Aton Pharma, Inc. v. Johnny Carpela
Claim Number: FA0703000948589
Complainant is Aton Pharma, Inc. (“Complainant”), represented by Gene
K. Park, of Morgan, Lewis & Bockius LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <demser.com>, <edecrin.com>, <lacrisert.com>, <mephyton.com>, and <syprine.com>, registered with Go Daddy Software, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 28, 2007; the National Arbitration Forum received a hard copy of the Complaint on March 29, 2007.
On March 30, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <demser.com>, <edecrin.com>, <lacrisert.com>, <mephyton.com>, and <syprine.com> domain names are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 March 30, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 19, 2007 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@demser.com, postmaster@edecrin.com, postmaster@lacrisert.com, postmaster@mephyton.com, and postmaster@syprine.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 25, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <demser.com> domain name is identical to Complainant’s DEMSER mark. Respondent’s <edecrin.com> domain name is identical to Complainant’s EDECRIN mark. Respondent’s <lacrisert.com> domain name is identical to Complainant’s LACRISERT mark. Respondent’s <mephyton.com> domain name is identical to Complainant’s MEPHYTON mark. Respondent’s <syprine.com> domain name is identical to Complainant’s SYPRINE mark.
2. Respondent does not have any rights or legitimate interests in the <demser.com>, <edecrin.com>, <lacrisert.com>, <mephyton.com>, and <syprine.com> domain names.
3. Respondent registered and used the <demser.com>, <edecrin.com>, <lacrisert.com>, <mephyton.com>, and <syprine.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Aton Pharma,
Inc., is a leading pharmaceutical manufacturer and distributor that develops
numerous treatments for various types of medical conditions. Complainant holds registered trademarks with
the United States Patent and Trademark Office (“USPTO”) for the DEMSER mark
(Reg. No. 1,051,092 issued October 26, 1976), EDECRIN mark (Reg. No. 789,575
issued May 18, 1965), LACRISERT mark (Reg. No. 1,156,075 issued June 2, 1981),
MEPHYTON mark (Reg. No. 582,261 issued November 10, 1953), and SYPRINE mark
(Reg. No. 1,510,660 issued November 1, 1988).
Respondent, Johnny Carpela,
registered the <demser.com> domain
name on February 21, 2003, the <edecrin.com>,
<lacrisert.com>, and <mephyton.com> domain names on
February 13, 2002, and the <syprine.com>
domain name on February 6, 2003.
All five of the disputed
domain names previously redirected Internet users to a competing pharmaceutical
website. When this Complaint was filed,
the disputed domain names then displayed an “under construction” notation. Since that time, Respondent has been using
the <edecrin.com> and <lacrisert.com> domain names to
redirect Internet users to three competing pharmaceutical websites, while the <syprine.com> and <demser.com> domain names
continue to display an “under construction” notation and the <mephyton.com> domain name
displays a “Bad Request (Invalid Hostname)” message.
Respondent has previously been ordered by National Arbitration Forum and World Intellectual Property Organization (“WIPO”) panels to transfer the domain name registrations of several domain names that were found to be infringing upon the complainants’ trademarks. Furthermore, the domain names in each of these cases infringed upon a pharmaceutical company’s rights to its mark(s) that corresponded to various drugs produced by that company. The panels found that each of the domain names were confusingly similar to the complainants’ marks and were registered and used in bad faith by Respondent, who did not have any rights or legitimate interests in the marks. See Procter & Gamble Pharm., Inc. v. Carpela, FA 625591 (Nat. Arb. Forum Feb. 20, 2006) (transferring the <actonel.org> domain name to the complainant); see also Glaxo Grp. Ltd. v. Carpela, D2005-0202 (WIPO May 6, 2005) (transferring the <advair.net>, <dermovate.com>, and <leukeran.com> domain names to the complainant); see also Valeant Pharm. Int’l v. Carpela, D2005-0786 (WIPO Sept. 2, 2005) (transferring the <cesamet.com>, <eldopaque.com>, <eldoquin.com>, <kinerese.com>, and <solaquin.com> domain names to the complainant).
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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which 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 and is being used in bad faith.
Complainant’s registrations of the DEMSER, EDECRIN, LACRISERT, MEPHYTON, and SYPRINE marks with the USPTO all preceded Respondent’s registrations of the disputed domain names in 2002 and 2003. Under the Policy, registration of a mark with an appropriate governmental authority confers rights in that mark to Complainant. Thus, the Panel finds that Complainant has established rights in the DEMSER, EDECRIN, LACRISERT, MEPHYTON, and SYPRINE marks pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2000) (finding that successful trademark registration with the USPTO creates a presumption of rights in a mark).
