WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Endo Pharmaceuticals, Inc. v. Anonymous Registrant of percocet.com c/o Domains By Proxy, LLC / Peter Harrigan, Palm Partners
Case No. D2015-1955
1. The Parties
Complainant is Endo Pharmaceuticals, Inc. of Malvern, Pennsylvania United States of America (“United States”), represented by Cozen O’Connor, United States.
Respondent is Anonymous Registrant of percocet.com c/o Domains By Proxy, LCC of Scottsdale, Arizona, United States / Peter Harrigan, Palm Partners LLC of Delray Beach, Florida, United States, represented by Allen, Dyer, Doppelt, Milbrath & Gilchrist, P.A., United States.
2. The Domain Name and Registrar
The disputed domain name <percocet.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 30, 2015. On November 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 2, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 5, 2015 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 November 5, 2015.
The Center verified that the Complaint together with the 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 9, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2015. The Response was filed with the Center on November 28, 2015.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on December 2, 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.
Complainant submitted an additional submission on December 2, 2015. The Rules provide for the submission of a complaint by Complainant and a response by Respondent. No express provision is made 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.
On December 4, 2015, the Panel acknowledged receipt of Complainant’s supplemental email and allowed Respondent three days to comment on the matters raised in that email. Respondent submitted its additional submission with comments on December 7, 2015.
4. Factual Background
Complainant has been in the business of developing, manufacturing, marketing and distributing branded and generic pharmaceutical products, as well as over-the-counter medications, since 1916. Percocet is one of Complainant’s branded pharmaceutical products used for the treatment of mild to moderate pain.
Complainant has obtained trademark registrations for its PERCOCET mark in various jurisdictions throughout the world, including the European Community, the United Kingdom of Great Britain and Northern Ireland (“U.K.”), and the United States. These registrations include the following:
- United States Reg. No. 1,051,682 for the PERCOCET word mark for pharmaceutical analgesic preparations in International Class 5, registered on November 2, 1976, and used by Complainant in connection with those products at least as early as December 18, 1975.
- U.K. Reg. No. 2,127,787 for the PERCOCET word mark for pharmaceutical analgesic preparations in International Class 5, registered on September 19, 1997.
- CTM Reg. No. 003154366 for the PERCOCET mark for pharmaceutical analgesic preparations in International Class 5; package inserts, leaflets, pamphlets, booklets, and patient information sheets in Class 16, and informational services about medications in Class 44, registered on August 7, 2004.
Complainant’s Percocet pharmaceutical product generated USD 105,814,000 and USD 122,355,000 in the United States in 2013 and 2014, respectively.
Complainant owned the Domain Name at least as early as 2001 and until its registration expired in December 2012.
Respondent is the owner, founder and Chief Executive Officer of Palm Partners LLC. Founded in 1994, Palm Partners is a center for the treatment and recovery of drug and alcohol addictions. Respondent, through Palm Partners, offers twelve-step programs to ensure long-term recovery from these forms of addiction, including use of innovative treatment strategies. Palm Partners is located in Delray Beach, Florida, where it maintains and runs a wellness facility designed to provide individuals suffering from addictions with a safe, friendly, and positive living environment as they receive treatment.
Respondent purchased the Domain Name in October 2013.
5. Parties’ Contentions
Complainant states that its Percocet pharmaceutical product has been recognized as one of the top prescription painkillers in the world. Complainant asserts that the success of its product is due in part to its marketing and promotional efforts. These efforts include significant advertising and promotion of the PERCOCET trademark and its products through many channels. Complainant markets its branded products directly to physicians through a sales force of more than 600 individuals. Additionally, Complainant advertises through its website located at “www.endo.com” and through substantial print and other Internet-based advertising. Complainant states that as a result of Complainant’s efforts and the quality of Complainant’s products and services, the PERCOCET mark has acquired valuable reputation and goodwill among the public as consumers, purchasers and members of the public at large have become familiar with Complainant’s Percocet products.
Complainant further states that it sold its Percocet products, used its PERCOCET mark, and obtained relevant trademark registrations for the mark long before Respondent registered the Domain Name. Complainant has used the PERCOCET mark in connection with pharmaceutical products as early as 1975 and has maintained registrations for PERCOCET since 1976. Complainant asserts it has also gained significant common law trademark and other rights in its PERCOCET mark through use, advertising and promotion.
