WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Indivior UK Limited v. Bryan Hackedorn
Case No. D2016-1838
1. The Parties
The Complainant is Indivior UK Limited of Slough, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Troutman Sanders, LLP, United States of America ("United States").
The Respondent is Bryan Hackedorn of Mansfield, Ohio, United States.
2. The Domain Names and Registrar
The disputed domain names <aboutsuboxone.com>, <findsuboxone.com>, <getsuboxonepills.com>, <getsuboxoneprescriptions.com>, <needsuboxone.com>, and <suboxoneprescriptions.com> (the "Domain Names") are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 9, 2016. On September 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On September 15, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 7, 2016.
The Center appointed Nicholas Smith as the sole panelist in this matter on October 11, 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 Complainant is a pharmaceutical company that, along with its affiliates, sells pharmaceuticals for addiction treatment and control throughout the world, including its Suboxone product, which is a prescription medicine for the treatment of opioid dependence. Suboxone was approved by the United States Food and Drug Administration for treatment in 2002 and in 2015 was one of the most prescribed branded drugs in the United States.
The Complainant has held trade marks for the mark SUBOXONE (the "SUBOXONE Mark") since June 30, 1998, when the Complainant's predecessor in interest registered the SUBOXONE Mark, United States Reg. No. 2,169,133.
Each of the Domain Names was registered on May 17, 2016. The Domain Names redirect to websites (the "Respondent's Websites") that state "Website Coming Soon… Please check back soon to see if the site is available".
5. Parties' Contentions
The Complainant makes the following contentions:
(i) that the Domain Names are confusingly similar to the Complainant's SUBOXONE Mark;
(ii) that the Respondent has no rights nor legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
The Complainant is the owner of the SUBOXONE Mark being the owner of the United States registered trade mark for the SUBOXONE Mark. The Complainant has also registered a domain name that incorporates the SUBOXONE Mark being <suboxone.com>.
Each of the Domain Names contains the SUBOXONE Mark in its entirety with the addition of descriptive terms that convey an association or sponsorship by the Complainant and hence are confusingly similar to the SUBOXONE Mark.
The Respondent is not commonly known by the Domain Names nor does it have any trade marks that correspond to the Domain Names. The Complainant has not authorized or licensed the Respondent to use the SUBOXONE Mark or any confusingly similar variations thereof. The Domain Names currently resolve to parked pages and upon information and belief, the Respondent has not made demonstrable preparations to use the Domain Names for a bona fide offering of goods and services.
The Respondent has registered and uses the Domain Names in bad faith. The inherent nature of the Domain Names shows that the Respondent plans to make unauthorized commercial use of the Domain Names by inviting users to purchase products, which may or may not be the Complainant's pharmaceuticals. The Respondent has registered and used the Domain Names in bad faith by registering the Domain Names while being aware of the Complainant's rights in a manner that shows an intention for financial gain. There is no plausible circumstance under which the Respondent could legitimately register or use the Domain Names other than in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade mark or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant's trade mark or service mark.
The Complainant is the owner of the SUBOXONE Mark, having registrations for the SUBOXONE Mark as a trade mark throughout the world.
Other UDRP panels "have repeatedly held that the addition of a generic word to a recognized mark creates a confusing similarity between the domain name and the mark of the [c]omplainant." The Bank of Nova Scotia v. Whois Protection, WIPO Case No. D2007-0884. See also Valero Energy Corporation, Valero Marketing and Supply Company v. Domain Name Proxy, LLC, Navigation Catalyst Systems, Inc., WIPO Case No. D2011-1227.
The Domain Names consist of the SUBOXONE Mark and the words "about", "find", "get", "need", "pills" and/or "prescriptions". None of the additional words operate to distinguish the Domain Names from the SUBOXONE Mark in any significant way. The Panel finds that the each of the Domain Names is confusingly similar to the Complainant's SUBOXONE 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 legitimate 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 disputed 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 Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain name incorporating the SUBOXONE Mark or a mark similar to the SUBOXONE Mark. There is no evidence that the Respondent is commonly known by the Domain Names or any similar name.
There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. In particular the Respondent's Websites are holding pages and there is no evidence of the Respondent ever operating an active website from any of the Domain Names.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The Respondent has chosen not to respond to the Complaint and thus has failed to provide any evidence of rights or legitimate interests in the Domain Names. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names 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 Names in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations 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 Names; or
(ii) the Respondent has registered the Domain Names 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 Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Names, 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 Complainant and its reputation in the SUBOXONE Mark at the time the Respondent registered the Domain Names. "Suboxone" does not appear to have any ordinary generic meaning. There is no obvious reason, nor has the Respondent offered an explanation, for the Respondent to register six domain names incorporating the SUBOXONE Mark unless there was an intention to create a likelihood of confusion between the Domain Names and the SUBOXONE Mark.
The Panel is prepared to infer, based on the conduct of the Respondent, including the registration of six Domain Names containing the SUBOXONE Mark, the failure to provide a Response in this proceeding, the failure to respond to the Complainant's cease-and-desist letter and the lack of any apparent legitimate reason for the registration and use of these Domain Names, that the Domain Names are likely being held pending use as websites that, without the license of the Complainant, will offer the Complainant's prescription drug products, or products that purport to compete with the Complainant's products, under the SUBOXONE Mark. In any event, the Panel finds that the passive holding of Domain Names amounts to use in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Names 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 Names <aboutsuboxone.com>, <findsuboxone.com>, <getsuboxonepills.com>, <getsuboxoneprescriptions.com>, <needsuboxone.com>, and <suboxoneprescriptions.com> be transferred to the Complainant.
Date: October 13, 2016