Respondent’s disputed domain names all incorporate Complainant’s marks in their entirety and add the generic top-level domain (“gTLD”) “.com.” The addition of a gTLD is irrelevant under an analysis of Policy ¶ 4(a)(i), so the Panel concludes that Respondent’s disputed domain names are identical to Complainant’s corresponding marks pursuant to Policy ¶ 4(a)(i). See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum March 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the disputed domain names. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on 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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Complainant has alleged that Respondent is not, nor has ever been, commonly known by any of the disputed domain names. The WHOIS information identifies Respondent as “Johnny Carpela,” and there is no other evidence in the record indicating that Respondent is commonly known by the disputed domain names. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Respondent previously used all the disputed domain names, and
is currently using the <edecrin.com> and <lacrisert.com>
domain names, to redirect Internet users to competing pharmaceutical
websites. Such use of the
disputed domain names does not constitute a bona
fide offering of goods or services under Policy ¶ 4(c)(i),
or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the
domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the
respondent used the domain name to take advantage of the complainant's mark by
diverting Internet users to a competing commercial site); see also Gardens Alive, Inc.
v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding
that the respondent used a domain name for commercial benefit by diverting
Internet users to a website that sold goods and services similar to those offered
by the complainant and thus was not using the name in connection with a bona
fide offering of goods or services nor a legitimate noncommercial or fair
use).
Respondent also previously used
all the disputed domain names, and is currently using the <syprine.com>, <demser.com>,
and <mephyton.com> domain
names to display an “under construction” notation or display a “Bad Request
(Invalid Hostname)” message. Respondent’s
failure to use the disputed
domain names does not constitute a bona fide offering of goods and services
under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). See Broadcom Corp. v. Wirth, FA
102713 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s
use of the disputed domain name to display an “under construction” page did not
constitute a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii));
see also Hewlett-Packard Co. v. Rayne, FA 101465 (Nat. Arb. Forum Dec. 17, 2001) (finding that
the “under construction” page, hosted at the disputed domain name, did not
support a claim of right or legitimate interest under Policy ¶ 4(a)(ii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has alleged that Respondent has engaged in a bad faith pattern of registering and using trademark-related domain names, especially ones concerning trademarked drugs produced by pharmaceutical companies. Complainant cites several UDRP decisions in which Respondent was found to have registered and used these trademark-related domain names in bad faith. In light of these previous decisions, the Panel finds that Respondent’s registration and use of the disputed domain names in this case constitute bad faith pursuant to Policy ¶ 4(b)(ii). See Stevens v. Modern Ltd.-Cayman Web Dev., FA 250005 (Nat. Arb. Forum May 17, 2004) (“Registration and use of a domain name to prevent Complainant from reflecting its mark in a corresponding domain name through a pattern of such conduct evidences bad faith registration and use of a domain name pursuant to Policy 4(b)(ii).”); see also Sport Supply Group, Inc. v. Lang, D2004-0829 (WIPO Dec. 10, 2004) (“[Respondent] registered the <usgames.com> domain name in order to prevent [Complainant] from reflecting its U.S. GAMES Mark in a corresponding domain name [pursuant to Policy ¶ 4(b)(ii)]. The pattern of such conduct is established, inter alia, by the public decisions of two different UDRP proceedings [against] Respondent.”).
Respondent previously used all the disputed domain names, and is currently using the <edecrin.com> and <lacrisert.com> domain names, to redirect Internet users to competing pharmaceutical websites. This is likely to disrupt Complainant’s business by diverting potential customers searching for Complainant’s pharmaceutical drugs to Respondent’s websites. Therefore, the Panel finds that Respondent’s registration and use of the disputed domain names constitutes bad faith pursuant to Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that the respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
Respondent’s <edecrin.com> and <lacrisert.com> domain names, which are identical to Complainant’s EDECRIN and LACRISERT marks, are likely to cause confusion among customers searching for Complainant’s pharmaceutical drugs. Specifically, customers may become confused as to the affiliation, endorsement, or sponsorship of the competing pharmaceutical drugs advertised by the links on Respondent’s website. Respondent presumably receives click-through fees for each misdirected Internet user, and is therefore attempting to commercially benefit from this likelihood of confusion between Respondent’s domain names and the goodwill associated with Complainant’s marks. Therefore, the Panel finds that Respondent’s registration and use of the disputed domain names constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <demser.com>, <edecrin.com>, <lacrisert.com>, <mephyton.com>, and <syprine.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 9, 2007
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