(i) Identical or confusingly similar
Complainant claims that Respondent acquired the Domain Name in 2013 or later. Given Complainant’s extensive, exclusive, and prior rights in its PERCOCET mark, Complainant urges there can be little question that Respondent purchased the Domain Name with full knowledge of, and with the intent to trade off of, Complainant’s pre-existing rights.
Further, Complainant contends that the Domain Name is confusingly similar to Complainant’s PERCOCET mark. Complainant has exclusive rights in the PERCOCET mark, which is the only mark used in Respondent’s registration of the Domain Name. It is well-established that when comparing a domain name and a trademark, the Top-Level Domain (“TLD”) extension can usually be ignored. Here, the Domain Name is essentially identical to Complainant’s well-known PERCOCET mark as it wholly incorporates the mark with only the addition of the generic “.com” TLD. Therefore, because the Domain Name is identical to the PERCOCET mark, consumer confusion is likely.
Since Complainant advertises, sells, and distributes its Percocet products and previously owned the Domain Name, consumers who now visit “www.percocet.com” are likely to be confused based on the false belief that the Domain Name is owned and operated by Complainant to promote and sell its Percocet products. Additionally, the PERCOCET mark is famous as a result of Complainant’s registration and use of PERCOCET in connection with pharmaceutical products for almost 40 years, Complainant’s significant advertising efforts, and the significant revenue derived from the sale of the PERCOCET branded products. Complainant contends that through the registration of the Domain Name, Respondent has diluted and continues to dilute the value of the goodwill Complainant has generated in the PERCOCET mark.
(ii) Rights or legitimate interests
Complainant states that Respondent is not affiliated with Complainant, nor has Complainant authorized Respondent to use its PERCOCET mark. There is no evidence to suggest that Respondent has registered the Domain Name to advance legitimate interests or for the bona fide offering of legitimate goods or services. The facts indicate the opposite and demonstrate that Respondent is seeking to prevent Complainant from using the Domain Name that incorporates Complainant’s PERCOCET mark to promote its goods.
Complainant states that Respondent is not using the Domain Name to advance legitimate interests or the bona fide offering of goods or services. Even if a domain name is partially intended as a commentary or criticism site, the use of a domain name is not considered a legitimate or fair use under paragraph 4(c)(iii) of the Policy if it is being used for commercial purposes. Here, although the Domain Name is used in connection with commentary and information related to Percocet addiction, it is also used for commercial purposes to advertise the Palm Partners Recovery Centers, nutritional supplements for pain relief, and other pain relief goods and services. The phone number displayed prominently at the top of the webpage is associated with Palm Partners Recovery Center, a drug rehabilitation center, and an advertisement and link for Palm Partners Recovery Center is also included on the webpage. Additionally, the webpage contains advertisements and links to pain relief related goods and services as well as information about nutritional supplements for pain relief that customers can use in lieu of the Percocet pharmaceutical product. As such, the Domain Name is used for commercial use and does not constitute fair use.
Complainant cites Pfizer, Inc. v. e2eTech LLC, WIPO Case No. D2007-0099, to contend that a respondent’s use of a domain name to divert Internet users seeking information about a complainant or its products is not legitimate or fair use. Similar to the situation in Pfizer, Inc., Complainant states that Respondent here has registered the Domain Name so that consumers searching for information about Complainant’s Percocet product are diverted to Respondent’s website where information about pain relief dietary supplements, as well as links to pain relief goods and services, are provided. Therefore, Respondent’s use of Complainant’s well-known PERCOCET trademark in the Domain Name improperly diverted profits away from Complainant by directing consumers seeking information about Complainant’s product to competing third-parties offering pain-relief related goods and services.
Complainant asserts that since Respondent registered the Domain Name anonymously, Respondent is not commonly known by the Domain Name. Moreover, Respondent registered the Domain Name after Complainant’s registration had expired in December 2012, which was well after the PERCOCET mark became well-known worldwide in the pharmaceutical industry. Respondent cannot provide any legitimate basis for its registration of a Domain Name that wholly incorporates Complainant’s PERCOCET mark. Complainant argues that using the Domain Name to directly infringe upon Complainant’s rights in its registered PERCOCET mark, preventing Complainant from being able to register and use the Domain Name to advertise its Percocet products, creating initial interest confusion and diverting profits away from Complainant, demonstrate Respondent’s illegitimate purpose. Consequently, Respondent’s actions and activities surrounding the Domain Name demonstrate a lack of a legitimate interest or a bona fide offering of legitimate goods.
