WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pfizer Inc. v. Ubrokerage inc
Case No. D2015-1927
1. The Parties
Complainant is Pfizer Inc. of New York, New York, United States of America ("United States"), represented by Kaye Scholer, LLP, United States.
Respondent is Ubrokerage inc of Miami, Florida, United States, self-represented.
2. The Domain Name and Registrar
The disputed domain name <sayanapress.com> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 28, 2015. On October 28, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 29, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceeding commenced on November 11, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2015. The Response was filed with the Center on December 2, 2015. On December 8, 2015, the Center received a Supplemental Filing from Complainant. The Center acknowledged its receipt, and informed the parties that it would be forwarded to the Panel, once appointed, who would have the discretion to accept or reject it. On December 14, 2015, Respondent sent an email to the Center.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on December 15, 2015. 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.
Supplemental Filings: The Rules contain no express provision for supplemental filings by either party, except in response to a deficiency notification or if requested by the Center or the panel. Paragraphs 10 and 12 of the Rules in effect grant the panel sole discretion to determine the admissibility of supplemental filings received from either party. Here, the Panel decides in view of all the facts and circumstances that it will admit the supplemental filing dated December 8, 2015 received from Complainant and the email dated December 14, 2015 received from Respondent.
4. Factual Background
Complainant is one of the world's largest pharmaceutical manufacturers and sellers, maintaining global operations in more than 150 countries. Complainant discovers, develops, manufactures and markets leading prescriptions medicines for humans, as well as many of the world's best-known consumer products. Complainant and its corporate affiliates own over 100 trademark registrations worldwide for the mark SAYANA, including in the United Kingdom of Great Britain and Northern Ireland ("United Kingdom") (Reg. No. 2,279,344, issued August 31, 2001); the European Union (Reg. No. CTM002359370, issued June 13, 2003); Switzerland (Reg. No. 496,384, issued March 31, 2002); India (Reg. No. 1,078,617, issued March 7, 2005); China (Reg. No. 3,089,035, issued April 14, 2003); and Japan (Reg. No. 4588119, issued July 19, 2002).
Complainant uses its registered SAYANA mark, as well as its common law mark, SAYANA PRESS, in numerous countries throughout the world in connection with its injectable contraceptive, which provides women with three months of contraceptive protection per dose. Complainant's SAYANA and SAYANA PRESS marks have been promoted in the United Kingdom, the European Union, and other countries throughout the world. Complainant's Sayana Press product has been prescribed for and used by 20,000 to 30,000 women in the United Kingdom, the Netherlands and Central America, as well as in sub-Saharan Africa.
Respondent registered the Domain Name on December 8, 2014.
5. Parties' Contentions
(i) Identical or confusingly similar
Complainant states that the SAYANA and SAYANA PRESS trademarks have received widespread publicity, both at the time of approval of the Sayana Press product for use in the European Union in 2011, and in the past year due to a partnership that Complainant entered into in November 2014 with the Bill & Melinda Gates Foundation and the Children's Investment Fund Foundation to help broaden access to the Sayana Press product for women in 69 of the world's poorest countries. The agreement is supported by a consortium of private sector donors and aid organizations, including United Kingdom's Department for International Development (DFID), the United Nations Population Fund (UNFPA) and the United States Agency for International Development (USAID).
Complainant contends that by virtue of the extensive sales and advertising in numerous jurisdictions throughout the world of products and services under the SAYANA and SAYANA PRESS marks, as well as the extensive publicity surrounding Complainant's Sayana Press product, the marks have become and are well-known and distinctive.
Complainant asserts that just a few weeks after Complainant's Sayana Press partnership was announced, Respondent registered the Domain Name in an effort to divert persons interested in learning about Complainant's Sayana Press product and to trade unfairly on the good will and reputation of Complainant's SAYANA and SAYANA PRESS marks. Complainant claims that Respondent has no rights to or legitimate interests in these marks, and has used the Domain Name until recently for a webpage designed to generate click-through revenues and profit from consumer confusion, and also has advertised the Domain Name for sale. When Complainant's agent inquired about the online offer to sell the Domain Name, Respondent solicited a purchase price from Complainant's agent, seeking payment in an unspecified amount in excess of USD 3,500. Within a few days after learning that Complainant claimed rights in its SAYANA and SAYANA PRESS marks and was interested in the Domain Name, Respondent set it to resolve to a blank page, effectively warehousing the Domain Name in an attempt to hide the previous use of the Domain Name for the for-profit click-through links.
