew or
should have known” of the registration and use of the trademark(s) prior to
registering the domain name. Jenner & Block, supra, citing SportSoft
Golf, Inc. v. Hale Irwin’s Golfers’ Passport, FA 94956 (Nat. Arb. Forum
July 11, 2000), see also Marriott
Int’l, Inc. v. John Marriot, FA 94737 (Nat Arb. Forum June 15, 2000). Here, Mr Patel was fully aware of
Complainant’s rights in its company name and associate marks when he registered
the disputed domain name. This
knowledge of Complainant’s rights is further evidenced by the fact that he went
to its official website and simply “cut and pasted” its name, logo and slogan
(inclusive of the ® symbol) into his <watson-pharmaceuticals.com>
website. Mr Patel knew or should have
known of the registration and use of Watson’s trademark(s) prior to registering
the disputed domain name
Mr Patel has engaged in a pattern of conduct designed to interfere with
or disrupt the business of prominent pharmaceutical and health care companies
by registering domain names that are confusingly similar to the names and/or
marks of those companies. Nearly all of
these domain names connects a user to a site that has a heading containing the
company name and logo followed by a proclamation that the “website will in time
be the focal point for people to share their bad experiences about either the
company or any of their products”.
Mr Patel’s primary purpose in registering and using the disputed domain
name was to confuse and divert Internet users looking for Complainant’s website
instead. Mr Patel’s modus operandi reveals that he registers
domain names confusingly similar to prominent company names, copies the
company’s name and logo, pastes both into his site and makes a claim that the
site will eventually be the focal point for people to share their bad
experiences about the company. It seems
that many of these sites do not contain any further information. It was not until Mr Patel received a ‘cease
and desist’ letter from Complainant’s lawyer that he added more information to
the site. Despite the addition of this
information and the stated purpose of Mr Patel’s site, it has largely remained
a passive and non-operational site.
this fact, coupled with the fact that Mr Patel created a website that
invites Internet users to contact Watson’s CEO for assistance with company
problems leads to the inevitable conclusion that Mr Patel also intended to
disrupt Watson’s business.
For these reasons, it is clear that Mr Patel registered and is using
the disputed domain name in bad faith. See Nestle Waters, supra (finding bad
faith where respondent knew of complainant’s famous trademarks even considering
respondent’s use of a disclaimer).
Complainant’s assertions were backed up by affidavits from various of
its relevant employees.
B. Respondent
The Panel considers Mr Patel to be the true Respondent, since it was he
who filed the Response.
In this document, he does not dispute the allegation that the disputed
domain name is confusingly similar to the Complainant’s marks. Nor does he allege any right or interest to
use the marks as having been given to him by the Complainant. He cites extracts from United States and
United Kingdom trademark and copyright legislation as well as human rights
legislation and Conventions favouring freedom of speech. He does not make clear which country’s law
is applicableto this case, i.e. whether it is the law in the United States
where Complainant has its business or the United Kingdom where Mr Patel
resides.
He relies on §10 of the U.K. Trademarks Act 1994 which defines
infringement arising out of use in the course of trade. His reference to Copyright Legislation
appears to be misconceived since the UDRP is not concerned with copyright.
He cites United States Court judgments to the effect that the Lanham
Act, the Federal Trademark Dilution Act 1995 and the 1999 anticybersquatting
legislation of the U.S. Congress did not intend that trademark laws should
infringe First Amendment rights of entities and commentators. He also cited legislation allowing “fair use
of a famous mark by another person in comparative commercial advertising or
promotion to identify the competing goods.
The same legislation permits “non commercial use of a mark” and “all
forms of news reporting and news commentary.”
He admits that he owns other domain names – websites and says that to
do so is not illegal. See BR.oCryst Pharmaceuticals Inc. v. Kumar
Patel, FA524752 (Nat. Arb.
Forum Sept. 27, 2005).
Registering and using a domain name that contains the Complainant’s
trademarks to redirect users to a criticism site is not indicative of bad faith
registration. See Eastman Chemical Company v. Kuma Patel, FA561094 (Nat. Arb. Forum Nov. 2,
2005).
The Respondent asserted reverse domain name hijacking by Complainant.
C. Complainant’s Supplemental
Conditions
Complainant does not contest Respondent’s right to exercise his free
speech rights but denies that he can do this through use of the disputed domain
name. Complainant cites an NAF decision
in which the same Respondent was involved, viz. Eastman Chemical company v. Kumar Patel, FA524752 (Nat. Arb.
Forum Sept. 27, 2005).
In registering and using a domain name that contains Complainant’s
trademarks to redirect users to a criticism site is indicative of bad faith
registration. See Eastman Chemical Company v. Kuma Patel,
FA561094 (Nat. Arb. Forum Nov. 2, 2005).
Complainant disputed the assertion of reverse domain name hijacking and
cites the first Eastman case in support
of its submission.
FINDINGS
(1)
Complainant
owns the registered trademarks listed above.
It has been in the pharmaceutical industry for 20 years and has acquired
common-law marks for the name Watson Pharmaceuticals. Mr Patel does not contest these allegations.
(2)
Mr Patel was
not given any rights or interests in the disputed domain name by
Complainant. He relies on “free speech”
rights to justify a claim that he is entitled to the benefit of Para. 4(c)(iii)
of the policy, i.e. a legitimate non-commercial or fair use of the domain name
without intent for commercial gain misleadingly to divert consumers or tarnish
the trademark or service mark at issue.
(3)
Respondent
operates a website which features Complainant’s Mark and registered design mark
in the manner described in the recital above of Complainant’s contentions.
(4)
Mr Patel and
Complainant had the correspondence mentioned above.
