The Complainant is Actelion Pharmaceuticals, Ltd, Gewerbestrassse, Allschwil, Switzerland, represented by Kirkpatrick & Lockhart Preston Gates Ellis LLP, United States of America.
The Respondent is Hackard & Holt, Gold River, California, United States of America, represented internally, United States of America.
2. The Domain Name and Registrar
The disputed domain name <tracleerinfo.com> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2007. On June 8, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On June 11, 2007, Go Daddy Software transmitted by email to the Center its verification response, confirming that the 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”), 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 June 29, 2007. In accordance with the Rules, Paragraph 5(a), the due date for Response July 19, 2007. The Response was filed with the Center July 19, 2007.
The Center appointed the Honorable Sir Ian Barker, QC, Jeffrey H. Kaufman and Frederick M. Abbott as panelists in this matter on August 20, 2007. The Panel finds that it was properly constituted. Each member of 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 manufacturer listed on the Swiss Stock Exchange. Founded in 1997, it has subsidiaries, market and sales facilities in 22 countries covering all key pharmaceutical markets worldwide.
It has developed a pharmaceutical product called TRACLEER which is a dual endothelin receptor antagonist approved for oral treatment for WHO Class III or IV Pulmonary Arterial Hypertension (“PAH”). This is a chronic, life-threatening disorder which severely compromises the functions of the lungs and heart. TRACLEER was approved for use by the United States Food & Drug Administration in 2001.
The Complainant designed and executed its own clinical trials which led to the approval of TRACLEER in the WHO categories. It is currently managing 25 clinical trials of the drug in various places.
The Complainant owns trademark registrations for the word TRACLEER in numerous countries worldwide, including the United States of America, Canada, Mexico, Australia, the European Union and Japan. Many of these registrations were issued prior to the date on which the Respondent registered the disputed domain name, namely May 20, 2002.
The Complainant operates a website at “www.tracleer.com” which provides prescription and safety information about the drug for consumers and health professionals. Articles are included in the website describing PAH, its causes, symptoms, diagnosis and treatment.
The Respondent is a law firm specializing in products liability litigation. It has conducted and is conducting, litigation against pharmaceutical companies in respect of various pharmaceutical products. In particular, it is involved in product liability and personal injury litigation against a manufacturer (not the Complainant) in respect of diet drugs known as FEN-PHEN.
The Respondent’s website states that the Respondent is a law firm specializing in claims against pharmaceutical companies. The Respondent is happy to accept as new clients FEN-PHEN users diagnosed with pulmonary hypertension or who require heart valve surgery.
The Respondent’s website name provides factual statements concerning TRACLEER. A visitor to the website would see that the website is operated by a law firm and not by the Complainant or a competitor of the Complainant.
On May 21, 2007, the Complainant wrote to the Respondent, claiming unauthorized use of the disputed domain name. This ‘cease and desist’ letter claimed that the Respondent’s use of the Complainant’s trademark in the disputed domain name was likely to cause confusion, mistake and deception. On March 30, 2007, the Respondent claimed that it did not use the Complainant’s trademark and that there was not likely to be any confusion, mistake or deception since the Respondent was not manufacturing pharmaceutical products. Further exchanges of correspondence did not result in the Respondent ceasing to use the disputed domain name.
5. Parties’ Contentions
A. Complainant
The disputed domain name is confusingly similar to the Complainant’s trademark. The addition of the letters ‘info’ does not diminish the similarity.
The Complainant submits that the Respondent has no legitimate rights or interest in the disputed domain name. It was given none by the Complainant. The Respondent has no legitimate need to use the Complainant’s registered trademark to mislead and divert consumers to its website in an endeavour to find new clients for its FEN-PHEN litigation.
Because of its lack of legitimate rights in the disputed domain name, the Respondent registered the disputed domain name in bad faith and is using it in bad faith. It had no plausible reason for using this particular domain name, which is clearly the name of a pharmaceutical product.
The Complainant contends that the statements on the Respondent’s website associated with the disputed domain name are false and deceiving, e.g. the website states that the FDA had recently approved TRACLEER. This is incorrect because TRACLEER was approved in November 2001. Persons accessing the website who may have been newly prescribed TRACLEER or who may be considering its use would be misled into believing that TRACLEER is a new drug on the market and therefore may be reluctant to use it.
