WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Teva Pharmaceutical USA, Inc. v. US Online Pharmacies

Case No. D2007-0368

 

1. The Parties

Complainant is Teva Pharmaceutical USA, Inc., United States of America, represented by Kenyon & Kenyon, United States of America.

Respondent is US Online Pharmacies, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <adipex-p.com> (the “Domain Name”) is registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2007. On March 15, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On March 15, 2007, Go Daddy Software transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on March 27, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 19, 2007.

The Center appointed Lawrence K. Nodine, Neil J. Wilkof and M. Scott Donahey as panelists in this matter on June 11, 2007. The Panel finds that it was properly constituted. Each member of 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.

On June 25, 2007, the Panel issued Procedural Order No. 1 directing Complainant to explain why the United States Patent and Trademark Office records show that the ADIPEX-P trademark was assigned to Lemco, Inc. and to provide documentation that Teva Pharmaceutical USA, Inc. is the owner of the ADIPEX-P trademark. Complainant’s Response to this Order was due July 5, 2007. The Decision date was extended to July 15, 2007.

On July 3, 2007, Complainant filed its response to Procedural Order No. 1 with the Center. The Response stated that Lemco, Inc. changed its name to Tevco, Inc. and a certified copy of the registration in the name of Tevco, Inc. was produced. Complainant explained that Tevco, Inc. is a wholly owned subsidiary of Complainant, Teva Pharmaceuticals USA, Inc., which has an exclusive license from Tevco to use the ADIPEX-P trademark.

Complainant further noted that:

“[P]aragraph 3(a) of the Rules states that, “Any person or entity may initiate an administrative proceeding by submitting a complaint . . . .” Thus, the owner of the trademark at issue does not have to initiate the proceeding. Paragraph 3(b)(viii) of the Rules states only that the Complainant should “Specify the trademark(s) or service mark(s) on which the complaint is based and for each mark, describe the goods or services, if any with which the mark is used.” The Complainant respectfully submits that it is in compliance with the Rules and TPU has standing to bring the instant action. In addition, it does not appear that the Respondent in this matter, who defaulted two and a half months ago and, as far as we know, has never communicated with the Panel at all, will be prejudiced in any way, assuming the Complaint remains in the name of TPU.”

Based on the above representations, the Panel treats the Response to Procedural Order No. 1 as a Motion to Amend, which is granted, so that the pleadings now allege that Complainant is not itself the owner of the trademark rights. Instead, Complainant is understood to allege that it is the controlling parent and exclusive trademark licensee of its subsidiary Tevco, Inc., which owns the U.S. trademark registration for ADIPEX-P.

 

4. Factual Background

Complainant, Teva Pharmaceuticals, USA, Inc. is a generic pharmaceutical company, marketing products in a wide range of therapeutic areas including analgesic, anti-infective, cardiovascular, oncology, CNS, dermatological, anti-inflammatory, and diet and weight loss. One of Complainant’s most successful and well–known diet and weight loss products is a tablet containing the active ingredient of phentermine hydrochloride, which Complainant’s markets and sells under the trademark ADIPEX-P, through its affiliate GATE Pharmaceuticals. ADIPEX-P is the leading brand of phentermine hydrochloride and Complainant has realized approximately $220,000,000 in sales of its ADIPEX-P product since 1998.

Tevco, Inc. is the owner of United States Trademark Registration No. 1, 063,091 for the mark ADIPEX-P for use in connection with “anti-obesity preparation.” Tevco, Inc. is a wholly owned subsidiary of Complainant, Teva Pharmaceuticals USA, Inc. Complainant has an exclusive license from Tevco, Inc. to use the ADIPEX-P trademark.

Respondent registered the Domain Name <adipex-p.com> on August 15, 2002.

 

5. Parties’ Contentions

A. Complainant

With respect to paragraph 4(a)(i) of the Policy Complainant contends that:

- Tevco, Inc. is the owner of United States Trademark Registration No. 1, 063,091 for the mark ADIPEX-P.

- Tevco, Inc. is a wholly owned subsidiary of Complainant, Teva Pharmaceuticals USA, Inc.

- Complainant has a license from Tevco, Inc. to use the ADIPEX-P trademark

- The disputed Domain Name is identical to the ADIPEX-P trademark.

With respect to paragraph 4(a)(ii) of the Policy Complainant contends that:

- Respondent is holding itself out as “Adipex-P.com”.

- Respondent is using the ADIPEX-P trademark in an attempt to cause confusion and free ride off of the fame of the well–known trademark for Respondent’s own commercial gain.

- Respondent had notice of the ADIPEX-P trademark before any use or demonstrable preparation to use the disputed Domain Name in connection with a bona fide offering of goods and services.

- Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.

- Respondent has no right or legitimate interest in the disputed Domain Name.

With respect to paragraph 4(a)(iii) of the Policy Complainant contends that:

- The ADIPEX-P trademark is arbitrary and fanciful and the disputed Domain Name is identical to the ADIPEX-P trademark.

- Respondent chose the disputed Domain Name in an effort to free ride off of the goodwill amassed by Complainant in the ADIPEX-P trademark.

- Respondent refers to itself as “Adipex-P.com,” uses the ADIPEX-P trademark with the « registration symbol, and posts “Adipex-p.com - Copyrightę 1999-2004. All Rights Reserved” at the bottom of each page of Respondent’s Website with the intention of confusing consumers into the mistaken belief that Respondent and Respondent’s website are somehow affiliated with or endorsed by Complainant or that Respondent owns the ADIPEX-P trademark.

- The disputed Domain Name was, therefore, registered and is being used in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

Respondent’s default does not automatically result in a decision in favor of Complainant. 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 Respondent’s default, paragraph 4 of the Policy requires 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, 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; and (ii) the Respondent has 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).

Identical or Confusingly Similar

A. Identical or Confusingly Similar

Given the United States Federal trademark registration (No. 1,063,091) for the ADIPEX-P mark for use in connection with “anti-obesity preparation” and Complainant’s continued use of the mark for over 30 years, the Panel finds that Complainant has trademark rights in the ADIPEX-P mark. This is so, even though it is not the owner of the trademark registration. As the controlling parent corporation and exclusive licensee of the trademark owner, Complainant has sufficient rights to satisfy Policy, paragraph 4(a)(i). Toyota Motor Sales U.S.A. Inc. v. J. Alexis Prods., WIPO Case No. D2003-0624 (nonexclusive license and close corporate relationship sufficient to confer standing under Policy).

The Panel also finds that that the Domain Name <adipex-p.com> is confusingly similar to the registered trademark as to which the Complainant has rights, since “adipex-p” is the dominant portion of Complainant’s registered trademark and of the disputed Domain Name. The Domain Name differs from Complainant’s registered trademark only in that it contains the generic top-level domain name “.com”. Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127 (“the 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) of the Policy is, therefore, satisfied.

B. Rights or Legitimate Interests

In order for the Respondent to demonstrate rights or legitimate interests in the Domain Name, it 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 a prima facie case that the respondent lacks rights or legitimate interests. Once such 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 Policy. 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).

Respondent did not refute Complainant’s allegations in this regard (see above Section 5(A).

These verified allegations are sufficient to make out a prima facie case and shift the burden of response to Respondent. In the absence of a rebuttal by Respondent and based on the case file, the second requirement of Paragraph 4(a) of the Policy is, therefore, satisfied.

C. Registered and Used in Bad Faith

Complainant must prove that the Domain Name was registered and is being used in bad faith.

The Policy, paragraph 4(b), sets forth four criteria for bad faith registration and use of domain names:

“(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.”

The Panel finds that Respondent was obviously aware of Complainant’s commercial products since those products are a subject of discussion at the “www.adipex-p.com” website. The Panel notes that although this website is partially a discussion site for people taking ADIPEX-P and other diet pills, this discussion aspect of the site is ancillary to the real business of Respondent. The home page contains a heading entitled “Recommended Adipex Pharmacies” with a “Learn More” link that takes Internet users to Respondent’s own on-line pharmacy that sells not only the ADIPEX-P product, but also competing generic equivalent products and numerous other name brand weight control products. These facts have been held to satisfy Policy, paragraph 4(a)(iii). The Sportsman’s Guide, Inc. v. Modern Limited, Cayman Islands, WIPO Case No. D2003-0305 (constructive knowledge plus commercial purpose as evidence of bad faith).

The Panel also finds that Complainant has proved that Respondent has intentionally attempted to attract, for commercial gain, Internet users to the accused site by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of the accused site or of products offered on the site (Policy, paragraph 4(b)(iv)). Respondent has used Complainant’s mark in the accused Domain Name to promote the sale of competitive products. This is evidence of bad faith registration and use. See, e.g., Pfizer Inc. v. Medlink Telecom GmbH, WIPO Case No. D2002-0547; Pfizer Inc. v. Lorna Kang, WIPO Case No. D2002-0480; Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199; Pfizer Inc. v. Enamecorp.com, WIPO Case No. D2001-0791.

The third element of paragraph 4(a) of the Policy is, therefore, satisfied.

 

7. Decision

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 Name <adipex-p.com> be transferred to the Complainant.


Lawrence K. Nodine
Presiding Panelist


Neil, J. Wilkof
Panelist


M. Scott Donahey
Panelist

Dated: July 15, 2007