Endo Pharmaceuticals Inc. v. Kumar Patel
Claim Number: FA0602000642131
PARTIES
Complainant is Endo Pharmaceuticals Inc. (“Complainant”), represented by Bruce A. McDonald, of Schnader Harrison Segal & Lewis LLP, 1600 Market Street, Suite
3600, Philadelphia, PA 19103-7213.
Respondent is Kumar Patel (“Respondent”),
5 Stanborough House, Wisbech, Cambs PE14 9QB, UK.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <endo-pharmaceuticals.com>,
registered with Totalregistrations.
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.
Dr. Reinhard Schanda as
Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 8, 2006; the National Arbitration Forum received a
hard copy of the Complaint on February 16, 2006.
On February 10, 2006, Totalregistrations confirmed by e-mail to the
National Arbitration Forum that the <endo-pharmaceuticals.com>
domain name is registered with Totalregistrations and that the Respondent is
the current registrant of the name. Totalregistrations
has verified that Respondent is bound by the Totalregistrations 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 22, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 14, 2006 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@endo-pharmaceuticals.com by e-mail.
A timely Response was received on March 14, 2006. However, the Response was received in electronic
form only and therefore is not in compliance with ICANN Rule #5 (a).
Timely Additional Submissions were received on March 20, 2006 and March
28, 2006.
On March 21, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
Complainant
is a specialty pharmaceutical company engaged in the research, development and
marketing of prescription pharmaceutical preparations. Complainant contends, that Respondent
engages in the practice of registering domain names containing the trade names
and trademarks of well-known companies and the placement of websites at
corresponding URLs. Each of
Respondent’s websites are designed to appear as the precursor to a
non-commercial, interactive forum for the asserted purpose of providing an
opportunity for members of the public to share comments and criticism of the
company and its products and prominently displays the trademarks and logos of
the company on the home pages of the websites.
Complainant further contends that Respondent is a classic cybersquatter
who registers the contested and other domain names in bad faith for his own
benefit. Respondent has been ordered to
relinquish such domain names in four recent UDRP decisions, and his conduct is
the subject of at least one other UDRP complaint pending before the National
Arbitration Forum at this time.
Complainant further contends that it exclusively owns several ENDO
trademarks and registrations issued by the United States Patent and Trademark
Office. Complainant uses its trademark
and registered logo in a blue colored composite mark on its website at
<endo.com>. Respondent has
registered the domain name <endo-pharmaceuticals.com> and
published a website at <endo-pharmaceuticals.com> with exactly the
same blue colored composite mark as the Complainant. The website at <endo-pharmaceuticals.com> is
engineered to appear as the precursor to a non-commercial, bona fide
“gripe site.” Complainant contends that
in reality it is mass-produced, boilerplate rendition of a template employed
for the targeting of multiple companies and used by Respondent for a
multiplicity of similar websites none of them containing any actual criticism.
Respondent’s domain name <endo-pharmaceuticals.com> is
identical to Complainant’s registered trademark ENDO. The word “pharmaceuticals” is generic and does nothing to
distinguish Respondent’s domain name from Complainant’s mark. Neither the appearance of a hyphen in
Respondent’s domain name nor addition of the generic top-level domain (gTLD)
“.com” provides any basis for such a distinction.
Respondent contends in a former e-mail, that his website is a
“non-commercial, free speech website.”
In this regard Complainant contends, that Respondent has made this
argument in five recent UDRP cases.
While the first case was decided in favor of Respondent, the subsequent
four UDRP panels decided against the Respondent. As a result Complainant contends, that Respondent’s right to
criticize certainly does not extend to his registration of multiple domain names
incorporating the trademarks of others - even where the disclaimer of
affiliation appearing at his website may dispel the initial confusion created
by Respondent once Internet users actually reach the sites.
Furthermore Respondent did not accidentally land upon Complainant’s
mark when he registered <endo-pharmaceuticals.com>. In addition to appropriating Complainant’s
trademark, Respondent copied Complainant’s logo. Thus, Respondent cannot deny that he knew about Complainant’s
trademark when he registered the domain name at issue. Nor can Respondent deny that he is using the
disputed domain name “in commerce.”
Even of his usage of a single domain name in such a manner could be
described as non-commercial, his registration and use of multiple domain names
establishes that he is engaged in a commercial enterprise. The fact that Respondent’s website displays
a disclaimer of affiliation with the trademark owner does not alter the fact
that he is using the trademark to “divert Internet traffic to his own site,
thereby potentially depriving Complainant of visits by Internet users.” Thus, each of the four panels to consider
Respondent’s conduct subsequent to the first case has held that Respondent –
despite the appearance of a disclaimer at his website – used the disputed
domain name in bad faith ” to prevent the owner of the trademark from
reflecting the mark in a corresponding domain name.”
Based on the foregoing, Complainant finally requests that the disputed
domain name should be transferred to Complainant.