(5) Mr Patel has registered numerous other domain names and has been involved as Respondent in at least 3 recent cases under the UDRP with several similarities with the present case.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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 the Panel’s view, the disputed domain name
is confusingly similar to Complainant’s registered mark WATSON PHARMA and to
the common-law mark WATSON PHARMACEUTICALS.
Respondent does not contest this.
Minor alterations such as the addition of a
hyphen are insufficient to distinguish the domain name from the mark.
Since Complainant gave Respondent no rights in
the marks, the only question under this heading is whether Respondent has
established rights under para. 4(c)(iii) of the Policy.
There have been three recent decisions, one
from a WIPO panelist and two from NAF panelists, in which Mr Patel employed a similar
technique of registering a domain name similar to that of a well-known company
and then establishing a website for the alleged purpose of providing a forum
for criticism of the company – all in the name of freedom of speech. Only in the WIPO case did Mr Patel’s
arguments prevail.
This Panel is attracted to the thorough
analysis of the precedents relating to criticism sites on the internet provided
by the learned panelist in NAF decision of September 7, 2005
<Eastman_chemical.com> Eastman
Chemical Company v Kumar Patel, FA 52742 (Nat. Arb. Forum Sept. 7,
2005).
The Panel does not repeat all the points
there made but notes:
a)
the exercise of
free speech for criticism and commentary can demonstrate a right or legitimate
interest under Para. 4(c)(iii).
b)
The cases are
divided as to whether those rights prevail if the disputed domain name is
confusingly similar to Complainant’s mark.
c)
Where, as did
Mr Patel in the Eastman case and in
this case, Respondent uses a domain name which falsely conveys an association
with Complainant and displays
Complainant’s mark or marks on the website, such a strategy is not excused by
para. 4(c)(iii) of the Policy.
d)
A disclaimer
cannot serve as a basis for claiming rights and legitimate interests under the
Policy.
e)
It is not the
address of a website that is protected by free speech principles but rather the
content.
The decision in
this aspect in the WIPO case involving Mr Patel is not followed (i.e. Biocryst Pharmaceutical Inc. v. Kumar Patel
D2005-0674 (WIPO Aug. 4, 2005). The
Panel also does not follow Britannia
Building Society v. Britannia Fraud Prevention
D2001-0505 (WIPO July 6, 2001).
For the same reasons as found favour with the
Panelist in the Eastman case, the
Panel rejects Mr Patel’s claim to be entitled to the benefit of para. 4(c)(iii)
of the Policy.
The Panel notes that another NAF panelist
came to the same view in the other NAF case (used earlier) involving
<eastmanchemical.com> which Mr Patel registered on the same day as the
decision in the previous Eastman case
was issued against him. However, there
was little discussion in that decision about criticism sites and the present
Panel prefers to adopt the analysis of the first Eastman panelist.
Like a panelist in the first Eastman case,
this Panel follows Mont & Pat Roberts
Inc. v. J. Bartell, D2000-0300 (WIPO June 13, 2000), considering the
<montyroberts.org> domain name, which led to a website containing
criticisms of the Complainant, the panel concluded as follows”
“Respondent’s claim to use of Complainant’s mark for
legitimate news dissemination purposes is a serious one, since the Panel is
greatly concerned to assure that rights of the public to freely communicate
their views on the Internet are protected and preserved. However, in balancing the rights of Complainant
in its mark, and the rights of Respondent to freely express its views about
Complainant’s services, the Panel concludes that Respondent has impermissibly
taken advantage of Complainant’s commercial interests in the mark.
[T]he right to express one’s views is not the same as
the right to use another’s name to identify one’s self as the source of those
views. One may be perfectly free to
express his or her views about the quality or characteristics of the reporting
of the New York Times or Time Magazine.
That does not, however, translate into a right to identify one’s self as
the New York Times or Time Magazine.”
In the present case, Mr Patel is using a
domain name which falsely conveys an association with Complainant to lead
Internet users to his website. This is
even more evident by the fact that Complainant’s WATSON trademarks feature
prominently. He is thus illegitimately
identifying himself as Complainant and attracting visitors to his site by
trading off Complainant’s goodwill in its trademarks. He cannot succeed under Para. 4(c)(iii) of the Policy.
Accordingly, Complainant has made out the
second criterion.
Bad
Faith
The fame of Complainant’s marks are such that
they must have been known to Mr Patel at the time of registration of the disputed
domain name. Especially, when his modus operandi is to have a large
selection of domain names, some of which appear to be identical to or
confusingly similar to the names of well-known entities, particularly in the
chemical and pharmaceutical industries.
He does not appear to dispute this.
As the panel in the first Eastman case held, a disclaimer fails to
dispel initial confusion. Even if the
goal of providing a free speech forum for criticizing Complainant is
commendable, that goal cannot be reached by usurping Complainant’s marks and
posing as Complainant.
This Panel agrees with the first Eastman panelist in his discussion of
the bad faith aspect. Clearly, Mr
Patel’s use of the disputed domain name has the effect of causing confusion and
deflecting Internet users who may be seeking to access Complainant.
Mr Patel has made this claim (unsuccessfully)
in the first Eastman case. This is a counter-attack frequently made by
pro-active respondents and only fairly rarely succeeds.
Here there is not the slightest evidence that
Complainant was using the Policy other than to assert its rights. There is no evidence of its bad faith use of
the Policy.
The assertion of reverse domain name
hijacking does not even “get off the ground,” just as it did not in the first Eastman case. It is accordingly rejected.
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 <watson-pharmaceuticals.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Hon. Sir Ian Barker, QC, Panelist
Dated: December 19, 2005
National
Arbitration Forum
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