The Complainant is Allergan Inc., Canada, represented by Gowling Lafleur Henderson, LLP, Canada.
The Respondent is candrug, Canada.
2. The Domain Name and Registrar
The disputed domain name <combigan.com> (herein the “domain name
in dispute”) is registered with DomainPeople.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2006. On July 3, 2006, the Center transmitted by email to DomainPeople a request for registrar verification in connection with the domain name in dispute. On July 4, 2006, DomainPeople 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 July 10, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 2006.
The Center appointed J. Nelson Landry as the sole
panelist in this matter on August 11, 2006. 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 an important specialty pharmaceutical company engaged since 1948 in the development and commercialization of innovative pharmaceutical products. Within its group of products, there is the pharmaceutical preparations for the treatment of glaucoma which is marketed and sold since at least May 13, 2003 under the trademark “COMBIGAN” which was registered in Canada on May 29, 2003 (herein “the Trademark” or “COMBIGAN Trademark”). The Complainant employs over 5 000 people in the world and markets its products in over a hundred countries which contributed to sale volume in excess of $2 billion for 2005 alone.
The Complainant’s COMBIGAN product is sold through the network of online pharmacies, under such addresses as medisave.ca, candrug.com, globaldrugsdirect.com and canadadrugsonline.com (herein “the Network of online pharmacies”).
On January 21, 2004, the Respondent registered the domain name in dispute along with the domain name <combigan.ca>. The said domain name in dispute has remained inactive since its registration.
Pursuant to a letter of complaint from the Complainant, the Respondent demanded the sum of $1,800 in exchange for the transfer of both the domain name in dispute and the domain name <combigan.ca> registered at the same time.
The Complainant had never authorized nor licensed the Respondent to use the trademark COMBIGAN nor to register the domain name in dispute.
The director of the Respondent is a person name Amarjit Mann who, according to the evidence, also operates through the Respondent’s other business a network of online pharmacies.
The evidence which has not been rebutted shows that Mr. Mann is operating the Respondent’s business and is indicated as the pharmacy manager for Candrug Health Solutions Inc., Canadadrugsonline, Globaldrugsdirect and MediSave.ca.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the domain name in dispute is confusingly similar
with the COMBIGAN Trademark in that it incorporates the whole of the Trademark
and that the addition of the top level domain.com does not have any significance
to the issue of similarity. J.P. Morgan & Co., Incorporated and Morgan
Guaranty Trust Company of New York v. Resource Marketing, WIPO
Case No. D2000-0035.
The Complainant further submits that the Respondent
has no right or legitimate interest in the domain name in dispute and that there
has never been any relationship between the Complainant and the Respondent,
nor any license or authorization to use the Trademark. The fact that the domain
name in dispute is identical to the Trademark falsely suggests that the Respondent
is somehow affiliated with or sponsored by the Complainant which use cannot
be considered to be bona fide; see Viacom International, Inc. v. Matrix
Management and T. Parrott, WIPO Case No.
D2001-1442 and Chanel, Inc. v. Cologne Zone, WIPO
Case No. D2000-1809.
The Complainant alleges that the offering to transfer
the domain name in dispute for compensation does not support a claim of legitimate
interest nor constitutes an honest commercial practice for the Respondent and
certainly does not prove that the Respondent has acquired rights or legitimate
interests in the domain name in dispute. See Birinyi Associates, Inc. v.
Convert, WIPO Case No. D2001-0395.
Furthermore, the Complainant contends that the inactivity of the domain name
in dispute for more than 2½ years supports a finding of absence of legitimate
interest; see Advanced Comfort Inc. v. Frank Grillo, WIPO
Case No. D2002-0762.
The Complainant represents that the Respondent has constructive knowledge of the Complainant’s rights in the Trademark as it appears from the surrounding circumstances of how Complainant’s product were sold online.
The Complainant represents that the offer of selling
the domain name for the sum of $1,800, even if it does include the other domain
name .ca, is demonstrating that the registration was made primarily for the
purpose of selling, renting or otherwise transferring the domain name to the
Complainant. The Complainant relies on numerous decisions of panels where offers
to sell domain names, one for as little as $500 (Marie Claire Album S.A.
v. Buy This Domain, WIPO Case No D2002-0677),
another for $975 (AT & T Corp. v. A.T. of Treyding, WIPO
Case No. D2003-0697) and finally one for $1,000 (University of Central
Arkansas v. John Simms and John Barry, WIPO
Case No D2002-0316), all support a finding of registration and use in bad
faith.
The Complainant further represents that the Respondent
in registering the domain name in dispute along with the domain name <combigan.ca>
has engaged in a pattern of registering the domain names and such pattern is
supported by numerous earlier UDRP decisions where panels have found that registering
only two domain names was sufficient to establish that a respondent has engaged
in such a pattern. See New York Life Insurance Company v. Arunesh C. Puthiyoth,
WIPO Case No. D2000-0812; Volvo Trademark
Holding AB v. Cup International Limited, WIPO
Case No. D2000-0338; Sony Kabushiki Kaisha also trading as Sony Corporation
and Sony Computer Entertainment Inc. v. Salvatore Vetro, WIPO
Case No D2001-0575.
