WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Valeant Pharmaceuticals International, Inc. / iNova Pharmaceuticals (Australia) Pty Limited v. Luca Radu / Fundacion Private WhoIs / Maxim Conovalov / Vasju Pere
Case No. D2013-1918
1. The Parties
The Complainant is Valeant Pharmaceuticals International, Inc. of Quebec, Canada / iNova Pharmaceuticals (Australia) Pty Limited of Chatswood, New South Wales, Australia, represented by K&L Gates LLP, Australia.
The Respondents are Luca Radu of Bucuresti, United States of America (“US”) / Fundacion Private WhoIs of Panama, Panama / Maxim Conovalov of Chisinau, Moldova / Vasju Pere of Paris, France.
2. The Domain Names and Registrars
The disputed domain names <duromineau.com>, <durominehome.com>, <durominephentermine.net> and <durominesale.com> are registered with DomainContext, Inc., GoDaddy.com, LLC, Internet.bs Corp., and OnlineNic, Inc., d/b/a China-Channel.com, respectively (the “Registrars”).
3. Procedural History
The Complaint for nine domain names was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2013. On November 12, 2013, the Center transmitted by email to the Registrars a request for registrar verification in connection with these domain names. On November 13 and 15, 2013, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for these domain names which differed from the named Respondents and contact information in the Complaint. On December 19, 2013, the Complainants confirmed to the Center that they had gained control over five domain names and requested the Center to drop them from the administrative proceeding. The Center sent an email communication to the Complainants on December 23, 2013, providing the registrant and contact information for the disputed domain names disclosed by the Registrars, and inviting the Complainants to submit an amendment to the Complaint. This email also drew the Complainants’ attention to the requirements surrounding the consolidation of complaints against multiple respondents. The Complainants replied and filed an amended Complaint on December 24, 2013.
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 Respondents of the Complaint, and the proceedings commenced on December 27, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 16, 2014. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on January 17, 2014.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on January 24, 2014. 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
iNova Pharmaceuticals (Australia) Pty Limited (iNova) is a wholly owned subsidiary of Valeant Pharmaceuticals International, Inc (Valeant). These two companies, being the Complainants, have variously manufactured, distributed and sold pharmaceutical products in a number of countries. Their products under the DUROMINE trademark include particularly pharmaceuticals or food supplements having appetite regulatory properties. Valeant has registered trademarks for DUROMINE in Australia, New Zealand, Botswana, Hong Kong, Singapore, Malaysia, South Africa and the Philippines, and has made applications for the DUROMINE trademark in Ghana, Namibia, Thailand and Sri Lanka.
The Australian trademark registration details are as follows:
DUROMINE, word mark, registered from September 9, 1960, registration number 162353, registered to Valeant Pharmaceuticals International, Inc., in class 5 - appetite suppressors, stimulants.
Nothing is known about the Respondents except for such information as has been provided for the purpose of registration of the respective disputed domain names.
The disputed domain names appear to have been registered on the following dates:
<duromineau.com> April 30, 2013
<durominehome.com> April 4, 2013
<durominephentermine.net> May 2, 2013
<durominesale.com> February 18, 2013
5. Parties’ Contentions
The Complainants in support of their contended rights in the registered trademark DUROMINE have produced a copy of the documentation available on the Australian Government IP Australia website.
The Complainants contend that each of the disputed domain names is confusingly similar to the trademark DUROMINE for the reasons that follow and submit that the generic Top-Level Domain (“gTLD”) suffix “.com” or “.net” is not relevant.
The disputed domain name <duromineau.com> comprises DUROMINE and “AU”, the latter meaning Australia. The Complainants’ products under the DUROMINE trademark are their flagship products sold in Australia. Consumers are likely to be confused into associating the disputed domain name with the Complainants’ products.
The disputed domain name <durominephentermine.net> consists of the trademark DUROMINE and the name of the active pharmaceutical ingredient “Phentermine”. This association is likely to increase the association between the disputed domain name and the trademark DUROMINE in the minds of consumers.