(iii) Registered and used in bad faith
Complainant contends that Respondent registered the Domain Name and is using it in bad faith because Respondent registered it primarily to disrupt Complainant’s business and to benefit commercially from the consumer confusion generated by the unauthorized use of the PERCOCET trademark.
Complainant states the Domain Name was registered primarily to disrupt Complainant’s business as it was registered with knowledge of Complainant’s prior rights in the mark and the website associated with the Domain Name contains information and links referring to competing pain-relief products and services. It is clear that Respondent registered the Domain Name with knowledge of Complainant’s rights in the PERCOCET mark. The PERCOCET mark has become well-known as a result of Complainant’s extensive print, online, and other advertising, and the website linked to the Domain Name contains an image of Complainant’s PERCOCET product. Further, the website contains information about competing dietary supplements for pain-relief as well as links to competing pain-relief goods and services.
Additionally, Complainant maintains that Respondent’s registration of the Domain Name demonstrates an attempt to take commercial advantage of Complainant’s trademark and commercial reputation and to trade off of Complainant’s goodwill, in which Complainant has invested significant time, effort, and resources. Here, the Domain Name is identical to the PERCOCET mark, and contains an image of the Percocet product so that consumers are initially brought to the website linked to the Domain Name through their search for Complainant’s products. However, once they are directed to Respondent’s website, they are presented with advertisements for Respondent’s drug rehabilitation services as well as advertisements for competing products. Accordingly, Respondent has, at a minimum, registered the Domain Name attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s PERCOCET mark as to the source, sponsorship, affiliation or endorsement of the website, which is a circumstance of bad faith registration pursuant to Policy, paragraph 4(b)(iv).
Lastly, an investigator acting on behalf of Complainant contacted the last registrant of the Domain Name before it became privately registered. Complainant claims that the prior registrant offered to sell the Domain Name for a minimum of USD 10,000. Such offer to sell the Domain Name for at least US$ 10,000 is evidence of use of the Domain Name in bad faith and that the prior registrant may be working with Respondent to use it in bad faith. Although the underlying registrant information provided to Complainant by the Center shows that the current registrant of the Domain Name is Respondent, the prior registrant offered to sell the Domain Name on November 2, 2015 after the Complaint filing showing that he may be working with Respondent and/or that this Domain Name has recently been transferred to Respondent.
In summary, Complainant claims that Respondent’s actions, coupled with registering a Domain Name that incorporates the term Percocet, which is an invented word with no specific meaning in any language and has a high degree of individuality, inherent distinctiveness and no common colloquial use, demonstrate the purposes of disrupting the business of Complainant and causing consumer confusion while divesting profits away from Complainant, which display bad faith.
Supplemental submission: In its supplemental submission Complainant takes issue with certain arguments made in Respondent’s Response. While Respondent argues that its website at “www.percocet.com” is being used for fair use commentary and criticism, Complainant asserts that Respondent fails to adequately advise the Panel of the blatant advertisements for Respondent’s own detox center depicted prominently on the top of the website, nor does Respondent advise the Panel of its use of the image of Percocet packaging on the top of the page, or whether the free telephone “888” number on the site includes advertisements or promotional materials for Respondent’s detox center.
Regarding Respondent statements that it did not intend to tarnish Complainant’s trademark and there is no evidence of bad faith, Complainant asserts that Respondent fails to advise the Panel that Respondent’s website includes false statements concerning Complainant’s Percocet product, namely, that “Percocet is no longer available in the United States. The good news is that there are natural alternatives to Percocet that you can take.” This false statement is made to draw consumers away from purchasing the Percocet drug and acts to tarnish the Percocet brand. Finally, while Respondent submits that there is no evidence of initial interest confusion by relying on printouts from a Google search, Complainant provides a search from the Bing search engine, which shows that Respondent’s website appears when searching for “Percocet”, suggesting that initial interest confusion is likely (e.g., Respondent’s website appears fifth in the search results).
Respondent states that he has spent the majority of his career and his personal funds advocating for the advancement of treatment recovery programs with regard to drug addiction, including but not limited to prescription drug addiction. This work includes the April 2009 formation of The Harrigan Foundation, which provides scholarships for those in financial need for addiction counseling. Respondent states that he, as well as Palm Partners and The Harrigan Foundation, have been concerned over the rise of prescription pain medication addictions, including drugs like Complainant’s Percocet branded pharmaceutical.