Complainant asserts that Respondent registered the Domain Name without authorization on December 8, 2014, seeking to capitalize on the good will of Complainant's pre-existing SAYANA and SAYANA PRESS marks, and recognizing the importance of the Internet as a means of communication between Complainant and the public. The Domain Name incorporates the SAYANA and SAYANA PRESS marks, appends the common term "press" to Complainant's registered SAYANA mark, and is so clearly similar to Complainant's marks that it is likely to cause confusion among Complainant's customers and the public.
(ii) Rights or legitimate interests
Complainant states that it is not affiliated with Respondent and has never authorized Respondent to register or use the Domain Name or the SAYANA and SAYANA PRESS marks. Complainant claims Respondent has no rights or legitimate interests in these marks or in the Domain Name. Complainant states that, upon information and belief, Respondent is not commonly known by the names "Sayana", "Sayana Press" or any variations.
Complainant's adoption and registration of the mark SAYANA precedes by more than 13 years Respondent's registration of the Domain Name on December 8, 2014. Complainant has sold products under the mark SAYANA PRESS since at least 2011, well before registration of the Domain Name. Moreover, given the widespread publicity of the SAYANA and SAYANA PRESS marks, Complainant states it is indisputable that Respondent had knowledge of Complainant's marks prior to the registration of the Domain Name.
Complainant contends that Respondent cannot demonstrate any rights or legitimate interests in the Domain Name. Respondent is not using it in connection with a bona fide offering of goods or services within the meaning of the Policy, paragraph 4(c)(i). To the contrary, it is apparent that Respondent has intentionally registered the Domain Name for the purpose of making illegitimate or unfair use of Complainant's marks by misleading Internet users who are seeking information about Complainant's Sayana Press product. Respondent's use to-date of the Domain Name confirms that Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain. Rather, Respondent initially used the Domain Name to profit from customer confusion by generating click-through payments, whereby Respondent generates revenue by enticing visitors, attracted by Complainant's marks, to click sponsored links to third-party websites, who compensate Respondent for the web traffic.
After Respondent learned that Complainant was aware of the Domain Name registration and that Complainant claimed rights in SAYANA PRESS, Respondent then redirected the Domain Name to lead to a blank page. Complainant argues that UDRP panels have repeatedly held that the passive holding or warehousing of a domain name that is confusingly similar to a mark is not a legitimate or noncommercial fair use.
(iii) Registered and used in bad faith
Complainant argues that, as an initial matter, Respondent's lack of rights or legitimate interests in the use of the Domain Name renders the issue of bad faith registration unnecessary to be considered. Complainant cites UDRP cases where the panels determined that the Policy does not require the complainant to await actual harmful or infringing use in order to seek a transfer based on the respondent's probable bad faith in registering and holding the domain names with no plausible legitimate purpose.
Complainant further contends that Respondent's bad faith is confirmed by facts showing that:
(a) Respondent registered the Domain Name for the purpose of selling it to Complainant for a substantial profit;
(b) Respondent has used the Domain Name to link to a website to generate click-through revenue;
(c) Respondent registered the Domain Name with at least constructive knowledge of Complainant's more than 100 registrations of the SAYANA mark, and did so only a few weeks after Complainant announced its partnership with the Bill & Melinda Gates Foundation and the Children's Investment Fund Foundation to help broaden access to the Sayana Press product;
(d) only days after being contacted by Complainant's agent in response to Respondent's website's invitation to "make an offer" for the Domain Name, Respondent redirected the Domain Name to point to a blank page, in an apparent effort to hide its previous use of it for click-through revenue; and
(e) Respondent has provided false information in its registration of the Domain Name, namely, a non-existent fictitious corporation.
Complainant asserts that the UDRP provides that registering or acquiring a domain name primarily for the purpose of selling, renting, or otherwise transferring it to a complainant, who is the owner of a corresponding trademark, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name, is evidence of bad faith. Here, Respondent – who has never used the Domain Name in connection with the bona fide offering of goods or services – has offered it for sale, and when Complainant's agent inquired about that proposal, sought a price of more than USD 3,500 for transfer of the Domain Name to Complainant's agent. The fact that Respondent offered to sell the Domain Name to Complainant is evidence that Respondent registered and used it in bad faith pursuant to the Policy, paragraph 4(b)(i).
