WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Biofarma v. Rachid Lamghari
Case No. D2014-1910
1. The Parties
The Complainant is Biofarma of Suresnes, France, represented by Salans FMC SNR Denton Europe, AARPI, France.
The Respondent is Rachid Lamghari of Fujairha, United Arab Emirates ("UAE").
2. The Domain Name and Registrar
The disputed domain name, <diamicronmr.net> (the "Domain Name"), is registered with Dattatec.com SRL (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 29, 2014. On October 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 5, 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 November 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 11, 2014. The Response was filed with the Center on December 11, 2014.
The Center appointed Tony Willoughby as the sole panelist in this matter on January 5, 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.
4. Factual Background
The Complainant is a French pharmaceutical company. It is a member of the Servier SAS group of companies, whose business commenced in 1954.
One of the Complainant's products is an anti-diabetic preparation, which it introduced in 1971 and sells under the name "Diamicron". The packaging of Diamicron also features the initials "MR" to indicate that the product has a "modified release".
The Complainant is the registered proprietor of numerous trade mark registration for its mark DIAMICRON including, by way of example, UAE trade mark registration No. 3870 filed on February 1, 1994 (registered January 23, 1996) for anti-diabetic preparations in Class 5. UAE is the country of residence of the Respondent.
The Complainant is also the proprietor of the domain names <diamicronmr.co.uk>, <diamicronmr.vn> and <diamicronmr.com>, all of which were registered prior to the Domain Name.
The Domain Name was registered/acquired by the Respondent on a date unknown, but on the unchallenged evidence of the Complainant prior to December, 2011 , and was used to connect to a website providing information in relation to the Complainant's Diamicron MR product. It is now connected to an error page.
On December 14, 2011, when the Domain Name was registered in the name of the Respondent and hosted by eNom, the Complainant wrote to eNom explaining the nature of its rights and its concerns as to the manner in which the Domain Name was being used and seeking disablement of the Domain Name. The Complainant received no reply.
On January 6, 2012 and July 8, 2014, the Complainant sent cease and desist letters to the Respondent drawing the Respondent's attention to the Complainant's rights and its concerns as to the offering of sale without prescription of Diamicron MR to countries where prescriptions are required. The Complainant sought inter alia transfer of the Domain Name. The Complainant received no reply to either of those letters.
5. Parties' Contentions
The Complainant contends that the Domain Name is confusingly similar to its DIAMICRON trade mark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant asserts that clearly the Respondent was aware of the Complainant's trade mark when registering the Domain Name and intended the Domain Name to refer to the Complainant's Diamicron MR product. The Complainant asserts that it has granted the Respondent no permission to use its trade mark. It contends that the Respondent registered the Domain Name "with the intention to divert consumers and to prevent the Complainant from reflecting the trade mark in a corresponding domain name". The Complainant concludes under this element of the Policy that the Respondent has made no bona fide use of the Domain Name, not having any authorization to use the Complainant's trade mark and that using domain names to divert consumers for commercial gain cannot constitute a fair use.
Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith. It points to the fact that until recently the Domain Name redirected visitors to websites of online pharmacies, which it categorises as rogue pharmacies illicitly offering prescription products online to countries, which require prescriptions. It points to the fact that the Respondent owns many domain names featuring the well-known trade marks of others such as Eli Lilly, Pfizer, Sanofi and Astra Zeneca. It states that the website never featured any disclaimer showing that it was not connected to the Complainant. It further states that the website was intended to divert traffic from the Complainant. It points to several cease and desist letters which it sent to the Respondent but to which it received no reply.
The Domain Name now leads to an error page, but the Complainant contends that that is of no significance in light of the history of the Domain Name.
The Respondent denies the Complainant's contentions and claims that this is a case of Reverse Domain Name Hijacking.
The Respondent contends that he acquired the Domain Name in good faith several years ago "to create bona fide site/blog dedicated to open source information regarding the medicine which is relevant to the domain". He contends that the "first-come-first-served" entitles him to the Domain Name.