Respondent claims that in October 2013 the Domain Name became available for registration after Complainant apparently failed to pay renewal fees. Respondent states that while Complainant claims to have maintained that Domain Name for over a decade, Complainant’s decision not to renew gave the appearance of an intent to no longer use the Domain Name. Respondent states that, through a third-party domain name broker, Respondent paid USD 40,000 to purchase the Domain Name from an unrelated and unknown third-party. Respondent notes that prior to this dispute, he was unaware of and had no communication with the prior registrant identified by Complainant, and was not associated with him [ ], as suggested by Complainant.
Respondent contends that through Palm Partners, Respondent maintains the website linked to the Domain Name for purposes of assisting individuals who suffer from addiction to prescription pain medications, including Complainant’s Percocet brand. Respondent claims that through Palm Partners’ addiction counselors, Respondent provides free and no obligation counseling to approximately 300 individuals per month who, upon visiting “www.percocet.com”, believe that they may have an addiction to that prescription drug medication. Respondent states that it provides service for free and absorbs the cost as part of its operating budget. Respondent contends that, to date, Respondent is unaware of anyone who has visited “www.percocet.com” within the last two years (since October 2013), who chose to enroll in Respondent’s addiction recovery program based on visiting the website linked to the Domain Name or the content provided there.
(i) Rights or legitimate interests
Respondent contends that its registration of the Domain Name was not for the purpose of selling any form of competing prescription pain medications or to compete with Complainant, but instead was intended to be used for a commentary or criticism site to provide information related to Percocet addiction. Respondent urges that, tellingly, Complainant’s allegations fail to include the actual content, information and relevant materials posted by Respondent on the website linked to the Domain Name, and Respondent provides several clips from the website. Respondent states that a review of the content shows how the website at “www.percocet.com” is being used for legitimate fair use commentary and criticism, rather than to tarnish Complainant, all of which is appropriate under paragraph 4(c)(iii) of the Policy. Respondent maintains that under the Policy it is a legitimate use of another’s trademark if the primary purpose of the site is fair use, so long as the intent is not for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
Respondent includes pictures of the homepage of the website linked to the Domain Name. Respondent argues that it has made fair use of the Domain Name and states there are four primary purposes for its use of the Domain Name: (i) to recommend seven natural non-habit-forming supplements to those suffering from acute pain, instead of the addiction-risked use of Percocet. None of the supplements are sold by Respondent or Palm Partners; (ii) to identify six signs that someone has an addiction for Percocet for the purpose of addressing the addiction or seeking treatment; (iii) providing a general phone number to provide free (and no obligation) live support to review this information, should one of those six signs indicate a possible issue; and (iv) if there is a belief of potential addiction, to offer guidance free of charge and without obligation from Respondent to address potential options including at other third-party addiction treatment centers not affiliated with Respondent’s Palm Partners.
Respondent contends that this information is not meant to tarnish Complainant’s trademark, including links to third-party information sites at “www.drugs.com/percocet” providing information from the New York Times June 2009 article addressing a potential United States Food and Drug Administration (“FDA”) ban of the Percocet prescription drug. Thus, the purpose of Respondent’s use of the Domain Name is not to misleadingly divert consumers as suggested by Complainant. Instead, the information provides criticism, commentary and facts regarding addiction to this drug. Respondent and Palm Partners does not offer for sale or sell any dietary supplement or prescription drug in competition with Complainant. The primary purpose of the site linked to the Domain Name is to provide information about addiction to prescription pain medications, and to offer a live person to address such potential addictions where the call is free of charge to the caller.
Respondent states its intent in registering the Domain Name was not for commercial gain to misleadingly divert consumers, and Respondent is not in competition with Complainant. Respondent argues that the Complaint seeks to avoid an objective review of the primary information posted on the site linked to the Domain Name. Complainant cites one case, Pfizer Inc. v. e2dTech, LLC, supra, to argue that a partial commentary site is not legitimate fair use. However, that opinion addressed a scenario where the respondent did not reply and instead defaulted, leaving only Pfizer’s representations. The panel indicated that there was evidence that respondent maintained a website to sell various products online, which factored against the other genuine criticisms made such as “Thank’s [sic] For Nothing Pfizer.” In the instant case, there is no evidence of direct sales of products made by Respondent. Respondent does not sell any dietary supplement or pain killer in competition with Complainant. Thus, Respondent urges that Complainant’s reliance on the Pfizer case is misguided.
