WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Spectrum Pharmaceuticals, Inc. v. Registration Private / David Whaley
Case No. D2014-1376
1. The Parties
Complainant is Spectrum Pharmaceuticals, Inc. of Irvine, California, United States of America (“USA”), represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland (“UK”).
Respondent is Registration Private, Domains By Proxy of Scottsdale, Arizona, USA / David Whaley of Holly Ridge, North Carolina, USA.
2. The Domain Name and Registrar
The disputed domain names <beleodaq.net> and <beleodaq.org> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2014. On August 14, 2014, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Names. On August 16, 2014, the Registrar transmitted by e-mail 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 e-mail communication to Complainant on August 18, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 19, 2014.
The Center verified that the Complaint together with 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 August 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2014. Respondent sent an e-mail communication to the Center on September 10, 2014.
The Center appointed Robert A. Badgley as the sole panelist in this matter on September 23, 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 is a drug manufacturer whose strategy, Complainant states, is “comprised of acquiring, developing and marketing a diverse pipeline of late-stage clinical and commercial products.” In February 2010, Complainant entered into an exclusive licensing agreement with a biotechnology firm to manufacture, develop, and market in North America and India a new trial drug called “Beleodaq”. This drug is intended for use to treat patients with peripheral T-cell lymphoma. Complainant paid an upfront fee of USD 30 million to the biotech firm, and, depending on future development, regulatory, and sales milestones, is obligated to pay as much as USD 313 million plus one million shares of common stock in additional consideration.
In February 2014, the United States Food & Drug Administration (“FDA”) accepted Complainant’s New Drug Application. On July 3, 2014, the FDA granted to Complainant accelerated regulatory approval for the drug “Beleodaq”. These regulatory events generated fairly extensive contemporaneous press coverage in various prominent periodicals, as is set forth in the annexes to the Complaint.
Complainant holds several trademark registrations for the trademark BELEODAQ, including International Registration No. 1191797 (registered on December 26, 2013), as well as Community and Australian registrations (both registered on December 26, 2013). Complainant also owns the domain name <beleodaq.com> and uses it as an informational and commercial site in connection with the Beleodaq drug.
Respondent registered the Domain Names on June 15, 2014. That same day, Respondent also registered a domain name with the “.co” country-code Top-Level Domain (“ccTLD”), <beleodaq.co>. (This latter domain name is not governed by this proceeding.)
According to Complainant, its representative had telephone communications with Respondent between the date the Domain Names were registered and July 24, 2014, the date on which Complainant sent a cease-and-desist letter to Respondent. During the alleged telephone discussion, Respondent said that he was selling the Domain Names to a non-profit entity who was filing legal claims against Complainant, and that Respondent had set the prices at USD 5,000 per Domain Name (plus USD 200 for the <beleodaq.co> domain name).
As noted, Complainant issued to Respondent a cease-and-desist letter on July 24, 2014. Respondent responded three times that day to the letter, each time with obscenity and vulgarity. Respondent then claimed that the Domain Name resolved to a “gripe site” offering criticism of Complainant’s drug.
At some point during the proceeding, the Domain Name resolved to a website featuring the banner text: “Beleodaq® Side Effect Facts.” The site then purported to describe various alleged side effects from the drug Beleodaq, and provided links inviting the user to “Contact an Attorney Today!!!” if he or she was “Injured by Beleodaq,” or to “Meet Doctors Opposed to Beleodaq” or to “See What Big Pharma is Hiding!” Below the foregoing text and links was additional text, in varying font sizes, stating in part as follows: “This Website is for Informational Purposes Only,” and “We are not affiliated with Spectrum Pharmaceuticals, and we serve to warn the public of the dangers of this drug,” as well as “This is a public service. No Advertising Allowed. Not For Profit.” Finally, at the bottom of the page, the following text appeared [sic]: “SPECTRUM PHARMACEUTICALS IS TRYING TO SHUT THIS INFORMATIONAL WEBSITE DOWN. THEY DON’T WANT YOU TO KNOW THE TRUTH. THEY AND THE FDA WANT YOU BROKE, SICK, AND DEAD!”
5. Parties’ Contentions
Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Names.
Respondent did not submit a formal response to the Complaint. Rather, Respondent sent various missives to Complainant’s representative, who then forwarded them to the Center. These missives were largely abusive rants with vulgarity. In one of the passages in his August 29, 2014 e-mail to Complainant’s representative (which e-mail bore the subject line “Settlement Proposal to a DickHead!!!”), Respondent wrote:
“I have full legal rights to 2 previously unmentioned domains your principal might like to have. I finally found a competent domain attorney who has advised me in the big picture of things in the IP world. Per the generous information from counsel, I can draft a formidable response to your complaint pro-se. For 1,600.00, he is willing to go hard-core. This can play out in 3 ways:  Pro-se response to your frivolous complaint. 50/50 odds unless you have the arbitrator bribed. I will find you out.  Counsel response to your frivolous complaint. 75/25 odds in MY favor…unless you have bribed the arbitrator…I will find you out…  Immediate transfer of Beleodaq.net and Beleodaq.org plus the 2 other domains your principal would like to own in exchange for dropping your WIPO complaint. Your prompt response is required. This must settle by Friday, 8/29, or there is no deal. If you do not accept these terms, I will respond to the UDRP [Complaint] in the way I see fit. I guarantee a lawsuit in Federal Court in the event the panel does not allow me to keep my domains. I am judgment proof. I will file suit pro-se under the Lanham Act. You will have no choice but to pay counsel to defend. I have recorded phone conversations and voicemails from your principal soliciting me for the sale of the domains in question.”
