World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Purdue Pharma L.P. v. Steve Miller

Case No. D2010-1811

1. The Parties

Complainant is Purdue Pharma L.P. of Stamford, Connecticut, United States of America, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.

Respondent is Steve Miller of Cleveland, Ohio, United States of America.

2. The Domain Name and Registrar

The disputed domain names <oxycontinnoprescription.info>, <oxycontins.info>, <oxycontin-without-prescription.info>, and <oxycontinwithoutprescription.info> are registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2010. On October 27, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On October 27, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response, confirming that 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 Respondent of the Complaint, and the proceeding commenced on November 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2010. Respondent did not submit a substantive response. Accordingly, the Center notified Respondent’s default on November 22, 2010.

The Center appointed Lorelei Ritchie as the sole panelist in this matter on November 29, 2010. 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

Complainant is a privately-held pharmaceutical company in the United States of America. Having created the blockbuster pain killer OxyContin, Complainant has experienced a high number of sales of the drug in recent years, with OxyContin growing to number eight in the top-ten highest selling drugs in the United States, grossing over USD 3 billion in sales in 2009. Accordingly, we find that the mark OXYCONTIN has been shown to have a degree of fame.

Complainant is the registered owner of at least two marks for OXYCONTIN. These include United States Registration No. 2004586 (registered in 1996), and Registration No. 2033914 (registered in 1997). Due to its pharmaceutical properties, OxyContin is highly regulated, and is not available without a prescription.

The disputed domain names <oxycontinnoprescription.info>, <oxycontin-without-prescription.info>, and <oxycontinwithoutprescription.info> were registered on April 1, 2010, and <oxycontins.info> was registered on May 9, 2010. Respondent has no affiliation with Complainant. Respondent appears not to be actively using any website in conjunction with the disputed domain names.

5. Parties’ Contentions

A. Complainant

Complainant contends that (i) the disputed domain names <oxycontinnoprescription.info>, <oxycontins.info>, <oxycontin-without-prescription.info>, and <oxycontinwithoutprescription.info> are identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain names; and (iii) Respondent registered and is using the disputed domain names in bad faith.

B. Respondent

Respondent did not submit a substantive reply to Complainant’s contentions in this proceeding.

However, on November 7, 2010, Respondent sent the following message by email to Complainant and the Center [reprinted exactly]:

“Dear Sir,

The mentioned domain names

<oxycontinnoprescription.info>
<oxycontins.info>
<oxycontin-without-prescription.info>
<oxycontinwithoutprescription.info>

are not is [sic] use for almost 1 year they have been suspended by godaddy the register long time ago

their [sic] is NO use on these domain names, I would be happy to transfer them but since they were suspended by godaddy

months ago I do not have any access to chance [sic] the register email provide auto code etc,

but I can confirm that this [sic] domains are inactive for a long time and their [sic] is NO online use in the name of oxycontin

so no use of trademark is actually being done

once the 1 year from the date of registry will be completed they will be deleted from data base

and their [sic] is no use of them what so ever.

Regards,
Steve”

6. Discussion and Findings

A. Identical or Confusingly Similar

This Panel must first determine whether each of the disputed domain names is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that they are. Each of the disputed domain names incorporates in full Complainant’s arbitrary trademark OXYCONTIN. The disputed domain name <oxycontinnoprescription.info> adds the descriptive terms “no prescription,” which would merely lead a consumer to believe they might find the popular prescription-only drug OxyContin on the Internet without a prescription. The same rationale applies to the disputed domain names <oxycontinwithoutprescription.info> and <oxycontin-without-prescription.info>. Finally, the disputed domain name <oxycontins.info> is a mere plural of the trademarked OXYCONTIN.

Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500 (transferring <microsofthome.com>); General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (transferring <ge-recruiting.com>); and CBS Broadcasting, Inc. v. Y2K Concepts Corp., WIPO Case No. D2000-1065 (transferring <cbsone.com>).

This Panel therefore finds that the disputed domain names are identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that respondent has been “commonly known by the domain name”; or (iii) “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”.

Respondent did not provide a substantive reply to the Complaint, however, and no evidence has been presented to this Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain names. Rather, as mentioned in section 4 of this Panel’s decision, Respondent has said “I would be happy to transfer” the disputed domain names, without claiming any right to them.

Therefore, this Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of rights or legitimate interests in accordance with paragraph 4(a)(ii) of the Policy which Respondent has not rebutted.

C. Registered and Used in Bad Faith

There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, a complainant may show that a respondent has engaged in a pattern of registering domain names in violation of the UDRP, in accordance with paragraph 4(b)(ii).

Here, Complainant has submitted a list of twenty-eight domain names that appears to be registered to Respondent. Many of these contain marks, especially of pharmaceuticals like those at issue in this proceeding. For example, Respondent has registered <genericviagras.us>, <viagranoprescription.info>, <noprescriptioncialis.info> and <propeciaonline.info> among many others. These of course are in addition to the four disputed domain names that are the subject of this proceeding. The Panel finds that this can amount to be a pattern as contemplated by paragraph 4(b)(ii). Additionally, it stretches the imagination to believe that Respondent was not aware of Complainant’s marks in the top-selling OxyContin pharmaceutical at the time Respondent registered the disputed domain names.

Therefore, this Panel finds that Respondent registered and used the disputed domain names in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

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 disputed domain names <oxycontinnoprescription.info>, <oxycontins.info>, <oxycontin-without-prescription.info>, and <oxycontinwithoutprescription.info> be transferred to Complainant.

Lorelei Ritchie
Sole Panelist
Dated: December 4, 2010

 

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