Respondent argues Complainant is unable to show that the commentary and criticism provided at the site linked to the Domain Name, while potentially having an indirect benefit to Respondent by providing general information to address addiction treatment, is clearly intended for commercial gain to misleadingly divert consumers. Conclusory allegations by Complainant that Respondent secured Complainant’s mark in the Domain Name with an intent to divert customers or otherwise trade on the goodwill and name of Complainant does not negate a legitimate use in a protest site, especially when the underlying website does not promote, sell, or distribute any of Complainant’s products or services. Moreover, Respondent asserts that fair use criticism does not equate to tarnishment of a trademark and is not prohibited under the Policy.
Respondent contends that the underlying fact that a respondent makes an indirect commercial gain through use of a domain name, which includes a complainant’s mark, does not obviate the fact that fair use is being made under paragraph 4(c)(iii) of the Policy. Moreover, so long as the principal purpose of the site is not for commercial gain, the exercise of the First Amendment constitutional right to criticize and comment about a complainant does not negate a legitimate use under the Policy. Respondent states that the phone number on the website linked to the Domain Name is provided to offer free and no obligation live support to review information should one of the six signs of addiction addressed at the site reveal a possible addiction issue. While there is general information about Respondent’s addiction counseling center, it is intended only to offer guidance from an addiction counselor should there be a true risk of addiction. Respondent contends these facts do not negate the principal focus of the website, which is to offer legitimate criticism over the addicting nature of the prescription pain-killing drug Percocet.
Respondent contends that the exact use of Complainant’s PERCOCET mark in the Domain Name does not negate legitimate use. Respondent cites UDRP cases to respond to the allegation by Complainant that “Respondent is seeking to prevent Endo from using the domain name that incorporates Endo’s PERCOCET mark to promote its PERCOCET goods”. Respondent claims this allegation is unfounded because registration of a domain name using Complainant’s exact mark for making a fair use, without intent of commercial gain to misleadingly divert consumers or tarnish the trademark, constitutes legitimate use under paragraph 4(c)(iii) of the Policy. Moreover, the underlying information contained on Respondent’s website does not have to explicitly criticize the Complainant but rather need only make information available for commentary. Respondent further argues that Complainant fails to substantiate how Respondent is using the Domain Name to divert Internet users from seeking information regard Complainant or its products. Moreover, Respondent has only registered one website that includes the PERCOCET mark, and thus has not prevented Complainant from registering other similar domain names to address sales of this prescription pharmaceutical.
Respondent also contends there is no evidence of initial interest confusion. The theory of initial interest confusion is whether members of the public are confused for even a moment as to the source of the website to which the Domain Name resolves. Respondent cites Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206, to argue that the potential for initial confusion is most apparent at the search engine stage when people enter a name and bring up a list of sites containing that name. Respondent indicates there is lack of objective evidence of initial interest confusion because a Google search of the term “Percocet” shows that this search engine’s results fail to include Respondent’s website.
(ii) Registered and used in bad faith
Respondent contends that its registration of the Domain Name was not done in bad faith. Respondent states that Complainant’s statements regarding bad faith are conclusory with little or no substance. Respondent further states that its registration of the Domain Name for USD 40,000 was not designed to be misleading or confusing, nor meant to drive prescription drug sales away from Complainant. Instead, it was intended to help identify whether individuals may be suffering from addiction to PERCOCET branded pain killers. Moreover, Respondent does not sell any form of medications or dietary supplements. Respondent’s business is focused on providing information regarding drug addiction and related counseling.
Respondent claims its purpose in registering the Domain Name was to provide information regarding possible addiction to Percocet, not to disrupt Complainant’s business sales. Moreover, Respondent asserts that Complainant’s naked and unsupported remarks about how Respondent registered the Domain Name with the intent to disrupt business and to intentionally attract, for commercial gain, online users away from Complainant are not sufficient by themselves to establish bad faith. The fact that Respondent is not a competitor of Complainant also indicates there is no evidence of bad faith based on an attempt to disrupt the business of Complainant.
Respondent states that Complainant has mistakenly indicated that the website linked to the Domain Name contains information regarding dietary supplements for pain relief as well as links to competing pain-relief goods. However there are no such links. The only content apart from written content is a third-party YouTube video (not affiliated with Respondent), which addresses the benefits of fish oil but does not promote or sell any type of fish oil. General information on the benefits of fish oil does not amount to competing pain-relief products that divert business from Complainant. Moreover, the Domain Name has not been used by Respondent to post advertisements for Complainant’s competitor prescription drug makers.