The Respondent states that he has not used any of the Complainant's copyright material. Nothing about the site is there to mislead consumers. The Respondent asserts that "freedom of speech and journalism is an international human right, which is used to protect all good faith content such as reviews or news portrayed by an individual or company."
The Respondent acknowledges that his banner placements attract revenue, but only "to help maintain the site, which is a non-profit entity online, that server [sic] the public with free information and allows other [sic] to add relevant information that can assist potential viewer [sic] that are interested in the topic." The Respondent contends that he cannot be held responsible for the content of the website "that can be viewed by third party vendors and bloggers". The Response features an extensive passage relating what the Respondent understands the position to be under the law of the United States of America in relation to a First Sale doctrine and the United States approach to grey market importations of trade marked goods.
The Respondent acknowledges that the Domain Name is identical to the Complainant's trade mark, DIAMICRON MR.
The Respondent contends that the Complainant's contentions to the effect that the Respondent has no rights or legitimate interests in respect of the Domain Name are all unsupported. The Complaint contains no evidence of "provable wrongdoing". The Respondent states that he has received no official legal notification of the dispute in his jurisdiction. While he asserts that "there is no evidence of my use of, or demonstrable preparations to use, the domain name(s) mentioned above or a name corresponding to the domain name(s) in connection with a bona fide offering of goods or services", the Panel assumes that this stems from a misunderstanding by the Respondent and is not an admission favourable to the Complainant.
The Respondent states that he has no need for a trade mark right for the content of his website. While he does not expressly so state in this passage of the Complaint, the Panel assumes that the Respondent is contending that his use of the Domain Name is a fair use sufficient to deny the Complainant's contentions under paragraph 4(a)(ii) of the Policy.
The Respondent concludes under this head of the Policy as follows:
"I am not making a legitimate non-commercial or fair use of the domain name(s), without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark(s) or service mark(s) at issue as mentioned in my defense above."
The Panel takes this to mean that the Respondent accepts that his use of the Domain Name is not noncommercial, but reaffirms that his use of the Domain Name for the purpose identified above is legitimate and gives rise to a legitimate interest in respect of the Domain Name.
As to the Complainant's contentions in respect of paragraph 4(a)(iii) of the Policy, the Respondent states that they are all unsupported by any evidence and are mere accusations. He denies that any of the circumstances set out in paragraph 4(b) of the Policy is applicable.
As to the Complainant's contentions regarding the third party users of the Respondent's banner space the Respondent has this to say:
"Further note the complainant makes false accusation (VI.12.A) about third-party vendors / advertisers of the banner space such as IWANTMEDS, as I have went the distance to verify their legitimacy with real proof of establishment and licenses to sell in their territory. Their policies and operations are their business, as well as government agencies which will permit or not permit them to operate, an until there is proof from the court and presented to us, then that is when we hold to right to take down any illegal advertising, which can be then read as misleading."
The part of the Response relating to the Complainant's bad faith contentions concludes:
"If appropriate and the allegation can be substantiated with evidence, the Rules provide that I may ask the Panel to make a finding of reverse domain name hijacking, (Rules, para. 15(e)), which is common for people that hire the representation and also will pay for the cost to do so as we all know the hourly rate of the complainants representation' s fee is more than it cost to register a domain or in fact 20+ domains at equal fair market wages, which would be more likely and common practice of companies typically pharmaceutical companies to do so as a strategy to pollute the media and scare and challenge the freedom of speech right which can possibly hurt their billion dollar business or commonly said BABY. This is a Hijack attempt and work more like terrorist stopping the common human of their rights which our fathers have lots live [sic] protecting in the history of time and tyrant organizations such as the complainants industry could common only state as mentioned in many court cases of wrongdoing as they have lost in the past."
Under section IV of the Response the Respondent consents to transfer of the Domain Name on payment by the Complainant of USD 30,000 "which is a fair price for the time and effort I made in creating the content and site".
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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 and is being used in bad faith.
Moreover, in writing its Decision, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:
"If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeding."
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name".
B. Identical or Confusingly Similar
Apart from the generic Top-Level Domain identifier ".net", the Domain Name comprises the Complainant's DIAMICRON trade mark and the initials "MR", which is an acronym for "Modified Release", a feature of the Complainant's Diamicron product.
