WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Valeant Pharmaceuticals v. Johnny Carpela
Case No. D2008-0741
1. The Parties
The Complainant is Valeant Pharmaceuticals, California, United States of America, represented by Melbourne IT CBS Ltd., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Johnny Carpela, United States of America.
2. The Domain Names and Registrar
The disputed domain names <ancobon.com>, <benoquin.com>, <motofen.com>, <nolahist.com> and <oxsoralen.com> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2008. On May 14, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain names at issue. On May 14, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center issued a Complaint Deficiency Notification on June 9, 2008. Once the deficiency was cured, 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 the Respondent of the Complaint, and the proceedings commenced on June 20, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 10, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 14, 2008.
The Center appointed Richard Hill as the sole panelist in this matter on July 30, 2008. 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 disputed domain names were registered in late 2007 and early 2008, after the Complainant's marks.
The Complainant has registered trademarks in the terms ANCOBON, OXSORALEN, BENOQUIN, MOTOFEN and NOLAHIST. (Annex 3 of the Complaint).
Each of the disputed domain names is identical to one of the Complainant's registered trademarks.
The Complainant uses its marks to market pharmaceutical products.
The Respondent is using the contested domain names to point to web sites that contain referral links to merchants offering various pharmaceutical products, including the products marketed by the Complainant and competing products.
The Respondent does not have any licenses or other authorization from the Complainant to use the Complainant's marks.
The Respondent obtains payments from the referral links.
The Respondent's web site is designed to appear to be an official website for the marks and products in question.
5. Parties' Contentions
According to the Complainant, the disputed domain names were registered in late 2007 and early 2008. The dominant part of each of the domain names is identical to one of the Complainant's registered trademarks, namely ANCOBON, OXSORALEN, BENOQUIN, MOTOFEN, NOLAHIST, each of which was registered by the Complainant as a trademark before the domain names were registered.
The Complainant has undertaken searches in relevant trademark databases and has found that the Respondent does not have any registered trademarks or trade names corresponding to the domain names.
According to the Complainant, in view of the fact that its trademarks are invented words registered as a trademarks, the Respondent would not be able to use the domain names without creating the impression in the minds of the public that the Complainant had licensed the said trademarks to the Respondent or authorised the Respondent to register them or that the Respondent had some kind of connection with the Complainant.
Indeed, says the Complainant, each of the disputed domain names is being used to point to a web site that gives the impression of being the Complainant's official site (which it is not), thus leading to consumer confusion.
According to the Complainant, there is a significant history of decisions under the Policy finding against the Respondent, in particular for bad faith use of pharmaceutically related trademarks.
Further, says the Complainant, it is clear that the Respondent's registration of the disputed domain names was made for the purpose of intentionally attracting, for commercial gain, Internet users to a third party website by creating a likelihood of confusion with the Complainant's trademarks, in violation of paragraph 4(b)(iv) of the Policy. Indeed, the websites in question offers links leading to sites that sell products that compete with the Complainant's products.
The Complainant alleges that there can be no doubt that the Respondent, who has a proven track record of targeting the pharmaceutical sector, knew of the high profile products and trademarks that are associated with the Complainant and as such, the Respondent, who has no connection to, or with, the Complainant can be said to have acted in “opportunistic bad faith”.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The contested domain names are identical to the Complainant's registered trademarks.
B. Rights or Legitimate Interests
The Respondent does not have any license or other authorization to use the Complainant's mark. He is using four of the five disputed domain names to operate a website that contains referrals to merchants offering the sale of various pharmaceutical products, including the Complainant's products. The Respondent appears to obtain revenue from the referrals. The fifth domain name is apparently not active.
For the four active domain names, the Panel finds that the Respondent is redirecting Internet users interested in the Complainant's products and services to its own website for commercial gain and that such use does not fall within the parameters of a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy. See The Royal Bank of Scotland Group PLC, Direct Line Insurance PLC, and Privilege Insurance Company Limited v. Demand Domains, c/o C.S.C. FA 714952 (Nat. Arb. Forum August 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy paragraph 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Damien Persohn c/o CPPD SAS / Têtu v. Joshua Lim c/o Webxel Consulting Pte Ltd, FA 874447 (Nat. Arb. Forum February 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant's customers and presumably earning “click-through fees” in the process).
For the inactive domain name, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
It is clear that the Respondent was aware of the Complainant's marks when he registered and started using the disputed domain names. Indeed the print-outs provided by the Complainant of the web site at the four active disputed domain names contain repeated and prominent mentions of the Complainant's marks and of the Complainant's products.
The Respondent (who did not reply) has not presented any plausible explanation for his use of the Complainant's mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent's failure to reply as it considers appropriate. Accordingly, the Panel finds that the Respondent did not have a legitimate use in mind when he registered the disputed domain names.
Indeed the Respondent's actual use of the disputed domain names (as noted above) is clearly not bona fide, because the Respondent operates a web site that contains referrals to merchants that sell the Complainant's product and competing products. This indicates that the Respondent has registered and is using the disputed domain names to take advantage of the confusing similarity between the disputed domain names and Complainant's marks in order to profit from the goodwill associated with the mark in bad faith under paragraph 4(b)(iv) of the Policy. See Zee TV USA, Inc. v. Aamir Siddiqi c/o DotCorner.com, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant's mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also The Association of Junior Leagues International Inc. v. This Domain Name My Be For Sale c/o Legend .name, FA 857581 (Nat. Arb. Forum January 4, 2007) (holding that the respondent's use of the disputed domain names to maintain pay-per-click sites displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy paragraph 4(b)(iv)).
With respect to the inactive domain name, the WIPO overview of Panel decisions, states (see http://www.wipo.int/amc/en/domains/search/overview/index.html#32 ):
Consensus view: The lack of active use of the domain name does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.
Those conditions are met here, so the Panel holds that the Respondent registered and is using the inactive domain name in bad faith. See Telstra Corporation Limited v. Nuclear Marshmellows ( WIPO Case No. D2000-0003, February 18, 2000), Jupiters Limited v. Aaron Hall, ( WIPO Case No. D2000-0574, August 3, 2000), and Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131 (April 10, 2002).
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, <ancobon.com>, <benoquin.com>, <motofen.com>, <nolahist.com> and <oxsoralen.com> be transferred to the Complainant.
Dated: August 13, 2008