Takeda Pharmaceutical Company Limited v.
Terry Kester
Claim Number: FA0610000823235
PARTIES
Complainant is Takeda
Pharmaceutical Company Limited (“Complainant”), represented by B. Brett Heavner, of Finnegan, Henderson,
Farabow, Garrett & Dunner, L.L.P., 901 New York Avenue NW, Washington,
DC 20001. Respondent is Terry Kester (“Respondent”), 23620 NE
Canyon Loop Rd, Battle Ground, WA 98604.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <4rozerem.com>,
registered with Schlund+Partner Ag.
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 October 19, 2006; the National Arbitration Forum received a
hard copy of the Complaint on October 20, 2006.
On October 20, 2006, Schlund+Partner Ag confirmed by e-mail to the
National Arbitration Forum that the <4rozerem.com>
domain name is registered with Schlund+Partner Ag and that the Respondent is
the current registrant of the name. Schlund+Partner
Ag has verified that Respondent is bound by the Schlund+Partner Ag 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 October 25, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 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@4rozerem.com by e-mail.
A timely Response was received and determined to be complete on November
14, 2006.
Claimant’s Additional Submission was timely received and was considered
by the Panel.
On November 17, 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 makes the following assertions:
1. Respondent’s <4rozerem.com> domain name (the “domain name at issue”)
is confusingly similar to Complainant’s common law ROZEREM mark.
2. Respondent does not have any rights or
legitimate interests in the above described mark or in the domain name at
issue.
3. Respondent registered and has used the
domain name at issue in bad faith.
B. Respondent
1. The domain name at issue is not identical or or confusingly similar to Complainant’s mark
and a disclaimer is used by the Respondent on the website to avoid confusion or
suggestion of any association with the Complainant.
2. Respondent has been using the domain name at
issue to sell Complainant’s product, ROZEREM, and this is a legitimate use.
3. The domain name at issue was not registered
and is not used in bad faith.
C. Additional Submissions
The Complainant filed
an Additional Submission and it was considered by the Panel for all purposes.
FINDINGS
Complainant, Takeda, is the
largest pharmaceutical company in Japan and it develops and markets treatments
for insomnia, diabetes, cardiovascular disease, and other conditions. Complainant
owns the common law mark, ROZEREM, which identifies its medication for
insomnia.
Complainant has used and actively promoted its ROZEREM mark
since at least as early as July 11, 2005, when its ROZEREM pharmaceutical was
reported in the press. This was prior to Respondent’s registration of the
domain name at issue on September 29, 2005.
On July 22, 2005, Complainant, via its subsidiary Takeda Pharmaceuticals
North America, Inc., issued its press release announcing the U.S. Food and Drug
Administration’s approval for the ROZEREM pharmaceutical. This announcement generated substantial
publicity. Takeda launched its ROZEREM
medication in the U.S. on September 26, 2005 and it extensively and widely advertises its ROZEREM
medication in the U.S., and other countries around
the world. Complainant spends significant amounts of money to advertise and promote its ROZEREM mark. Complainant’s
website dedicated to its ROZEREM medication is located at <www.rozerem.com>.
Complainant has not licensed Respondent to
use the ROZEREM mark, and there is no allegation or proof that Respondent is
commonly known by that name.
Respondent has included a trademark
disclaimer in the footer of the website associated with the domain name at
issue and sells Complainant’s ROZEREM product via that website. Users are not
being redirected to any other website.
On this website, the ROZEREM logo is
used in the listing of the product for purchase as a way of identifying
it. The logo is not used for any other purpose or in the title of the
website. Respondent claims that the
ROZEREM mark is being used only to describe Complainant’s product and that is a
nominative form of fair use.
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 is not required to hold a trademark registration with a
government authority or agency in order to establish rights in the ROZEREM
mark. Policy ¶ 4(a)(i) can be satisfied
when Complainant establishes common law rights in its mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13,
2000) (finding that the Rules do not require that the complainant's trademark
or service mark be registered by a government authority or agency for such
rights to exist); see also
British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting
that the Policy “does not distinguish between registered and unregistered
trademarks and service marks in the context of abusive registration of domain
names” and applying the Policy to “unregistered trademarks and service marks.”).
Complainant has established common law rights in its ROZEREM mark which
is distinctive and not obviously descriptive of generic pharmaceutical goods or
services.
