WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Astellas Pharma Inc.; Astellas US LLC v. John Rashad, Esq.
Case No. D2019-0289
1. The Parties
Complainants are Astellas Pharma Inc. of Tokyo, Japan and Astellas US LLC of Northbrook, Illinois, United States of America (“USA” or “United States”), represented by Covington & Burling, USA.
Respondent is John Rashad, Esq. of St. Paul, Minnesota, USA, self-represented.
2. The Domain Name and Registrar
The disputed domain name <genericvesicare.com> 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 February 6, 2019. On February 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 7, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on February 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 4, 2019. The Response was filed with the Center on February 18, 2019.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on February 22, 2019. 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.
On February 22, 2019, the Complainant filed a reply to the Response.
4. Factual Background
Complainants are Astellas Pharma Inc. (“API”), a Japanese corporation, and its wholly-owned subsidiary Astellas US LLC (“AUS”), a United States corporation. Complainants are parent and subsidiary entities forming part of a global pharmaceutical company that engages in the research, development, and manufacture of pharmaceutical products. API owns trademark registrations for the VESICARE mark in the United States and in many jurisdictions around the world. Both API and AUS own various domain names corresponding to the VESICARE mark, including <vesicare.com>, registered in 2002 by AUS and <vesicare.info> registered in 2001 by API. Complainants’ VESICARE mark is used in connection with a pharmaceutical product for the treatment of overactive bladder, first used in commerce in the United States in January 2005. Registrations for the VESICARE mark date back to December 22, 1999 (e.g., International Registration No. 726931A). The <vesicare.com> domain name resolves to a website operated by Complainants that relates to the VESICARE overactive bladder pharmaceutical product and related information.
The disputed domain name, <genericvesicare.com>, was registered by Respondent on November 8, 2017, and currently resolves to a website promoting and offering information on solifenacin succinate.
5. Parties’ Contentions
According to Complainant, on July 2, 2018, Respondent sent an email to AUS advising that Respondent had registered the disputed domain name and offered to sell it to AUS for USD 5,500. According to Complainant, at the time of this email, the disputed domain name did not resolve to any active website. On July 12, 2018, in response to Respondent’s email, Complainant AUS advised Respondent of API’s rights in the VESICARE mark and ownership of a United States trademark registration for VESICARE, and demanded that Respondent cease all use of the disputed domain name and immediately transfer the disputed domain name registration to AUS. On the same day, Respondent replied to AUS’s letter reiterating Respondent’s earlier offer to sell the disputed domain name to AUS for USD 5,500 and that it had been contacted by third parties expressing interest in purchasing the disputed domain name.
In or around December 2018, Complainants learned that Respondent was using the disputed domain name to promote solifenacin succinate — the nonproprietary name for API’s pharmaceutical product Vesicare — as “generic Vesicare®.” On January 8, 2019, Respondent sent another email to AUS, again offering to sell the disputed domain name, but this time for USD 9,999.
According to Complainants, the disputed domain name is confusingly similar to the VESICARE mark in which they own established rights. Complainants assert that the disputed domain name incorporates the entire VESICARE mark, with the addition of the generic term “generic.” Complainants assert that prior UDRP panels have concluded that “adding the word ‘generic’ alone…to certain famous drug names, to which pharmaceutical companies have trademark rights, and registering the resulted combinations as domain names” does nothing to prevent the domain names from being confusingly similar to the trademarks. According to Complainants, the international nonproprietary name for VESICARE is “solifenacin succinate,” and referring to that substance as “generic Vesicare®” is likely to increase, rather than diminish, likelihood of consumer confusion as to the source of the disputed domain name and website hosted there. Complainants assert that the disclaimer located on the website at the disputed domain name, which states that the website it not affiliated with any pharmaceutical maker of branded or generic versions of Vesicare®, does nothing to alleviate such confusion.
Complainants further assert that Respondent has no rights or legitimate interest in the disputed domain name. Complainants state that Respondent is not licensed or otherwise authorized to use the VESICARE mark in connection with its activities or as part of the disputed domain name, and that Respondent is not commonly known by the disputed domain name. Complainants further allege that Respondent’s use of the disputed domain name to promote and offer information on solifenacin succinate does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use. Complainants assert that Respondent was aware of Complainants and the VESICARE mark when it registered the disputed domain name and has intended to divert Internet users seeking Complainants’ products and services to Respondent’s website. According to Complainants, Respondent’s maintenance of an “informational website” at the disputed domain name is disingenuous and pretextual in light of its commercial intent in registering the disputed domain name, and that Respondent has registered other domain names following the general format “generic[trademarked pharmaceutical name].com.”
