WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Helsinn Birex Pharmaceuticals, Ltd v. Avi Jaworowski

Case No. D2014-0184

1. The Parties

Complainant is Helsinn Birex Pharmaceuticals, Ltd of Dublin, Ireland, represented by Baker & McKenzie, Colombia.

Respondent is Avi Jaworowski of Dendy, Australia.

2. The Domain Names and Registrar

The disputed domain names <cleanprep.co>, <cleanprep.net> and <kleanprep.co> (“Domain Names”) are registered with Crazy Domains FZ-LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2014. On February 7, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On February 10, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 12, 2014 informing it of the above, and Complainant filed an amended Complaint on February 12, 2014.

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 Respondent of the Complaint, and the proceedings commenced on February 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 6, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 7, 2014.

The Center appointed John R. Keys, Jr. as the sole panelist in this matter on March 19, 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

Complainant markets a mixture of polyethylene glycol and electrolytes under the trademark KLEAN-PREP as a bowel cleaning preparation, principally for colonoscopy procedures.

Complainant owns trademark registrations for KLEAN-PREP in numerous countries or authorities around the world, including the European Union, the People’s Republic of China, South Africa, Colombia and an international registration under the Madrid Protocol. Complainant’s trademark has been registered since as early as 1992, and all of the cited registrations of record predate Respondent’s registration of the Domain Names.

Respondent registered the Domain Names on July 3, 2013, the same date on which Respondent obtained a trademark registration for KLEAN-PREP in Australia.

The Domain Names are presently registered and parked with the Registrar.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Domain Names are identical or confusingly similar to Complainant’s KLEAN-PREP trademark in which Complainant has rights by reason of use of that mark and registrations in over 58 countries around the world, all of which predate registration of the Domain Names. The Domain Names do not contain sufficient differential elements that would allow Internet users to identify the business origin of the Domain Names and differentiate them from Complainant’s KLEAN-PREP trademark.

Complainant contends that Respondent has no legitimate interest in the Domain Names, alleging, the following:

- Respondent has demonstrated no preparations to use the Domain Names in connection with a genuine offering of goods or services;

- Respondent is not making a legitimate fair use of the Domain Names;

- Reproduction of Complainant’s trademark in the Domain Names is aimed at causing confusion and direct association with Complainant;

- Complainant had trademark registrations throughout the world before Respondent registered the Domain Names and before Respondent obtained a trademark registration in Australia.

- With respect to the Australian trademark registration, Complainant contends that Respondent obtained this registration in order to prevent Complainant from obtaining registration rights over the trademark and the corresponding Australia country code TLDs.

Complainant contends that the Domain Names were registered and are being used in bad faith. Notably, the Domain Names are not being used in connection with the offering of goods or services, except that each of the Domain Names is being offered for sale at the price of COP 17,326.44, thus demonstrating that the Domain Names were registered for the purpose of selling them to Complainant or a competitor.

In addition, Respondent has been registering other domain names that contain trademarks registered by other companies related to colonoscopy preparation products. These include:

- Fresnius Kabi Australia Pty Limited owns the trademark GLYCOPREP for colonoscopy preparation products. Respondent has registered the domain names <glycoprep.net>, <glycoprep.com> and <glycoprep.co.nz>.

- Fresnius Kabi Australia Pty Limited owns the trademark PICOPREP for colonoscopy preparation products. Respondent has registered the domain names <picoprep.co.nz>, <picoprep.com> and <picoprep.net>.

- DrNatura owns the trademark COLONIX for colonoscopy preparation products. Respondent has registered the domain names <colonex.co>, <colonex.co.nz>, <colonex.com.au>, <colonex.me> and <colonex.net>.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion And Findings

The Panel finds that Respondent was given proper notice of the proceeding. The evidence indicates that the Center sent the Complaint in electronic form to the email address and the Written Notice in hard copy by courier to the address provided in Respondent’s registration information available in the WhoIs database and from the Registrar. The record supports actual delivery by both means. The Panel thus considers that the Center discharged its responsibility under the Rules to notify Respondent of the Complaint and the administrative proceeding.

