|Kläger||E. R. Squibb & Sons, L. L. C.|
|Entscheider||Birch, Terrell C.|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
E. R. Squibb & Sons LLC. v. Roy Duke
Case No. D2003-0806
1. The Parties
The Complainant is E. R. Squibb & Sons, LLC., Princeton, New Jersey, United States of America, represented by Debevoise & Plimpton, United States of America.
The Respondent is Roy Duke, Larchmont, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <pravochol.com> is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 10, 2003. On October 13, 2003, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On October 13, 2003, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 21, 2003. In accordance with the Rules, Paragraph 5(a), the due date for Response was November 10, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondents default on November 11, 2003.
The Center appointed Terrell C. Birch as the Sole Panelist in this matter on November 25, 2003. 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 Pravachol® trademark has been registered in the U.S.A. by Complainant since August 2, 1988, and in 100 countries throughout the world. It has become a famous and well-respected global trademark for pravastatin sodium tablets for the reduction of cholesterol and certain fatty substances in the blood.
By reason of the extensive use and advertising of Bristol-Myers Squibbs products, the Pravachol® marks have come to be recognized and relied upon by the trade and the public as identifying Bristol-Myers Squibb and its health care products and as distinguishing Bristol-Myers Squibb from its competitors and its products from those of its competitors. As a result, the Pravachol® marks are among Bristol-Myers Squibbs most valuable assets.
Bristol-Myers Squibb has an active presence on the Internet at "www.bms.com," where among other things, the drug Pravachol® has been described and discussed since at least 1991. Bristol-Myers Squibb has also registered the domain name <pravachol.com> with Network Solutions, Inc. Bristol-Myers Squibbs "www.pravachol.com" website is currently under construction.
Without authorization from Complainant, Respondent (under the name Duke, Inc.) registered the domain name <pravochol.com> on April 17, 2002, with RegisterFly.com.
After learning of Respondents unauthorized registration of <pravochol.com>, attorneys for Bristol-Myers Squibb attempted to access the Respondents website at the address "www.pravochol.com" and were referred automatically to a subpage at "www.e-Scripts-MD.com," the website of e-Scripts.MD L.L.C. E-Scripts.MD is a provider of "online medical consultations & prescriptions" that sells products in competition with Complainant. The subpage contained a unique "reference" identifier (lindex.asp?referrer=11842) which it is believed was used by e-Scripts.MD to reimburse Respondent on the basis of the number of hits generated by the referral.
Attorneys for Bristol-Myers Squibb sent a letter addressed to Respondent (as Duke, Inc.), dated June 11, 2003, which informed Respondent that his registration and use of the domain name <pravochol.com> violated Bristol-Myers Squibbs legal rights and demanded that Respondent immediately transfer the domain name to Bristol-Myers Squibb or its designee. The letter was also sent to Mr. M. Darren Traub, Registered Agent, e-Scripts.MD, also stating that e-Scripts.MDs use of the domain name <pravochol.com> for its services violated Bristol-Myers Squibbs legal rights and requested, inter alia, that e-Scripts.MD disable any link with <pravochol.com> and provide information concerning the number of hits that e-Scripts.MD had received from redirected <pravochol.com> visitors.
Respondent did not reply. Mr. Traub, attorney for e-Scripts.MD, replied by letter on June 17, 2003, that: e-Scripts.MD was not the registrant, owner, or operator of <pravochol.com>; it appeared to be operated by an independent affiliate of e-Scripls.MD named John Wichman of 5444 Arlington Avenue, #G-14, Bronx, NY 10471; and e-Scripts.MD was taking immediate steps to correct the alleged infringement. Mr. Traub clarified that e-Scripts.MD had disabled Wichmans "affiliate status" and demanded the removal of any links to e-Scripts.MDs websites.
The domain name <pravochol.com> was transferred from RegisterFly.com to Intercosmos Media Group, Inc., D/B/A directNIC.com, and the registrant information updated from Duke Inc to Roy Duke at the same address previously registered with RegisterFly.com.
In early September 2003, Attorneys for Complainant learned that visitors to <pravochol.com> domain name now were being referred automatically to the website of another online medical prescription site, "e-prescribe.com." Accordingly, attorneys for Complainant sent another letter to Respondent (as Mr. Roy Duke), dated September 9, 2003, enclosing a copy of the June 11, 2003 letter, and reiterating the demand to assign <pravachol.com> to Bristol-Myers Squibb. Attorneys for Complainant also sent a letter to e-prescribe.com at 2066 W. Henderson Road, Columbus, Ohio 43220-4322 demanding that all links with <pravochol.com> be disabled.
5. Parties Contentions
The domain name <pravochol.com> used by Respondent differs by only one vowel from, and is confusingly similar to, the famous Pravachol® trademark owned by Complainant. The Pravachol® mark was both famous and distinctive at the time that Respondent registered <pravochol.com>.
Respondent has no rights or legitimate interests with respect to the domain name <pravochol.com>. Respondent has not prepared or used the domain name <pravochol.com> in connection with any bona fide offering of goods or services, is not commonly known by the domain name, and has not made any legitimate noncommercial or fair use of the domain name. Policy, Paragraph 4(c).