In addition, Complainant contends that Respondent has registered and used the Domain Name to intentionally attract Internet users to a website for commercial gain by creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation, or endorsement of Respondent's site or of a product or service on Respondent's site. Numerous UDRP decisions hold that the use of a domain name that is deceptively similar to a trademark to obtain click-through revenue is found to be bad faith use. Here, Respondent registered and used the Domain Name intentionally to misdirect and divert customers looking for information about Complainant's Sayana Press product to a website that generates click-through fees. Respondent used the Domain Name in this manner until recently, when it was contacted by Complainant's agent.
Complainant also argues that Respondent was aware of the valuable goodwill and reputation represented by Complainant's SAYANA and SAYANA PRESS marks, given its registration of the Domain Name only weeks after the widely publicized announcement of Complainant's agreement with the Bill & Melinda Gates Foundation and the Children's Investment Fund Foundation to expand the availability of the Sayana Press product. By virtue of Complainant's registration of the SAYANA mark in numerous jurisdictions, Respondent had constructive knowledge of Complainant's rights in the marks at the time the Domain Name was registered. After Complainant's agent inquired about Respondent's offer to sell the Domain Name and advised Respondent that Complainant had trademark rights in SAYANA PRESS, Respondent then redirected the Domain Name to point to a blank page, apparently hide its prior use of the Domain Name to generate click-through revenue.
Complainant states that Respondent has provided false information in its Domain Name registration by identifying itself as the fictitious, non-existent corporation, "Ubrokerage inc", in Miami, Florida. Upon information and belief, Complainant asserts there is no such business entity registered with the state of Florida, and such use of a false name in its registration information is further evidence of Respondent's bad faith.
In sum, Respondent's actions are intentional, willful and in bad faith, and were committed with full knowledge of the ownership by Complainant of the SAYANA and SAYANA PRESS trademarks.
Supplemental filing: Complainant claims that Respondent does not dispute that the listed registrant of the Domain Name, "Ubrokerage inc", is a fictitious name for a non-existent corporate entity. Nonetheless, Respondent signed the Response with the name of this non-existent entity and with no means of identifying any individual involved in the Response. Under the Rules, Respondent is required to certify "that the information contained in this Response is to the best of Respondent's knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument." Given that Ubrokerage inc is a non-existent entity and no individual or other name is identified as making the foregoing certification, Complainant submits that the Response and purported evidence submitted with it have not been properly certified as required by the Rules, and should be disregarded. Further, in its Response Respondent has not only continued to provide this false corporate information, but also has supplied a false phone number "30258710xxx," an eleven-digit phone number that is not a United States telephone number or any other recognizable telephone number.
Complainant asserts that in the Complaint it made a prima facie showing that Respondent has no rights or legitimate interests in the SAYANA or SAYANA PRESS marks, or in the Domain Name. It is undisputed that Complainant adopted and registered the mark SAYANA more than 13 years before Respondent's registration of the Domain Name, and that Complainant has sold products under the mark SAYANA PRESS since at least 2011, three years before registration of the Domain Name. Complainant states that Respondent does not assert that it has made bona fide use of the Domain Name; rather, Respondent relies on two principal arguments, both of which are unsupported by reliable evidence and without merit: that it allegedly is known as "Sayana Press" on Twitter, and that it is in the process of developing a "Sayana Press" website that purportedly will be a blog about women's health issues.
Complainant states that Respondent's "Sayana Press" Twitter account does not establish any right or legitimate interest. Respondent has provided no evidence of when it registered this account (and no evidence of the Pinterest account that is also mentioned), and it presumably registered it well after Complainant established rights in its SAYANA and SAYANA PRESS marks. Registering a Twitter account in conjunction with cybersquatting does not give rise to any legitimate rights in a name. As for the assertion that Respondent has numerous followers on Twitter, Complainant states that those followers likely believe that the account is run by the maker of the well-known Sayana Press product, i.e., Complainant. Having now become aware of Respondent's Twitter account, Complainant has filed a complaint with Twitter regarding the additional violation of Complainant's rights in its SAYANA and SAYANA PRESS marks.
