World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bristol-Myers Squibb Company v. Private Whois

Case No. D2011-1882

1. The Parties

Complainant is Bristol-Myers Squibb Company of New York, New York, United States of America (“U.S.”) represented by Fross Zelnick Lehrman & Zissu, PC, U.S.

Respondent is Private Whois of Nassau, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <buyonglyzaonline.com> (the “Domain Name”) is registered with Internet.bs Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2011. On November 1, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 3, 2011, the Registrar 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 proceedings commenced on November 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 25, 2011.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on December 1, 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.

4. Factual Background

Complainant is one of the largest pharmaceutical companies in the world. One of Complainant’s many pharmaceutical products is ONGLYZA, an oral prescription medicine used to control high blood sugar in adults with type 2 diabetes. ONGLYZA products have been sold in the U.S. and in over 40 other countries, beginning in the year 2009.

Complainant is the owner of the trademark ONGLYZA, registered in the U.S. (classes 5 and 16) and also numerous registrations around the world.

The Domain Name was registered on April 25, 2010. The Domain Name is used in connection with a website that contains a series of links to an online Canadian pharmacy.

5. Parties’ Contentions

A. Complainant

Complainant states that it began using the ONGLYZA trademark in commerce in 2009, and in December 2009 secured U.S. Registration No. 3,723,838 for the mark ONGLYZA for “pharmaceutical preparations for human use for the treatment and prevention of diabetes” in Class 5. In May 2011, Complainant secured U.S. Registration No. 3,970,694 for the trademark ONGLYZA (stylized) for “printed matter, namely, brochures and pamphlets on the subject of diabetes” in Class 16.

Complainant next alleges that the Domain Name <buyonglyzaonline.com> is confusingly similar to Complainant’s trademark. The Domain Name simply adds to the trademark the terms “buy” and “online”.

Complainant next alleges that the generic terms “buy” and “online” do nothing to distinguish the Domain Name from the ONGLYZA trademark. According to Complainant, that the Domain Name is intended to relate to Complainant’s trademark is further evidenced by the fact that the website operating at the Domain Name contains information about ONGLYZA, its chemical make-up and approved uses, along with several links to <northwestpharmacy.com> where visitors can complete unauthorized or illegal purchases of Complainant’s goods. As such, Complainant argues, Internet users are likely to be left with the false impression that Respondent is authorized to sell Complainant’s merchandise or that the websites to which the Domain Name redirects are somehow affiliated with or endorsed by Complainant.

Complainant alleges that Respondent has no rights or legitimate interests in the Domain Name. Under the Policy, according to Complainant, Respondent bears the burden of proving that it has rights or legitimate interest in the Domain Name. Complainant argues that Respondent cannot overcome this burden.

Complainant alleges that Respondent is using the goodwill associated with Complainant’s mark to drive traffic to its website which then directs Internet users to a website called “www.northwestpharmacy.com” to sell not just Onglyza products but hundreds of other prescription and non-prescription products. Use of the Domain Name for this purpose is not a legitimate use of Complainant’s trademark.

Complainant alleges that the Domain Name was registered and is being used in bad faith. Complainant argues that the use of the Domain Name to link to goods sold by its competitors constitutes a bad faith use and is evidence of bad faith registration. Complainant argues that Respondent has registered the Domain Name primarily to disrupt the business of the Complainant.

Complainant alleges that Respondent has used the goodwill associated with Complainant’s trademark to drive traffic to its website which is merely a compilation of links to online pharmacies selling Complainant’s products.

Complainant argues that the Domain Name and also the website to which it links fail to disclaim any affiliation with Complainant. There is no mention of the fact that the website is unaffiliated with Complainant or that the information at the site had not been endorsed or approved by Complainant. Indeed Respondent is banking on the established goodwill and consumer recognition of the ONGLYZA trademark to drive traffic to its site to sell similar and related products. Complainant also states that because the ultimate effect of any use of the Domain Name will be to cause confusion with Complainant, the use and registration of the Domain Name must be considered to be in bad faith.

