WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novartis Pharmaceuticals Corporation and Protez Pharmaceuticals, Inc. v. Klaus Esser
Case No. D2011-0916
1. The Parties
Complainants are Novartis Pharmaceuticals Corporation of East Hanover, New Jersey, United States of America, and Protez Pharmaceuticals, Inc. of Malvern, Pennsylvania, United States of America, represented by Troutman Sanders, LLP, United States of America.
Respondent is Klaus Esser of Downingtown, Pennsylvania, United States of America.
2. The Domain Name and Registrar
The disputed domain name <protezklausesser.com> (“Domain Name “)is registered with DSTR Acquisition PA I, LLC dba DomainBank.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2011. On May 27, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. On June 1, 2011, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to the Center’s request for confirmation, Complainant filed an amendment to the Complaint on June 15, 2011.
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on June 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 7, 2011. By request of Respondent, the Center extended the Response due date to July 13, 2011. The Response was filed with the Center on July 13, 2011.
The Center appointed Mark Partridge as the sole panelist in this matter on July 26, 2011. 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 Protez Pharmaceuticals, Inc. (“Protez”) is a wholly-owned, stand alone subsidiary of Complainant Novartis Pharmaceuticals Corporation (“Novartis”). The products of Protez include an injectable antibiotic called PZ-601.
Respondent was employed by Protez Pharmaceuticals, Inc. from December 22, 2003 to May 31, 2010.
When Respondent ended his employment with Protez he facilitated the transfer of the following domain names to Complainant: <protez.com>, <protez.net>, <protez.org>, <protezpharm.com>, <protezpharm.net>, <protezpharm.org>, <protezpharma.org>, <protezphamaceuticals.com>, <protezpharmaceuticals.net>, <protezpharmaceuticals.org>.
The mark PROTEZ was never registered as a trademark.
5. Parties’ Contentions
The Complaints assert the following claims:
Protez is a leader in developing pharmaceuticals for the hospital market. Complainant has used the PROTEZ mark since its founding in 2003.
Complainants’ use of the PROTEZ mark has been exclusive or substantially exclusive in connection with the services Protez has rendered over the past eight years, Complainants have used the PROTEZ trade name prominently in providing services for the development of novel drugs. The PROTEZ mark is coined, arbitrary and fanciful and bears no significance to Complainants’ pharmaceutical development services. Further, as a result of this exclusive use and Protez’s substantial advertisement and promotion of services marketed and sold under the PROTEZ mark, the PROTEZ mark has acquired strong commercial distinctiveness and goodwill and has come to symbolize the superior quality of services offered and provided by Complainants.
The Domain Name is confusingly similar to Complainants’ PROTEZ mark, incorporating the Complainants’ mark as the formative component followed by Respondent’s personal name and the top-level domain name extension, “.com.” The Domain Name strongly conveys the impression of sponsorship by or association with Complainants. The Domain Name wholly incorporates Complainants’ mark which is sufficient to establish confusing similarity for purposes of the Policy, the addition of Klaus Esser in the Domain Name increases the likelihood of confusion because it strongly suggests Complainants have an affiliation with Respondent when they do not, as his employment ended with Protez a year ago.
Respondent has no permission to use the PROTEZ mark. His employment terminated on May 31, 2010, prior to registering the Domain Name on July 10, 2010. Respondent has no affiliation with Complainants. “Protez” is not a surname or nickname of the Respondent. Respondent has never been known as “Protez Klaus Esser.” Accordingly, Respondent has no proper rights in the Domain Name.
Complainants have not licensed or otherwise authorized Respondent to use the PROTEZ mark, or any variation thereof. Respondent registered the Domain Name on July 10, 2010 more than a month after his employment with Protez ended. The Respondent did not register the Domain Name until one month after his relationship with the Complainants ended confirms that this was not the action of a person who registered a domain name in good faith during a relationship with an entity. To the contrary, the Respondent knowingly registered the Domain Name after the relationship ended to create the exact impression intended to be created by the Domain Name—that they are affiliated with one another. Respondent’s use of the word “former” buried in text one time to indicate the current status of his relationship to Complainants does not obviate the likelihood of confusion between the PROTEZ mark and the Domain Name because: (a) the very next sentence on the web site does not use the word “former” when describing Respondent’s position with Complainants, creating further confusion; (b) the web site in no place states that Respondent is no longer employed by Complainants; and (c) panels have repeatedly held that regardless of the content on a web site, the “initial interest” caused by a registrant’s use of the complainant’s entire mark in a domain name was sufficient to find bad faith and a likelihood of confusion.