Complainant observes that the Response also states that Respondent plans to use the Domain Name for a blog allegedly concerning women's health issues. This argument fails for several reasons. First, it is undisputed that Respondent has not yet made any legitimate use of the Domain Name. Prior to Complainant's agent contacting Respondent, the Domain Name was used for a parking page that carried pay-per-click advertising and an invitation to make an offer to purchase the Domain Name. After Complainant's agent contacted Respondent, Respondent changed the Domain Name to resolve to a blank page, effectively warehousing it. Second, Complainant contends that even assuming Respondent does intend to use the Domain Name for a women's health blog – and, as set forth below, the alleged blog is clearly pretextual – that planned use would not give rise to any right or legitimate interest on the part of Respondent. A blog about women's health issues would be highly related to the women's contraceptive products on which Complainant uses the SAYANA and SAYANA PRESS marks, and the public would think that this blog called Sayana Press is published by the maker of the Sayana Press product. Moreover, Respondent's alleged use would be commercial in nature. Even crediting the draft blog pages supplied by Respondent, the draft blog has spaces marked for paid advertisements ("ADVERTIZE [sic] HERE"), as well as pull-down menu items marked "shop". It is well settled that use of a domain name for a publishing site that carries commercial advertising is not a legitimate use under the Policy. Third, Respondent has provided no cognizable evidence of the development of its purported blog. Not only are Respondent's claims of preparations for use unsupported by any affidavit, but the Response is signed by a non-existent entity, with no individual or other legal entity authenticating the contents of the submission or the truthfulness of any statements. For this reason alone, the proffered evidence of the alleged blog and Respondent's alleged plans should be rejected. Fourth, even putting aside all of above points, Respondent's claimed blog in development is pretextual. Respondent has not yet launched a blog, and there is no evidence that Respondent took any steps to create this claimed blog prior to being contacted by Complainant's agent or prior to this proceeding being filed. To the contrary, the "Current Development Screenshots" submitted by Respondent bear the hallmarks of a pretextual website created after Respondent was contacted by Complainant.
Complainant's agent first contacted Respondent on October 20, 2015 in response to the solicitation on Respondent's website to "make an offer" for the Domain Name. The alleged blog development pages include dates after Complainant's agent communicated with Respondent and even after the filing of the Complaint, and therefore establish that the website mockup was created after Respondent had notice of this dispute. Confirming their pretextual nature, the alleged development pages appear to consist of nothing but basic graphic design, gibberish text, and text and images that Respondent has copied from other websites, many from the Today Show's website at "www.today.com". This evidence suggests that shortly after being contacted by Complainant's agent, Respondent created some basic webpages and populated them with images and text that Respondent copied from the Today Show's website and assorted other sites (presumably without permission). This conduct does not show any demonstrable preparations to use the Domain Name for a legitimate purpose prior to receiving notice of this dispute.
Finally, Complainant observes that Respondent does not dispute that Complainant owns over 100 trademark registrations around the world for the SAYANA mark, nor does Respondent dispute that Complainant's SAYANA and SAYANA PRESS marks have been widely used and publicized, including in connection with products prescribed for tens of thousands of women, and that the Sayana Press product (and partnership with the Bill & Melinda Gates Foundation and the Children's Investment Fund Foundation) was widely publicized. Respondent also does not dispute that the Domain Name is identical or confusingly similar to Complainant's marks. Rather than dispute this evidence, Complainant states that Respondent makes the meritless argument that Complainant does not have a trademark for SAYANA or SAYANA PRESS in the United States. However, Complainant contends that it is well settled that trademark rights in a UDRP proceeding do not depend on rights in any particular country; registered or unregistered rights anywhere in the world suffice to support a UDRP claim. Moreover, that Complainant does not assert trademark rights in the United States is not relevant because it is not clear that Respondent, which remains anonymous behind false contact information, is located in the United States. Nor is it relevant that, according to Respondent, it had no knowledge of any common law or registered trademarks. Complainant argues that registration of a domain name that is confusingly similar to another's mark despite actual or constructive knowledge of the mark holder's rights is tantamount to bad faith registration and use pursuant to Policy, paragraph 4(a)(iii). Moreover, Complainant states that Respondent admits it is aware of the abandonment of Complainant's United States application for the SAYANA mark, suggesting that Respondent elected to be willfully blind as to Complainant's trademark rights in other jurisdictions.
