World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mayne Pharma International Pty Ltd. v. Namewise Pty Ltd.

Case No. DAU2012-0001

1. The Parties

The Complainant is Mayne Pharma International Pty Ltd. of Salisbury South, South Australia, Australia, represented internally.

The Respondent is Namewise Pty Ltd., Melbourne, Victoria, Australia.

2. The Domain Name and Registrar

The disputed domain name <astrix.com.au> (the “Domain Name”) is registered with Domain Central Pty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2012. On January 30, 2012, the Center transmitted by email to Domain Central Pty Ltd a request for registrar verification in connection with the Domain Name. On January 31, 2012, Domain Central Pty Ltd 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 .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center employed reasonably available means calculated to achieve actual notice to the Respondent and thereby formally notified the Respondent of the Complaint, and the proceedings commenced on February 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 23, 2012. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on February 29, 2012.

The Center appointed Alan L. Limbury as the sole panelist in this matter on March 6, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

In Australia, and elsewhere, the Complainant supplies therapeutic goods, including low dose aspirin marketed under the trademark ASTRIX, which the Complainant has registered in several countries, including Australian Registration No. 414361 for aspirin based products in Class 5, registered on June 26, 1989, upon application dated August 30, 1984.

The Domain Name was registered on August 27, 2009. It resolves to a landing page displaying sponsored advertisements and links to websites unconnected with the Complainant. The links are of the kind that typically generate “pay per click” (PPC) revenue to domain name holders.

5. Parties’ Contentions

A. Complainant

The Complainant says the Domain Name is identical to its ASTRIX trademark and that the Respondent has no rights or legitimate interests in the Domain Name, which was registered and is being used in bad faith.

As to legitimacy, the Complainant says the word “astrix” is an invented word, not found in dictionaries, denoting only the Complainant’s products and that the Domain Name is being used to take advantage of its trademark value. This is not use in connection with a bona fide offering of goods or services nor a legitimate non-commercial or fair use. The Respondent has no association with the Complainant and no authority from the Complainant to use its mark. There is no evidence that the Respondent has been known by the Domain Name.

As to bad faith, the Complainant says the Respondent did not reply to a letter dated December 21, 2011, claiming trademark infringement and seeking transfer of the Domain Name. The Respondent owns more than 2,000 domain names and is clearly a domain name speculator – one who registers domain names for the purpose of generating revenue by using them to divert Internet traffic to websites containing PPC links and/or by on-selling them to third parties. Given the long prior use by the Complainant of the ASTRIX trademark, it is implausible that the Respondent was unaware of it. The Respondent is clearly using the Domain Name to capitalize on its trademark value intentionally to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of that website.

The Complainant seeks transfer of the Domain Name.

B. Respondent

There was no Response to the Complaint.

6. Discussion and Findings

To succeed in this Complaint under the Policy, the Complainant must establish that:

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

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

(iii) the Domain Name has been registered or subsequently used in bad faith.

Given the similarities between the Uniform Dispute Resolution Policy (“UDRP”), on which the auDRP is based, the Panel has found it appropriate to consider jurisprudence under that policy here.

A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441.

A. Identical or Confusingly Similar

The Panel finds that the Domain Name is clearly identical to the Complainant’s ASTRIX trademark, the country code suffixes being inconsequential and to be disregarded. See BT Financial Group Pty Limited v. Basketball Times Pty Ltd, WIPO Case No. DAU2004-0001.

The Complainant has established this element of its case.

B. Rights or Legitimate Interests

The Panel finds that the ASTRIX mark, an invented word that is not in dictionaries, is distinctive. The Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in the Domain Name on the part of the Respondent. The burden of production therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name. See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and the cases there cited. The Respondent has made no attempt to do so.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.

The Complainant has established this element of its case.

C. Registered or Subsequently Used in Bad Faith

Under the Policy, paragraph 4(b)(iv), the following circumstances shall be evidence of bad faith registration and [sic] use:

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to a website…by creating a likelihood of confusion with the complainant’s name or mark as to the…affiliation or endorsement of that website […]”

Here, the Panel finds that the Domain Name, which comprises the Complainant’s distinctive ASTRIX trademark with the “com.au” suffix, conveys to Internet users both that it will lead them to a website at which the Complainant’s ASTRIX products are available for purchase and that it will lead them to the official Australian website of the Complainant. Thus, the Domain Name itself falsely conveys an affiliation or endorsement of the website to which it resolves.

The Panel finds that the Respondent must have been fully aware of this when registering the Domain Name and that, by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its “www.astrix.com.au” website by creating a likelihood of confusion with the Complainant’s mark as to the affiliation or endorsement of that website.

The Panel therefore finds that the Domain Name has been both registered and used in bad faith.

The Complainant has established this element of its case.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <astrix.com.au> be transferred to the Complainant upon the Registrar being satisfied of the Complainant’s eligibility.

Alan L. Limbury
Sole Panelist
Dated: March 8, 2012

 

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