By associating TRACLEER with the Respondent’s website, consumers may be misled into believing that TRACLEER is not safe when used as prescribed. Because the Respondent is in the business of suing pharmaceutical companies, alleging that consumers of some pharmaceuticals have been harmed by the use of drugs, visitors to the website might think that TRACLEER was harmful.
Bad faith is shown because the Respondent is diverting unsuspecting members of the public by i.e. patients recently prescribed the drug in an effort to obtain clients for its FEN-PHEN litigation.
Various WIPO UDRP decisions were cited in situations where a respondent’s website was clearly intended to attract members of the public who may be wishing to use the complainant’s goods or services.
B. Respondent
The Respondent acknowledges that the disputed domain name is confusingly similar to the trademark but contests the Complainant’s submissions on legitimate interest and bad faith.
The Respondent is a firm specializing in, inter alia, pharmaceutical product litigation. As a service to the public, it devotes several pages on its website to providing information on potential dangers associated with certain pharmaceutical drugs, including the FEN-PHEN combination. In some cases, these drugs were found to cause PPH. TRACLEER is a medication used to treat PPH and the intention of the Respondent’s references to TRACLEER is solely intended to educate the public on that fact.
The Respondent does not suggest or imply that TRACLEER causes PPH. It has made fair and legitimate use of the disputed domain name.
Trademark law recognizes the ‘fair use’ defence which prohibits a trademark registrant from appropriating a descriptive term for its exclusive use, thereby preventing others from accurately describing a characteristic of its goods. In particular:
1. the ‘fair use’ doctrine allows a party to use a trademark to identify the registrant’s product if one’s service is not readily available without use of the mark.
2. only so much of the mark is used that is necessary to identify the service; and
3. the use does not suggest sponsorship or endorsement by the trademark holder.
Various United States Federal Court decisions were cited to justify this submission. The Respondent submits it complies with the above criteria.
The facts of the case closely resemble those of Pfizer v. Van Robichaux, WIPO Case No. D2003-0399. There, the complainant, a pharmaceutical manufacturer owned the registered trademark LIPITOR for a drug in common use. The respondent, an attorney, registered the domain name <lipitorinfo.com>. He claimed that he intended to use that domain name to provide individuals with information about their legal rights and treatment options should it be held that LIPITOR causes injuries to consumers. The Panel upheld the respondent’s claim and said that his use of a domain name did not of itself amount to a suggestion that the domain name was sponsored by the trademark holder.
The Respondent submits that like the situation in the Robichaux case, the Respondent’s information on its webpages show the words “Hackard & Holt, Attorneys at Law” in bold face large type so that, when viewed as a whole, it is immediately apparent that the website is sponsored by a law firm. The use does not tarnish the reputation of the owner of the trademark. It merely provides information for patients suffering from PPH. It does not invite clients to contact the firm to discuss law suits arising out of their use of TRACLEER.
Nor has the Respondent acted in bad faith. There was no attempt made to sell, rent or otherwise transfer the domain name, or to indulge in cyber-squatting. The Respondent is not a competitor of the Complainant. The Respondent has not used the domain name to attract internet users to its site by suggesting that the site is sponsored, affiliated or endorsed by the Complainant. To the contrary, the user is able readily to identify the site as belonging to the Respondent and no one else. The site explains that TRACLEER can be used to treat a condition caused by other drugs, although it invites individuals who have taken other named drugs to contact the firm for information regarding their legal rights.
Cases cited by the Complainant involve situations where the respondent was using the domain name to divert public to obtain clients in the same field of business. Here, the Respondent is not involved in the business of developing or selling pharmaceutical drugs.
