The Complainant is Ranbaxy Laboratories Ltd, New Delhi, India, internally represented.
The Respondent is Jucco Holdings, California, United States of America, represented by Willenken Wilson Loh & Lieb, LLP, United States of America.
2. The Domain Name and Registrar
The disputed domain name <rambaxy.com> is registered with NameKing.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2007. On October 24, 2007, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain name at issue. On October 24, 2007, NameKing.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 6, 2007. 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”), 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 November 12, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2007. The Response was filed with the Center on November 30, 2007.
The Center appointed Pierre Olivier Kobel as the sole panelist in this matter on December 7, 2007. 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 October 23, 2007, the Respondent sent an e-mail to the Complainant acknowledging receipt of the Complaint and claiming that, without discussing the merits of the claim, it is the Respondent’s policy to expedite transfers whenever there appears to be any basis for a legitimate claim and proposing to expedite the transfer if the Complainant so wished. The Complainant replied on October 29, 2007, seeking from the Respondent a written declaration of compliance with the Complaint and transfer of the disputed domain name. On November 11, 2007, the Complainant wrote to the Center asking for the continuation of the proceedings as there was no settlement proposal from the Respondent.
On November 28, 2007, counsel for the Respondent asked again the Center to suspend the proceedings in order to transfer the disputed domain name, “without making any concession as to liability or wrongdoing”. The Complainant refused again, unless the Respondent made admission to the contents of the Complaint. The Complainant pointed out to a number of domain name cases involving Jucco Holdings as Respondent. On November 30, 2007, the Center communicated the Complainant’s refusal to the Respondent’s request and advised about the due date for the response falling on December 2, 2007.
The Panel issued a Procedural Order No. 1 dated December 17, 2007. In that Procedural Order, the Panel stated that paragraphs 10, 5(e) and 15(a)(b) of the Rules defined the procedural framework within which panels are to render decisions regarding domain name disputes. Their purpose is to provide a mechanism to render decisions within a short timeframe, taking into consideration the rights of the parties to be heard. As a result respondents have twenty days to respond on the merits. It is only in the presence of exceptional circumstances that an extension of the deadline or a second exchange of submissions may be ordered. The incentive is for each party to get it right first time (Chantelle v. Marvin Anhalt,
WIPO Case No. D2001-1181). The Panel found that, in the case at hand, the Respondent had a particularly long time to prepare its Response. It was informed by the Complainant of the Complaint and its contents on October 22, 2007, whilst the Commencement of Administrative Proceeding was notified on November 12, 2007, only, because of formal shortcomings in the Complaint. The deadline to respond was set by December 2, 2007. Altogether, the Respondent had a month and a half to prepare a full and complete Response. The Panel also stated that paragraph 10 of the standard Response used by the Respondent, stating that “the Respondent certifies that the information contained in this Response is to the best of the Respondent’s knowledge complete and accurate”, should not become an empty formula. The Panel found that instead of responding on the merits, the Respondent had deliberately chosen to repeat earlier proposals expressly rejected by the Complainant, that the domain name be transferred without any decision on the merits. It did not allege any circumstances that would have prevented Respondent from answering on the merits or any new and at the time unknown circumstance of fact requiring a completion of its submission. The Panel therefore found that the Respondent did not allege or demonstrate any exceptional circumstances of any kind that would justify a new deadline to file an additional response and rejected Respondent’s request.
4. Factual Background
The Complainant owns a verbal trademark in the name of RANBAXY, registered in numerous countries in relation to pharmaceutical and medicinal preparations. The trademark is identical to the main element of the registered trade name of the Complainant.
The Respondent registered the disputed domain name on October 27, 2004.
The domain name resolved to various landing pages advertising and offering for sale pharmaceutical products. Some of these pages referred to the Complainant under the misspelled name “Rambaxy” instead of “Ranbaxy”.
