WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Arena Pharmaceuticals GmbH v. Alen Mironassyan

Case No. D2014-1776

1. The Parties

The Complainant is Arena Pharmaceuticals GmbH of Zofingen, Switzerland, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America (“US”).

The Respondent is Alen Mironassyan of Bordeaux, France.

2. The Domain Name and Registrar

The disputed domain name <buybelviqnorx.com> (the “Domain Name”) is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2014. On October 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 13, 2014, 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.

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 October 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 10, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 11, 2014.

The Center appointed José Pio Tamassia Santos as the sole panelist in this matter on November 25, 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

4.1. The Complainant is a biopharmaceutical company focused on discovering, developing and commercializing novel drugs that target G protein-coupled receptors (GPCRs) to address unmet medical needs. The Complainant’s stock is publicly traded on the NASDAQ stock exchange under the symbol “ARNA.”

4.2. One of Complainant’s internally discovered drugs is a weight-loss medication sold under the BELVIQ trademark for use as an adjunct to a reduced-calorie diet and increased physical activity for chronic weight management in certain adult patients. BELVIQ is available by prescription in the US. The Complainant has granted exclusive marketing and distribution rights for BELVIQ to Eisai Inc. and Eisai Co., Ltd. (“Eisai”) for most territories worldwide; to Ildong Pharmaceutical Co., Ltd. for the Republic of Korea; to CY Biotech Company Limited for Taiwan Province of China; and to Teva Pharmaceutical Industries Ltd.’s local Israeli subsidiary, Abic Marketing Limited, for Israel. The Complainant has secured composition of matter patents for BELVIQ in most major jurisdictions.

4.3. In this scenario, the Complainant first registered the BELVIQ trademark in July 2011 in Switzerland,

and secured its first US Trademark registration for BELVIQ (US Reg. No. 4,080,253) in January 2012 for “[p]harmaceutical preparations for human use, namely, pharmaceutical preparations to treat or prevent obesity; pharmaceutical preparations for weight management, weight loss and the maintenance of weight loss” in Class 5. The Complainant also secured Community Trademark Registration No. 10224905 in January 2012 (which covers France), and French Trademark Registration No. 123918806 in May 2012. The Complainant has since secured additional registrations and pending applications for the BELVIQ trademark in the United States and more than 100 other jurisdictions around the world.

4.4. The Complainant’s marketing and distribution partner Eisai advertises and promotes BELVIQ extensively in the US, including through national print and television advertising campaigns. A search for the term “BELVIQ” in Google returns 1,140,000 hits in 0.12 seconds, with all of the hits from at least the first ten pages referring to Complainant’s BELVIQ trademark. Through Complainant’s and Eisai’s significant expenditure of time, money and effort, the BELVIQ trademark has become well-known in the United States and elsewhere, and represents substantial goodwill.

5. Parties’ Contentions

A. Complainant

5.1. The Complainant asserts that the Respondent registered the Domain Name on March 24, 2013 - more than a year after the BELVIQ trademark was first registered with the United States Patent and Trademark Office (USPTO) by the Complainant.

5.2. The Complainant contends that the Respondent is using the Domain Name in connection with a website that purports to offer information about BELVIQ, but is really nothing more than a link to the website of a

purported weight-loss product called “Phentemine 375” or “Phen375” ( “www.phen375.com/”). In fact, the Respondent could not legally sell the Complainant’s BELVIQ weight-loss medication, as BELVIQ is only available by prescription and is a federally controlled substance (CIV) under US law.

5.3. Thus the “www.phen375.com” website claims to sell “Prescription Strength, Pharmaceutically Produced Diet Pills” manufactured in “FDA pharmaceutical registered labs. This guarantees to deliver the strongest and purest product humanly possible to produce.” Despite this claim, the “www.phen375.com” website also includes the following disclaimer:

“These statements have not been evaluated by the Food and Drug Administration. These products are not intended to diagnose, treat, cure or prevent any disease.”

Further, an image of a bottle on the “www.phen375.com” website describes the product as an “[a]appetite suppressant dietary supplement” rather than a prescription drug.

5.4. Based on the above, the Complainant states that it is clear that the Respondent is using the goodwill associated with the Complainant’s BELVIQ trademark to drive traffic to its website, which in turn, directs Internet users to the “www.phen375.com” website to sell a competing weight-loss product. So the use of the Domain Name for this purpose is not a legitimate use of the Complainant’s trademark. Such use clearly demonstrates the Respondent’s bad faith use and registration of the Domain Name.

5.5. Moreover the Complainant alleges that it has no relationship that would give rise to any license, permission or other right by which the Respondent could own or use any domain name incorporating or confusingly similar to the BELVIQ trademark. Upon information and belief, the Domain Name is not, nor could it be contended to be, the name or nickname of the Respondent or in any other way identified with or related to a legitimate interest of the Respondent. There is no indication that the Respondent ever has been known by the Domain Name, which is further evidence that the Respondent has no rights or legitimate interests in it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Paragraph 4(a) of the Policy, as affected by the Rules and the Supplemental Rules, provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (the Complainant) proves each of the following elements:

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

(ii) the registrant (the Respondent) has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

6.2. The Complainant has the burden of proof, by a preponderance of the evidence, in respect to each element in paragraph 4(a) of the Policy.