The disputed domain name <durominehome.com> consists of the trademark DUROMINE and “home”. The word “home” implies that the website of the disputed domain name is the primary source online for information and the sale of DUROMINE products, and is likely to confuse consumers.
The disputed domain name <durominesale.com> comprises the trademark DUROMINE and the word “sale”. The confusing implication to consumers is that this leads to a website connected with the Complainants that is for the sale of the Complainants’ products.
The Complainants further contend that the Respondents have no rights or legitimate interests in respect of the disputed domain names.
Having searched for DUROMINE on the USA TESS database, the ROMARIN database, and the Australian trademarks register, the Complainants have found no evidence that the Respondents have any rights in the trademark DUROMINE anywhere in the world.
“Duromine” is a coined word. Having conducted an Internet search, the Complainants are not aware of any legitimate third party use it.
There is no affiliation between the Complainants and the Respondents and the Complainants have not licensed or otherwise permitted any of the Respondents to use the Complainants’ trademark or the disputed domain names.
There is no evidence that the Respondents have made preparations for bona fide use of the disputed domain names, or to make noncommercial or fair use of them, or have been commonly known by the disputed domain names.
The Complainants further contend that the disputed domain names were registered and are being used in bad faith.
The trademark DUROMINE is an invented word registered as a trademark in 1960. Since then iNova or Valeant have established an extensive reputation in the trademark. The Complainants imply that the Respondents must have been aware of the trademark when the disputed domain names were registered. The symbol for “trademark” is attached to DUROMINE on the website of <durominehome.com>, and the symbol for “registered trademark” is attached to DUROMINE on the website of <durominephentermine.net>.
The Complainants contend that the Respondents have acted in bad faith by having variously withheld their registration details, or concealed them with a privacy service, or given incomplete or unidentifiable addresses and incongruous telephone details.
The Complainants contend that the Respondents are using the trademark DUROMINE as part of the disputed domain names to attract consumers to websites that purport to sell appetite suppressant or weight loss products in Australia. The respective websites have “buy” or “order” buttons that activate links. Consumers attempting to buy product are directed to “www.phen375.com” (the “Phen website”) which sells an appetite suppressant or weight loss product in direct competition with the Complainants’ products. Therefore, the Respondents intend to disrupt the business of the Complainants; to attract consumers to the Respondents' websites and the Phen website by confusion; and to trade on the reputation of the Complainants and the trademark DUROMINE. Furthermore, DUROMINE is a prescription-only medicine in Australia and by law cannot be obtained legally through the Internet.
The Complainants submit that the Respondents have a common interest in the websites to which the disputed domain names resolve because they all link to the Phen website.
The Complainants request the transfer to them of the disputed domain names.
The Respondents did not reply to the Complainants’ contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainants have made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The Panel is satisfied that the Center has fulfilled its obligations to attempt to notify the dispute to the Respondents in accordance with the provisions of paragraph 2 of the Rules.
A. Procedural Matters
In the circumstances of this dispute, since iNova is a wholly owned subsidiary of Valeant, it is not inappropriate for the Complainants to have brought the Complaint jointly.
The bringing of the Complaint against four Respondents is more problematic. Paragraph 3(c) of the Rules states:
“The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.”
Paragraph 10(e) of the Rules, setting out certain general powers of the Panel, states:
“A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.”
Thus, it is for the Panel to decide, in the light of the evidence produced and the submissions made, whether the disputed domain names in this case are registered by the same domain name holder. As demonstrated in a number of previous cases under the Policy, the question of whether the respective disputed domain names are in fact registered by the same holder, directly or indirectly, may be less than straightforward to answer. Cases in which panelists have comprehensively reviewed the issue of the consolidation of complaints against multiple respondents include Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 and Kimberly-Clark Corporation v. N/A, Po Ser and N/A, Hu Lim, WIPO Case No. D2009-1345.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), with reference to consolidation at paragraph 4.16, includes the following paragraph:
“In order for the filing of a single complaint brought by multiple complainants or against multiple respondents which meets the above criteria to be accepted, such complaint would typically need to be accompanied by a request for consolidation which establishes that the relevant criteria have been met. The onus of establishing this falls on the filing party/parties, and where the relevant criteria have not been met, the complaint in its filed form would not be accepted.”