The Respondent contends that the Complainant has failed to demonstrate how the disputed domain name has harmed its business. The domain name simply explains that TRACLEER is used to treat a disease and can be used for other pharmaceutical drugs. The purpose of the disputed domain name is purely informational and is serving the public interest. In the Robichaux case the panel considered that in light of the important public interest at stake and the reasonable nature of the respondent’s defence, it was not appropriate to deprive the respondent of the disputed domain name in an administrative proceeding.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “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 requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should 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) 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
There is no doubt, and the Respondent does not contest it, that the disputed domain name is confusingly similar to the Complainant’s trademark. Paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Once the Complainant has made a prima facie case, the onus is on the Respondent to show that it comes within one of the limbs of Paragraph 4(c) of the Policy, namely:
(i) before any notice to you [the Respondent] of the dispute, your 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 or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 Complainant gave the Respondent no rights in respect of the disputed domain name and the Respondent is not commonly known by the disputed domain name as contemplated by Paragraph 4(c)(ii).
Paragraph 4(c)(iii) is inapplicable because it requires that Respondent’s use of the domain name be a legitimate noncommercial use, or a fair use, and that Respondent has no intent for commercial gain to misleadingly divert consumers. As discussed below, Respondent’s use is neither a fair use nor a legitimate noncommercial use.
Under Paragraph 4(c)(i) of the Policy, the Respondent has to show that, before any notice to it of the dispute, it used or made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.
The Respondent claims that it was using the disputed domain name in connection with a bona fide offering of goods and services, namely the provision to the public of information that TRACLEER is a cure for a condition. There is no attempt made to denigrate the product or to solicit clients in respect of other drugs for which litigation was already under way.
The Respondent cites the defence available under United States trademark law of “nominative fair use”. This is defined by the U.S. Court of Appeals for the Ninth Circuit thus:
“This court looks to three factors in determining whether a defendant is entitled to the nominative fair use defense: (1) the product must not be readily identifiable without use of the mark; (2) only so much of the mark may be used as is reasonably necessary to identify the product; and (3) the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. New Kids, 971 F.2d at 308. (See Playboy Enters v. Welles, 279 F.3d 796 (9th Circuit 2002) and Horpheg Research v. Mario Pellegrini, 328F.3d 1108 (9th Circuit 2003)).
The Respondent claims that it comes within all limbs of the above approach.
Whether it does or not, the focus of this Panel’s enquiry must be whether the Respondent has shown that it comes within Paragraph 4(c) of the Policy. The Panel is required to decide this administration proceeding in terms of the Policy and not as if it were deciding a trademark infringement or cybersquatting case in a national court.
The question for the Panel must be whether the Respondent is using the disputed domain name in connection with a bona fide offering of goods and services.
In the view of the majority of the Panel, there is clearly “initial interest confusion”. The Complainant’s trademark is being used in a domain name in order to attract Internet users looking for information on TRACLEER such as its properties and advantages and the clinical indications for its use. Instead, visitors arrive at the website of a law firm specializing in litigation against pharmaceutical manufacturers, and which contains little information about TRACLEER.
Even assuming trademark law can assist, the instant use of a website to attract potential clients to the law firm seems more than is necessary to convey the very limited information permitted under the “nominative fair use” defence. Little information is provided about TRACLEER, despite the heading on the web page. The Respondent’s main webpage says “You may have potential claims against the manufacturers of the drugs for your damages”. Although there is no critique of TRACLEER, the quoted statement does not make it clear whether it is included in the words “the drugs”.
In the view of the majority of the Panel, the use of the name of a trademarked drug for the purpose of soliciting clientele is not using the disputed domain name in connection with a bona fide offering of services. The website states that it was created by the Respondent “so that you could learn more about the legal services we offer”. Although there is no overt suggestion that the manufacturer of TRACLEER might ever be sued, the site exists to enlist clients who have taken drugs to relieve the same maladies for which TRACLEER is now prescribed.
The Respondent has not discharged the onus on it and, therefore, in the view of the majority of the Panel, the Complainant succeeds on the second limb of Paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
It is not hard to infer that the Respondent knew of the Complainant’s mark at the date of registration of the disputed domain name. It would be part of its business to know of developments in the pharmaceuticals world, such as the trademark registration of TRACLEER.
It is not enough for the Respondent to say that the Respondent does not seek to sell the disputed domain name or that it is not a competitor of the Complainant. Nor is it enough that the Respondent does not claim affiliation, sponsorships or endorsement by the Complainant. The instances of bad faith in Paragraph 4(b) of the Policy do not preclude other instances of bad faith being demonstrated.
