WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hoffmann-La Roche Inc. v. SM Enterprises, LLC / Steven Miller
Case No. D2007-0076
1. The Parties
The Complainant is Hoffmann-La Roche Inc. of the United States of America, represented by Lathrop & Gage L.C., United States of America.
The Respondents are SM Enterprises, LLC/Steve Miller of the United States of America.
2. The Domain Names and Registrar
The disputed domain names <klonopinz.net> and <klonopinz.org> are registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2007. On January 23, 2007, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain names at issue. On January 26, 2007, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that Respondents are listed as the registrant and providing the contact details for the administrative and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on January 29, 2007. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondents of the Complaint, and the proceedings commenced on February 5, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2007. Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on February 27, 2007.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on March 7, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The KLONOPIN trademark Nos. 1,415,564 and 2,186,702 were registered in the United States Patent and Trademark Office on November 4, 1986, and September 1, 1998, respectively.
Respondents registered the <klonopinz.net> domain name on August 31, 2004, and the <klonopinz.org> domain name on September 1, 2004.
5. Parties’ Contentions
With respect to paragraph 4(a)(i) of the Policy, Complainant contends:
- The KLONOPIN marks are registered in the United States Patent and Trademark Office under Registration Nos. 1,415,564 and 2,186,702.
- It has used the KLONOPIN mark since 1986 and sales of its KLONOPIN pharmaceutical preparations have far exceeded millions of dollars in the United States since the product was first marketed.
- It has advertised and promoted the KLONOPIN pharmaceutical preparations extensively and widely in the United States, and it has acquired a considerable level of goodwill in its registered incontestable KLONOPIN trademarks.
With respect to paragraph 4(a)(ii) of the Policy, Complainant contends:
- It has not authorized Respondents to use its trademark KLONOPIN or to incorporate the trademark into any domain name.
- It has never granted Respondents a license to use the KLONOPIN marks.
- Respondents have never been known by the Domain Names.
- The Respondents are not using the disputed Domain Names in connection with a bona fide offering of goods or services. Respondents’ use of the Domain Names is purely disreputable. On Respondents’ websites located at “www.klonopinz.net“ and “www.klonopinz.org,” Respondents are making use of an intentionally misspelled version of Complainant’s mark. Respondents, by their use and registration of the disputed Domain Names, seek to capitalize on the reputation associated with Complainant’s KLONOPIN trademark to direct customers solely seeking information about Complainant’s KLONOPIN medication to websites containing hardcore pornographic content and content involving suicide.
- Respondents are not making a legitimate noncommercial or fair use of the Domain Names.
With respect to paragraph 4(a)(iii) of the Policy, Complainant contends:
The bad faith of the Respondents is clearly evident from the fact that:
- “Klonopinz.net“ and “klonopinz.org” are not words. Complainant’s mark KLONOPIN is an invented and coined mark that has a strong reputation, acquired through many years of sales, marketing and fair dealing with the public.
- There exists no relationship between Respondents and Complainant.
- Complainant has not given Respondents permission to use its mark KLONOPIN in domain names, or to use it on Respondents’ websites.
- From an investigation conducted on behalf of Complainant, it was reported that Respondents’ contact information is false.
- Respondents were aware of the KLONOPIN trademark at the time the Domain Names were registered.
- By operating the websites located at “www.klonopinz.net” and “www.klonopinz.org,” Respondents have intentionally attempted to attract Internet users to its websites, which contain pornographic and offensive content.
- The disputed Domain Names are mere intentional misspellings of Complainant’s pharmaceutical drug name KLONOPIN.
- Respondents’ websites have no legitimate business connection with Complainant or its KLONOPIN pharmaceutical preparations.
- Respondents have registered and used these domain names in bad faith.
The Respondents did not reply to the Complainant’s contentions.
The Respondents’ default does not automatically result in a decision in favor of the Complainant. The Complainant must establish each of the three elements required by paragraph 4(a) of the Policy. While a panel may draw negative inferences from the Respondents’ default, paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in a proceeding under the Policy. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 (<vanguar.com>, Transfer); Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465 (<berlitzsucks.com>, Transfer); Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383 (<brookehogan.com>, Denied).
6. Discussion and Findings
Pursuant to the Policy, the Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondents have no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).
A. Identical or Confusingly Similar
Given the United States Federal trademark registrations Nos. 1,415,564 and 2,186,702, for the mark KLONOPIN, and the Complainant’s continued use of the mark for over 20 years, the Panel finds that the Complainant has trademark rights in the mark KLONOPIN.
The Panel also finds that that the Domain Names <klonopinz.net> and <klonopinz.org> are confusingly similar to the registered trademarks in which the Complainant has rights. “Klonipin” is the dominant portion of Complainant’s registered trademarks and of the disputed Domain Names. The Domain Names differ from Complainant’s registered trademarks only in that they contain the letter “z” and the non descriptive gTLD domain name suffixes “.net” and “.org”. Teachers Insurance and Annuity Association of America v. Domain Admin., WIPO Case No. D2005-1227 (“The word TIAA-CREF is an arbitrary combination of letters of alphabet having no meaning other than representing the Complainant’s business. The Domain Name at issue is identical to the Complainant’s TIAA-CREF mark if hyphen and additional ‘f’ are eliminated.”); Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127 (“[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is … without legal significance since use of a gTLD is required of domain name registrants”).
The first requirement of paragraph 4(a)(i) of the Policy is, therefore, satisfied.
B. Rights or Legitimate Interests
In order for the Respondents to demonstrate rights or legitimate interests in the Domain Name, they must show:
“(i) before any notice to you of the dispute, your use of, or demonstrable 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fail to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (<croatiaairlines.com>, Transfer); Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110 (<belupo.com>, Transfer).