Where there is no response to the complaint, a UDRP panel must decide the dispute based upon the complaint (Rules, paragraphs 5(e) and 14(a)). A UDRP panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems applicable (Rules, paragraph 15(a)). Under Rules, paragraph 14(b), a respondent’s failure to answer entitles the panel to “draw such inferences therefrom as it considers appropriate”.

Under the Policy, paragraph 4(a), Complainant must prove each of three elements of its case in order to obtain the requested relief:

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

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

(iii) Respondent registered and is using the Domain Names in bad faith.

A. Identical or Confusingly Similar

Complainant has demonstrated that it has rights in the trademark KLEAN-PREP by reason of its use of the trademark in connection with its colonoscopy preparation product and multiple registrations of the mark in many parts of the world.

The Domain Names are confusingly similar to Complainant’s trademark. Respondent’s Domain Name <kleanprep.co> is nearly identical to Complainant’s trademark, omitting only the hyphen between “klean” and “prep” in the trademark. That omission is insufficient to distinguish the Domain Name from Complainant’s trademark. This Domain Name looks and sounds the same as Complainant’s trademark.

Respondent’s other two Domain Names, using the designation “cleanprep”, substitute the letter “c” for the letter “k” in the trademark. Again, this difference is insufficient to distinguish the Domain Names from Complainant’s trademark. The sound and the meaning of the Domain Names are the same as Complainant’s trademark.

The generic Top-Level Domains (“gTLD”) are not relevant for the purpose of comparing the Domain Names and Complainant’s trademark. gTLD’s are generally ignored for purposes of determining confusing similarity, because they are necessary to any domain name, are generic and fail to distinguish a domain name from a trademark. See Societe Nationale des Chemins de Fer Francais, SNCF v. Transure Enterprise Ltd / Bargain Register Domain Privacy, WIPO Case. No. D2011-0447. In this case, the Top-Level Domain “.co” used in two of the Domain Names is the country code for Colombia, but it is a code for which anyone can register and does not imply any necessary connection with country Colombia.

The Panel finds that each of the three Domain Names is confusingly similar to Complainant’s trademark and that Complainant has therefore established the first element of its case.

B. Rights or Legitimate Interests

Complainant bears the overall burden to prove that Respondent has no rights or legitimate interests in the Domain Name (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1). However, where a complainant makes a prima facie case that a respondent does not possess such rights or legitimate interests, the burden of production shifts to the respondent to demonstrate that it does in fact possess such rights or legitimate interests. Id. Where, as here, a respondent fails to come forward with allegations or evidence to demonstrate that it possesses such rights or legitimate interests, the complainant’s prima facie case will usually be found sufficient to meet the complainant’s overall burden of proof. Id.

Paragraph 4(c) of the Policy provides that a respondent may demonstrate rights or legitimate interests in a domain name by showing one of the following circumstances:

(i) before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or

(ii) Respondent has been commonly known by the Domain Names, even if Respondent has acquired no trademark or service mark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Complainant can make out a prima facie case by negating such circumstances. See Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364.

Complainant has shown that Respondent is not using the Domain Names in connection with a bona fide offering of goods or services. The evidence of record shows Respondent not to be using the Domain Names for any purposes, except possibly to offer the Domain Names themselves for sale. This is not a bona fide offering of goods or services in the circumstances of this case. Respondent has not come forward to offer evidence that he has in fact used or prepared to use the Domain Names to offer any goods or services whatsoever.

Similarly, Complainant’s evidence negates that Respondent is making a legitimate noncommercial or fair use of the Domain Names. Respondent is merely parking the Domain Names and possibly trying to sell them, presumably to Complainant or a competitor in the industry. Respondent does nothing to refute Complainant’s assertions in this regard.

There is no evidence that Respondent has ever been known by any of the Domain Names.

Respondent apparently did obtain registration of trademarks for KLEAN-PREP and KLEAN PREP in Australia in July and August, 2013, respectively. However, the mere registration of a trademark in one country is not sufficient to establish rights or legitimate interests in a domain name under the Policy against a senior mark owner using that mark in other countries in connection with legitimate goods or services. This is especially true where, as here, Respondent’s junior trademark is not shown to be used in connection with any legitimate offering of goods or services in the jurisdiction where the mark is registered and appears to have been obtained merely to try to circumvent application of the Policy. See, Madonna Ciccone p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847.