The “initial interest confusion” referred to in the earlier section, is enough to justify findings of bad faith registration and use. The Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating initial interest confusion. The Complainant’s trademark is diminished by its being used as a marketing tool by the Respondent to gain clients for its litigation against other pharmaceutical manufacturers.
The Robichaux case can be distinguished in that the use of the site there was specifically directed to the medicine represented by the domain name. Here, the Respondent is claiming that it is doing consumers a public service by providing information about potentially dangerous pharmaceutical products and offers legal advice to those affected by those products.
Although not necessarily under the domain name selected by the Respondent, this alleged ‘public interest’ defence might be viable if there were known deleterious effects of TRACLEER or if the Respondent were actually conducting litigation against its manufacturer.
In this case, the attempt to attract clients by means of a website which uses the name of a drug for which no deleterious effect is claimed and which is not the subject of consumer litigation is a subtle ploy to use the Complainant’s mark to attract custom for other litigation.
In the view of the majority of the Panel, bad faith registration and use is established.
7. Decision
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, <tracleerinfo.com> be transferred to the Complainant.
Hon. Sir Ian Barker, QC
Presiding Panelist
Jeffrey H. Kaufman
Panelist
Frederick Abbott
Panelist (Dissenting)
Dated: September 10, 2007
DISSENT
As the Panel majority has noted, Respondent in this proceeding substantially relies on an earlier panel decision under the Policy, Pfizer v. Van Robichaux,
WIPO Case No. D2003-0399. This dissenting Panelist was the sole panelist in that proceeding.
Decisions under the Policy do not generally constitute binding precedent, although most panels recognize a value to consistency among decisions, as circumstances warrant, in the interests of establishing a predictable legal framework for all parties affected by the Policy. Even if decisions under the Policy constituted binding precedent, the facts in Pfizer v. Van Robichaux are distinct in material respects from the facts in this proceeding. These new facts require an extension of the legal analysis.
In Pfizer v. Van Robichaux, the respondent law firm intended to use the disputed domain name, <lipitorinfo.com>, to provide information regarding potential legal representation to prospective clients if circumstances arose suggesting that the trademarked pharmaceutical product, “Lipitor”, might have caused injury. The respondent law firm had previously represented clients in litigation involving adverse reactions to pharmaceutical products. It had maintained information regarding such products, and associated litigation, on its website. The website of the respondent in Pfizer v. Van Robichaux – which had not yet been used in connection with the disputed domain name – did nothing in respect to other trademarked pharmaceutical products to suggest that the respondent law firm was in any way associated with or sponsored by the trademark owners of those products. There was every reason to believe that the respondent would do with the disputed domain name what it said it would do, which was to provide information to prospective clients concerning risks that might be associated with “Lipitor”, and with respect to potential legal representation, without suggesting an association with the trademark owner, Pfizer. The panel in that proceeding found that the use by the respondent of the trademark, “Lipitor”, in the domain name, <lipitorinfo.com>, was fair within the meaning of Paragraph 4(c)(iii) of the Policy.
In the instant proceeding, Respondent law firm is using the trademark associated with the pharmaceutical product, “Tracleer”, in the disputed domain name, <tracleerinfo.com>, in a different way. The disputed domain name directs the Internet user to a web page that is prominently headed with the name of the law firm, “Hackard & Holt, Attorneys at Law”, which heading is followed by links to subpages that would customarily be expected of a law firm, “The Firm”, “The Attorneys”, “Practice Areas”, “In the News”, “Contact Us”. There is nothing surprising or unusual about this website arrangement. It is what is expected of a law firm. The information beneath the heading for the subpage addressed by the disputed domain name is as follows:
“TRACLEER
Although there is no known cure for Primary Pulmonary Hypertension (PPH), there are several medications designed to prolong the life of the PPH patient. The most effective treatment for PPH is Flolan, or continuous intravenous prostacyclin. Prostacyclin is a molecule that the human body naturally produces that keeps the blood vessels working properly. Studies suggest that at least one component of pulmonary hypertension is an abnormally low level of prostacyclin. The FDA has recently approved Tracleer (generically known as bosentan) which is the first treatment for PPH in a pill form.