Respondents did not refute Complainant’s allegations that (1) it has not authorized the Respondents to use its trademark KLONOPIN or to incorporate the trademark into any domain name; (2) it has never granted Respondents a license to use the KLONOPIN marks; (3) Respondents have never been known by the Domain Names; (4) the Respondents are not using the Domain Names in connection with a bona fide offering of goods or services; and (5) the Respondents are not making a legitimate noncommercial or fair use of the Domain Names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. These certified allegations are sufficient to make out a prima facie case and shift the burden of response to Respondents.
Both Domain Names resolve to seemingly identical web-pages. Respondents use the web-page, in part, to tell the unfortunate story of a boy who was egged on by a group of internet chat room onlookers who watched on web-cam as he ate numerous prescription drugs, one of which was Complainant’s sleeping pills, until he passed out and died before their eyes.
In any event, Respondents do not focus any criticism at Complainant’s Klonopin® product. Instead, Klonopin is merely one of the drugs that the boy consumed in this sordid sad tale. For that matter, Respondents do not offer any clear critical comment about this event, except perhaps to implicitly criticize the onlookers. Given the rudeness of the remainder of the Respondents’ content, this implied criticism may be imagined. It is also feasible that Respondents applaud the whole event as outrageously “hardcore,” a characteristic which Respondents promote on their web-page.
This is not criticism of the sort protected by paragraph 4(a)(ii). It might be different if Respondents offered some critical comment directed at the Klonopin® sedative, but there is none. Complainant may in appropriate circumstances be required to endure criticism of its products, but it is not required to allow others to use its product as a vehicle for criticism of the behavior of third parties. Harley-Davidson, Inc. v. Grottanelli, 164 F.3d 806, 812-13 (2d Cir. 1999) (“a parodist whose expressive work aims its parodic commentary at a trademark is given considerable leeway, but a claimed parodic use that makes no comment on the mark is not a permitted trademark parody use”). The principle applies in the copyright area as well. Campbell v. Acuff Rose, 510 U.S. 569, 597 (Kennedy, J. concurring); Mattel, Inc. v. MCA Records, 296 F.3d 894, 901 (2d Cir. 2002) (“The parody must target the original, and not just its general style, the genre of art to which it belongs, or society as a whole (although if it targets the original, it may target those features as well).”); Dr. Seuss Ents., L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1400-01 (9th Cir. 1997) (The book The Cat NOT in the Hat! borrowed Dr. Seuss’s trademarks and lyrics to get attention rather than to mock The Cat in the Hat! The defendant’s use of the Dr. Seuss trademarks and copyrighted works had “no critical bearing on the substance or style of” The Cat in the Hat!, and therefore could not claim First Amendment protection. Dr. Seuss recognized that, where an artistic work targets the original and does not merely borrow another’s property to get attention, First Amendment interests weigh more heavily in the balance.)
Regardless, Respondents’ site is not limited to any commentary about the suicide involving the Klonopin® sedative. It ranges far and wide, collecting and publishing pornography and video violence. The Panel finds that its purpose is not legitimate criticism or fair use.
The second requirement of paragraph 4(a)(ii) of the Policy is, therefore, satisfied.
C. Registered and Used in Bad Faith
The Panel finds that Respondents have registered and used the Domain Names in bad faith, thereby satisfying the third requirement of Paragraph 4(a) of the Policy. Respondents display “hardcore” images, including not only explicit sexual content, but also violent images of “snuff” murders, dead bodies and dismembered body parts. This evidence is more than enough to justify a finding of bad faith. “[R]esolution of the Respondent’s Domain Name into a pornographic site is a tarnishment of the Complainant’s trademark and an evidence of bad faith.” Rainbow Spa v. Anton Konev, WIPO Case No. D2006-1015, quoting Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962. “[T]he use of the Domain Name for the Respondent’s website as a pornographic site, whatever the circumstances under which this occurred is generally to be seen as a tarnishment of the Complainant’s trademark and ongoing evidence of bad faith.” GA MODEFINE SA v. pumo, WIPO Case No. D2006-0619. “The pornographic content of the Respondent’s website, as it existed when the Complaint was initiated, constitutes a significant indication bad faith. Prior decisions have consistently articulated support for this position, based on the concept of tarnishment.” ACCOR v. Tara Rossi, WIPO Case No. D2006-0360; ABB Asea Brown Boveri Ltd. v. Quicknet, WIPO Case No. D2003-0215 (“the use of ABB as part of a domain name offering pornographic material certainly tarnishes the Complainant’s existing marks, which is also evidence of bad faith ”). See also America Online v. Viper, WIPO Case No. D2000-1198 (“The fact that the site operated by Respondent is pornographic in nature has been found in prior decisions to be evidence of bad faith.”); MatchNet PLC v. MAC Trading, WIPO Case No. D2000-0205 (“The Respondent has used its website to furnish sexually explicit and pornographic material under the domain name and in the circumstances, given the likelihood of confusion, there is a prima facie case that this could tarnish the Complainant’s goodwill in its common law service mark.”); America Online, Inc. v. East Coast Exotics, WIPO Case No. D2001-0661, citing Coral Trademark Limited v. Eastern Net, Inc., WIPO Case No. D2000-1295 (“the posting of pornographic contents on a website under a domain name that corresponds to a third party’s mark is a bad faith use of the domain name”).
The third requirement of paragraph 4(a)(iii) of the Policy is, therefore, satisfied.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <klonopinz.net> and <klonopinz.org>, be transferred to the Complainant.
Lawrence K. Nodine
Dated: March 27, 2007