Respondent has provided a Response that was deficient: The Response was received in electronic form only. Respondent did not submit a hard copy of the Response, as required by ICANN Rule 5(a). Therefore, the Panel may choose to deny the deficient Response: See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003); Schott Glas v. Necschott, D2001-0127 (WIPO Mar. 14, 2001). In the need to resolve the real dispute between the parties the Panel is of the view that ruling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process. See Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002); J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003).
Respondent has submitted the following Response:
“The Complainant will submit,
with respect to any challenges to a decision in the administrative proceeding
canceling or transferring the domain name, to the location of the principal
office of the concerned registrars.
The complaint has chosen UK
jurisdiction. I have initiated a lawsuit against the complainant in the UK.
The complainant’s complaint is
based on US and European Community Trademark infringement, however, there has been
no infringement. I have therefore initiated a lawsuit against the complainant
under section 21 of the United Kingdom Trade Marks Act 1994.
I would also like to elaborate
further by making it clear that Eastman Chemical and Gilead Sciences are also
involved in lawsuits in the UK under section 21 of the Trade Marks Act 1994.
Under the complaint para b.
“Patel’s Use of Complainant’s Trademark”
This clearly shows my non-commercial use of the domain name and website. The complainant relies on previous arbitration decisions which all began with the Eastman company and on which subsequent arbitration decisions relied upon. However, Eastman’s complaint was based on lies and manipulated evidences and therefore the decisions are flawed. Eastman won arbitration twice simply because their lies and manipulated evidences were ignored, and was my proof of their lies and manipulated evidences. Eastmanchemicalo.com was registered after the injustice of the decision on Eastman-chemical.com and currently TheEastmanCompany.com was registered after the second unjust decision by NAF. This was followed by Gilead and Watson now the complainant has started a frivolous arbitration/groundless infringement proceedings. They have done this bolstered by the success of Eastman’s lies. However, the complainant seems to forget that all my websites are entirely legal and this will be bourn out in a court of law in the fullness of time.
I attach the full background on the vital Eastman versus myself arbitrations which shows quite clearly how the Eastman decisions were unjust and why they are not in line with the law.
My position on the matter in
this case is exactly the same as my position in my previous arbitration
responses which are attached and listed below (…..) As the court case has just
been filed against the Complainant, they will receive the court documents as
soon as possible.
Kumar Patel”
In
Complainant`s Reply to Respondent`s Response, Complainant contends that
Respondent has failed to supply a hard copy of his submission and as required
by NAF`s Supplemental Rule 5 (b), and
has been notified of that deficiency.
However, to the extent his Response is considered, it should be rejected
on the merits because it fails to deny any of the factual allegations in the
Complaint. Without waving its position,
Complainant contends amongst others, that Respondent has pointed to no specific
fact or argument to contradict Complainant`s position. Moreover Respondent has acknowledged by way
of reference to third parties who have filed similar UDRP complaints against
him, that his registration and use of the disputed domain name is but one of
multiple domain names in his portfolio.
Complainant contends that ownership and registration of multiple domain
names such as that illustrated in this case constitutes commercial use as a
matter of law, and/or prima facie evidence of commercial use that is not
rebutted under these facts. Furthermore
Respondent allegations do not identify any particular evidence and his statement
and should be rejected on that ground alone.
In his supplemental Response Respondent contends amongst others, that
Complainant’s additional submission is preposterous in the extreme. Complainant is only trying to avoid the
jurisdiction of where Respondent is based and alternatively the registrar is
based. Furthermore Respondent contends,
that Complainant has brought this Complaint in bad faith solely in order to
reverse hijack the domain name in order to shield himself from criticism. Respondent asserts that like in the four
precedent cases also in this case Complainant is lying and manipulating and
creating evidence. Attached to this
supplemental response Respondent submits the UK Supreme Court case against the
Complainant, sealed on 21st March 2006 (Claim No. HC06C01125).
FINDINGS
The Panel finds that:
1.
the Domain Name
<endo-pharmaceuticals.com> is confusingly similar to the
Complainant’s registered trademark.
2.
Respondent has
not established any right or legitimate interest in the Domain name and
3.
Respondent has
registered and is using the domain name in bad faith.
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.
Complainant has established rights in the ENDO mark by registering it
with the United States Patent and Trademark Office (“USPTO”) (Reg. No.
2,921,176 issued January 25, 2005). See Am. Online, Inc. v. Thomas P.
Culver Enters., D2001-0564 (WIPO June 18,
2001) (finding that successful trademark registration with the USPTO creates a
presumption of rights in a mark); see also Innomed Tech., 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.”).
Complainant contends that the <endo-pharmaceuticals.com> domain name is confusingly similar to
Complainant’s ENDO mark because the domain name incorporates Complainant’s mark
in its entirety and adds a hyphen, the term “pharmaceuticals” and the generic
top-level domain “.com.” Furthermore,
the term “pharmaceuticals” describes Complainant’s business. The Panel is of the view that such minor
additions to Complainant’s registered mark are insufficient to negate the
confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶
4(a)(i). See Chernow
Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (“[T]he use or
absence of punctuation marks, such as hyphens, does not alter the fact that a
name is identical to a mark."); see also Space Imaging LLC v. Brownell,
AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the
respondent’s domain name combines the complainant’s mark with a generic term
that has an obvious relationship to the complainant’s business); see also
Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding
that “[n]either the addition of an ordinary descriptive
word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that Complainant has discharged the onus of proof for the second criterion: Respondent has failed to demonstrate any rights or legitimate interests.