(i) Identical or confusingly similar
Respondent states that while Complainant emphasizes use of the term "Sayana Press" in the European Union where Complainant owns a trademark, Complainant has not received approval to sell its Sayana Press product in the United States, where both Respondent and Complainant have agreed on mutual jurisdiction. Respondent states that the United States Patent and Trademark Office website shows that Complainant abandoned its trademark for the term "Sayana" in the United States in 2005. Respondent believes that this is the basis for Complainant's offer of USD 3,500 for the Domain Name. A first offer was also made for USD 1,500, but Respondent states that it refused both offers, while advising Complainant that Respondent was engaged in ongoing development for the Domain Name. Respondent argues that the offers are evidence that Complainant was not confident in its abandoned rights for the SAYANA mark in the United States and proceeded to hire a domain acquisition company to obtain the Domain Name. Complainant's agent said that Complainant had rights in the term "Sayana Press", but did not provide evidence to support this claim. Respondent states that if it believed asserted claims from third parties of trademark rights without evidence, it would lose to false claims all of its domains names reserved for development.
Respondent argues that Complainant has now opted to abuse the UDRP proceedings to acquire the Domain Name, and is trying to use Complainant's track record of winning other UDRP cases (where the respondents were infringing on other well-known marks) as a basis that Complainant should be entitled to the Domain Name, and undermine Respondent's already established rights and interests in it. Respondent states that it had no knowledge of any pertinent common law or registered trademarks and Complainant has provided no evidence to prove otherwise. Respondent states that Complainant has also neglected to provide any sales data concerning the Sayana Press product, which makes Complainant's statements empty and unproven.
(ii) Rights or legitimate interests
Respondent states that it has both a Pinterest and Twitter account, where it plans to post tweets and pins about its newest blog posts as they are published on its website linked to the Domain Name. Neither account has been used for any purpose that would constitute bad faith in regards to Complainant's products or services. Respondent states that it currently has 848 followers on Twitter and thus, it can be assumed that Respondent is already known by the name "Sayana Press" via social media. Respondent states that there has never been a link to Complainant's products or company name on any media controlled by Respondent under the name Sayana Press. Although Complainant has trademarks registered in other parts of the world, Respondent argues that Complainant cannot assume Respondent was aware of this information. Complainant cannot know Respondent's state of mind when Respondent registered the Domain Name. Any widespread publicity concerning the SAYANA mark was in countries outside the United States, and up until this year the Sayana Press has not been approved to be sold in the United States.
Respondent states that it has been developing a website for the Domain Name. Respondent indicates that it considered many designs over the past year and finally settled on a design that can be observed on its Twitter page. Respondent claims it showed this work to Complainant, but Complainant responded with this UDRP case. According to Respondent, this demonstrates Complainant's bad faith when it made false statements about no rights or legitimate interests on the part of Respondent, when this was already demonstrated prior to this dispute.
Respondent responds to Complainant's claim that Respondent changed its webpage after Complainant's trademark rights were raised by Complainant: according to Respondent, Complainant used an agent and was not forthcoming about its trademarks, instead hiding its identity. Respondent urges that Complainant has shown bad faith by trying to convince the Panel that Complainant made its trademark rights clear to Respondent, which is not true. Respondent claims that Complainant's agent made multiple statements that its client wished to remain anonymous and did not provide any evidence of trademark rights. Simple claims of trademark rights cannot be sufficient in attempting to establish rights in a mark, especially in a domain name negotiations.
(iii) Registered and used in bad faith
Respondent contends that Complainant used an article (concerning its partnership with the Bill & Melinda Gates Foundation) that was published close in time to the registration date of the Domain Name, in an attempt to establish that Respondent registered the Domain Name shortly after the article was published. However, Respondent provides evidence that the partnership had been ongoing for a few years prior to registration of the Domain Name. Respondent argues this is evidence of bad faith and abuse of these proceedings by Complainant. With Complainant's Sayana Press product being approved only in the European Union, Respondent claims users would probably visit a domain name with an extension of ".eu" or "co.uk". Complainant has already registered the "co.uk" domain name corresponding to the words "Sayana Press" in November 2012. Respondent claims this is because Complainant's Sayana Press products are being heavily marketed only in the European Union. Further, Complainant's withdrawal of its trademark in the United States in 2005 for the term "Sayana" shows that there is still limited awareness of the Sayana Press product in certain jurisdictions.