The Complaint does not sufficiently address the question of consolidation in respect of the four Respondents. The Complainants, which have the onus of doing so, have not advanced any significant and specific evidence that would link any two or more of the Respondents together convincingly.
Nevertheless, the Panel has perused the case details and the evidence for signs of commonality between any of the Respondents. Apparently the four disputed domain names were registered, over a period of 10 weeks, through different registrars, to different persons or entities in different countries with different addresses and different communications details. No convincing point of commonality has been drawn to the attention of the Panel.
Other clues to the involvement of a common entity or guiding mind have sometimes been relied upon in previous cases, such as the websites of supposedly different entities being substantially identical or all resolving by automatic redirection to a common website. The websites to which the present disputed domain names resolve are different and have in common, at best, that they look equally professional. Differently-labelled “buy” or “order” buttons offer a link, according to the evidence, to a common sales outlet at the Phen website, “www.phen375.com”, which is not the same action as an automatic redirection to a common website. The Panel cannot find the provision of this link, without more, to be of any more probative significance than the well-known fact that numerous websites have remunerative links to international booksellers, airlines, holiday sites and the like. The Panel may well have more than a vague notion about what might be going on here, but the required standard of proof is the balance of probabilities on the basis of evidence.
The Panel notes that in an email letter dated December 23, 2013, the Center wrote to the Complainants (and other Parties) in the following terms, inter alia:
“The Center notes that the Uniform Domain Name Dispute Resolution Policy (UDRP) and Rules do not contemplate the filing of a single Complaint against more than one domain name holder (Rules, paragraph 3(c)). Whether to allow the inclusion of additional domain name holders in a Complaint is a matter that would need to be decided by a Panel on the specific request of a Complainant. In order to accept such Complaint and proceed to notify it on the basis of more than a single domain name holder, the Center would typically need to be satisfied that there is at least a prima facie case for consolidation warranting consideration by a Panel. This would typically involve the Complainant putting on at least some argument and supporting material indicating a connection or relationship between the domain names and their listed domain name holders. Even if provided, any final determination would need to be made by the appointed Panel, who may still order the severance of one or more of the named Respondents. More commonly in such cases, a Complainant would simply request an amendment to the Complaint so as to omit or remove the additional domain name(s) and corresponding domain name holder(s), and file a separate Complaint for each.
Therefore you are kindly requested to provide the Center with a brief amendment to the Complaint, adding the names of the disclosed Registrants as formal Respondents and demonstrating that the four Registrants are, in fact, the same entity.”
The Complainants reply dated December 24, 2013, included the paragraph:
“We have updated the respondents' information in accordance with your email below. We have made arguments as to the identity of the respondents in the Amended Complaint.”
The sole significant submission as to any commonality of the Respondents was unchanged between the Amended Complaint and the earlier version, as follows:
“Each of the websites accessible at the Disputed Domain Names promotes for sale appetite suppressant pharmaceutical product sold under or by reference to the trade mark DUROMINE.
Each website accessible at the Disputed Domain Names directs customers wanting to purchase the product sold under or by reference to the trade mark DUROMINE to the website accessible at <http://phen375.com/en/> (Phen Website).
The Respondents are either the same person or entity (operating under false or different names), or have a common interest in promoting and facilitating sales from the Phen Website by directing customers from the websites accessible at the Disputed Domain Names. This common interest justifies them being named in a common Complaint.”
A common interest does not equate with the same person, and the Panel has not been provided with sufficient information to decide between these alternatives.