The domain name <pravochol.com> has been registered in bad faith pursuant to Paragraph 4(a)(iii) of the Policy. The circumstances clearly demonstrate that Respondent registered the domain name with the intention of profiting from referral fees from owners of medical prescription sites offering products that compete with Bristol-Myers Squibbs famous Pravachol® product. See Edmunds.com v. Polanski, WIPO Case No. D2001-0928 (September 16, 2001) (registration of confusingly similar domain name redirecting visitor to competitors site is evidence of bad faith). First, on information and belief, Respondent profits from the domain name by receiving referral fees from websites who receive the diverted "www.pravochol.com" visitors. Second, when the Respondent registered <pravochol.com>, he had constructive notice of the Complainants trademark rights in Pravachol® pursuant to 17 U.S.C. 1072. See J. Crew International Inc. v. crew.com, WIPO Case No. D2000-0054 (April 20, 2000) (trademark registration creates constructive knowledge of Complainants rights, even in absence of actual knowledge).
Aside from creating automatic referral links between "www.pravochol.com" and websites of Bristol-Myers Squibbs competitors, Respondent has not made any other use of the domain name. Respondents failure to develop its website since April 17, 2002, is further evidence that the domain name was registered without a bona fide intent to make good faith use of that domain name. See Brown & Williamson Tobacco Corp. et al. v. Dennis Wilkins, WIPO Case No. D2001-0865 (September 3, 2001) (finding bad faith where Respondent did not develop an active website or make good faith use of domain name for three years).
Respondents actions also constitute bad faith use under Paragraph 4(b)(iv) of the Policy because, by using a domain name that is only one letter different from Complainants coined trademark, Respondent intends to attract or capture Internet users seeking authorized information about Complainants products, and divert them for commercial gain to the website of an online pharmacy. Such actions create a likelihood of confusion with the Complainants mark as to the source, sponsorship, affiliation or endorsement of the referred website and of the products and services offered therein. See The Princeton Review v. RaveClub Berlin, WIPO Case No. D2003-0205 (April 29, 2003) (domain name consisting of minor variation in spelling of Complainants trademark redirecting visitor to competitors site is "typosquatting" and evidence of bad faith).
Moreover, the websites to which the <pravochol.com> domain name has been redirected either: (a) offer for sale or sell only products of Bristol-Myers Squibbs competitors; or (b) offer for sale or sell Bristol-Myers Squibbs products other than Pravachol® and sell products that compete with Pravachol®. None of these websites offers Bristol-Myers Squibbs Pravachol® product.
Respondents conduct amounts to unfair competition, because current and potential Pravachol® users may choose a competitors product based on the absence of the Pravachol® product from the websites to which they are redirected. To the extent that the websites to which the <pravochol.com> domain name is redirected offer both Bristol-Myers Squibbs products (other than Pravachol®) and those of its competitors, current and potential Pravachol® users may also erroneously be led to believe that Bristol-Myers Squibbs Pravachol® product is no longer available or that Bristol-Myers Squibb endorses these websites.
Respondent has failed to reply to repeated letters from Complainant. Furthermore, Respondent has clearly been on notice of Complainants claims because commercial links established by him and through which he has profited have been disabled and Respondent has been forced to create alternative links. Failure to reply to Complainants assertion of its rights can be an indication of bad faith. See RRI Financial. Inc. v. Ray Chen, WIPO Case No. D2001-1242 (December 11, 2001) (failure to respond to Complainants requests to transfer constitutes factor in bad faith analysis). Respondent is required to show by "concrete evidence" that he has rights or legitimate interests in respect to the domain name at issue. Kate Spade. LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 (January 3, 2002) (concrete evidence in the form of documents or third-party declarations should be furnished in support of assertion of legitimate rights).
The unlawful acts of Respondent have caused and are continuing to cause irreparable injury to the goodwill and reputation of Complainant and, unless restrained, will cause further irreparable injury.
The Respondent did not reply to the Complainants contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that consistent within the contentions of the Complainant, the domain name, <pravochol.com> is with the exception of one vowel, substantially identical with and confusingly similar to the famous Pravachol® trademark owned by Complainant.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interests of a domain name registrant to a domain name, for the purposes of Paragraph 4(a)(ii) of the Policy:
(i) before any notice of the dispute, the Respondents 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 and services; or
(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the Respondent is making a legitimate non-commercial 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.
In view of the foregoing facts and consistent with the contentions of the Complainant, the Panel finds that Respondent has no rights or legitimate interests with respect to the domain name <pravochol.com> pursuant to Paragraph 4(c) of the Policy.
C. Registered and Used in Bad Faith
In view of the foregoing facts and consistent with the contentions of the Complainant, the Panel finds that the domain name <pravochol.com> has been registered and used in bad faith pursuant to Paragraphs 4(a)(iii) and 4(b)(iv) of the Policy, respectively.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <pravochol.com>, be transferred to the Complainant.
Terrell C. Birch
Dated: December 8, 2003