6.3. The Respondent, having failed to respond in the present proceeding, is in default, and in accordance with paragraph 14(b) of the Rules, “the panel shall draw such inferences […] as it considers appropriate”

A. Identical or Confusingly Similar

6.4. The Complainant has exclusive rights in the mark BELVIQ and has provided sufficient evidence.

6.5. The addition of the generic Top-Level Domain (gTLD) “.com”. which is required for registration of a domain name, typically has no distinguishing capacity in the context of the domain name and does not alter the value of the trademark represented in the domain name (Telecom Personal v. Namezero.com Inc., WIPO Case No. D2001–0015; Nokia Corporation v. Private, WIPO Case No. D2000-1271).

6.6. Furthermore, the addition of the generic term “buy” does not distinguish the Domain Name from the BELVIQ trademark and is not sufficient to avoid confusion between the Domain Name and the trademark. Even the addition of “norx” as a suffix to the BELVIQ trademark, similarly does nothing to distinguish the Domain Name from the BELVIQ trademark.

6.7. The website operating at the Domain Name purports to provide information about BELVIQ, its benefits, and side effects, which is further evidence that the Domain Name is intended to relate to the Complainant’s BELVIQ trademark and weight-loss medication. As such, consumers are likely to be left with the false impression that the website to which Respondent’s Domain Name redirects is somehow affiliated with or endorsed by the Complainant. The first element of the Policy, therefore, has been met.

B. Rights or Legitimate Interests

6.8. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name for the following reasons:

6.9. The Complainant has prior rights in the trademark BELVIQ, which precedes the Respondent’s registration of the Domain Name.

6.10. The Respondent cannot demonstrate or establish any legitimate interests in the Domain Name. Rather, by registering the Domain Name, The Respondent seeks to exploit for itself the renown of the Complainant’s well-known BELVIQ trademark.

6.11. The Complainant and the Respondent have no relationship that would give rise to any license, permission or other right by which the Respondent could own or use any domain name incorporating or confusingly similar to the BELVIQ trademark.

6.12. There is no indication that the Respondent has ever been known by the Domain Name, which is further evidence that the Respondent has no rights or legitimate interests in it.

6.13. The Domain Name was registered on March 24, 2013 – more than a year after the BELVIQ trademark was first registered with the USPTO by the Complainant. Given that the Complainant adopted and obtained exclusive rights in the BELVIQ trademark before Respondent’s registration of the Domain Name, the burden is on the Respondent to establish any rights or legitimate interests in the Domain Name.

6.14. The links at the Respondent’s website redirect visitors to the “www.phen375.com” website, which sells a product that competes with the Complainant’s BELVIQ weight-loss medication.

6.15. Accordingly, when Internet users attempt to visit the Respondent’s website at the Domain Name, consumers will reasonably but mistakenly believe that the Respondent’s website is somehow related to or approved by the Complainant, when that is not the case.

6.16. Therefore, for all the above reasons, the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

6.17. Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:”

(i) circumstances indicating that the respondent has registered or has 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) that the respondent has 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 the respondent has engaged in a pattern of such conduct; or

(iii) that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website 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 the respondent’s website or location or of a product or service on the respondent’s website or location.

6.18. The Respondent has no connection with the Complainant or its product or with any other legitimate use of its BELVIQ trademark.

6.19. Given the wide spread registration of the BELVIQ trademark, the sale of BELVIQ in the US, and the significant promotion of the BELVIQ brand – and the fact that the Domain Name is so obviously connected with Complainant’s well-known mark – the Panel finds that the Respondent registered the Domain Name in bad faith may be presumed.

6.20. The Respondent’s website and the website to which it links fail to disclaim any affiliation with the Complainant. There is no mention of the fact that the Respondent’s website is unaffiliated with the Complainant or that the information at the site has not been endorsed or approved by the Complainant. This is further evidence that the Respondent is banking on the established goodwill and consumer recognition of the BELVIQ trademark to drive traffic to its site to sell similar and related products, which, in turn, is evidence of bad faith.

6.21. The Panel also agrees that the use of the Complainant’s entire trademark, without any prior consent, in a confusingly similar domain name can support an inference of bad faith. Cellular One Group v. Paul Brien, WIPO Case No. D2000–0028.

6.22. Under these circumstances, the Panel finds that the Complainant has presented evidence to satisfy its burden of proof as to whether the Respondent has registered and is using the Domain Name in bad faith.

6.23. The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.

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 <buybelviqnorx.com> be transferred to the Complainant.

José Pio Tamassia Santos
Sole Panelist
Date: December 8, 2014