WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pharmaceutical Product Development, Inc., Pharmaco Investments, Inc. v. Damian Macafee (a.k.a James M. Van Johns), QTK Internet/Name Proxy/Private Registration
Case No. D2011-0637
1. The Parties
The Complainant is Pharmaceutical Product Development, Inc. and Pharmaco Investments, Inc. both of Delaware, United States of America, internally represented.
The Respondent is Damian Macafee (a.k.a James M. Van Johns), QTK Internet/Name Proxy/Private Registration of London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <ppd.com> is registered with UK2 Group Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2011. On April 12, 2011, the Center transmitted by email to UK2 Group Ltd. a request for registrar verification in connection with the disputed domain name. On April 12, 2011, UK2 Group Ltd. 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 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 4, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 5, 2011.
The Center appointed Sir Ian Barker as the sole panelist in this matter on May 16, 2011. 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. On June 5, 2011, Damian Macafee sent an email to the Center requesting an extension to the Response due date, citing illness in the family. The Center, replied that it would be in the Panel’s discretion to consider any response filed after the then passed Response due date.
4. Respondent’s Application to File Response Out of Time
On June 2, 2011, the Center received an email alleging to have been sent by “James van Johns representing, Damian Macafee, on behalf of ppd.com”. It is to be noted that the Complainant asserted that “James M. van Johns” was a pseudonym for the present Respondent. A similar claim as to the name of the Respondent was made in Sony Kabushiki Kaisha v Damian Macafee/QTK Internet, WIPO Case No. D2009-1134.
The email was received after the Panel had been appointed. A Response had been due on May 4, 2011. The purported filing of a Response on June 2, 2011, was therefore some four weeks out of time.
The only excuse offered for this late filing was “due to serious family health issues”. No evidence in support of this assertion was offered, such as a medical certificate or any details explaining this bland statement.
In the absence of any compelling evidence such as might justify acceptance of a late Response, the Panel has decided not to accept it. This Respondent, as can be deduced from his involvement as a Respondent in numerous UDRP cases summarised in Sony Kabushiki Kaisha, supra, must be well aware of the requirements of the Policy and the need for prompt compliance with time limits. A delay of a day or so might be countenanced, but one of four weeks, with no evidence of justification for the delay is just too much. Accordingly, the Panel declines to consider the purported Response, as well as the Complaints request to submit a reply.
Nevertheless, the Panel notes that the Respondent’s unsupported arguments in its Response, had they been admitted, would not have been dispositive in this case.
5. Factual Background
The Complainant, Pharmaceutical Product Development Inc. (“the First Complainant”), is a corporation registered in Delaware, United States of America. The Complainant, Pharmaco Investments Inc. (“the Second Complainant”) is a wholly-owned subsidiary of the First Complainant. The Second Complainant owns the trademarks and service marks to be mentioned later and licences such marks to the First Complainant.
Because of this close relationship between the Complainants, it will be convenient to refer collectively to them as “the Complainant” in this decision.
The Complainant is a technology company, providing a broad range of integrated product development services to complement the research and development activities of pharmaceutical and biotechnology companies. It conducts clinical trials and provides health consultancy services around the world.
It began operations in the United States in 1989 and in the United Kingdom in 1992. It operates globally and employs some 11,000 persons at 86 locations in 43 countries.
The Complainant owns registered trademarks for the mark PPD in several countries, including the United States, the European Community, Canada, the People’s Republic of China, Brazil and the United Kingdom. The registration date of the Complainant’s trademark in the United Kingdom (where the Respondent resides) is June 11, 1999.
The Complainant marketed its services worldwide under the brand ‘PPD’ well before its trademarks were registered.
The Respondent registered the disputed domain name on December 21, 1999. The disputed domain name currently contains links to ‘pay-per-click’ advertising. Research by the Complainant into the history of the Respondent’s website since February 2000, shows that, for all the period since then, the Respondent has never maintained a website accessed by the disputed domain name. Instead, he has used the disputed domain name for a ‘parked’ page filled with pay-per-click advertisements including links related to pharmaceuticals.
The Respondent, either under the surname ‘Macafee’ or a pseudonym ‘James M Van Johns’, has been the Respondent in several WIPO decisions which have found bad faith registration and use by him. A list of these decisions can be found at page 3 of the decision of the Panel in Sony Kabushiki Kaisha, supra. This is one of the decisions in which a finding of use and registration of domain name in bad faith against the Respondent has been made.
6. Parties’ Contentions
The disputed domain name is identical to several trademarks in which the Complainant has rights.
The Respondent has no rights or legitimate interest in the Complainant’s marks such as to enable use by the Respondent of the disputed domain name. The Complainant has given him no such rights. None of the circumstances defined in paragraph 4(c) of the Policy applies to the Respondent.
The disputed domain name was registered and is being used in bad faith. The Complainant has used the brand PPD for 25 years and has had a significant presence using the brand in the United Kingdom since 1992. The Respondent registered the disputed domain name after the Complainant had registered its trademark in the United Kingdom.
