WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mundipharma AG v. Berry Web Services Inc., Domain Administrator / ProxyTech Privacy Services Inc., Privacy Manager
Case No. D2012-1388
1. The Parties
The Complainant is Mundipharma AG of Basel, Switzerland, represented by Stevens & Bolton LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Berry Web Services Inc., Domain Administrator of British Columbia, Canada / ProxyTech Privacy Services Inc., Privacy Manager of British Columbia, Canada, internally represented.
2. The Domain Name and Registrar
The disputed domain name <flutiform.com> is registered with Alpine Domains Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2012. On July 9, 2012, the Center transmitted by email to Alpine Domains Inc. a request for registrar verification in connection with the disputed domain name. On July 10, 2012, Alpine Domains Inc. transmitted by email to the Center its verification response:
(a) confirming that the disputed domain name is registered with it; but
(b) disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to the Complainant on July 13, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 16, 2012.
The Center verified that the Complaint together with the amended 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 July 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2012. The Response was filed with the Center on August 3, 2012.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on August 14, 2012. 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 August 28, 2012, the Panel issued Procedural Order No. 1 pursuant to paragraph 12 of the Rules, inviting the first Respondent to provide further information about aspects of the Response. The first Respondent, however, did not avail itself of that opportunity.
4. Factual Background
The Complainant provides intellectual property services to a number of independent, but associated companies involved in pain management and the development of new drugs.
In 2004, two companies, SkyePharma PLC (identified in the Complaint as SkyePharma AG) (SkyPharma) and its subsidiary Jagotec AG (Jagotec), began developing a new product related to the treatment of asthma and chronic obstructive pulmonary disease. Jagotec is stated in the Complaint to be a subsidiary of SkyePharma. Jagotec completed the Phase II trials for this new drug in 2005; the Phase III trials started in 2006. SkyePharma and Jagotec coined the term FLUITFORM as the brand name for this new product.
Between January 2006 and March 2007, Jagotec secured trademark registrations for FLUTIFORM:
- as a Community Trademark;
- in Switzerland;
- in Iceland;
- in Norway; and
- in Lichtenstein.
The trademark registrations specify in broad terms pharmaceuticals in International class 5, inhalers in International class 10 and, in International class 42, medical research and development services, product development, design and engineering services and custom design of medical goods.
In September 2006, SkyePharma or Jagotec granted to Mundipharma International Corporation Limited (MICL) exclusive rights to develop, market and distribute the FLUTIFORM product throughout Europe and some other international markets. The licence did not extend to North America, but it would appear from the press releases included in the Complaint that a licence had already been granted to Kos Pharmaceuticals for North America.
Through arrangements between SkyePharma and Jagotec on one hand and MICL and its associated entities on the other, the Complainant has also registered a number of trademarks for FLUTIFORM in respect of the same goods and services in a number of countries around the world. To date, registration has been achieved in Australia, Bangladesh, Hong Kong, India, Indonesia, Malaysia, Nepal, New Zealand, Pakistan, Philippines, Singapore, South Korea, Taiwan, Thailand and Vietnam. The earliest of these registrations dates from July 2007. There are also pending applications in Sri Lanka.
The first Respondent (hereafter, the Respondent) states that it provides web services to its customers. The disputed domain name was registered on April 22, 2007. The disputed domain name currently resolves to a webpage which states that the site is “Under Construction”. The Respondent also states that the disputed domain name is used for email.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks dating from July 2007 referred to above. It also relies on the Community Trademark and other European trademarks in the name of Jagotec.
Panels now generally accept that a licensee of a trademark may qualify as the holder of rights protectable through the Policy: see paragraph 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
It would appear from the materials submitted in the Complaint that the Complainant is not directly licensed by Jagotec. However, the Panel recognises that corporate groups often use a specific entity to hold and manage the intellectual property rights owned or used by the various members of the group. In these circumstances, the Panel finds that the documentation submitted with the Complaint, together with the Complainant’s registration of FLUTIFORM as a trademark in various parts of the world with the consent or acquiescence of SkyePharma and Jagotec are sufficient to support the Complainant’s reliance on the trademarks registered by Jagotec in addition to those registered in its own name.
Disregarding the “.com” extension, which is a purely formal requirement of the domain name system, the disputed domain name is identical to the Complainant’s proven trademarks.
The Respondent points out that the registered rights relied on by the Complainant do not extend to Canada, or North America; they are registered in Europe or Asia/Oceania and are limited to goods and services related to pharmaceuticals. While that is true, it mischaracterizes the nature of the inquiry at this stage.
On this part of the inquiry what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a 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.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of the WIPO Overview 2.0.
The Complainant points out that the disputed domain name is not derived from the Respondent’s name or any name by which, so far as the Complainant is aware, the Respondent is known. The Complainant also denies that it has authorised the Respondent to use the disputed domain name or that the Respondent is in any way associated with the Complainant. The Respondent does not dispute these matters which, in the present case, are sufficient to satisfy the requirement that the Complainant establish a prima facie case under this head.