If you have ever taken the diet drugs known as Fen-Phen, Pondimin or Redux, and have been diagnosed with PPH or severe pulmonary hypertension, you may have potential claims against the manufacturers of the drugs for your damages.
Contact us now for more information on your legal rights”
Respondent asserts that its use of the disputed domain name to direct Internet users to this information does not abuse the rights of Complainant in its TRACLEER trademark. Respondent asserts its use is “fair” within the meaning of Paragraph 4(c)(iii) of the Policy.
This Panelist infers that Respondent’s intent in providing information concerning Tracleer is to locate potential clients for litigation against pharmaceutical companies other than Complainant; that is, manufacturers and distributors of Fen-Phen, Pondimin or Redux. Individuals who have been prescribed Tracleer by their physicians are more likely than the general population to have been injured by third party pharmaceuticals. The provision of information about Tracleer is tangential to the purpose of providing useful information to the public, although that information may be of interest and/or use to some members of the public (who, for example are researching possible treatments for Primary Pulmonary Hypertension). Since Respondent is in the business of providing commercial legal representation, and since the information on the webpage concludes with a specific invitation to contact Respondent regarding legal rights in respect to different drugs and producers, the reasonable inference is that attracting clients for litigation involving those third party producers is the primary purpose of providing information about Tracleer, and generally informing the public is a secondary or tangential purpose.
To begin with an observation made in Pfizer v. Van Robichaux, and elaborated further there, if fair use defenses are to be permitted under the Policy – and the express language of Paragraph 4(c)(iii) of the Policy permits such defenses in the context of establishing rights or legitimate interests – then creating “initial interest confusion” cannot per se be a contravention of the Policy. Most if not all fair use claims in respect to trademarks in domain names will involve an element of initial interest confusion because the basic nature of fair use precisely involves “use” of the trademark. Even if a contrary signal such as “sucks” is appended to a trademark in a domain name, there will be some element of initial interest confusion as Internet users attempt to figure out the puzzle of the connection. A fair use analysis must go beyond the question of “initial interest confusion”.
This Panelist does not accept the view of the majority that analysis of fair use under the Policy is somehow materially different than analysis of a fair use defense to a trademark infringement action or a cybersquatting case in a national court. Paragraph 4(c)(iii) of the Policy expressly makes provision for fair use as a right or legitimate interest in a disputed domain name, and the addition of “without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue” does not materially alter traditional trademark law fair use doctrine common to many national jurisdictions.
In Pfizer v. Van Robichaux, this Panelist adopted the analytic approach of the U.S. Court of Appeals for the Ninth Circuit in respect to “nominative fair use” of trademarks, and will do so again here. Respondent has provided a relevant excerpt summarizing the three-pronged approach from Horphang Research v. Mario Pellegrini, 328 F. 3d 1108 (9th Cir. 2003), quoted in Pfizer v. Van Robichaux, in its Response (and quoted supra under “Respondent”).
The first element of the analytic approach is to determine whether the product is readily identifiable without use of the mark. The trademarked product at issue in this case, Tracleer, has an alternative generic identifier “bosentan” (see Complainant’s website at “www.tracleer.com”. This is a newer drug that is not generally available in generic form. It will most commonly be prescribed by doctors and recognized by the public by its trademark name. Internet users and consumers would be expected to know of it by its trademark name. It is not readily identifiable without use of the mark.
The second element of the analytic approach is to determine whether Respondent is only using so much of the mark as may be reasonably necessary to identify the product. As noted in Pfizer v. Van Robichaux, the Ninth Circuit in Playboy v. Welles, 279 F. 3d 796, at 802 (9th Cir. 2002), used this element to distinguish use of the word mark, on one hand, and more extensive use of the distinctive lettering or color scheme of the trademark owner, on the other. In this proceeding, the “so much as is necessary” element can also be used to ask whether Respondent’s use of the mark in the domain name, as opposed, for example, to on its website sub-page, is necessary to identify the product.