The Complainants have chosen not to accept the Center’s suggestions either to provide “at least some argument and supporting material” or “to file a separate Complaint for each”. The Panel interprets the Rules, in the light of the body of jurisprudence in this matter, as precluding the consolidation of the Respondents in this case and will therefore proceed to hear the Complaint against the cited first Respondent Luca Radu in respect of the disputed domain name <duromineau.com>. This is without prejudice to the right of the Complainants to seek to refile the remaining three Complaints (Minnetonka Moccasin Company, Inc. v. wei liang, wangli, xiahong, baohan, lipai, li hong, xuwei, hu yurui, hu mo, fang wei, hu haonan, liu ruyun, ma ling, wenfang, tangling, jiang yilan, ma qing, yang shuoqing, lisai, chenyang, chenliang, bailianhua, WIPO Case No. D2012-0821).
B. Identical or Confusingly Similar
The disputed domain name remaining in issue is <duromineau.com>. This comprises the Complainants’ distinctive and invented trademark DUROMINE and the suffix “au”, which is similar to the country-code Top-Level Domain (“ccTLD) “.au” meaning Australia. The Complainants through the wholly-owned subsidiary iNova trade extensively in Australia, although that is not in itself decisive. The Panel finds confusing similarity between the disputed domain name and the Complainants’ trademark within the meaning of paragraph 4(a)(i) of the Policy and accordingly finds for the Complainants under this element.
C. Rights or Legitimate Interests
The Complainants have the onus of proving under paragraph 4(a)(ii) of the Policy that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainants assert prima facie that they have no relationship with the Respondent and have not permitted or licensed the Respondent to use the Complainants’ trademarks.
Paragraph 4(c) of the Policy provides for the Respondent to establish rights or legitimate interests in a disputed domain name by demonstrating:
“(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.”
The above circumstances are illustrative only and rights or legitimate interests may be established by the Respondent on other grounds satisfactory to the Panel.
The Respondent has not replied with any assertion of right in the disputed domain name. The Complainants’ statements and the results of their researches into the word DUROMINE have satisfied the Panel that the Respondent does not have rights or legitimate interests in the disputed domain name.
D. Registered and Used in Bad Faith
The Complainants must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found alternatively by the Panel.
Paragraph 4(b)(iv) of the Policy is primarily relevant in this case. On the evidence, the Panel finds that the Respondent has adopted the Complainants’ trademark in the disputed domain name and that the function of the corresponding website is to direct and link visitors to the Internet presence of another entity, the Phen website, that operates in competition with the Complainants (albeit with an active ingredient spelled slightly differently). The Panel finds it to be more probable than not that the Respondent’s intention in so linking Internet visitors is to earn remuneration in return for the promotion of the competitor’s website and the products sold there and that the Respondent relies on confusion with the fame of the Complainants’ trademark in order to attract Internet visitors. In the event that visitors to the Respondent’s website realise it is not an authentic website of the Complainants, the impact of the Respondent’s conduct is not lessened because initial interest confusion has happened.
The Panel is satisfied on the balance of probabilities that the disputed domain name was registered for the purpose for which it has been used. Registration and use of the disputed domain name in bad faith are found proven in the terms of paragraphs 4(b)(iv) and 4(a)(iii) of the Policy.
The attempt by the Center to send the Written Notice to the Respondent by courier resulted eventually in a notification from the courier that “Both delivery address and phone number are wrong”. Emails to the Respondent were rejected or undeliverable. The Respondent’s actions in the provision of ineffective contact details are contrary to his contractual obligation as set out in the DomainContext Domain Registrant Agreement at paragraph 2(1) and at paragraph 1 of Appendix C to maintain them correct and up to date at the registry and are found to be a factor compounding the bad faith registration and use of the disputed domain name.
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 <duromineau.com> be transferred to the Complainant.
For the reasons stated above, the Complaints are denied in respect of the disputed domain names <durominehome.com>, <durominephentermine.net> and <durominesale.com>, without prejudice to the right of the Complainants to seek to refile them.
Dr. Clive N.A. Trotman
Date: February 3, 2014