According to Complainants, Respondent registered and is using the disputed domain name in bad faith. Complainants assert that Respondent’s use of the disputed domain name to promote solifenacin succinate under the confusing and misleading name “generic Vesicare®” without legitimate interests in the VESICARE mark is prima facie evidence of bad faith under the UDRP. Complainants assert that Respondent’s actual or constructive knowledge of the VESICARE mark at the time it registered the disputed domain name in 2017, based on trademark registrations in the United States and many other jurisdictions obtained many years before such registration of the disputed domain name, is further evidence of its bad faith. According to Complainants, Respondent’s proactive efforts to sell the disputed domain name make clear its awareness of Complainants’ rights in the VESICARE mark. More specifically, Respondent’s registration of the disputed domain name for the purpose of selling it to AUS for consideration in excess of its out-of-pocket costs demonstrates its bad faith under the UDRP section 4(b)(i). Finally, Complainant contends that Respondent has a history of registering domain names that infringe third parties’ trademark rights, which further evidences its bad faith under UDRP section 4(b)(ii), and thatat least two other domain dispute proceedings have been brought against Respondent, including one involving the domain name <genericrevlimid.com>, and both panels found for the complainants in those cases.
Accordingly, Complainants have requested that the disputed domain name be transferred to Complainant AUS.
Respondent asserts that the registration of the disputed domain name is in connection with a legitimate noncommercial fair use, and that such use does not directly or indirectly infringe the legal rights of Complainants. According to Respondent, it has only used the disputed domain name with a genuine informational, news, and commentary site related to developments in manufacturing and government approval of generic versions of Vesicare. According to Respondent, this establishes its legitimate interests in the disputed domain name. According to Respondent, Complainants are attempting to block the fair or nominative use of the disputed domain name to disseminate information about generic versions of its Vesicare product. Respondent asserts that “even Commercial speech that is inextricably intertwined ‘with informative and perhaps persuasive speech seeking support for particular causes or for particular views on economic, political, or social issues,’ by contrast, is treated as political speech and is fully protected under First Amendment.”
According to Respondent, no reasonable consumer searching Google for “generic Vesicare” would be confused by the website located at the disputed domain name. Respondent asserts that a detailed disclaimer is provided on the website to any visitors, highlighting the website is for educational and informational purposes only and thus the likelihood of confusion with Complainant’s trademark is non-existent.
Respondent argues that there is no ban against legitimately registering, buying, selling and developing domain names or domaining [sic]. Respondent reiterates that it made lawful legitimate noncommercial and nominative fair use of the disputed domain name in good faith and has not used it to infringe upon the rights of Complainants. According to Respondent, in addition to using the disputed domain name for an informational website, the only other use of the disputed domain name is in connection with the email address “[…]@genericvesicare.com“ associated with this website.
Accordingly, Respondent requests that the Complaint be denied, and Respondent has further requested a ruling that Complainants have engaged in Reverse Domain Name Hijacking in pursuing this Complaint.
6. Discussion and Findings
6.1 Consolidation: Multiple Complainants
Where multiple related parties have rights in the relevant mark on which a UDRP complaint is based, a UDRP complaint may be brought by any one party, on behalf of the other interested parties. In this case, both Complainants are related and have rights in the relevant mark, and are permitted to bring this Complaint jointly. See, e.g., “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. Posers/Philip Cox, WIPO Case No. D2011-1142.
6.2 Substantive Issues
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2. Fundamentally, an asserting party cannot meet its burden by simply making conclusory statements unsupported by evidence. To allow a party to merely make factual claims without any supporting evidence would essentially eviscerate the requirements of the Policy as both complainants or respondents could simply claim anything without any proof. For this reason, panels have generally dismissed factual allegations that are not supported by any bona fide documentary or other credible evidence. See, Allianz SE v. Domain Admin, Whois protection / Domain Administrator, Radio plus, spol.s r.o., WIPO Case No. D2017-2277; WIPO Overview 3.0, section 4.2.