The history of the disputed domain name shows that it has never resolved into a legitimate website. For over a decade, it has been ‘parked’ in a click-through site. This demonstrates bad faith.
The UDRP decisions where the Respondent has been found to have acted in bad faith show that he is engaged in a pattern of conduct preventing owners of marks from using their marks in a domain name. This is an illustrative circumstance of bad faith under paragraph 4(b)(ii) of the Policy.
The Respondent comes within paragraph 4(b)(iv) of the Policy in that he attracts for commercial gain Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
The Respondent’s website contains links to (inter alia) ‘Pharmaceutical Research’, ‘Drug Discovery & Development’ and ‘PPD’ as well as other terms relating to the pharmaceutical research industry in which the Complainant is heavily engaged.
The Respondent’s domain name differentiates itself from the Complainant’s own domain name by a single letter. This amounts to ‘typosquatting’, a practice condemned in many UDRP decisions.
The Respondent designed the website to incorporate the Complainant’s business name and trademark with colours identifiable with those used by the Complainant and using language directly associated with the Complainant’s business. All this was done to attract internet users to the site who would be likely to consider that the website is somehow connected with the Complainant.
The confusion caused is likely to disrupt or otherwise harm the Complainant’s business. See paragraph 4(b)(iii) of the Policy.
The Respondent did not timely reply to the Complainant’s contentions. The Panel may draw negative inference from the Respondent’s default - Policy paragraph 14(b)). The Panel has not considered a document purporting to be a Response filed four weeks out of time (see Section 4 above).
7. Discussion and Findings
Under paragraph 4(a) of the Policy, in order to prevail, a complainant must prove the following elements of a claim for transfer or cancellation of a respondent’s domain name:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the respondent’s domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name is identical to the Complainant’s registered trademarks. The first limb of paragraph 4(a) of the Policy is established.
B. Rights or Legitimate Interests
The Complainant made a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Respondent has not alleged any evidence which would bring into consideration paragraph 4(c) of the Policy, nor could the Panel find rights or legitimate interests in the domain name in any other fashion. Accordingly, the second limb of the Policy is established.
C. Registered and Used in Bad Faith
The difficulty in establishing bad faith registration – which needs to be proved separately from bad faith use – is that the disputed domain name was registered over ten years before the Complaint was filed. The Complainant has proffered no explanation for what seems an extreme delay in asserting its rights. The Panel is aware of a decision under the Policy in The New York Times Company v. Name Administration Inc. (BVI), NAF Claim No. FA1349045, where a Panel held that laches provided “a valid defense in any domain dispute where the facts so warrant”.
However desirable a limitation period may be – as other dispute resolution systems such as the Nominet Policy in force in the United Kingdom and New Zealand have recognised – under the Policy, laches can, in this Panel’s view, not be a defence. In this Panel’s view, laches is a purely equitable defence which can only be invoked in courts exercising an equitable jurisdiction. It can have no place in a system where the rules are set by the Policy which operates an administrative procedure.
That said, the longer the period between registration of a disputed domain name and the filing of a complaint under the Policy, the more difficult it can be for a complainant to prove bad faith registration.
In the present case, in the absence of any timely defence filed by the Respondent, the Panel is prepared to infer bad faith registration in the present circumstances by the Respondent in December 1999. At the time of registration of the disputed domain name, the Complainant was already well-established in the United Kingdom and had obtained a trademark for PPD.
A perusal of some of the decisions relating to the Respondent shows that he appears to have targeted well-known brands such as “Microsoft” (see Microsoft Corporation v. Damian Macafee, WIPO Case No. D2004-0027) or ‘Walkman’ (see Sony Kabushiki Kaisha, supra) or ‘Carrefour’ (see Carrefour S.A. v. Damian Macafee, WIPO Case No. D2002-1060). This activity by the Respondent shows a pattern of conduct from which an inference of bad faith can be drawn.
The following matters all combine to reinforce the inference of bad faith registration even in the absence of any explanation for the Complainants’ delay in taking remedial action:
(a) The failure by the Respondent to develop a website for over ten years.
(b) The confusion caused by the use of the Complainant’s trademark in the disputed domain name whereby Internet users may be led into thinking that the website has some connection, affiliation, etc. with the Complainant.
(c) The possible tarnishment of the Complainant’s mark and disruption to the Complainant’s business caused by the Respondent’s website being used as a “parking” site for “click-through” advertisements, some of which are for the sorts of services provided by the Complainant.
(d) The confusion caused by the similarity of the disputed domain name to the Complainant’s domain name.
(e) The Respondent’s track record of bad faith findings in at least ten decisions under the Policy.
All these matters combine to create the inference that the Respondent registered the disputed domain name in bad faith.
It goes without saying that these matters prove bad faith use in this case.
Accordingly, the third limb of paragraph 4(a) of the Policy has been proved and the Complaint succeeds.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <ppd.com> be transferred to the Complainant.
Sir Ian Barker
Dated: June 15, 2011