On September 10, 2014, Respondent sent the following e-mail to Complainant’s representative and the Center [sic]:
“Expect suit in US District Court. WIPO’s decision, based on your lies will not stand. I have the recordings of your company illegally soliciting me for the purchase of these domain names. The not-for-profit nature of my websites completely destroys all of your allegations. The SWISS are BRED TO BE PUSSIES!!! FUCK YOU!!! Legal Clerk…what a title!!!! Lawyer Wannabe… WIPO will not stand…REAL JUSTICE IS ON THE WAY!!!!!”
On September 15, 2014, the Center formally acknowledged receipt of the above-quoted September 10, 2014 e-mail from Respondent, and advised that it was going to proceed to appoint the Administrative Panel in this case. Nothing further has been heard from Respondent.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
A. Identical or Confusingly Similar
It is undisputed in this record that Complainant holds rights in the trademark BELEODAQ through registration in various jurisdictions antecedent to Respondent’s registration of the Domain Names. The Domain Names are identical to the BELEODAQ trademark.
Accordingly, the Panel concludes that Policy paragraph 4(a)(i) has been satisfied by Complainant.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in a Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent claims that it has established a genuine “gripe site” and therefore has a legitimate interest in respect of the Domain Names. Under the Policy, it is clear that in appropriate circumstances a domain name may legitimately be used for the purpose of criticizing a trademark owner and/or its goods or services. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) begins its discussion in this vein (paragraph 2.4: “Can a criticism site generate rights and legitimate interests?”) with the following comment:
“This section only concerns sites that practice genuine, noncommercial criticism. There are many UDRP decisions where the respondent argues that the domain name is being used for a free speech purpose but the panel finds that it is primarily a pretext for commercial advantage.”
Where the Panel concludes, based on the record and on a balance of probabilities, that the purported criticism site is merely a pretext to mask other motives, such as commercial gain, then a respondent may not successfully claim a legitimate interest on that basis. The Panel here concludes, on this record and as being more likely than not, that Respondent’s purported “gripe site” is a pretext and not a genuine motivation for registering the Domain Names.
The Panel reaches this conclusion because it is alleged in the Complaint that Respondent stated that he intended to sell the Domain Names to a third party for USD 5,000 a piece, and Respondent, in his various missives in response to the Complaint, never denied that allegation. If that allegation were untrue, then Respondent could easily have denied it in one of his several e-mails to Complainant and/or the Center. In the streamlined proceedings under the Policy, failure to deny a fairly basic allegation such as this may in certain circumstances be considered as an admission.
The Panel therefore finds that Respondent’s professed motive for registering the Domain Names does not square with the facts, at least insofar as they have been developed in this record. There is no other basis for a legitimate interest advanced in this case.
Accordingly, the Panel concludes that Policy paragraph 4(a)(ii) has been satisfied by Complainant.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of each of the Domain Names in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that 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, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel first observes that there is no doubt that Respondent had Complainant’s BELEODAQ mark in mind when registering the Domain Names. BELEODAQ is a fanciful mark. Further, Respondent does not claim that he was unaware of the mark when he registered the Domain Names. Indeed, by his own account, he registered them in order to criticize Complainant.
The Panel also concludes that Respondent sought to profit from the Domain Names by declaring his intent to sell them to a party with some axe to grind against Complainant for USD 5,000 each, a sum obviously well in excess of the cost of registering them. Again, this is an allegation that could easily have been denied if it had been untrue, but it was not denied. There is ample precedent under the Policy for finding such a primary motive to be evidence of bad faith under paragraph 4(b)(i), even where the prospective buyer of the domain name is not the complainant itself or, strictly speaking, a competitor of the complainant. See, e.g., National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118; Schott Glas and Nec/Schott Components Corp. v. Necschott, WIPO Case No. D2001-0127 (citing cases).
The Panel notes further Complainant’s assertion, again undisputed by Respondent, that Respondent holds a fairly large portfolio of domain names comprised of the names of various pharmaceutical products. In view of the Panel’s finding of bad faith under paragraph 4(b)(i), however, the Panel will make no determination whether bad faith is also present under paragraph 4(b)(ii).
Accordingly, the Panel concludes that Policy paragraph 4(a)(iii) has been satisfied by Complainant.
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 <beleodaq.net> and <beleodaq.org> be transferred to Complainant.
Robert A. Badgley
Date: October 6, 2014