Complainant alleges that Respondent uses a domain name incorporating the Complainant trademark to sell unauthorized or non-genuine products and to falsely suggest a connection with the Complainant. Even if the goods being sold are not counterfeit but rather merely unauthorized –Complainant argues-, Respondent sale of those goods through the websites affiliated with the Domain Name would still be in bad faith.

Complainant request as a remedy that the Domain Name be transferred to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Complainant has the burden of proof in showing that each element within paragraph 4(a) of the Policy is present. These are as follows:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name was registered and is being used by Respondent in bad faith.

Even when a respondent defaults, as is the case here, Complainant must establish and carry the burden of proof on each of the three elements identified above with regard to the Domain Name. See Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383.

The Panel proceeds to deal with each of these elements in turn.

A. Identical or Confusingly Similar

The Domain Name wholly incorporates Complainant’s trademark ONGLYZA. The fact that the generic words “buy” and “online” are added to Complainant’s trademark does not eliminate the similarity between Complainant’s trademark and the Domain Name, as “buy” and “online” are descriptive components of the Domain Name.

In numerous cases, it has been held that a domain name that wholly incorporates a complainant’s registered mark may be sufficient to establish confusing similarity for purposes of the Policy despite the addition of descriptive words to such marks.

The Panel thus finds that the Domain Name <buyonglyzaonline.com> is confusingly similar to the trademark ONGLYZA in which Complainant has exclusive rights and that Complainant has established the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy requires Complainant to prove that Respondent has no rights or legitimate interests in the Domain Name. However, it is consensus view among panelists that if Complainant makes a prima facie case that Respondent has no rights or legitimate interests, and Respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then Respondent may lack a legitimate interest in the Domain Name.

Complainant asserted that Respondent has neither a license nor any other permission to use Complainant’s trademark ONGLYZA. Respondent has not denied these assertions. The Panel thus finds that Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name which wholly incorporate Complainant’s trademark.

Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to rights or legitimate interests in the Domain Name.

Respondent is not an authorized reseller of Complainant’s ONGLYZA products, but is using Complainant’s trademark for a website devoted to inform about the product and redirect users to another site dedicated to the sale of various drugs. Respondent’s use of the Domain Name to divert Internet users to another website capitalizing on Complainant’s mark is not a bona fide use pursuant to paragraph 4(c)(i) of the Policy.

Under these circumstances, the Panel takes the view that Respondent has no rights or legitimate interests in the Domain Name and that the requirement of paragraph 4(a)(ii) is also satisfied.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), sets out four illustrative circumstances, which for purposes of the Policy, paragraph 4(a)(iii), shall be evidence of the registration and use of the Domain Name in bad faith, including:

(iv) by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.

In view of the evidence available, it is inconceivable that Respondent registered the Domain Name without knowledge of the ONGLYZA trademark. This assumption is supported by the fact, that Respondent registered a domain name which is identical to the ONGLYZA trademark and added the descriptive term “buy” and “online”. Also the content of the website, related to Complainant’s product, is indicative of the intention of Respondent.

In addition, the use of the Domain Name for a webpage redirecting to an online pharmacy site on which a large variety of drugs are sold clearly indicates that Respondent’s primary intent in registering and using the Domain Name was to trade on Complainant’s good will and reputation by creating a likelihood of confusion with Complainant’s ONGLYZA trademark and online Canadian pharmacy.

Accordingly, the Panel finds from the circumstances that Respondent registered and is using the Domain Name in an attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Pursuant to paragraph 4(b)(iv), this constitutes evidence of bad faith registration and use of the Domain Name for purposes of paragraph 4(a)(iii).

Therefore, the Panel finds that Complainant has satisfied the requirements of the Policy, paragraph 4(a)(iii).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <buyonglyzaonline.com> be transferred to Complainant.

Pablo A. Palazzi
Sole Panelist
Dated: December 9, 2011

 

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