WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eli Lilly and Company and Novartis Tiergesundheit AG v. Registration private, Domains by Proxy, LLC / Bob Singh and Registration private, Domains by Proxy, LLC/ Manny Ghumman
Case No. D2016-0053
1. The Parties
Complainants are Eli Lilly and Company of Indianapolis, Indiana, United States of America (“US”) and Novartis Tiergesundheit AG of Basel, Switzerland, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, US.
Respondents are Registration private, Domains by Proxy, LLC of Scottsdale, Arizona, US / Bob Singh of Norfolk, Nebraska, US and Domains by Proxy, LLC of Scottsdale, Arizona, US / Manny Ghumman of Hayward, California, US.
2. The Domain Names and Registrar
The disputed domain names <buycapstar.com> and <discountcapstar.com> (the “Domain Names”) are registered with Wild West Domains, LLC (“the Registrar”)
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2016. On January 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On the same date, the Registrar transmitted by email 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 email communication to Complainants on January 19, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amended Complaint on January 21, 2016.
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 January 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 15, 2016.
A reply was filed with the Center on February 12, 2016 in the form of an email from HealthyPets, Inc. On February 15, 2016 the Center sent an email to the Parties inviting the Parties to consider suspension of the proceeding for purposes of exploring settlement options. No further response was received from the Complainants, and on February 23, 2016 the Center notified the Parties that it would continue in the administration of the proceeding.
The Center appointed Clive Elliott, Q.C. as the sole panelist in this matter on March 2, 2016. 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
According to WhoIs the Domain Names were registered as follows:
(a) <buycapstar.com> was registered on September 17, 2007; the registrant is Bob Singh; and
(b) <discountcapstar.com> was registered on January 15, 2008; the registrant is Manny Ghumman.
5. Parties’ Contentions
Complainants assert that whilst the Registrar has identified separate underlying registrants for each of the two Domain Names, the Domain Names are held and controlled by the same entity, HeathyPets, Inc. Factors supporting this assertion and relied upon by Complainants are:
1. Bob Singh, registrant for <buycapstar.com>, is the Vice President of Operations at HealthyPets, Inc and Manny Ghumman, registrant for <discountcapstar.com>, is the CEO, President and an owner of HealthyPets, Inc.
2. The contact information for the Domain Names is similar. The registrant, administrative and technical e-mail address for both the Domain Names is the same.
3. The websites at the Domain Names appear to be almost identical.
4. The Domain Names provide links primarily to two websites: “www.healthypets.com” and “www.entirelypets.com”. HealthyPets, Inc. owns and controls both websites. The home page for “www.heathypets.com” states at the bottom that HealthyPets, Inc. owns the copyright to the site. For the mark ENTIRELYPETS, HealthyPets, Inc. is identified as the owner of the trademark. Likewise, the home page of “www.entirelypets.com” shows use of the ENTIRELYPETS trademark. The CAPSTAR page on “www.healthypets.com” states “You can also find Capstar at EntirelyPets”.
Complainants submit that on the basis of the above, in this instance a single complaint should be allowed. The Panel accepts this submission and proceeds accordingly.
Complainants state that Eli Lilly and Company, through its Elanco Animal Health Division, is a world leader in developing products and services that enrich animal health, wellness and performance, and that Novartis Tiergesundheit AG, is a wholly-owned subsidiary of Eli Lilly and Company (for convenience, unless otherwise indicated, separately and collectively called “Complainants”).
Complainants state that since as early as 2000 it, and its predecessor-in-interest, Novartis AG, have used the trademark CAPSTAR in connection with the advertising, marketing and sale of flea control medicines for pets. Complainants own the US registration number 2,510,863 CAPSTAR for “veterinary pharmaceutical preparations for controlling fleas,” which is in the name of its subsidiary Novartis Tiergesundheit AG.
Complainants assert they own valid and subsisting trademark registrations in numerous countries and jurisdictions around the world for the CAPSTAR mark in the name of its subsidiary Novartis Tiergesundheit AG.