With respect to Complainant's claim that the Domain Name was used to generate advertising revenue through sponsored links, Respondent states that it had not signed-up to receive any payments from the domain management platform it was using, and has not received any revenue for its domain names currently being managed by this platform. Respondent contends that Complainant merely speculated that Respondent was trying to confuse users and make a profit through pay-per-click advertising, but this is not the case. Respondent states it has requested proof that it received no revenue from the domain management platform, but received no response. Even so, Complainant has provided no evidence that Respondent was profiting from Complainant's claimed rights in the SAYANA PRESS mark. Respondent also indicates that the domain management platform it was using for the Domain Name offers a generic page where an offer to buy a domain name can be made by users, but this does not demonstrate that Respondent acquired the Domain Name for such reasons. The "Make an Offer" button forwards to a contact form where users can either submit an offer for consideration by owners or send a message concerning the domain name. Respondent states this form is merely a place for open dialogue and not inherently a "for sale" form.
Respondent states the Domain Name was not in use prior to this dispute, as Respondent is developing a web service that is completely separate from Complainant's foreign trademarks. Respondent has submitted development webpages for an "all in one health based website for women" named "Sayana Press", for which, according to Respondent, the Domain Name will be used. Respondent states there is no intended connection to Complainant's goods and services, and any user visiting the site will immediately know this. Further, Complainant's Sayana Press product is a niche product only for women and is currently not approved for sale in the United States.
Respondent claims that there are many different ways to use the term "press", which can be applied to hundreds of generic words to create a completely new meaning or refer to different services. Further, there are many companies using the term "Sayana" as a mark for different services, which shows that this is a generic name, as well as a name used by individuals. Sayana can be used as a first name and, in some instances, as a surname.
Respondent states that while Complainant claims Respondent has requested amounts exceeding out of pocket costs, Complainant has provided no evidence in support this point. In addition, in response to Complainant's claims of Respondent using a fictitious business name, Respondent states that it owns the domain name <ubrokerage.com>, which was recently acquired and is used in Respondent's email address. Respondent is currently attempting to grow its business in the domain name management and web development sector. Respondent contends that due to the false allegations and misleading statements made by Complainant in this dispute, Complainant should be charged with reverse domain name hijacking (RDNH).
Additional submission: Respondent states that Complainant's supplemental filing raises points that contribute little substance in proving Complainant's case and Complainant is afraid of the extensive Response filed by Respondent, which is why Complainant filed a supplemental submission attempting to persuade the Panel not to consider Respondent's Response. Respondent asserts that Complainant has failed to provide any evidence of bad faith. There was no offer to sell the Domain Name and no evidence to prove this, yet Complainant attempts to persuade the Panel otherwise. Respondent requests that the Panel deny Complainant's attempt to hijack the Domain Name.
6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel must first determine whether the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights. Complainant has submitted evidence to show that it owns over 100 trademark registrations in countries around the world for its SAYANA trademark, and has also promoted and sold its Sayana Press product in numerous countries, thereby establishing common law rights in its SAYANA PRESS mark in certain common law countries and unregistered rights under the Policy.
Respondent emphasizes that Complainant has not registered its SAYANA or SAYANA PRESS marks in the United States, and that Complainant's Sayana Press product is not approved for sale in the United States. The Panel makes no finding on whether Complainant has established common law rights in its SAYANA or SAYANA PRESS marks in the United States. The Panel confirms, however, that trademark rights in a UDRP case do not depend on rights established in any particular country; registered or unregistered rights anywhere in the world suffice to support a UDRP claim. See Al Ghurair Group LLC v. Ghurair Group, WIPO Case No. D2004-0532 ("the Policy makes no distinction between localised and wide spread trademark rights… It is thus sufficient that the Complainant establish that, at the time of filing the complaint, it has some rights in a trademark anywhere in the world."); WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (WIPO Overview 2.0), paragraph 1.1 ("If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The location of the trademark, its date of registration (or first use), and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP").