5. Parties’ Contentions
A. Complainant
The Complainant submits that it owns exclusive rights over the trademark RANBAXY and that the registration and use of the disputed domain name causes confusion with its trademark. The Respondent was not given any authorisation to use the Complainant’s trademark.
The Complainant contends that the Respondent selected a domain name similar to its reputable trademark in order to trade upon the reputation of the Complainant in relation to its pharmaceutical products and divert traffic to commercial sites offering drugs and pharmaceutical products. The Complaint contains print outs of pages available on the Internet under the disputed domain name. These refer indiscriminately to “Ranbaxy” or “Rambaxy”, and to web pages offering to sell all kinds of pharmaceutical products, including products manufactured by the Complainant.
The Complainant contends that the Respondent has not been commonly known by the domain name and has not acquired any right in its respect. The Complainant contends that the Respondent is not making a legitimate use of the disputed domain name and is in bad faith.
The use of the disputed domain name only causes confusion among Internet users seeking information about the Complainant.
The Complainant alleges that the Respondent has a well-known track record of utilization of others’ trademarks as domain names for the purpose of diverting traffic for financial gain and taking advantage of such trademarks’ reputation. It refers in this respect to the following UDRP cases: Niit Limited v. Admin, Jucco Holdings,
WIPO Case No. D2007-0037, and Sanofi-Aventis v. Jucco Holdings,
WIPO Case No. D2007-0377 and True Value Company v. Jucco Holdings, NAF Claim No. FA684382.
The Complainant is seeking the transfer of the disputed domain name.
B. Respondent
On November 30, 2007, the Respondent filed his Response. It alleges that prior to the filing of the Complaint, the Respondent was not aware of Ranbaxy as the registration was made pursuant to an automated process. It therefore shut down the website associated with the disputed domain name.
The Respondent submits to have made repeated proposals to settle this matter amicably, which the Complainant has refused, “choosing instead to needlessly waste the time, money and resources of the parties and this honorable tribunal”. The Respondent repeated its offer to transfer the disputed domain name without admitting fault or liability and without responding substantively to the allegations of the Complainant. As a result, it requested that the disputed domain name be transferred without findings of fact or conclusions as to paragraph 4(a) of the Policy other than the disputed domain name be transferred. However, to the extent that the Panel determines to issue findings of fact and conclusions as to paragraph 4(a) of the Policy, the Respondent expressed its intention to withdraw the stipulation and request instead an opportunity to file an additional response on the merits of the matter.
The Respondent cites cases where allegedly panels have agreed on a transfer without findings as to fault or liability in relation to the Policy. The Respondent explains that the Complainant filed suit against the Respondent in India and would like to avoid that any finding be prejudicial to its position.
6. Discussion and Findings
The first issue to be decided is whether the Panel may order a transfer of the disputed domain name without examining the conditions for such transfer under the Policy (expedited transfer).
Various panels have already been confronted with that issue. In The Cartoon Network LP, LLLP v. Mike Morgan,
WIPO Case No. D2005-1132, the panel identified three courses of action to deal with such requests. In identifying such courses of action, the panel made a classification of previous panel decisions. After reviewing the proposed classification and the quoted decisions as well as a number of other decisions, we come to the conclusion that the issue actually resolves in two main possible courses of actions to address circumstances under which the issue may arise.
The two courses of action are:
- to grant an expedited transfer without examining the case on the merits; or
- to proceed with an examination of the case on its merits.
Actually a qualification needs to be made as to the expedited transfer. An expedited transfer cannot in the Panel’s view be made without first checking that the Complainant appears to have rights in the disputed domain name. Otherwise, dishonest parties could obtain an undue transfer, a situation which can be remedied by a later panel decision, but would be unsatisfactory (Diners Club International Ltd. v. Diners Club International Ltd. c/o Domain Admin, NAF Claim No. FA551103).