Complainants assert that it and its predecessors-in-interest have sold millions of dollars’ worth of flea-control products under the CAPSTAR mark around the world and have expended significant amounts of money to advertise and promote these products under the CAPSTAR mark. As a result of this extensive sales, promotion, and advertising, the CAPSTAR mark is well-known among pet-owning consumers in the US and elsewhere, and represents valuable goodwill owned by Complainants.
Complainants claim that the Doman Names are confusingly similar to its CAPSTAR mark as the Domain Names incorporate the word “capstar”, together with either the word “buy” or “discount” and the generic Top-Level Domain (“gTLD”)“.com.”
Complainants also contend that the websites at the Domain Names each look deceptively like they are official sites owned by Complainants or authorized by Complainants. For example, they each display the CAPSTAR mark at the top of the home page, and use a simulation of the star design in CAPSTAR used by Complainants in the packaging for the products. The sites clearly display Complainants’ CAPSTAR product packaging, and provide detailed information about the products. The sites also state: “With CAPSTAR™ by NOVARTIS, almost all your dog’s or cat’s adult fleas will be gone within four hours.” Complainants point out that this suggests that the sites are sponsored by Novartis Tiergesundheit AG, or Novartis AG, Complainants’ predecessor-in-interest, and notes that nowhere on the sites do they say that they are not connected with Complainants or “Novartis.”
Additionally, the websites market CAPSTAR for sale through apparently affiliated websites that also offer competing products. In particular, when a user attempts to purchase CAPSTAR products from the <buycapstar.com> and <discountcapstar.com> sites, they are re-directed to the websites located at <healthypets.com> and <entirelypets.com>, respectively. A user may then purchase the CAPSTAR products from those websites. Moreover, the websites located at <healthypets.com> and <entirelypets.com> allow users to buy not only Complainants’ CAPSTAR products, but also flea control products that compete with Complainants’ CAPSTAR products. For example, when a consumer places CAPSTAR products in the online cart on <healthypets.com>, a list of “related items” appears below the cart items, including “Advantage” and “Frontline”, flea control products that compete with Complainants’ CAPSTAR products.
Similarly, when a consumer views the CAPSTAR product pages on <entirelypets.com>, a list of “related items” is shown beneath the product, which includes various flea control products not owned by Complainants, such as “Flea Away” flea control products owned by Fleaaway.com, and “Ovitrol Plus Flea & Tick” shampoo for dogs and cats. When a consumer adds CAPSTAR products to the cart, a section called “Customers Also Bought” appears below the cart items, which includes flea control products not owned by Complainants such as “Green Pet Fleaze-Off”, “Advantix”, and “Fiproguard Flea & Tick Squeeze-On”. Thus, Respondent uses the Domain Names containing Complainants’ CAPSTAR mark to market, without Complainants’ authorization, not only CAPSTAR products in a manner that makes it appear that they come from Complainants, but also the products of Complainants’ competitors and other pet product companies.
Since the websites located at the Infringing Domain Names market Complainants’ CAPSTAR products, and offer the chance to buy CAPSTAR and other competing pet products at affiliated websites, Complainants suggest that Respondents intend to trade off Complainants’ goodwill in the CAPSTAR mark.
Complainants assert that Respondents have registered the Domain Names many years after the registration of Complainants’ CAPSTAR mark, and that Respondents are not authorized or licensed to use Complainants’ CAPSTAR mark or any domain names incorporating “capstar”.
Complainants suggest that as Respondents have wholly incorporated the CAPSTAR mark into the Domain Names to attract consumers, for commercial gain, to sites that are not authorized by Complainants. Such use cannot be considered bona fide use.
Complainants contend that Respondents are not commonly known by the Domain Names and have not acquired any trademark or service mark rights to use those names, nor have they obtained rights in the CAPSTAR mark, and further that Respondents’ use of Complainants’ CAPSTAR mark in domain names that direct users to websites that sell pet products which compete with Complainants’ products undercuts any plausible claim to legitimate use.
Complainants claim that Respondents knew of Complainants’ rights in the CAPSTAR mark, as the websites located at the Domain Names both refer to “CAPSTAR™ by NOVARTIS.”