Complainant has established that Respondent does not possess rights or legitimate interests in the Domain Names within the meaning of the Policy.

C. Registered and Used in Bad Faith

Complainant must show also that Respondent registered and is using the Domain Names in bad faith.

Previous UDRP panels have found that where a domain name is so obviously connected with a well-known trademark its very use by someone with no connection to the trademark suggests opportunistic bad faith. LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494, Sanofi-Aventis v. Nevis Domains LLC. WIPO Case No. D2006-0303. In this case, where Respondent applied to register and obtained registration of a trademark in Australia that was identical to Complainant’s trademark, long registered in many other countries around the world, then registered the Domain Names on the same day that he obtained the Australian trademark registration, it is not reasonable to see anything other than bad faith in the registration of Domain Names based essentially on someone else’s established trademark. The inference of bad faith registration is further supported by the fact that this fits a pattern of activity for Respondent in that it has, as Complainant has shown, registered a number of other domain names based on other companies’ trademarks for colonoscopy preparation products.

Respondent apparently has not used the Domain Names in connection with any website. This case thus becomes one principally of passive holding. Passive holding does not in itself prevent a finding of bad faith (see WIPO Overview 2.0, paragraph 3.2). The Panel must consider all circumstances of the case to determine whether they amount to Respondent acting in bad faith. Here, the Panel considers it most relevant that:

- Complainant’s trademark was known to Respondent, because Respondent sought and obtained registration in Australia of the same trademark for the same class of goods (International Class 5, pharmaceutical products);

- Respondent registered the Domain Names based on the Australian trademark, but there is no evidence of record that Respondent has ever used the Australian trademark in connection with the manufacture or sale of pharmaceutical products or, more specifically, colonoscopy preparation products in Australia or anywhere else;

- In view of Complainant’s trademark and the confusion that would likely result from the Domain Names, it is not possible to conceive of any plausible actual or contemplated active use of the Domain Names that would not be illegitimate;

- The Domain Name registrations were in bad faith, as considered above;

- Respondent has engaged in a pattern of registering domain names based closely on the trademarks of companies engaged in producing and selling colonoscopy preparation products (See Policy, paragraph 4(b)(ii));

- There is no evidence that Respondent has any legitimate connection to the production or sale of colonoscopy preparation products of any of the companies for which Respondent registered multiple confusingly similar domain names;

- Respondent’s conduct prevents legitimate trademark owners from registering domain names they might wish to use in connection with their businesses;

- There exists a reasonable inference is that the purpose of Respondent’s conduct is create the possibility of commercial gain for Respondent through resale of the domain names, particularly to the trademark owners (See Policy, Paragraph 4(b)(i));

- Respondent failed or refused to submit a Response to the Complaint in this proceeding from which it can be inferred that Respondent did not have legitimate defenses to the Complaint.

The Panel considers that the foregoing facts and circumstances in this case indicate bad faith in the passive holding of the Domain Names. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273; TV Azteca, S.A.B. de C.V. v. Spiral Matrix, WIPO Case No. D2011-0008.

The Panel does not consider that Respondent has made an actual offer to sell the Domain Names to Complainant or anyone else. Complainant’s evidence on this point fails in that the Domain Names, and the domain names of other colonoscopy pharmaceutical producers, appearing on the Registrar's website appear to be offered only on a “back order” basis which the website indicates means they are offered for sale only if those domains expire or become available. The prices at which those domains are offered on back order are expressed in Colombian Pesos in amounts that appear to be roughly equivalent to the Registrar’s standard prices in other currencies for the same TLDs.

Based on the facts and circumstances of passive holding described above, the Panel considers that Respondent both registered and is using the Domain Names in bad faith. Complainant has, therefore, established the third and final element of its case.

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 Names, <cleanprep.co>, <cleanprep.net> and <kleanprep.co> be transferred to Complainant.

John R. Keys, Jr.
Sole Panelist
Date: April 2, 2014