Respondent – a former high level executive at Complainant Protez – chose a domain name that fully incorporates Complainants’ PROTEZ mark and the fact that Respondent operates an Internet site from that Domain Name, it is clear that Respondent had knowledge of Complainant’s mark and was attempting to take advantage of Complainant’s goodwill to imply an endorsement, affiliation or sponsorship with the Complainants, which in fact does not exist.
Respondent’s reliance on the goodwill surrounding Complainant’s Mark by registering a confusingly similar Domain Name and using this Domain Name to redirect Internet users to its website, presumably for Respondent’s own commercial gain by creating the appearance of an affiliation, or relationship with the Complainants, equates to bad faith use and registration of the Domain Name in violation of the Policy paragraph 4(b)(iv).
Respondent claims PROTEZ is not a mark because Protez was always known as Protez Pharmaceuticals, Inc. Respondent also claims PROTEZ was never trademarked because the term was in the public domain prior to the founding of Protez Pharmaceuticals, Inc. Protez never had any pharmaceutical product containing the root PROTEZ.
Respondent registered the <protezklausesser.com> Domain Name after he was no longer employed by Protez as such Protez has no rights to the Domain Name through the former employment contract. Respondent is only using the Domain Name as a link to professional biographical information that includes Respondent’s tenure as a founder and executive of Protez Pharmaceutical as well as substantial prior professional experience. Respondent claims there is no competitive business or effort to trade on the name Protez Pharmaceuticals. Respondent also states it had transferred all Protez Pharmaceuticals domains he had registered while working for Protez.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant Protez Parmaceuticals, Inc. has demonstrated that it owns common law trademark rights in the mark PROTEZ. While it does not appear that Protez used the term PROTEZ in connection with the sale of one specific antibiotic it was known as Protez Pharmaceuticals, Inc. in commerce for the eight years and has built secondary meaning in the term “Protez” as associated with the provision of goods in commerce. The descriptive phrase “pharmaceuticals” does not take away from Protez’ rights in PROTEZ. See WIPO Overview of WIPO Panel Views On Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), section 1.7.
Accordingly, the Domain Name is confusingly similar to a mark in which Complainants have rights.
B. Rights or Legitimate Interests
Complainants have made a prima facie showing that Respondent lacks any right or legitimate interests in the Domain Name. As a part of his employment agreement, Respondent was required to assist the “in every proper way to secure Complainants’ rights in all intellectual property rights including the execution of assignment and all other instruments which Complainants deem necessary in order to obtain such rights and in order to assign and convey to Complainants the sole and exclusive rights, title and interest in such intellectual property rights.” (Annex 4 of Complaint).
The fact Respondent transferred numerous domain names which incorporated the term “protez” to Complainants after his employment ended evidences that both parties deemed the domain names a part of Complainants’ intellectual property. The Panel notes that only three weeks after Respondent transferred the “protez” domain names to Complainants he registered the Domain Name.
Respondent knew he did not have rights in the mark PROTEZ. Further his employment contract with Complainant Protez shows that he had no legitimate interests in the Domain Name and knew that the ”protez” domain names could be considered as the “intellectual property” of Complainants.
Therefore, the Panel concludes that Respondent lacks any right or legitimate interest in the disputed Domain Name.
C. Registered and Used in Bad Faith
The Domain Name was registered three weeks after Respondent had transferred numerous domain names which incorporated the mark PROTEZ. The Domain Name currently displays Respondent’s resume but there is no indication from the Domain Name itself what is the actual purpose for the website.
Despite the atypical use of the disputed Domain Name, nevertheless, the Panel finds such use is commercial since the purpose of the site is to sell Respondent’s services to a future employer and uses more of Complainants’ trademark than would be necessary to make a nominal reference to Respondent’s prior history with Complainant Protez.
Given the confusing similarity of the Domain Name to Complainant's mark and the lack of legitimate use of the Domain Name, the prior employment and acknowledgment by Respondent of the Complainant’s rights in PROTEZ, the Panel concludes that the Domain Name was registered and used in bad faith to derive commercial gain based on confusion with Complainant and its mark.
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 <protezklausesser.com> be cancelled, as requested by Complainant.
Mark V.B. Partridge
Dated: August 22, 2011