The Respondent confirms that he selected the Domain Name intending that it should refer to the Complainant's Diamicron MR product.
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
The Complainant asserts that the Respondent, having no permission to use the Complainant's trade mark, has not been using the Domain Name in relation to a bona fide offering of goods or services and has no rights or legitimate interests in respect of the Domain Name. The Complainant contends that in previously using the Domain Name to offer without prescription online prescription pharmaceuticals to purchasers in countries where prescriptions are required, the Respondent was engaging in an illicit activity which is not fair and cannot give rise to a right or legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy .
The Panel finds that the Complainant has made out a prima facie case calling for an answer from the Respondent.
The Respondent asserts that he purchased the Domain Name in good faith with the intention of using it for the purpose for which he originally used it (it is currently connected to an error page), namely as a blog site and to provide information in relation to the Complainant's Diamicron MR product. He states that his website is a non-profit operation and that the revenue derived from the banner space which he sells to third party vendors is merely used to finance the website. He says that he cannot be held responsible for website content contributed by bloggers and third party advertisers. He also states that not one of the Complainant's allegations as to illicit activity on the part of the third party vendors is supported by any evidence. They are merely unsupported allegations.
The Respondent asserts that in doing what he is doing by providing information in relation to the Complainant's Diamicron MR product he is merely exercising his right to free speech.
The "defence" of free speech is normally only raised in cases under the Policy, which relate to fan sites and criticism sites. The Panel assumes that the Respondent regards his site as something of an equivalent to a fan site.
This area is addressed in paragraphs 2.4 and 2.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). Paragraph 2.5, which is apposite to fan sites, reads (case citations omitted) as follows:
"Many of the considerations used by panels in relation to criticism sites, as discussed in paragraph 2.4 above, also are applied by panels in relation to fan or tribute cites. Moreover, this section only deals with fan sites that are clearly active and noncommercial. There are many UDRP cases in which the respondent claims to have an active noncommercial fan site but the panel finds that it is primarily a pretext for commercial advantage.
View 1: The registrant of an active and noncommercial fan site may have rights and legitimate interests in the domain name that includes the complainant's trademark. The site should be actually in use, clearly distinctive from any official site, and noncommercial in nature. Panels have found that a claimed fan site which includes pay-per-click (PPC) links or automated advertising would not normally be regarded as a legitimate non-commercial site. However, some panels have recognized that a degree of incidental commercial activity may be permissible in certain circumstances (e.g., where such activity is of an ancillary or limited nature or bears some relationship to the site's subject).
View 2: A respondent does not have rights or legitimate interests in expressing its view, even if positive, on an individual or entity by using an identical or confusingly similar domain name, if the respondent is intentionally misrepresenting itself as being (or as in some way associated with) that individual or entity, or seeks to derive commercial advantage from its registration and use. Also, where the domain name is identical to the trademark, panels have noted that such respondent action prevents the trademark holder from exercising its rights to the trademark and managing its presence on the Internet."
The Respondent denies that his operation is profit-making. Whether or not that is the case, it is certainly commercial in nature. The Complainant has exhibited screenshots from the Respondent's website dated December 8, 2011. The exhibited pages all feature the heading, "What is Diamicron MR and how to buy drugs online without prescription". One page features inter alia the legend "You are Here: Buy Diamicron MR Online Pharmacy" and shows significantly discounted prices for the product in USD.
In light of the Respondent's assertions (see section 5B above), the Panel assumes that the online sales offerings may have been placed on the website by the Respondent's third party vendors. While the Respondent claims that he cannot be held responsible for the content supplied by third parties on the basis that that is what his terms and conditions provide, he is mistaken if he believes that that relieves him from all responsibility insofar as administrative proceedings under the Policy are concerned.
It appears to the Panel on the evidence provided by the Complainant (noticeably, the Respondent has produced no screenshots from his website and has not challenged the accuracy of the Complainant's exhibited screenshots) that, whether directly or indirectly, the website connected to the Domain Name has been used for the sale of online pharmaceuticals generally and the Complainant's Diamicron MR in particular. An advertised feature of the online offering is that no prescription is required.
