Auxilium Pharmaceuticals, Inc. v. Kumar Patel
Claim Number: FA0602000642141
PARTIES
Complainant is Auxilium 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 <auxilium-pharmaceuticals.com>,
registered with Totalregistrations.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
James A. Carmody, Esq., 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 13, 2006, Totalregistrations confirmed by e-mail to the
National Arbitration Forum that the <auxilium-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 21, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 13, 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@auxilium-pharmaceuticals.com by e-mail.
A timely Response was received on March 13, 2006. However, Respondent’s submission was
defective because it is not in compliance with ICANN Rule 5(a). See Schott
Glas v. Necschott, D2001-0127 (WIPO Mar. 14, 2001) (choosing not to
consider the response in light of formal deficiencies): But see Strum
v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002)
("Ruling a Response inadmissible because of formal deficiencies would be
an extreme remedy not consistent with the basic principles of due
process."). Notwithstanding
this defect, the Response has been considered by the Panel.
Both parties filed additional submissions which were considered in this
proceeding.
On March 23, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1.
Complainant alleges that it has rights and legitimate interests with
respect to the AUXILIUM mark and that the domain name at issue, <auxiliumpharmaceuticals.com>,
is identical to or confusingly similar to Complainant’s AUXILIUM mark.
2. Complainant alleges that Respondent has no rights or legitimate interests in respect to the AUXILIUM mark or the domain name at issue.
3. Complainant finally alleges that Respondent
registered and has used the domain name at issue in bad faith.
B. Respondent
1. Respondent does not deny that the domain
name at issue is identical or confusingly similar to Complainant’s mark.
2. Respondent does not claim that he has rights
or legitimate interests in the domain name at issue but alleges, without
explanation, that this proceeding is somehow related to another proceeding: Eastman Chem. Co. v. Patel, FA 524752
(Nat. Arb. Forum Sept. 7, 2005), which was decided against Respondent.
3. Respondent presumably denies that he
registered and has used the domain name at issue in bad faith.
C. Additional Submissions
For Complainant: Complainant
points out that Respondent has not clearly denied any of the Complainant’s
contentions and that a lawsuit pending in the United Kingdom between the
parties should not cause the instant proceeding to be stayed as it is clear
that Complainant has not been served and that this Panel ought to proceed to a
decision.
For Respondent: Respondent
spends many words on proceedings with issues other than this one, denies that
he is a cybersquatter and states that he has not registered the domain name at
issue in bad faith or for his own benefit.
FINDINGS
As a preliminary finding, this Panel finds that it has jurisdiction
over the parties and the subject matter of this controversy and that it need
not and will not decline to render a decision in this matter despite
potentially related litigation in the United Kingdom, initiated by the
Respondent against Complainant and others, which apparently lacks personal
jurisdiction over Complainant, as evidenced by the offerings herein by
Respondent.
Complainant is a pharmaceutical company which
was incorporated in 1999 and which has approximately 165 employees and around
$30 million in annual revenues.
Complainant uses the mark AUXILIUM to identify the source of its
pharmaceutical products and applied for and obtained registration of the mark
with the U.S. Patent & Trademark Office on August 19, 2003 under Reg. No.
2,754,314 with a stated first date of use in commerce of February 12, 2003.
Respondent, apparently acting under the
pseudonym WhoisGuard, registered the domain name at issue on June 4, 2005. Following a cease and desist letter dated
October 18, 2005 from Complainant to WhoisGuard, the registration was promptly
amended to reflect Respondent to be the named registrant.
Complainant has never licensed or otherwise
authorized Respondent to use the AUXILIUM mark for any purpose and Respondent
is not known by the name Auxilium. The
Respondent has offered no explanation sufficient to rise to rights or
legitimate interests in the AUXILIUM mark or the domain name at issue. The only understandable argument in favor of
use put forward by the Respondent is that he wishes to maintain a website using
the domain name at issue for criticism purposes protected by free speech
considerations.
Respondent registered the domain name at
issue and has maintained a related website to injure Complainant in commerce
and to divert Internet traffic to his site thereby depriving Complainant of
visits by Internet users.
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
AUXILIUM mark by registering it with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 2,384,629 issued August 19, 2003). 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.”).
The <auxilium-pharmaceuticals.com> domain name is confusingly similar to Complainant’s AUXILIUM 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. 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); 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.”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has made a prima facie case for Policy ¶ 4(a)(ii); now the burden shifts to Respondent to establish rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that the respondent does not have 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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the complainant asserts that the respondent does not have rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).
Respondent is not commonly known by the disputed domain name because the WHOIS information suggests that Respondent is known as “Kumar Patel.” 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).
Respondent is using the disputed domain name to criticize Complainant. 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).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
The elements set forth in Policy ¶ 4(b) are intended to be illustrative, rather than exclusive. The Panel has been presented with evidence that does not rely entirely on Policy ¶ 4(b) factors in finding that Respondent registered and used the disputed domain name in bad faith. 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 is persuaded, nonetheless, that Respondent’s bad faith is manifest under the circumstances.
Respondent is using the disputed
domain name to host a website criticizing Complainant, accordingly, Respondent
is damaging Complainant and its mark by deceiving Complainant’s customers as to
the source, sponsorship or affiliation of the disputed domain name. 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).”).
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 Panel finds that
Policy ¶ 4(a)(iii) has been satisfied.
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 <auxilium-pharmaceuticals.com>
domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 6, 2006
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