On February 12, 2016 the Center received an email from Mr. Padilla of HealthyPets, Inc advising that it would prefer to resolve the issue of the use of the Capstar trademark with Complainants but was having difficulty contacting the correct department and requested contact details. On February 15, 2016 the Center sent an email to the Parties suggesting a suspension of the proceeding to give the parties time to explore settlement options. No further response was received from Complainants, and the proceeding continued.
6. Discussion and Findings
A. Identical or Confusingly Similar
It is clear that Complainants have for many years used and sought protection for the trademark CAPSTAR (“Complainants’ Trademark”) in connection with, inter alia, a range of flea remedies or as more precisely defined “veterinary pharmaceutical preparations for controlling fleas”. Complainants assert, without effective dispute from Respondents, that Complainants’ Trademark is used and registered in a number of countries around the world and that Complainants enjoy a worldwide reputation.
Complainants note that the Domain Names incorporate Complainants’ Trademark in its entirety and that the only difference between the Domain Names and Complainants’ Trademark is that the Domain Names use the descriptive terms “buy” and “discount” along with the gTLD“.com”.
The terms “buy” and “discount” each has an immediately apparent descriptive character in relation to the word “capstar” and thereby emphasize its trademark function thus creating a confusing similarity between the Domain Names and Complainants’ Trademark.
The Domain Names are confusingly similar to Complainants’ Trademark. The addition of the gTLD “.com” does little to remove this confusing similarity and indeed has no material influence on the assessment of the confusing similarity between the Domain Names and Complainants’ Trademark.
The Panel finds:
a) Complainants have clearly established rights in respect of the Complainants’ Trademark.
b) The Domain Names are confusingly similar to Complainants’ Trademark.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
B. Rights or Legitimate Interests
Complainants allege that the Domain Names resolve to websites located at <healthypets.com> and <entirelypets.com> and that this allows users to buy not only Complainants’ CAPSTAR products, but also flea control products that compete with Complainants’ CAPSTAR products. Numerous examples are provided of this type of conduct and Respondents do not dispute that this is the case.
Having failed to avail themselves of the opportunity to file a formal response and explain their position the Panel is unable to find any justification or explanation for Respondents’ conduct. The Panel accepts Complainants’ arguments, in the light of the record and submissions as a whole. Complainants argue that Respondents have wholly incorporated the CAPSTAR mark into the Domain Names to attract consumers, for commercial gain, to sites that are not authorized by Complainants and that such use cannot be considered bona fide use. In particular, Complainants contend that Respondents’ use of Complainants’ CAPSTAR mark in the Domain Names, direct users to websites that sell pet products which compete with Complainants’ products and that this undercuts any plausible claim to legitimate use. The Panel accepts the merit of this argument in the present situation.
Complainants argue that even if Respondents were legitimate re-sellers of CAPSTAR products, it does not necessarily mean that they have a legitimate right to use the CAPSTAR mark in the Domain Names, especially as the websites do not disclose the nature of the relationship between Respondents and Complainants. Complainants also contend that Respondents do not actually offer CAPSTAR products for sale on the websites located at the Domain Names, but direct users to other websites where the products are sold, along with flea control products that compete with CAPSTAR.
In the circumstances, it is difficult to see how Respondents’ conduct could be characterized as legitimate and thus permissible. On this basis the Panel finds that Respondents have no rights or legitimate interests in the Domain Names.
The Panel is satisfied that the second element of the Policy has been met.
C. Registered and Used in Bad Faith
Respondents have failed to establish that they have any license or permission to use Complainants’ Trademark. On that basis it is reasonable to infer that Respondents registered the Domain Names with a view to achieving a pecuniary advantage from or by virtue of the Domain Names.
In the absence of a plausible explanation from Respondents as to how and why their registration and use of Complainants’ Trademark is appropriate or necessary for the operation of their business the Panel finds that they registered and used the Domain Names in bad faith. That is, so as to take advantage of the worldwide reputation and goodwill of Complainants and/or Complainants’ Trademark and to direct or redirect Internet business to their websites by using the Domain Names in the manner described above.
The Panel thus concludes that the third element of the Policy has been met.
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 <buycapstar.com> and <discountcapstar.com> be transferred to Complainant Eli Lilly and Company.
Clive L. Elliott, Q.C.
Date: March 16 2016