Respondent states that it has not taken advantage of the commercial reputation of Complainant’s PERCOCET mark and has not tried to trade off of Complainant’s goodwill. Respondent uses the website to provide information about potential addiction risks to the drug as well as providing reference to a prior review by the FDA for possible effects on the liver. Such statements do not suggest that Respondent’s content seeks to “take commercial advantage of [Complainant’s] trademark and commercial reputation and to trade off of [Complainant’s] goodwill.” Moreover, the content on the website rebuts Complainant’s representation that “once [consumers] are directed to Respondent’s website, they are presented with advertisements for Respondent’s drug rehabilitation services as well as advertisements for competing products.”
As its last support for this theory of bad faith registration, Complainant avers that “Respondent, at a minimum registered the domain name attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion with Endo’s PERCOCET mark as to the source, sponsorship, affiliation or endorsement of the website.” In response, Respondent states the purpose for use of the Domain Name is to assist individuals who suffer from addiction to prescription pain medications, including Complainant’s PERCOCET brand. Respondent provides free and no obligation counseling to approximately 300 individuals per month who, upon visiting the website at “www.percocet.com”, believe that they may have an addiction to prescription drug medication. Respondent states that through Palm Partners, it provides the service for free and absorbs that cost as part of its operating budget.
Finally, Respondent also states he had no prior knowledge or affiliation with the prior registrant, who was named in the Complaint. Complainant attempts to link], the purported last record owner of the Domain Name, to Respondent, alleging that he] “may be working with the Respondent to use the domain name in bad faith.” However, Respondent states it acquired the Domain Name from a third-party broker and has never had contact with such prior registrant referred to by Complainant and is in no way affiliated or associated with him. The first time Respondent had ever heard of him was in this action.
Supplemental submission: In its supplemental submission Respondent argues that concerning Complainant’s first assertion (regarding “blatant advertising of Respondent’s own detox center”), Complainant fails to provide any screen shot, controlling evidence, or related support. Respondent states it does not hide its identity as the source and author of the content on the website linked to the Domain Name. The site provides factual information about Respondent and its services (which again do not compete with Complainant), as well as how individuals can seek information about opiate addiction. Respondent repeats that a general phone number is provided to provide free and no obligation live support to review the information on the site, as well as information about Palm Partners. And if there is a belief of potential addiction, the number is provided to offer guidance (again, free of charge without obligation) from Respondent to address potential options including at other third-party treatment centers not affiliated with Palm Partners. Moreover, Respondent does not compete with Complainant and does not sell any form of dietary supplements or prescription drugs that compete with Complainant. Respondent states that since it acquired the Domain Name, it is unaware of anyone who based on visiting the website linked to the Domain Name enrolled at Palm Partners.
Respondent states that the banner at the top of the website is not used in a manner to suggest any affiliation or sponsorship with Complainant. Regardless, the use of a complainant’s logo without permission does not preclude a finding of fair use of such logo under the policy. Respondent rejects Complainant’s contention that suggestions of alternative natural remedies may “draw consumers away from purchasing the PERCOCET® drug and acts to tarnish the PERCOCET® brand.” Respondent asserts that the drug is a prescription opiate and as such, the decision maker is the prescribing physician. With regard to Complainant’s allegation of a false statement that tarnishes Complainant’s PERCOCET brand, Respondent indicates that the information on the website while admittedly exaggerated for purposes of commentary, is in-line with public reports regarding Percocet, which show a decrease in the domestic use. Whether it was appropriate to phrase this criticism as an end to use of Percocet within the United States is not something that should be decided under the Policy. Moreover, as provided for in Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505, fair use criticism, even if libelous, does not constitute tarnishment and is not prohibited by the Policy; rather, claims sounding in commercial libel must be brought in other legal venues.
Regarding Complainant’s reference to search results using the Bing search engine, Respondent highlights that its site comes up as fifth in the search results and such search results are inconsequential when one looks at the usage of Bing in comparison to the use of Google. Recent November 2015 web analytics confirm that Google maintains over 70 percent of market share, while Bing is only used by 12 percent of consumers.
6. Discussion and Findings
The Panel notes at the outset that the parties have submitted comprehensive and thoughtful submissions in this case. 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 trademark registrations dating from 1975 for its PERCOCET trademark, including in the United States where Respondent is located. Complainant’s Percocet pharmaceutical product has generated hundreds of millions of dollars in sales for Complainant. The Panel finds that the PERCOCET mark has been widely promoted by Complainant and the mark is
well-known in the pharmaceutical field and the United States. Moreover, the Panel finds that the Domain Name is identical to Complainant’s PERCOCET trademark, except for the “.com” TLD. Respondent has not attempted to dispute this point. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 (“[t]he threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion.”).