The Panel determines that the Domain Name is identical to Complainant's unregistered SAYANA PRESS mark, and is confusingly similar to Complainant's registered SAYANA mark. Complainant's registered SAYANA mark is distinctive for its contraceptive product, and the word "press" added to this mark is insufficient to distinguish the Domain Name from the mark. This is particularly the case because the Domain Name is identical to Complainant's Sayana Press name for its contraceptive product. The Domain Name also includes the generic top-level domain suffix ".com". However, it is generally accepted that the addition of the top-level suffix in a domain name (e.g., ".com") is to be disregarded under the confusing similarity test. See WIPO Overview 2.0, paragraph 1.2.
Accordingly, the Panel finds that Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Name. A complainant is normally required to make out a prima facie case that a respondent lacks rights or legitimate interests in a domain name. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In this case, Complainant has established a prima facie case and Respondent has failed to adequately rebut that case. Complainant has not authorized Respondent to use its SAYANA or SAYANA PRESS marks in the Domain Name. The Panel finds that despite Respondent's use of the term "Sayana Press" for a Twitter account, it is not commonly known by the names "Sayana" or "Sayana Press". Instead, the Panel finds, on the balance of the probabilities, that Respondent likely provided false information in its Domain Name registration by identifying itself as the fictitious, non-existent corporation, "Ubrokerage inc". Complainant provided evidence that there is no such business entity registered in Florida, and Respondent failed to rebut this point, claiming instead that it had recently registered the domain name <ubrokerage.com>, which does not answer why Respondent identified itself as a fictitious entity. Further, Respondent supplied false contact details in its Response. While Complainant has urged that the Response should be disregarded for these reasons because it was not properly certified, the Panel decides that even taking the Response into account, there is no evidence that Respondent was known by a name that is identical or similar to the Domain Name.
Further, Respondent has provided no plausible reason for why it chose the Domain Name – which combines the term "sayana" with the word "press" to create the term "SayanaPress". The term "sayana" is identical to Complainant's SAYANA mark, which was registered by Complainant in more than 100 countries and has been in use for 13 years prior to registration of the Domain Name. The joining of the mark SAYANA with the term "press" in the Domain Name is an unusual combination that is identical to Complainant's SAYANA PRESS common law mark and to the name of its Sayana Press contraceptive product (i.e., the only slight difference is the elimination of the space between the two terms in the Domain Name). In the absence of any conceivable reason given by Respondent for why it selected the Domain Name comprised of these two terms, the circumstances before the Panel are highly suggestive that Respondent specifically targeted Complainant and its SAYANA PRESS mark and contraceptive product when it registered the Domain Name. A simple Google search yields numerous links to websites, virtually all of which provide information or content directly related to Complainant's Sayana Press product, and many of which pre-date the December 2014 registration date of the Domain Name.
The Panel also concludes that Respondent has failed to establish any right or legitimate interest through its use of the Domain Name. Respondent is not using it in connection with a bona fide offering of goods or services. The Domain Name initially resolved to pay-per-click ("PPC") links, and then was redirected to a blank webpage at some point after Respondent was contacted by Complainant's agent. UDRP panels have generally recognized that "use of a domain name to post parking and landing pages or PPC links would not of itself confer rights or legitimate interests arising from a 'bona fide offering of goods or services' or from 'legitimate noncommercial or fair use' of the domain name." WIPO Overview, paragraph 2.6. Moreover, UDRP panels have found that domain name registrants like Respondent are responsible for the PPC links, even in circumstances such as here where Respondent claims not to have arranged for the parking page or for the links that were generated on that page:
"a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content – for example, in the case of advertising links appearing on an 'automatically' generated basis… It may not be necessary for the registrant itself to have profited directly under such arrangement in order to establish bad faith use under paragraph 4(b)(iv) of the UDRP. It would normally be sufficient to show that profit or 'commercial gain' was made by a third party, such as by the operator of an advertising revenue arrangement applicable to the registrant, or a domain name parking service used by the registrant." WIPO Overview, paragraph 3.8.