According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once Complainant has made a prima facie showing, the burden of production shifts to Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Techs., Inc. v. Int’l Elec. Commc’ns, Inc., D2000-0270 (WIPO June 6, 2000); see also Inter-Continental Hotel Corp. v. Khaled Ali Soussi, D2000-0252 (WIPO July 5, 2000); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”).
Complainant asserts that Respondent is using the disputed domain name to criticize Complainant. The Panel is of the view that despite Respondent’s right to free speech, Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) in a domain name that fully incorporates Complainant’s mark. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that the respondent’s showing that it “has a right to free speech and a legitimate interest in criticizing the activities of organizations like the Complainant . . . is a very different thing from having a right or legitimate interest in respect of [a domain name that is identical to Complainant’s mark]”); see also Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) (finding that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to the complainant's DAVID WEEKLEY HOMES mark).
Furthermore the Panel finds that Respondent is not commonly known by the disputed domain name because the WHOIS information suggests that Respondent is known as “Kumar Patel”. As a result the Panel concludes that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
With respect to this element, the paragraph
4(b) of the Policy reads:
“For the purposes of Paragraph 4(a)(iii), the following circumstances,
in particular but without limitation, if found by the Panel to be present,
shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have
acquired the domain name primarily for the purpose of selling, renting, or
otherwise transferring the domain name registration to the complainant who is
the owner of the trademark or service mark or to a competitor of that
complainant, for valuable consideration in excess of your documented
out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner
of the trademark or service mark from reflecting the mark in a corresponding
domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of
disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to
attract, for commercial gain, Internet users to your web site or other on-line
location, by creating a likelihood of confusion with the complainant's mark as
to the source, sponsorship, affiliation, or endorsement of your web site or
location or of a product or service on your web site or location
On a review of the evidence, none of the four enumerated circumstances exist in this case, for the following reasons:
1. There is no evidence that the name was acquired primarily for the purpose of sale.
2. There does not appear to be intent to prevent the owner from reflecting the mark, and in any event there is no pattern.
3. While we may conclude that the primary purpose of the registration was to disrupt the business of Complainant, Complainant is not a "competitor" of Respondent within the meaning of the Policy.
4. Even if there was intention to attract Internet users to the site, the site is not being operated for commercial gain.
Given that none of the four enumerated policy criteria with respect to bad faith have been met, that leaves the Panel with the question of whether there is bad faith for some other reason. On our reading of the Policy, each Panel is responsible to determine whether there has been bad faith. The four cited examples are situations where, if the evidence exists, the Panel must find bad faith. This does not, however, preclude the Panel finding that other circumstances amount to bad faith in a particular case. The paragraph says, "in particular but without limitation." See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”).
The Panel finds
that Respondent is using the disputed domain name to host a website criticizing
Complainant. Furthermore the Panel
finds that Respondent is damaging Complainant and its mark by deceiving
Complainant’s customers as to the source, sponsorship or affiliation of the
disputed domain name and its content.
As a result the Panel concludes that such use is evidence of bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace
Int’l, D2001-0376 (WIPO May 14, 2001) (stating that although the
respondent’s complaint website did not compete with the complainant or earn
commercial gain, the respondent’s appropriation of the complainant’s trademark
with a view to cause “damage and disruption to [Complainant] cannot be right,
still less where the use of the Domain Name will trick internet users intending
to visit the trademark owner’s site into visiting the registrant’s site” in
holding that the disputed domain name was registered in bad faith); see also
Diners Club Int’l, Ltd. v. Infotechnics
Ltd., FA 169085 (Nat.
Arb. Forum Aug. 20, 2003) (“Respondent’s registration and use of a
domain name nearly identical to Complainant’s mark to criticize Complainant’s
business practices is evidence of registration and use of the
<diners-club.net> domain name in bad faith pursuant to Policy ¶
4(a)(iii).”).
Moreover, the Panel finds that Respondent’s use of a disclaimer on its website does not mitigate evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”); see also Thomas & Betts Int’l, Inc. v. Power Cabling Corp., AF-0274 (eResolution Oct. 23, 2000) (finding bad faith based upon initial interest confusion despite disclaimer and link to the complainant’s website on the respondent’s website).
The arguments put forward by
Respondent for supposed attempt of reverse hijacking by Complainant are in the
Panel’s view not convincing, rather they are further indications of
Respondent’s registration and use of the domain name <endo-pharmaceuticals.com>
in bad faith.
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <endo-pharmaceuticals.com>
domain name be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda,
Panelist
Dated: April 3, 2006
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