The Complainant is Cephalon Inc., United States of America, represented by Cabinet Beau de Lomenie, France.
The Respondent is Texas International Property Associates, United States of America, represented by Rohstein Rosenfeldt Adler, United States of America.
The disputed domain name <cephalonpharma.com> is registered with Compana LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2009. On April 6, 2009, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the disputed domain name. On April 7, 2009, Compana LLC 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 verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 April 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 29, 2009. The Response was filed with the Center on April 29, 2009.
Due to exceptional circumstances in the Panel appointment process, the Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on June 19, 2009. 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.
The Complainant is a company trading in biopharmaceuticals. It holds registrations or applications for the trademark CEPHALON internationally, including the following:
United States Patent and Trademark Office (USPTO) Registration No. 1589506; filed July 19, 1989; registered March 27, 1990; class 42.
USPTO Registration No. 2202158; filed March 17, 1997; registered November 3, 1998; class 42.
USPTO Registration No. 3400714; filed December 21, 2006; registered March 25, 2008; class 5.
European Community Trademark Registration No 771725; filed March, 16, 1998; registered July 7, 1999; class 42.
European Community Trademark Registration No 5612056; filed December, 21, 2006; registered December 7, 2007; classes 5, 42.
The Complainant also holds a number of domain names related its trademark CEPHALON including <cephalon.com> and <cephaloninc.com>.
The Respondent does not provide any significant information about itself. The disputed domain name appears to have been registered by the Respondent on November 2, 2005.
The Complainant contends that it has rights in the trademark CEPHALON and submits documentary evidence in the form of copies of registration documents in respect of the trademarks listed in section 4 above.
The Complainant contends that the disputed domain name <cephalonpharma.com> is confusingly similar to its trademark CEPHALON. The gTLD directory designation “.com” does not to detract from confusing similarity in the context of a domain name. The additional word “pharma” has an obvious relation to pharmaceutical or medical matters. The distinctive element of the disputed domain name is identical to the Complainant's trademark CEPHALON.
The Complainant further contends that the Respondent does not have rights of legitimate interests in the disputed domain name. The Complainant is the exclusive registrant of the trademark CEPHALON internationally and has never authorized the Respondent to use it. The Respondent has not offered any reason why it should have rights or legitimate interests in the disputed domain name.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The Complainant's trademark is fanciful and so well known that the Respondent's registration of the disputed domain name implies knowledge of the trademark. The function of the corresponding website appears to be the pay-per-click referral of visitors to other sources associated with pharmaceuticals and to more peripheral goods and services. This cannot be coincidental and constitutes exploitation of the Complainant's trademark for commercial purposes by the creation of confusing similarity.
The Complainant further contends that the Respondent has been engaged in a pattern of similar conduct, and the Complainant cites references to several WIPO UDRP decisions in which the respective panels have noted this.
The Complainant requests the transfer to it of the disputed domain name.
The Respondent states inter alia as follows:
“Respondent herein agrees to the relief requested by the Complainant and will, upon order of the Panel, transfer the domain name at issue <cephalonpharma.com>. This is not an admission of the three elements of 4(a) of the Policy but rather an offer of a “unliteral [sic] consent to transfer,” as prior Panels have deemed it.”
The Respondent contends that precedent exists for the Panel to deal with the complaint peremptorily, citing for example the discussion of the matter in The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132 and further citations therein.
The Respondent requests the transfer of the disputed domain name to the Complainant.
Paragraph 4(a) of the Policy states that the Respondent is required:
“…to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The pattern of this dispute, with the Respondent consenting to a transfer, has been met before but is uncommon. The Panel is mindful of its general powers and responsibilities under paragraph 10 of the Rules, which reads in part as follows:
10. General Powers of the Panel
(a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.
(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
The Panel is particularly concerned to ensure in the interests of natural justice that any concession by any Party has been made in a free and fully informed manner, and not, for instance, through weakness, pressure, or failure to understand their rights. In the present instance it is noted that the Respondent has been the Respondent in more than 100 WIPO UDRP disputes in the past three years, and is represented. In all the circumstances it would not be realistic to suppose that the Respondent may be disadvantaged in its defence.
The proceeding cannot be terminated in accordance with paragraph 17(a) of the Rules because an agreement has not been made between the Parties.
The Policy does not provide for a default decision but states at paragraph 4(a), in part:
In the administrative proceeding, the complainant must prove that each of these three elements are present.
The foregoing is not optional, thus it is necessary to be sure that the Complaint withstands scrutiny in the terms of the Policy, particularly since the Respondent has said, “This is not an admission of the three elements of 4(a) of the Policy ...”.
Nevertheless the Panel can fulfill its obligation briefly in the circumstances. The Panel records its findings, on the evidence, that the disputed domain name is confusingly similar to the Complainant's trademark in the terms of paragraph 4(a)(i) of the Policy; that the Respondent does not have or claim to have rights or legitimate interests in the disputed domain name in the terms of paragraph 4(a)(ii) of the Policy; and that the disputed domain name has been registered and used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
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 <cephalonpharma.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Dated: June 23, 2009