Respondent does not dispute that Complainant has
rights in the ROZEREM mark, nor does Respondent dispute that the disputed
domain name is confusingly similar to Complainant’s mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Respondent lacks rights and legitimate interests in the disputed domain name. Complainant’s assertion of this position creates a prima facie case and shifts the burden to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name. See 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. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); 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.”)
Respondent’s use of the <4rozerem.com> domain name to operate a commercial website
selling Complainant’s pharmaceutical product marketed under the ROZEREM mark as
well as numerous other pharmaceutical products is neither a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Respondent is misusing the disputed domain
name to attract Internet users to its website for Respondent’s financial
gain. Respondent’s use does not endow
Respondent with rights or legitimate interests as contemplated by Policy ¶¶
4(c)(i) and (iii). See
G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002)
(finding that because the respondent is using the infringing domain name to
sell prescription drugs, the panel could infer that the respondent is using the
complainant’s mark to attract Internet users to its website for commercial
benefit); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan.
7, 2002) (finding no bona fide offering of goods or services where the
respondent used the complainant’s mark without authorization to attract
Internet users to its website, which offered both the complainant’s products
and those of the complainant’s competitors).
There is no allegation or evidence indicating that Respondent is commonly known by the <4rozerem.com> domain name. Respondent is neither licensed by Complainant to use Complainant’s mark, nor in any way is affiliated with or sponsored by Complainant. Respondent lacks rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“Considering the nonsensical nature of the [<wwwmedline.com>] domain name and its similarity to Complainant’s registered and distinctive [MEDLINE] mark, the Panel concludes that Policy ¶ 4(c)(ii) does not apply to Respondent.”); see also 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 Policy ¶ 4(c)(ii) does not apply); 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’s argument that his use of the disputed domain name is consistent with nominative fair use is not well taken. Both parties cite the same case on this issue, New Kids on the Block v. News Amer. Publ’g, Inc., 917 F.2d 302, 308 (9th Cir. 1992). I find that nominative fair use does allow Respondent to use Complainant’s ROZEREM mark to indicate in advertising or informational material that Respondent sells ROZEREM; however, fair use does not go so far as to allow Respondent to use Complainant’s mark in its domain name. Respondent’s use in this case suggests an association with the Complainant which does not exist. Respondent’s assertions of nominative fair use do not endow Respondent with rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also Toyota Jidosha Kabushiki Kaisha v. S&S Enters. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (“Registration of a domain name [by the respondent that incorporates another’s trademark] goes further than merely correctly using in an advertisement the trade mark of another in connection with that other’s goods or services.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent
is using the <4rozerem.com> domain name to misdirect Internet
users seeking Complainant’s ROZEREM product or information about Complainant’s
product. Internet users finding
themselves at Respondent’s commercial website are confronted with the
opportunity to purchase what Respondent advertises as Complainant’s ROZEREM
product, as well as numerous other competing pharmaceutical products. Misdirected Internet users may do business
with Respondent instead of with Complainant or Complainant’s licensed
resellers, disrupting Complainant’s business.
Respondent has demonstrated bad faith registration and use pursuant to
Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb.
Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from
the respondent, a watch dealer not otherwise authorized to sell the
complainant’s goods, to the complainant); see
also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA
124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s
CELEBREX mark to sell Complainant’s products represents bad faith use under
Policy ¶ 4(b)(iii).”).
The
confusing similarity between Respondent’s <4rozerem.com> domain
name and Complainant’s ROZEREM mark makes it likely that Internet users are
attracted to Respondent’s website when seeking Complainant’s product. Internet users may mistakenly believe that
Respondent’s website is sponsored by or affiliated with Complainant because of
the confusing similarity between the disputed domain name and Complainant’s
mark and because Respondent goes so far as to include Complainant’s design
along with the ROZEREM mark on its website.
Respondent is profiting from this confusion by running a commercial
website.
Respondent’s registration of the <4rozerem.com> domain name shortly after Complainant’s launch of its ROZEREM product in the United States is evidence of opportunistic bad faith. Respondent’s registration of the disputed domain name coincided with Complainant’s launch of its product sold under the ROZEREM mark and is evidence of opportunistic bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration.”); see also Sanofi-Aventis v. US-Meds.com, D2004-0809 (WIPO November 22, 2004) (finding that the registration of domain names including the complainant’s mark shortly after the complainant publicly announced the launch of its new pharmaceutical was evidence of opportunistic bad faith).
The Panel finds that Complainant
has satisfied Policy ¶ 4(a)(iii).
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 <4rozerem.com>
domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 1, 2006
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