WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Valeant Pharmaceuticals International, Inc. and iNova Pharmaceuticals (Australia) Pty Limited v. Whoisguard, Inc. / Ian Pike
Case No. D2016-1241
1. The Parties
The First Complainant is Valeant Pharmaceuticals International, Inc. of Montreal, Canada. The Second Complainant is iNova Pharmaceuticals (Australia) Pty Limited of Chatswood, Australia. The Complainants are represented by K&L Gates LLP, Australia.
The Respondent is Whoisguard, Inc. of Panama / Ian Pike of Melbourne, Australia.
2. The Domain Name and Registrar
The disputed domain name <duromineaustralia.com> (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2016. On June 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 21, 2016, 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 the Complainants on June 21, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on June 22, 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 the Respondent of the Complaint, and the proceedings commenced on June 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 14, 2016.
The Center appointed Nicholas Smith as the sole panelist in this matter on July 19, 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
The First Complainant is a pharmaceutical company that since 1960 has manufactured, distributed and sold pharmaceutical products under the word mark DUROMINE (the “DUROMINE Mark”). The “Duromine” product operates as an appetite suppressant and stimulant. The Second Complainant is a wholly owned subsidiary of the First Complainant and is an authorised user of the DUROMINE Mark in Australia.
The Complainant holds trade marks for the DUROMINE Mark in various countries around the world and in particular Australia, where the DUROMINE Mark was first registered on September 9, 1960 for goods in Class 5, being Appetite Suppressors; stimulants.
The Domain Name was created on December 1, 2014. It presently resolves to a website (the “Respondent’s Website” with the title “Buy Duromine Online” and text that includes “You can buy Duromine (phentermine) without prescription online. Duromine by iNova Pharmaceuticals is a weight loss drug prescribed by physicians to combat obesity.” According to the Complainants, “Duromine” is a prescription only medicine in Australia and cannot be dispensed or otherwise obtained through the Internet.
5. Parties’ Contentions
The Complainants make the following contentions:
(i) that the Domain Name is identical or confusingly similar to the First Complainant’s DUROMINE Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The First Complainant is the owner of the DUROMINE Mark. It owns trade mark registrations for the DUROMINE Mark in various jurisdictions around the world. The Second Complainant is the authorised user of the DUROMINE Mark in Australia.
The Domain Name consists of the DUROMINE Mark and the geographical term “Australia”. The addition of “Australia” does not obviate confusion, rather connotes some connection with Australia and is likely to cause confusion.
The Respondent has no rights or legitimate interests in the Domain Name. The Respondent has no trade mark rights or licence to use the DUROMINE Mark, nor is it commonly known by the name. The Respondent has not used or made preparations to use the Domain Name in connection with a bona fide offering of goods. While the Respondent’s Website may purport to sell “Duromine” products, such a sale could not be legitimate as “Duromine” can only be dispensed by prescription. It is unlikely that the Respondent is using the Domain Name to sell genuine “Duromine” and hence its use of the Domain Name cannot generate rights or legitimate interests.
The Domain Name was registered and is being used in bad faith. The Respondent registered the Domain Name in awareness of the Complainants’ DUROMINE Mark and operates a website that purports to sell “Duromine”. Such an action is in breach of s42DL(1)(f) of the Therapeutic Goods Act 1989 (“Cth”) which prevents the advertising of the sale of drugs that are available only by prescription. The Respondent’s Website directs customers to purchase products sold by reference to the DUROMINE Mark and receive either fake versions of the Complainants’ products or no goods and services at all. The Respondent is using the Domain Name to attract for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainants’ trade mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s Website.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainants must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainants’ trade or service mark.
The Complainants are the owner and authorised user of the DUROMINE Mark respectively, having registrations for DUROMINE as a trade mark in Australia and various locations around the world.
The Domain Name consists of the DUROMINE Mark with the addition of the geographical indication “Australia”. The addition of “Australia” to the DUROMINE Mark does not operate to prevent a finding of confusing similarity as consumers would simply see the Domain Name as resolving to a site connected to the Complainants operating in Australia. The Panel finds that the Domain Name is confusingly similar to the Complainant’s DUROMINE Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant may make out a prima facie case that the respondent lacks rights or interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 are making 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.”
The Respondent is not affiliated with the Complainants in any way. It has not been authorized by the Complainants to register or use the Domain Name or to seek the registration of any domain name incorporating the DUROMINE Mark or a mark similar to the DUROMINE Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name.
There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. The Respondent’s Website appears to promote the sale of “Duromine” in Australia. The Respondent is not authorized to sell “Duromine” by the Complainants, nor is there any evidence that products offered for sale by the Respondent are genuine products produced by the Complainants; indeed if the Respondent were offering “Duromine”, a prescription product, over the Internet, it would be in breach of the Therapeutic Goods Act 1989 (“Cth”). This unauthorized use of the Complainants’ DUROMINE Mark does not amount to a bona fide offering of goods and services.
The Panel finds that the Complainants have established a prima facie case that the Respondent lacks rights or interests in the Domain Name. The Respondent has chosen not to respond to the Complaint and thus has failed to provide any evidence of rights and legitimate interests in the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Panel finds that the Respondent must have been aware of the Complainants and their reputation in the DUROMINE Mark at the time the Respondent registered the Domain Name. The Domain Name resolves to a website that makes direct reference to the “Duromine” product and the Second Complainant. “Duromine” is not an ordinary English word. There is no obvious reason, nor has the Respondent offered an explanation, for the Respondent to register a domain name incorporating the DUROMINE Mark unless there was an intention to create a likelihood of confusion between the Domain Name and the Complainants. The Respondent’s conduct in registering the Domain Name when it was aware of the Complainants’ rights and lacked rights or legitimate interests of its own is registration in bad faith.
The use of the Domain Name to purport to sell the Duromine Product is use in bad faith. The evidence of the Complaint is that when consumers attempt to purchase “Duromine” through the Respondent’s Website, no goods are received despite the purchase price being paid. Even if the Respondent did provide goods following payment of any order made on the Respondent’s Website the goods provided would either be pharmaceuticals not produced by the Complainants, or genuine products sold without the permission of the Complainants and in breach of Australian law that requires “Duromine” to only be distributed by pharmacists following a doctor’s prescription. In those circumstances the Panel concludes that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s DUROMINE Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) 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 <duromineaustralia.com> be transferred to the Complainants.
Date: July 22, 2016