Finally, in addition to surrounding circumstances,
the Complainant submits that a website does not have to be active to meet the
bad faith requirement. This is particularly the case where a website, if used,
would ultimately result in consumer confusion when the domain name corresponds
to the trademark as in the present case. See CBS Broadcasting, Inc. v. LA-Twilight-Zone,
WIPO Case No D2000-0397 and Société
Des Bains De Mer Et Du Cercle Des Étrangers A Monaco v. Global Productions –
Domain For Sale, WIPO Case No D2000-1332.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions and evidence.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for a domain name to be cancelled or transferred:
(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights,
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established that it has rights in a distinctive Trademark for the pharmaceutical preparations for the treatment of glaucomawhich was adopted, used and registered well before the Respondent registered the domain name in dispute which the Panel also finds to be identical to the Trademark, despite the adding of a top level domain .com thereto as noted in the J.P. Morgan, supra.
The Panel finds that domain name in dispute is identical to the Trademark.
The first criteria has been met.
B. Rights or Legitimate Interests
The Respondent has not filed any response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks right or legitimate interest in the domain name in dispute by stating that the Respondent has never been known by the name <combigan.com> or the domain name in dispute and furthermore that the Complainant has never given a license nor in any way authorized the Respondent to make use of the Complainant’s Trademark or the domain name in dispute. The attempt in selling the domain name in dispute in excess of the registration fee also demonstrate absence of honest commercial practice. Finally there is no evidence that the Respondent has ever engaged in any legitimate business under the Complainant’s Trademark.
The Panel finds that the Respondent does not have any rights or legitimate interests in the domain name in dispute.
The second criteria has been met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(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 the 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 on-line 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.
It should be noted that the circumstances of bad faith are not limited to the above.
The Complainant contends with ample reasons that the domain name in dispute was registered and used in bad faith.
The domain name in dispute was registered on January 21, 2004. While the declaration of use, further to the advertisement of the application, was filed on May 13, 2003, (exhibit 3) and that the evidence does not specifically disclose when Complainant first started to use the Trademark subsequent to its adoption and the filing of the application on August 16, 2001, there are other facts in evidence pertaining to the online marketing activities of the Complainant, the Respondent and Amarjit Mann, director of Respondent, which, in Panel’s view, demonstrate that it is inconceivable that the Respondent and Amarjit Mann were not aware of the use of the Trademark by the Complainant when the domain name in dispute was registered. Exhibit 17 shows numerous listings and advertisements of Complainant’s Combigan drugs on various Canadian websites including MediSave.ca, Canadadrugsonline and Globaldrugsdirect. Other exhibits, 10 to 16, pertain to online pharmacies and show the relationship of Amarjit Mann with Candrug Health Solutions Inc., the same websites, Canadadrugsonline, Globaldrugsdirect and MediSave.ca for which he is mentioned as pharmacy manager. Considering the distinctive element COMBIGAN which is a coined word, Mr. Mann and the Respondent could not have been ignorant of the Trademark. The facts and the shrewd character of the man as reflected in the correspondence point the other way.
Furthermore, the exchange of correspondence with the Respondent (Exhibits 6 to 9) also indicates that the second and subsequent communications by the Respondent were under the name of Amarjit Mann at “www.candrug.com”. Finally, while the Complainant clearly reiterated its offer of $250 to cover the registration fee and was not ready to compensate the Respondent for an amount beyond that, Mr. Mann, not only was reluctant to take the time at his own cost to justify his demand of $1,800 but further stressed the fact that the Complainant would also have to engage in further costs for its counsel to prepare a submission. The Respondent stated in a communication to Complainant’s counsel: “If required, I will do necessary work to dig up the expenses – this will also result in more professional fees being incurred on our part and is likely to result in a total in excess of $1,800. Further your firm will be charging considerable fees in order to file the relevant submissions.”
All these facts clearly demonstrate that the Respondent, deliberately registered the domain name in dispute with full knowledge of the existence of the Trademark and have registered the domain name in dispute in bad faith.
The attempts at selling it for a price in excess of the registration cost combined with the attitude of the Respondent, the engagement in a pattern of registering domain names which are confusingly similar and the further negotiations with the Complainant demonstrate the use of the domain name in dispute in bad faith.
The Panel finds that the domain name in dispute has been registered in bad faith and has been used in bad faith
The third criteria has been met.
7. Decision
The Panel concludes that:
(a) the domain name <combigan.com> is confusingly similar to the Complainant’s Trademark;
(b) the Respondent has no rights or legitimate interests in the domain name in dispute;
(c) the domain name in dispute has been registered and is being used in bad faith.
Therefore, in accordance with paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <combigan.com> be transferred to the Complainant.
J. Nelson Landry
Sole Panelist
Dated: August 22, 2006
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