Whether the Panel adopts View 1 or View 2 from the quoted passage from the WIPO Overview 2.0, the use to which the Domain Name has been put does not constitute a bona fide offering of goods or services. The commercial activity advertised on the site goes well beyond what might be regarded as being "of an ancillary or limited nature" and its "relationship to the site's subject" goes way beyond being a mere informational blog or fan site. The Respondent claims that he is not doing anything to mislead, but it is the fact that when one selects a domain name which precisely reflects a complainant's trade mark and/or the name of the branded product, it is inevitable that Internet users in substantial numbers will be likely to believe the website to which it is attached to be an official site of the brand owner or in some way associated with the brand owner. It is precisely for this reason that the Domain Name will have been attractive to the Respondent's third party vendors, thereby enhancing the Respondent's revenue-earning opportunity. The point is made in paragraph 2.4 of the WIPO Overview 2.0 relating to criticism sites and View 1, the view to which this Panel subscribes:
"The right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant's trademark. That is especially the case if the respondent is using the trademark alone as the domain name (i.e., <trademark.tld>) as that may be understood by Internet users as impersonating the trademark owner". While in this case the Domain Name is not identical to the trade mark, the added matter ("MR") merely more precisely identifies the trade marked product.
The Respondent's website is not a fan site, but the guiding principles set out in the above quotes from the WIPO Overview 2.0 are, in the view of the Panel, applicable to the Respondent's website. It is (or was) a commercial website and devoted primarily not just to provision of information regarding the Complainant's Diamicron MR product, but providing advertising space to third party vendors offering for sale the Complainant's product and other products.
The Respondent contends that he is not responsible for the content of his website to the extent that it features material contributed by others. That is not so. If it were so, it would provide a ready means for online vendors to take the benefit of websites connected to domain names featuring the trade marks of others.
The Respondent is to be taken to be standing in the shoes of his advertisers from whom he derives important revenue, revenue to enable him to maintain his commercial website. In that respect, and assuming the products sold on the Respondent's site were authentic, the Respondent would be a "reseller" of the Complainant's Diamicron MR product. It is generally accepted by panelists that under certain circumstances resellers may indeed have a right or legitimate interest in respect of a domain name featuring the name of the branded product, but there are limitations as explained in the widely respected decision of the learned panel in Oki Data Inc. v. ASD Inc. WIPO Case No. D2001-0903. One of the limitations is that the website connected to the domain name in issue should be used exclusively for the sale of the product the subject of the trade mark appearing in that domain name.
It appears to the Panel that while the Respondent may have been using the Domain Name primarily in relation to the Complainant's Diamicron MR product, his third party advertisers, in whose shoes for this purpose he must be taken to stand, have also been using the banner advertising space for the sale of pharmaceuticals generally ("What is Diamicron MR and how to buy drugs online without prescription")
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
For the reasons explained in section C above, the Panel finds that in using for his domain name a trade mark and product description which so precisely identifies the Complainant's branded product and without any adornment sufficient to alert the Internet user that the site is not one of or associated with the Complainant, there is a very substantial risk that visitors to the website will believe that they are visiting an official/licensed website of the Complainant. In adopting such a domain name the Respondent is masquerading as the Complainant and for the purpose of attracting commercial traffic for commercial gain.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy. To the extent that the use complained of now appears to have been suspended (currently, the Domain Name resolves to an error page), the presence of the Domain Name in the hands of the Respondent represents, in the view of the Panel, an abusive threat hanging over the head of the Complainant (i.e., an abuse capable of being triggered by the Respondent at any time) and therefore a continuing abusive use.
E. Reverse Domain Name Hijacking
It follows from the above that in the view of the Panel, the Complaint was launched in good faith for a proper purpose, namely to protect the Complainant's trade mark from bad faith third party use. The allegation of Reverse Domain Name Hijacking is dismissed.
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, <diamicronmr.net>, be transferred to the Complainant.
Date: January 12, 2015