Let aside situations where the request was placed before the opening of the proceedings (see Eurobet UK Limited v. Grand Slam Co., WIPO Case No. D2003-0745), the sets of circumstances under which the request for an expedited transfer may be granted are as follows:
- the Complainant and the Respondent agree on the transfer (or the Complainant does not oppose the request made by the Respondent);
- the Respondent not only requested the transfer but made admissions as to the Complaint or did not contest it.
Deutsche Bank AG v. Carl Seigler,WIPO Case No. D2000-0984; Diners Club International Ltd. v. Diners Club International Ltd. c/o Domain Admin, NAF Claim No. FA551103; Herbalife International of America, Inc. v. Montanya ILtd, NAF Claim No. FA733012, are all cases where the complainant agreed or did not object to the respondent’s request. In Herbalife International of America, Inc. v. Montanya ILtd, the complainant expressly agreed, under condition that it did not imply any endorsement of assertions made by the respondent, and in Haggerty Enterprises, Inc. v. Xedoc Holding SA c/o Domain Admin, NAF Claim No. FA904173, the respondent did not contest the complainant’s assertions. In Deutsche Bank, it was relatively obvious as well that the complainant held rights into the disputed domain name.
In Microsoft Corporation v. Step Web,
WIPO Case No. D2000-1500, however, the absence of consent from the respondent on the three main conditions set forth by the Policy required the panel to examine the case on the merits. Despite the administrative nature of the UDRP characterised by a limited number of relief (transfer or cancellation), a limited number of exchanges and in writing only, we do not think that it could be construed as allowing a panel to transfer the disputed domain name without examination of the case on the merits when the complainant did not consent. Contrary to the language of Williams-Sonoma, Inc. v. EZ-Port,
WIPO Case No. D2000-0207, we believe that Rules 10(a) combined with 10(c) do not authorise the Panel to transfer the disputed domain name without review of the three main conditions set forth in paragraph 4(a) of the Policy, just because the Respondent has consented to the relief. The Complainant who has made a claim is entitled to a decision on the merits of the case and based on the arguments that the Panel deems to be proven.
To summarise, it is only where the two parties involved, have in one way or another agreed on such expedited transfer, that it may take place. In such case, the panel must be satisfied that the complainant appears to hold title on the disputed domain name, i.e. appears to own a trademark. In these cases and contrary to the holdings of Diners Club International we think that the Panel has no reason to examine the other conditions of paragraph 4(a) of the Policy. Where the complainant has not had the opportunity to agree with the respondent’s request (for instance as a result of the single exchange of submissions), but the respondent expressly admitted or did not contest the complainant’s allegations a qualified expedited transfer should take place, that is a transfer decision taking stock of the complainant’s admissions and stating without further examination that the conditions set forth by paragraph 4(a) are fulfilled. Still, the Panel must be satisfied that the complainant holds valid intellectual property rights in the disputed domain name.
We believe the “genuineness” of the respondent’s consent not to be a reliable criterion to determine when a transfer may be ordered without consideration of the paragraph 4(a) elements (see the above quoted Cartoon Network LP, LLLP v. Mike Morgan case).
Based on the above, it is clear that the Respondent asked for an expedited transfer without admission only and that the Complainant rejected it. As a result, the Panel must examine the case on the merits and take a decision whether or not, based on paragraph 4(a) of the Policy, transfer should be granted as requested.
According to paragraph 4(a) of the Policy, the Complainant must show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights, that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name <rambaxy.com>, is confusingly similar to the trademark RANBAXY owned by the Complainant. The only difference is the letter “m” used in the disputed domain name instead of “n”. That small difference is insignificant as one can easily confuse “rambaxy” with “ranbaxy”. Actually in French, Spanish and English, the spelling with a “m” would seem more natural than “n”. Interestingly a number of the sites and pages referred to in the web site exploited by the Respondent actually refer to RAMBAXY to identify the Complainant.
Panels have consistently held that such minor misspellings would not cause the disputed domain name to sufficiently differ from the trademark held by the complainant to avoid a likelihood of confusion.
