WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Leo Pharma A/S v. Wendy Merfy
Case No. D2012-2054
1. The Parties
The Complainant is Leo Pharma A/S of Ballerup, Denmark, represented internally.
The Respondent is Wendy Merfy of Jurmala, Latvia.
2. The Domain Name and Registrar
The disputed domain name <buyfucidinonline.com> is registered with Cloud Group Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on October 17, 2012. On October 17, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 17, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name.
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 November 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2012.
The Center appointed Richard Hill as the sole panelist in this matter on November 29, 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.
4. Factual Background
The Complainant is a well known pharmaceutical company owning the trademark FUCIDIN, with rights dating back to 1979.
The Respondent registered the disputed domain name in February 2012.
The disputed domain name is directed to a web site offering to sell FUCIDIN and other pharmaceutical products.
5. Parties’ Contentions
The Complainant alleges that it was founded more than 100 years ago and is a leading global pharmaceutical company, doing business in more than 100 countries in the world. It owns the registered trademark FUCIDIN, with rights dating back to 1979.
The Complainant states that the disputed domain name is identical to its mark, except for the addition of the generic terms “buy” and “online”. Thus the disputed domain name is confusingly similar to its mark in the sense of the Policy. The Complainant cites UDRP precedents to support its position.
The Complainant states that it has not granted licenses, authorization or any other rights to its mark to the Respondent. The Respondent is using the mark without permission. The disputed domain name points to a web site containing links to the Complainant’s products and other pharmaceutical products.
According to the Complainant, the Respondent derives click-through revenue from the links at the web site at the disputed domain name, which creates a likelihood of confusion for Internet users. Further the content of this web site is illegal promotion of prescribed medicine. Thus the Respondent has intentionally attempt to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has provided evidence showing that it owns the trademark FUCIDIN, which is used to market a prescribed pharmaceutical product. It is clear to the Panel that the disputed domain name, consisting of the Complainant’s trademark with the addition of the generic terms “buy” and “online”, is confusingly similar to the Complainant’s trademark. See for example F. Hoffmann-La Roche AG v. Hua Jianmin, WIPO Case No. D2007-0746 (“the addition of English words as “online”; “pharmacy”… do not provide additional specification or sufficient distinction from Complainant or its trademark…In fact, the Panel finds that the addition of these English words serve to emphasize that information about the Complainant’s …drug products are available at these websites which only serve to increase the level of confusion of Internet users as Internet users may mistake the Respondent’s websites whether as the Complainant’s official websites or websites endorsed, sponsored or associated with Complainant”); see also F. Hoffmann-La Roche AG v. Bobik Marley, WIPO Case No. D2007-0694 (“confusing similarity, for the purposes of the Policy, is established when a domain name wholly incorporates a complainant’s mark and only adds a generic word along with, in this case… the number ‘1’”).
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Respondent does not have any license or other authorization to use the Complainant’s mark. The Respondent is using the disputed domain name to point to a website that offers products that compete with the Complainant’s product.
The Panel finds that the Respondent is redirecting Internet users interested in the Complainant’s products and services to its own website for commercial gain and that such use does not fall within the parameters of a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy. See for example F. Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814 (“Respondent’s use of the disputed domain name to redirect Internet users to an on-line pharmacy demonstrates Respondent’s lack of a legitimate interest in the domain name”); see also Pfizer Inc v. Juan Gonzales, WIPO Case No. D2004-0589 (“no good faith can be assumed in Respondent’s conduct, in view of the fact that the Domain Name is confusingly similar with Complainant’s trademark and is used in connection with the promotion and sale of competing products”).
C. Registered and Used in Bad Faith
It is clear to the Panel that the Respondent was aware of the Complainant’s marks when he registered and started using the disputed domain name, because the web site at the disputed domain name contains the Complainant’s mark.
The Respondent (who did not reply) has not presented any plausible explanation for his use of the Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that the Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed the Respondent’s actual use of the disputed domain name (as noted above) is clearly not bona fide, because the Respondent operates a web site that promotes products that compete with the Complainant’s product. This indicates that the Respondent has registered and is using the disputed domain name to take advantage of the confusing similarity between the disputed domain name and Complainant’s marks in order to profit from the goodwill associated with the mark in bad faith under paragraph 4(b)(iv) of the Policy. See Pfizer Inc v. Juan Gonzales, WIPO Case No. D2004-0589 (“using the Domain Name to promote and sell, for commercial gain…pharmaceutical products (as “Generic Accutane”), which directly compete with Complainant’s genuine [ACCUTANE]… is further evidence of Respondent’s bad faith registration and use of the Domain Name”); see also Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (bad faith is established when “Respondent is using the domain names as a forwarding address to a for-profit on-line pharmacy”).
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, <buyfucidinonline.com> be transferred to the Complainant.
Date: November 30, 2012