This is a difficult question. This Panelist in Pfizer v. Van Robichaux noted that the respondent there could have provided information concerning prospective litigation without using the trademark in a domain name, but that it would be less effective in doing so. In both that case and this one, the complainant-trademark owner operates a website devoted to providing information about the respective drug, and in both cases using the most obvious combination of terms. There, <lipitor.com>, here <tracleer.com>. The public in neither case is deprived of information from the trademark owner. The material difference is that in Pfizer v. Van Robichaux, the litigation information was about a drug produced by the complainant, and in this proceeding, the litigation information is about drugs produced by companies other than Complainant. Respondent here could provide information about its litigation services without using the Complainant’s trademark, but it would be less effective in doing so.
This Panelist concludes that there is sufficient public interest in having access to information associated with the medical condition (PPH) which is treated by Complainant’s Tracleer that Respondent’s use of the Complainant’s mark in the domain name <tracleerinfo.com> is reasonably necessary to identify Complainant’s product, and thereby to provide information about risks associated with third-party produced drugs that may have caused the harm treated by Tracleer. This Panelist concludes that Respondent’s use satisfies the second element of the nominative fair use approach followed by the U.S. Court of Appeals for the Ninth Circuit, and adopted by this panelist in Pfizer v. Van Robichaux. This Panelist notes that a successful nominative fair use defense is not predicated on lack of a profit motive.
The third element of the analytic approach is to determine whether the user has done anything in conjunction with the mark that would suggest sponsorship or endorsement by the trademark holder. The majority in this proceeding finds that Respondent’s use of the mark in <tracleerinfo.com>, by creating “initial interest confusion”, suggests sponsorship or endorsement of Respondent’s website by Complainant. This Panelist does not agree. An Internet user may, indeed, initially be directed to Respondent’s webpage based on a belief that the website is sponsored or endorsed by Complainant. This is because the disputed domain name, as Complainant, Respondent, and all panelists agree, is confusingly similar to Complainant’s trademark. But it is apparent upon reaching Respondent’s web page referring to Tracleer that this is not a website hosted or sponsored by Complainant. It is prominently labeled as the website of a law firm, and the posted information makes apparent that this is a law firm interested in suing certain drug manufacturers. This proceeding involves an issue of nominative fair use, and in this context “initial interest confusion” does not establish lack of rights or legitimate interests.
This Panelist concludes that Respondent’s use of Complainant’s trademark in the disputed domain name is fair, and thus that Complainant has failed to establish that Respondent lacks rights or legitimate interests in the disputed domain name.
This Panelist further determines that Respondent did not register and use the disputed domain name in bad faith. There is no evidence to suggest that Respondent registered the disputed domain name to sell it to Complainant or a third-party, nor is there evidence that the name was registered to prevent Complainant’s registration of its trademark in a domain name (as part of a pattern of such conduct), nor to injure Complainant as a competitor. The majority concludes that the “initial interest confusion” generated by Respondent’s use of Complainant’s trademark in <tracleerinfo.com> is sufficient to support a finding that Respondent intentionally for commercial gain registered the domain name to create confusion as to source, sponsorship, endorsement or affiliation with Complainant. In the circumstances of the specific use by Respondent, an Internet user would be subject to initial interest confusion, but that confusion would dissipate as soon as the user reached Respondent’s website. There is little prospect that an Internet user would conclude that Respondent and its website are affiliated with or endorsed by Complainant. This is not a case where Respondent is using Complainant’s trademark to offer products that compete in any way with those of Complainant. The initial interest confusion will not generate sales of competing products for Respondent, or divert sales away from Complainant. Respondent is not tarnishing or blurring Complainant’s trademark. As the majority notes, the list of practices evidencing bad faith in Paragraph 4(b) of the Policy is illustrative, not exclusive. Nonetheless, this Panelist does not consider Respondent’s conduct to warrant a finding of bad faith either within the listed elements, or outside them.
Reiterating the conclusion in Pfizer v. Van Robichaux, the public has a compelling interest in information concerning products that have a substantial impact on public health, and the public has a strong interest in legal representation with respect to those products. Courts of competent jurisdiction could decide that fair use doctrine does not encompass the use of a trademark such as that made by Respondent here. However, this Panelist is reluctant to make such a determination in this administrative proceeding. In light of the fundamental importance of the issues here, this Panelist would prefer to err on the side of fair use.
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