In seeking to rebut this prima facie case, the Respondent relies on the limited scope of the Complainant’s trademarks both in terms of the range of goods and services protected and the countries in which protection has been obtained. It says it provides web services (which are well outside the scope of the Complainant’s trademark registrations) and contends it bought the disputed domain name for a web forms project.
The facts that the Complainant does not claim trademark rights in the country where the Respondent is located and the different nature of the goods and services offered by the Respondent can be important indicators of rights or legitimate interests under the Policy. They are not necessarily conclusive, however, and considerations of bona fides must also be taken into account. For example, paragraph 4(c)(i) set out above requires a bona fide offering of goods or services, or demonstrable preparations for use, before notice of the dispute. A colourable offering is not sufficient to establish a right or legitimate interest under the Policy.
Given the large number of countries throughout the world and the global reach of the internet, any other rule would seriously prejudice the sound functioning of the Policy.
As noted above, the Respondent states it bought the disputed domain name for a web forms project. The disputed domain name was registered in April 2007. As it was not clear to the Panel whether the Respondent was the original registrant or acquired it at some later time, the Panel invited the Respondent by Procedural Order No. 1 to clarify if the Respondent acquired the registration of the disputed domain name at some later date. As also noted above, the Respondent did not take up that invitation. Accordingly, the Panel proceeds on the basis that the Respondent registered the disputed domain name in April 2007.
The disputed domain name currently resolves to an “Under Construction” page. It does appear to have some functionality to submit emails to the Respondent. It also has a “click through” page to a special web-hosting offer by “Hostgator.com”. The Respondent does not explain whether it has any relationship with “Hostgator.com” which, from a whois search, appears to be based on Texas in the United States of America and appears to provide hosting services to the Respondent.
The Respondent has not sought to explain why, if the disputed domain name was bought for a web forms project, it is not being used for that purpose even after the passage of some five years.
The Respondent has not provided any information about how the disputed domain name is used for email, other than to provide an email it sent from the email address email@example.com to the Complainant in July this year after receipt of the Complaint. In its dealings with the Center, the Respondent has used a gmail address.
In the present case, the Respondent has not submitted much, if anything, concrete to support its claims that it bought the disputed domain name for a web forms project.
While the Panel can see a relationship between a web forms project and a name which includes the word “form”, the term “Flutiform” is not a common or descriptive term. The Complainant contends that it was coined by SkyePharma and Jagotec. The Panel is not aware of any type of form, or web form, which might be referred to in normal or common usage as a “fluti” form. As “Flutiform” appears to be a term coined by those from whom the Complainant derives title, therefore, it was incumbent on the Respondent to provide some explanation of how it selected the disputed domain name. No such explanation has been provided.
The Complainant has also submitted what it says are archived screenshots of the home page to which the disputed domain name has resolved at various times since its registration. This has been obtained through DomainTools.com.
Apart from the current form of “Under Construction” page, the screenshots are fairly typical “parking” pages with links to various search categories. In many cases, the link categories appear to be internet related, but none appear to have anything to do with web forms or forms. The landing pages in 2007 clearly state “This Domain is FOR SALE. Click for Details”. The later pages in 2010 and early 2011 simply have a link “Contact Owner”. The 2010 page states “Welcome to flutiform.com. flutiform.com is your gateway to sites on the Internet for fluti form! Browse our resources or just try the search.” There are a range of “sponsored listings” for digital receivers and cell phones. The so-called “related searches” are “Freephone, Free virtual world game, Funny display pics, Dating websites, Internet, Free internet, Internet Service, Internet speed, Internet Marketing, Internet security”. It is not immediately apparent what any of these have to do with something identified as “fluti form”.
The Respondent has not sought to dispute that these are accurate screenshots of earlier versions of the website to which the disputed domain name has resolved. Nor, as explained above, has it availed itself of the invitation to dissociate itself from involvement in those parking pages.
These screenshots do not evidence anything approaching a bona fide offering of goods or services. Moreover, the materials submitted by the Respondent do not raise much, if at all, above bare assertion. They fall far short of what is required to rebut the prima facie case established by the Complainant.
Taking all these matters into consideration, therefore, the Panel finds that the Complainant has established this requirement under the Policy.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and is being used in bad faith by the Respondent.
As the term “flutiform” does not appear to be descriptive or otherwise in common use, but rather is a coined term distinctive of the goods and services of the Complainant and those from whom it derives its rights, the inference is plainly open that the disputed domain name has been registered to take advantage of the Complainant’s trademark. For the reasons set out above in section B, the Respondent’s attempt to rebut that inference with its claim that it registered the disputed domain name for a web forms project has not been sustained.
The inference is further reinforced by the nature of the use made of the disputed domain name since its registration; most of which appears to be predicated on attracting traffic for click through links on the basis of the Complainant’s trademark. The relatively recent replacement of those pages with the “Under Construction” page (which itself includes at least one click through link) does not save the disputed domain name.
In these circumstances and on the record in this case, therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
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 name <flutiform.com> be transferred to the Complainant.
Warwick A. Rothnie
Dated: September 7, 2012