With regard to Respondent's claim that it intends to use the Domain Name for a women's health website, the Panel determines on the balance of the probabilities that (i) the evidence provided by Complainant in its supplemental submission suggests that Respondent likely put together a mock-up of a website, using material drawn at least in part from the website for the Today Show ("www.today.com") and containing content dating from a period after Respondent had been contacted by Complainant's agent and after having received notice of this dispute, and (ii) in any event, use of the Domain Name in connection with a website addressing women's health issues (and containing advertising) would take unfair advantage of Complainant's SAYANA and SAYANA PRESS marks, which are used by Complainant in the women's health field in connection with a women's contraceptive product. Thus, Respondent's claimed purpose for the Domain Name, which is identical to the name of Complainant's Sayana Press product, is either a pretext or would result in bad faith use.
Accordingly, the Panel determines that Respondent lacks any right or legitimate interest in the Domain Name.
C. Registered and Used in Bad Faith
Finally, for reasons explained above, the Panel also concludes that the Domain Name was registered and is being used in bad faith. It is important to underscore that, although Respondent submitted a Response and was given the opportunity to explain why it registered the Domain Name, it failed to provide any independent and plausible reasons for why it selected the unique combination of terms – "Sayana" plus "press" – to be joined together in the Domain Name. In fact, there appears to be no logical, credible reason other than that Respondent targeted Complainant and its long-established SAYANA and SAYANA PRESS marks, as well as its Sayana Press pharmaceutical product, in order to take advantage of the goodwill and reputation in Complainant's marks and product. Under the circumstances of this case, such targeting of another party's trademarks and product name constitutes bad faith registration and is also suggestive of bad faith use. Moreover, providing a fictitious name and false contact details when registering a domain name, as Respondent has done in this case, further confirms this bad faith. See, e.g., PwC Business Trust v. CulitoSa, WIPOCase No. D2001-1109 (providing false name for registration "is evidence of bad faith.").
Respondent's use of the Domain Name was also in bad faith. The Domain Name was first linked to a PPC webpage, then it was redirected to a blank page after Respondent was contacted by Complainant's agent, and then, when Complainant's agent inquired about purchasing the Domain Name, Respondent indicated a selling price of more than USD 3,500. Complainant's agent apparently referenced certain trademark rights in the exchange of communications, but Respondent has stated that no evidence was provided as to these rights. Respondent, nonetheless, cannot turn a blind eye to such assertions of trademark rights, particularly where, as noted above, the Panel finds that Respondent was targeting Complainant's long-held SAYANA and SAYANA PRESS marks and product when Respondent selected the unique combination of the terms "Sayana" and "press" for registration in the Domain Name. In this regard, the Panel observes that the Policy, in paragraph 2, provides that a domain name registrant represents and warrants that
"(b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights."
Moreover, Respondent has claimed that the Domain Name was being held for a website and blog that is still in development related to women's health issues, and which Respondent's mock-up materials indicates would contain advertising (and is therefore a commercial site). However, as discussed above, the Panel has determined, based on the evidence, that this supposed developmental website is likely a pretext, which was created after Respondent was first contacted by Complainant and/or after Respondent had received notice of this dispute. The evidence in this case shows that the material presented by Respondent in relation to this mock-up site was a combination of unintelligible gibberish text and content drawn in part from the website of the Today Show. There is no evidence that Respondent took any steps to create this claimed site prior to being contacted by Complainant's agent or prior to this proceeding being filed. See, e.g., Martha Stewart Living Omnimedia. Inc. v. Josh Gorton, WIPO Case No. D2005-1109 ("The Respondent has presented no evidence of any demonstrable preparations to use the domain names in connection with a 'fan site' prior to receiving the Complainant's notice of this dispute").
Finally, use of the Domain Name in connection with a commercial website addressing women's health would be use in bad faith, as it would take unfair advantage of Complainant's SAYANA and SAYANA PRESS marks, which are used by Complainant in the women's health field in connection with a women's contraceptive product. Thus, even assuming Respondent's putative reasons for registering the Domain Name, it would have been used in a manner to intentionally attract Internet users to a commercial site by creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation, or endorsement of Respondent's site or of a product or service on Respondent's site, in violation of paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that the Domain Name was registered and is being used in bad faith, satisfying the third element of the Policy.
In light of the Panel's finding that Complainant has satisfied the required three elements under paragraph 4(a) of the Policy, Respondent's request that the Panel make a finding of RDNH is denied.
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, <sayanapress.com>, be transferred to Complainant.
Christopher S. Gibson
Date: January 21, 2016