Finally, the Panel notes Complainants’ submission of a supplemental filing in the nature of a reply to the Response. The UDRP Rules permit panels to request, in its sole discretion, further statements or documents from either of the parties in addition to the complaint and response. See Rules, paragraph 12. The Rules also grant panels fairly broad general powers to conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and Rules, ensure that the parties are treated with equality and that each party is given a fair opportunity to present its case, and determine the admissibility, relevance, materiality and weight of the evidence. See Rules, paragraph 10.
Unsolicited supplemental filings are generally discouraged, unless specifically requested by the panel, and the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response (e.g., owing to some “exceptional” circumstance). See WIPO Overview 3.0, section 4.6.
In this case, the Panel declines to consider Complainants’ unsolicited supplemental filing, as all information necessary to decide the dispute is contained in the complaint and response, and there are no exceptional circumstances present that militate in favor of considering additional materials, such as new material evidence or arguments by Respondent that could not have been reasonably anticipated. See, e.g., WIPO Overview 3.0, section 4.6; Celgene Corporation v. John Rashad, Esq., WIPO Case No. D2017-2372; Welcomemat Services, Inc. v. Michael Plummer Jr., MLP Enterprises Inc., WIPO Case No. D2017-0481.
Accordingly, the Panel will proceed to render its determination in this matter on the basis of the Complaint and Response alone.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainants provided evidence of ownership of the VESICARE Marks, which have been used since at least as early as 2005, and registered since at least as early as 1999, well before Respondent registered the disputed domain name on November 8, 2017. With Complainants’ rights in the VESICARE trademarks established, the remaining question under the first element of the Policy is whether the disputed domain name, typically disregarding the generic Top-Level Domain (“gTLD”) in which it is registered (in this case, “.com”), is identical or confusingly similar to Complainants’ mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc/Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold test. See, e.g., Celgene Corporation v. John Rashad, Esq., WIPO Case No. D2017-2372.
Here, the disputed domain name is confusingly similar to Complainants’ VESICARE trademarks, because this mark is fully incorporated into the disputed domain name at the second level and the addition of the generic term “generic” before the mark does nothing to prevent a finding of confusing similarity. See, e.g. Comerica Bank v. Kimberly Barnes, WIPO Case No. D2014-1052.
Thus, Complainants have satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainants must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained their burden under the second element of the UDRP.
In general, the Panel here agrees with the rationale of the panel in Celgene Corporation v. John Rashad, Esq., supra (“Celgene Corporation”)with respect to whether respondent has any rights or legitimate interests in the disputed domain name. That dispute involved the same respondent and very similar facts and evidence as the instant proceeding.
As noted in Celgene Corporation, the Panel here must still determine whether Respondent has a legitimate interest in registering the disputed domain name that consists of the combination of the word “generic” with Complainants’ VESICARE mark and then seeking to profit from such registration. As noted in Celgene Corporation, “That combination in the disputed domain name does not, on its face, immediately suggest sponsorship or endorsement by Complainant, given that the disputed domain name could be seen by consumers as relating to a website providing information on a generic version of Complainant’s … pharmaceutical product.” While Complainants maintain that the legitimate generic version of VESICARE is called solifenacin succinate, it seems that a domain name consisting of the word “generic” with the name of the branded pharmaceutical product could be understood by some consumers as referring to a generic version of VESICARE such as solifenacin succinate. However, it is also conceivable that some consumers could perceive the disputed domain name as relating to Complainants. As the panel in Celgene Corporation noted, there are misconceptions amongst some consumers regarding generic pharmaceutical products, the source of such, pricing, and whether a generic version of a branded product will operate in the same way as the branded version. Consequently, some consumers could believe that the disputed domain name that includes the VESICARE mark relates to Complainants or to an informational page from Complainants regarding generic versions of VESICARE. Simply put, the disputed domain name does not in and of itself trigger a definitive inference of affiliation or non-affiliation and is not the equivalent of a domain name that in and of itself has both a branded meaning and a purely generic meaning. See, e.g., WIPO Overview 3.0, Section 2.5.1; Celgene Corporation v. John Rashad, Esq., supra. Consequently, the disputed domain name needs to be assessed in the context of the use that has been made of such by Respondent.