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 sufficiently rebut that case. Complainant has indicated that Respondent is not known by the Domain Name and has not used it in connection with a bona fide offering of goods or services. Indeed, Respondent has not attempted to claim rights or legitimate interests in the Domain Name based on paragraphs 4(c)(i) or 4(c)(ii) of the Policy. Respondent registered the Domain Name anonymously and is not commonly known by the Domain Name; instead, Respondent and its company, Palm Partners, are known by different names. See Policy, paragraph 4(c)(ii). Further, there is no dispute that Respondent has not used the Domain Name (or a name corresponding to the Domain Name) in connection with a bona fide offering of goods or services. See Policy, paragraph 4(c)(i).
Respondent obtained the Domain Name – which incorporates and is identical to Complainant’s well-known PERCOCET trademark – in October 2013, years after Complainant’s PERCOCET mark became well-known in the pharmaceutical industry and in the United States where Respondent’s business is located. As is evident from the content of Respondent’s website, Respondent selected the Domain Name deliberately and precisely because it is identical to Complainant’s PERCOCET mark. Complainant did not authorize Respondent to use Complainant’s PERCOCET mark. The key issue in the case, therefore, is whether Respondent is 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, in accordance with paragraph 4(c)(iii) of the Policy.
The circumstances that UDRP panels have taken into account in considering whether putative criticism websites generate any rights or legitimate interests for respondents are discussed in detail in paragraph 2.4 of the WIPO Overview 2.0. Paragraph 2.4 states that “[t]here 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.” Moreover, paragraph 2.4 indicates that prior UDRP panels have noted that, even if legitimate, “[t]he 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.”
Under the circumstances of this case, the Panel finds that Respondent’s use of the Domain Name, which is identical to Complainant’s well-known PERCOCET trademark, does not qualify as a “legitimate noncommercial or fair use” under paragraph 4(c)(iii) of the Policy. The Panel is aware that Respondent, as indicated in its Response, is a large and recognized commercial enterprise offering fee-based services to individuals seeking treatment for drug and alcohol addiction, including possible addiction resulting from Complainant’s Percocet pharmaceutical product. The Panel does not overlook the importance of dealing with problems of drug addiction and that Respondent may provide valuable services to many individuals facing addiction. However, Respondent as a commercial enterprise, at least in regards to a claim of fair use of Complainant’s well-known PERCOCET mark, is in a very different position from a person who might use the mark (especially in combination with another word) in a domain name for a completely noncommercial website raising comment and criticism concerning Percocet. Respondent’s business is based upon treating individuals who are faced with addiction and seeking recovery from addiction to drugs such as Percocet. Using the trademark PERCOCET (without any qualifying term) in the Domain Name allows Respondent, as a commercial enterprise (in a related field although not in direct competition with Complainant) to capitalize on the reputation that Complainant has established in its well-known PERCOCET mark, so that a large number of Internet users looking for information about Percocet become aware of Respondent’s services. The Domain Name gives rise to a degree of initial confusion that brings users to Respondent’s website, and there is no additional word in the domain name (e.g., such as “addiction”, “recovery”, “problems” or “sucks”) that would convey a different meaning to the user. Those Internet users who might have been looking for information from Complainant about its Percocet pharmaceutical product are instead diverted to Respondent’s website. While Respondent states it is unaware of any client who enrolled in its Palm Partners Recovery Center based on visting the website linked to the Domain Name, this does not establish that the website has had little or no commercial impact, as it has garnered almost 300 callers per month, according to Respondent.
As regards paragraph 4(c)(iii) of the Policy, the Panel notes that Respondent may also have been providing what it regards as fair comments and criticisms concerning Complainant’s Percocet pharmaceutical products on the website; however, the site also clearly advertises Respondent’s services, which precludes a finding that the Domain Name was in use for the purposes of a noncommercial criticism site. In response to Respondent’s arguments concerning its legitimate interest in providing comment and criticism, the Panel recognizes that individuals are entitled to express their views in a wide variety of different ways and to various audiences, subject to certain legal restrictions including in particular the laws of defamation (which are outside the scope of the UDRP). However, in the Panel’s view, this case is distinguishable from the cases cited by Respondent because Respondent is a large commercial enterprise in a field related to (although not directly in competition with) Complainant’s pharmaceutical products, and is using the website linked to the Domain Name (which is identical to Complainant’s PERCOCET mark) to advertise the services of its Palm Partners Recovery Center. In this context, the interest in freedom of speech does not extend to an entitlement to disseminate its views by deliberately and misleadingly using Complainant’s well-known PERCOCET trademark, without qualifier, in order to maximize the numbers in its audience while promoting its business. That is an inherently deceptive practice and indicative of Respondent’s intent to profit from Complainant’s reputation in its PERCOCET Mark. The Panel also observes that the vast majority of cases decided to-date by panels under the “initial confusion” type rationale appear to concern domain names falling into this identical <trademark.tld> category.
