WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
iNova Pharmaceuticals (Singapore) Pte. Limited v. Daniel Constantinescu
Case No. D2018-1836
1. The Parties
The Complainant is iNova Pharmaceuticals (Singapore) Pte. Limited of Singapore, Singapore, internally represented.
The Respondent is Daniel Constantinescu of Galati, Romania.
2. The Domain Names and Registrar
The disputed domain names <buyduromineonline.com> and <duromineonline.com> are registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2018. On August 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <duromineonline.com>. On August 17, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 20, 2018 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 23, 2018 and requested to add the disputed domain name <buyduromineonline.com>. According to the Registrar’s verification response, the Respondent is also the registrant of the added disputed domain name.
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 August 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2018.
The Center appointed Luca Barbero as the sole panelist in this matter on September 18, 2018. 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 operating in Australasia, Asia and South Africa.
The Complainant owns several trademark registrations for DUROMINE, including the Australian trademark registration No. 162353, registered on September 9, 1960, and the New Zealand trademark registration No. 69024, registered on March 8, 1962. Both trademarks are registered for goods in class 5 including “appetite suppressors”, “pharmaceutical preparations” and “stimulants”.
The Complainant’s DUROMINE product is an anorectic agent indicated in the management of obesity and requires medical prescription.
The disputed domain names <duromineonline.com> and <buyduromineonline.com> were registered on September 9, 2009 and November 30, 2010, respectively, and have been redirected to a website in English language, published at the domain name <australiaweightloss.com>, which provides information about weight management and the Complainant’s DUROMINE product. A disclaimer in the middle of the home page informs users that “All the provided information on the site is for guidance only. This site does not have any relation to iNova Pharmaceuticals company”. The heading at the top of the website reads: “Duromine Australia Best Price / Buy Weight Loss Pills Duromine in Australia”. Moreover, in internal pages of the website, some banners and links (such as the link “Buy Duromine alternative – from 0.8$ per pill / without prescription” available on the page published at “https://australiaweightloss.com/duromine-online/”) appear to promote the sale of DUROMINE and alternative products online, also without medical prescriptions.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are confusingly similar to its trademark DUROMINE since they reproduce the trademark in its entirety with the mere addition of the generic terms “online” and “buy”, which do not serve to distinguish the disputed domain names from the trademark.
The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain names, that the Complainant has never authorized the Respondent to use its trademark in any manner and that the Respondent does not appear to be known by the Complainant and never had any business relationship with the Complainant.
The Complainant points out that the Respondent registered and is using the disputed domain names in bad faith for the following reasons:
i) the Complainant’s trademark enjoys some reputation in Australia, which appears to be primarily targeted by the website to which the disputed domain names resolve;
ii) the Respondent had full knowledge of the trademark DUROMINE when registering the dispute domain names;
iii) by misleadingly diverting consumers, most likely for its own commercial gain, the Respondent is using the disputed domain names in bad faith;
iv) the disputed domain names resolve to a website in English language, thus targeting English-speaking consumers and inducing them to purchase DUROMINE products online. The website displays the mention “Duromine Australia Best Price / Buy Weight Loss Pills Duromine in Australia” and an advertisement on the top right corner stating “DUROMINE Australia online. Order now”, which redirects users to the website “www.pheng.com”, where alternative products are offered for sale under different brands by an undertaking that has no affiliation with the Complainant;
v) the Respondent registered the disputed domain names, confusingly similar to its trademark, in order to benefit from the reputation of the Complainant’s trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights over the trademark DUROMINE based on the trademark registrations cited under section 4 above and the related trademark details submitted as annexes to the Complaint.
It is well accepted that the first element functions primarily as a standing requirement, and that the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name to assess whether the trademark is recognizable within the disputed domain name (Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Moreover, where the relevant trademark is recognizable within the disputed domain name, the addition of a descriptive term does not prevent a finding of confusing similarity under the first element (Section 1.8 of the WIPO Overview 3.0).
The Panel notes that the disputed domain names reproduce the trademark DUROMINE in its entirety with the addition of the descriptive terms “buy” and “online”, which doesn’t prevent a finding of confusing similarity. The Top-Level Domain “.com” can be disregarded under the first element confusing similarity test, being a standard registration requirement (Section 1.11 of the WIPO Overview 3.0).
Therefore, the Panel finds that the Complainant has proven that the disputed domain names are confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has made a prima facie case and that the Respondent, by not submitting a Response, has failed to demonstrate rights or legitimate interests in the disputed domain names in accordance with paragraph 4(c) of the Policy for the following reasons.
According to the records, there is no relationship between the Complainant and the Respondent and the Complainant has not authorized the Respondent to register or use its trademark or the disputed domain names. Moreover, there is no evidence that the Respondent might be commonly known by the disputed domain names.
The Panel finds that the Respondent’s use of the disputed domain names to redirect users to a website promoting the sale of purported DUROMINE and alternative similar drugs online – also without the legally required medical prescription - does not amount to bona fide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.
Therefore, the Panel finds that the Complainant has proven the requirement prescribed by paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain names were registered and are being used by the Respondent in bad faith.
The Panel finds that, in view of the Complainant’s prior registration and use of the trademark DUROMINE in connection with the Complainant’s pharmaceutical product, the Respondent was or should have been aware of the Complainant’s trademark at the time of registration.
Furthermore, the circumstance that the disputed domain names have been pointed to a website featuring the Complainant’s DUROMINE trademark prominently and providing detailed information about the DUROMINE product demonstrates that the Respondent was indeed well aware of the Complainant and its trademark.
The Panel also notes that, in view of the use of the disputed domain names to divert users to the website described above, promoting the sale of DUROMINE and alternative pharmaceutical products under different brands, the Respondent intentionally attempted to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website to which the disputed domain names resolve according to paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that the Complainant has also proven the requirement prescribed by 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 disputed domain names <buyduromineonline.com and <duromineonline.com> be transferred to the Complainant.
Date: October 2, 2018