The evidence submitted in this proceeding shows that Complainants first became aware of the disputed domain name when Respondent sent an unsolicited communication to them to offer the disputed domain name for sale at the inflated price of USD 5,500 and giving Complainants one week to respond to the offer. At the time of this communication from Respondent, the disputed domain name was not resolving to any active website. The communication also identifies Respondent as a “Premium Domain Broker.” In response, Complainants transmitted a cease-and-desist letter to Respondent, in reply to which Respondent reopened its initial offer to sell the disputed domain name to Complainants for USD 5,500 and indicating that it would consider selling the disputed domain name to other third parties if Complainants did not accept its offer. Respondent did not provide any evidence of any solicitations from third parties to purchase the disputed domain name. Only after this exchange between Respondent and Complainants, and long after Respondent had originally registered the disputed domain name, did Respondent deploy a website at the disputed domain name purporting to be an informational website relating to generic versions of Complainants’ Vesicare pharmaceutical product. In connection with such website deployment, Respondent again contacted Complainants and presented a new offer to sell the disputed domain name to Complainants at a higher price of USD 9,999.
Thus, the available evidence suggests that Respondent only deployed such website as a post-hoc façade to demonstrate noncommercial or fair use of the disputed domain name, when in reality the evidence suggests that Respondent’s primary intention was to leverage the disputed domain name for commercial gain by selling it to Complainants or a third party.
Respondent also argues that this proceeding is being used by Complainants to stifle his free speech. The evidence demonstrates that the opposite is true; Respondent’s ostensible “free speech” use of the disputed domain name is apparently intended to frustrate Complainants efforts to recover the disputed domain name. Respondent did not use the disputed domain name for an informational platform until after Complainants refused Respondent’s offer to sell it to Complainants for a windfall and Complainants demanded that Respondent surrender it. Respondent registered the disputed domain name that consists of Complainants’ mark for the commercial purpose of selling it to the highest bidder, and that the claim of registering the disputed domain name for the later-implemented noncommercial online informational platform is merely pretextual. See Celgene Corporation v. John Rashad, Esq., supra.
Accordingly, based on the available evidence submitted, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name, that none of the circumstances of paragraph 4(c) of the Policy are evident in this case, and that Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The Panel finds that Complainants provided ample evidence to show that use and registration of the VESICARE marks long predates the registration of the disputed domain name by Respondent. Therefore, Respondent was likely aware of the VESICARE marks when it registered the disputed domain name, or knew or should have known that the disputed domain name was identical or confusingly similar to Complainants’ mark. See WIPO Overview 3.0, section 3,2,1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.
Respondent was clearly aware of Complainants when Respondent registered the disputed domain name, because the disputed domain name fully incorporates the VESICARE mark. Furthermore, Respondent admits that it registered the disputed domain name to prevent “pharmaceutical monopolists” from blocking generic drugs from being offered to the public or advertised to the public, which it claims is leading to higher drug costs resulting from the competitive advantage gained in the marketplace. This implies that Respondent was aware of Complainants and their position in the pharmaceutical industry and as producers of VESICARE when it registered the disputed domain name. Given this awareness, Respondent’s actions since registering the disputed domain name can only be seen as having been undertaken in bad faith. The evidence before the Panel shows that Respondent registered the disputed domain name and then simply sought to sell it to Complainants for USD 5,500 and later for USD 9,999. Although Respondent asserts First Amendment rights and freedom of expression, and claims that the disputed domain name was registered for its noncommercial informational platform, these contentions, as already noted, appear to be pretextual. Celgene Corporation v. John Rashad, Esq., supra. Respondent did not provide any evidence supporting these contentions. Simply put, the evidence before the Panel makes its more likely than not that Respondent registered the disputed domain name that incorporates Complainants’ VESICARE mark simply to profit from its possible association with Complainant or Complainant’s VESICARE pharmaceutical product and not for some fair use or free speech purpose, in particular by selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name. See Celgene Corporation v. John Rashad, Esq., supra; see also Policy, paragraph 4(b)(i).
Accordingly, the Panel finds that Respondent registered and used the disputed domain name in bad faith and Complainant succeeds under 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 disputed domain name <genericvesicare.com> be transferred to Complainant Astellas US LLC.
Brian J. Winterfeldt
Date: March 4, 2019