Accordingly, in view of all of the facts and circumstances in this case, the Panel determines that Respondent has no rights or legitimate interests in the Domain Name which is identical to Complainant’s well-known PERCOCET mark.
C. Registered and Used in Bad Faith
The Panel determines that the Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy provides four circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. However, the circumstances set out in paragraph 4(b) of the Policy are illustrative and non-exclusive. In this case, particularly where Complainant’s PERCOCET trademark is so strong and distinctive, including in the United States where Respondent is located, the Panel finds that Respondent registered and is using the Domain Name in bad faith in order to exploit Complainant’s reputation in its PERCOCET mark.
First, there is no dispute that Respondent, as discussed above, specifically had in mind Complainant and its PERCOCET well-known trademark when it registered the Domain Name. In other words, Respondent targeted Complainant and its PERCOCET mark when registering the Domain Name. The Panel finds that this amounted to bad faith registration because Respondent took unfair advantage of the distinctive character and reputation of Complainant’s PERCOCET mark, which is a coined term, engaging in a form of free-riding through use of the Domain Name, which is identical to Complainant’s PERCOCET mark, to create initial confusion for Internet users.
Respondent’s bad faith registration of the Domain Name is further confirmed by Respondent’s bad faith use. Respondent contends that it has no bad faith intent to mislead Internet users, because the content of the website associated with the Domain Name was intended for comment and criticism. As noted above, objective comment and criticism in itself is a potentially legitimate and good faith activity. However, this does not change the fact that the Domain Name, identical to Complainant’s PERCOCET mark, misleadingly suggests a connection with Complainant and then leads the user to a website where, as discussed above, the dominant impression is one of advertising the services of Respondent’s Palm Partners Recovery Center.
The Domain Name gives rise to a degree of initial confusion that brings users to Respondent’s website. While Respondent is not a direct competitor of Complainant, Respondent is in a field that is related to Complainant’s pharmaceutical Percocet drug, by providing counseling and recovery services to individuals who are facing addiction for misuse of Percocet or other drugs and alcohol. Using the trademark PERCOCET (without any qualifying term) in the Domain Name allows Respondent, as a commercial enterprise, to capitalize on the reputation that Complainant has established in its well-known PERCOCET mark, so that Internet users looking for information from Complainant about its Percocet pharmaceutical product are instead diverted to Respondent’s website and become aware of Respondent’s services. Prospective users who mistakenly access Respondent’s website may fail to continue to search for Complainant’s information due to confusion or frustration. Thus, the Panel finds that Respondent’s conduct is disruptive of Complainant’s business and falls within the Policy, paragraph 4(b)(iv).
Respondent is free to raise fair and objective comments, concerns and criticisms regarding the serious health hazards associated with addiction to drugs, including Complainant’s Percocet pharmaceutical product. However, what Respondent cannot do is use, without authorization, Complainant’s well-known PERCOCET trademark as an arrow to bring Internet users to a website where it advertises the services of its Palm Partners Recovery Center. See, e.g., Pfizer Inc. v. e2eTech LLC, supra; Anastasia International Inc. v. Domains by Proxy Inc./rumen kadiev, WIPO Case No. D2009-1416; People for the Ethical Treatment of Animals, Inc. v. Doughney, 263 F.3d 359 (4th Cir. 2001).
The Panel finds that the Domain Name was registered and is being used in bad faith, satisfying the third element of the Policy.
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, <percocet.com>, be transferred to Complainant.
Christopher S. Gibson
Date: January 5, 2016
1 As one scolls down through the website, additional information is provided under the following headings: “7 Supplements that Provide Natural Pain Relief”; “6 Signs That You or a Loved One Has a Percocet Addiction”; “18 Oxycodone Addiction Symptoms”; and “The Percocet Primer”, which includes information under the headings “Percocet Addiction”, “FDA Ban”, “Side Efffects” and “Conclusion”. In addition, there is no disclaimer on the website to indicate Respondent’s status vis-a-vis Complainant (e.g., non-affiliation or otherwise).