The Panel therefore finds that the disputed domain name is confusingly similar with the trademark of the Complainant.
B. Rights or Legitimate Interests
The Respondent does not claim any rights or legitimate interests in the disputed domain name. The Respondent does not allege to be a licensee of the Complainant, an authorised distributor or the holder of competing intellectual property rights. Nothing on record shows that the Respondent is known by the disputed domain name. As expressed by the Complainant “Ranbaxy” is an invented word without other known meaning or use than the designation of the Complainant. As a result, the Respondent did not and could hardly claim any legitimate interest in the disputed domain name.
Actually, upon notice of the Complaint the Respondent immediately turned off the web site exploited under the disputed domain name. As evidenced by the exhibits filed with the Complaint, the Respondent’s activity in relation to the disputed domain name consisted in using the disputed domain name to resolve to landing pages containing advertisements of pharmaceuticals, including pharmaceuticals manufactured by the Complainant. That type of activity, usually called pay-per-click and abbreviated as PPC, allows the holder of a domain name to make revenues simply based on the clicks generated by the pages to which the domain name resolves. As thoroughly explained in Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415, these pages are automatically generated web pages that have no fixed substantive content of their own, but republish advertisements pulled from advertising programs based on the words contained in the domain name. Where the links on landing pages are based on the value of the name as a trademark, the trend in UDRP decisions is to recognise that such practices generally do constitute abusive cybersquatting (See Champagne Lanson v. Development Services/MailPlanet.com, Inc.,
WIPO Case No. D2006-0006; The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340; Brink’s Network, Inc. v. Asproductions, WIPO Case No. D2007-0353; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). When based on existing trademarks, there appears to be no other possible interest besides the illegitimate interest in realising revenues based on an existing trademark.
The Panel therefore concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
According to the Policy, paragraph 4(a)(iii), the Complainant must prove that the contested domain name has been registered and is being used in bad faith. Paragraph 4(b) lists circumstances which can be considered as evidence of registration and use in bad faith.
Under paragraph 4(b), registration of a domain name for the purpose of disrupting a competitor (iii) or using the domain name to attract for commercial gain Internet users to the web site of Respondent or other on-line location, by creating a likelihood of confusion with the complainant’s mark, (iv), are typical examples of registration/use in bad faith.
As expressed by the Complainant and supported by evidence submitted with the Complaint, the domain name was used to attract, for commercial gain, third parties to landing pages generating revenues, by creating a likelihood of confusion with the Complainant’s mark. The Respondent trades on a small mistake in the spelling of the Complainant’s trademark to attract web users to various web sites offering pharmaceuticals for sale. It must be noted that a number of the landing pages to which the domain name resolves actually refer to RAMBAXY to identify the Complainant, instead of RANBAXY. That system, in all likelihood, generates revenues per click to the Respondent.
The Respondent claims that registration of the disputed domain name was in good faith because it results from an automated process. The mere fact that the Respondent uses an automated process for registering domain names does not mean that the disputed domain name was registered in good faith. Actually, the usage of an automated process to register domain names implies that the user of the system accepts the possibility to register on various occasions domain names that impinge on others’ rights. The Respondent cannot therefore claim to have registered in good faith.
It also appears that the Respondent is engaging in a pattern of this kind of behaviour. To date, there have been multiple UDRP cases involving domain names registered by the Respondent in violation of third parties’ intellectual property rights. This tends to show that the pay-per-click activity of the Respondent is to a significant extent based on the selection of domain names similar to well-known marks. It is the reputation of the trademarks that attracts clicks generating revenues to the Respondent, not the word which has no meaning other than the name and trademark of the Complainant.
The Panel is therefore satisfied that the Respondent used the domain name in bad faith in the meaning of paragraph 4(b)(iv) of the Policy.
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, <rambaxy.com> be transferred to the Complainant.
Pierre Olivier Kobel Sole Panelist
Dated: December 21, 2007
Stay updated! Get new cases and decisions by daily email.
