WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chattem, Inc. v. Privacydotlink Customer 3011623 / D.L. Webb
Case No. D2020-1024
1. The Parties
The Complainant is Chattem, Inc., United States of America (“United States” or “U.S.”), represented by Selarl Marchais & Associés, France.
The Respondent is Privacydotlink Customer 3011623, Cayman Islands, United Kingdom / D.L. Webb, United States.
2. The Domain Name and Registrar
The disputed domain name <capzasin.com> is registered with GoDaddy Online Services Cayman Islands Ltd. (previously Uniregistrar Corp, the “Registrar”).1
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2020. On April 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 28, 2020, 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 April 29, 2020, 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 amendment to the Complaint on April 30, 2020.
The Center verified that the Complaint, together with the amendment to 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 May 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2020.
The Center appointed William R. Towns as the sole panelist in this matter on June 10, 2020. 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, founded in 1879 and based in Chattanooga, Tennessee, United States, is a manufacturer of over-the-counter (OTC) healthcare products, including topical analgesics and medicated skin care products. The Complainant was acquired by the Sanofi-Aventis Group (“Sanofi”) in March 2010, and is now a wholly-owned subsidiary of the Sanofi.2
Since as early as 1998, the Complainant has manufactured and sold under the name “Capzasin” a topical analgesic containing capsaicin, a chili pepper extract. The Complainant owns the following United States trademark registrations:
CAPZASIN-P, U.S. Registration No. 2226385, applied for February 7, 1994, and registered February 23, 1999;
CAPZASIN-HP, U.S. Registration No. 2034577, applied for October 27, 1995, and registered January 28, 1997.
The Complainant also has registered its CAPZASIN P mark in Columbia, Uruguay and Honduras, and its CAPZASIN HP mark in Honduras. The Complainant registered the domain names <capzasinhp.com> and <capzasinp.com> in January 2000.
When registering the CAPZASIN-P and CAPZASIN-HP marks with the United States Patent and Trademark Office (USPTO), the Complainant disclaimed the right to use “capsaicin” apart from the marks as shown. Whether the USPTO had determined “capsaicin” to be an unregistrable component as a mark is uncertain.3 The Complainant does not hold a U.S. trademark registration for “Capzasin” but has asserted unregistered trademark rights in “Capzasin”.
According to the Registrar, the Respondent is the registrant of the disputed domain name. The Registrar’s WhoIs records indicate that the disputed domain name was created on August 6, 2004, and last updated on September 6, 2018. The disputed domain name resolves to a parked page with pay-per-click (PPC) links to other websites promoting competing products for treatment of arthritis, foot joint and back pain.
5. Parties’ Contentions
The Complainant represents that it markets OTC healthcare products, toiletries, dietary supplements, topical analgesics, and medicated skin care products, sold in the U.S. through mass merchandisers and drug and food retailers. The Complainant lists Wal-Mart, Walgreens, and Kroger as major customers, with market penetration in the U.S., Europe, Canada, Latin America, and the Caribbean. According to the Complainant, its brand portfolio consists of 22 brands, including Allegra, Gold Bond, Flexall, IcyHot, Rolaids, Sun-In, Pamprin, Dexatrim, Aspercreme, Selsun Blue and Capzasin.
The Complainant explains that it is a subsidiary of the French multinational pharmaceutical company Sanofi, described by the Complainant as a “major player on the worldwide pharmaceutical market.” The Complainant observes that the Sanofi Group had consolidated net sales of EUR 34.46 billion in 2018 and EUR 35.05 billion in 2017.
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s registered CAPZASIN-P and CAPZASIN-HP marks, and identical to the CAPZASIN mark, in which the Complainant asserts unregistered trademark rights. The Complainant maintains that its CAPZASIN, CAPZASIN-P and CAPZASIN-HP marks do not have any particular meaning and are highly distinctive, and explains that the letters “p” and “hp” in the marks stand for “pain” and “high potency” respectively. The Complainant states that the generic Top-Level Domain (“gTLD”) “.com” should be disregarded when evaluating the identity or confusing similarity of the Complainant’s mark to the disputed domain name.
The Complainant contends that the Respondent lacks rights of legitimate interests in respect of the disputed domain name. The Complainant asserts that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, and has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Complainant emphasizes that the Respondent has directed the disputed domain name to a website with sponsored links to similar pain relief products in order to generate PPC revenues.
The Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith. The Complainant reiterates that the Respondent is misleadingly diverting Internet users to a parked page in order to generate PPC income. The Complainant contends the Respondent has used the disputed domain name intentionally to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks as to source, sponsorship, affiliation, or endorsement. The Complainant also maintains that the Respondent registered the disputed domain name in order to sell it to the highest bidder.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name <capzasin.com> is confusingly similar to the Complainant’s CAPZASIN-P and CAPZASIN-HP marks, in which the Complainant has established rights through registration and use. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.4 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the Complainant’s trademarks and the disputed domain name.
In this instance the Complainant’s CAPZASIN-P and CAPZASIN-HP marks are recognizable in the disputed domain name.5 GTLDs generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD.6
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s CAPZASIN-P and CAPZASIN-HP marks. Nonetheless, the Respondent has registered the disputed domain name, which appropriates the Complainant’s marks, and is using the disputed domain name to generate PPC links to third-party websites promoting pain relief products similar to those offered by the Complainant.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a 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 has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
The Panel concludes from the record that the Respondent was aware of the Complainant and the Complainant’s CAPZASIN-P and CAPZASIN-HP marks when registering the disputed domain name. The record is convincing that the Respondent registered the disputed domain name with the aim of exploiting and profiting from the Complainant’s mark through the generation of revenue from PPC advertising. UDRP panels consistently have found that the use of a domain name to host a parked page comprising PPC links does not constitute a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. See WIPO Overview 3.0, section 2.9. See, e.g., No Limit, LLC and Newman’s Own, Inc. v. Lisa Katz, Domain Protection LLC, WIPO Case No. D2020-0685; Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364.
Having regard to all of the relevant circumstances in this case, and absent any explanation by the Respondent, the Panel concludes that the Respondent has neither used nor demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Further, there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a finding of the Respondent’s rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. As previously noted, the Panel concludes that the Respondent would have been aware of the Complainant and in all likelihood had the Complainant’s marks in mind when registering the disputed domain name. The record is convincing that the Respondent registered the disputed domain name seeking to capitalize on the reputation and goodwill of the Complainant’s marks in order to mislead Internet users and profit from the generation of PPC advertising revenues.7
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 name <capzasin.com> be transferred to the Complainant.
William R. Towns
Date: June 15, 2020
1 On May 20, 2020, Uniregistrar Corp informed the Center that GoDaddy Online Services Cayman Islands Ltd. had taken over it including its Internet Assigned Numbers Authority (IANA) ID and Registrar Accreditation Agreement (RAA) of the Internet Corporation for Assigned Names and Numbers (ICANN). The Center brought this to the Parties’ attention on May 26, 2020.
2 Sanofi-Aventis, formed in 2004 by the merger of Aventis and Sanofi-Synthélabo, changed its name to Sanofi in May 2011.
3 The Merriam Dictionary defines “capsaicin” as “a colorless irritant phenolic amide C18H27NO3 found in various capsicums that gives hot peppers their hotness and that is used in topical creams for its analgesic properties.”
7 In view of the Panel’s decision, it is unnecessary for the Panel to consider whether the Complainant has unregistered trademark rights in CAPZASIN.