The Complainant is Altana, Inc., New York, of United States of America, represented by Ohlandt, Greeley, Ruggiero & Perle, LLP, United States of America.
The Respondent is Johnny Carpela, Sumas, Washington, of United States of America.
2. The Domain Name and Registrar
The disputed domain name <temovate.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2007. On December 6, 2007, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On January 6, 2008, GoDaddy.com, Inc. 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 on December 7, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 27, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2007.
The Center appointed Jonathan Hudis as the sole panelist in this matter on January 11, 2008. The Panel finds that it was properly constituted. After checking for possible conflicts of interest, the Panel submitted its 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
According to the records of the U.S. Patent and Trademark Office, Complainant, Altana, Inc., is the owner by assignment from the Glaxo Group Limited of U.S. Trademark Registration No. 1,428,974 for the mark TEMOVATE. The registration is active, subsisting, has achieved incontestable status, and was last renewed in March 2007. The goods recited in the registration are “pharmaceutical preparation, namely, an anti-inflammatory steroid for topical application.”
Through its PharmaDerm Division, Complainant claims that for many years it has promoted and sold anti-inflammatory steroidal topical applications under the TEMOVATE mark. According to a product catalog submitted with the Complaint, these topical applications include creams, emollients, gels, and ointments. According to the Registrar’s WhoIs information submitted with the Complaint, the contested domain name was registered on February 26, 2002. Complainant asserts that its marketing and sales of TEMOVATE topical applications began well before this date and continue to the present. There is nothing in the record to dispute these contentions.
The <temovate.com> domain name, when accessed as a URL on the Internet, displays content about TEMOVATE products and their uses. Complainant asserts that it has no connection whatsoever to the content contained on the <temovate.com> website. At the <temovate.com> site are links directing users to the following online Canadian pharmacies: http://www.CanPharm.com, http://www.CanadaPharmacy.com, and http://www.CanadaMedicineShop.com. No evidence has been submitted establishing a relationship between Respondent, Johnny Carpela, and these online pharmacies - although Complainant asserts that such a relationship can be inferred by the circumstances.
On several occasions, Complainant’s counsel wrote to Respondent, objecting to the registration and use of the <temovate.com> domain name and requesting that the registration for this domain name be transferred to Complainant. This correspondence went unanswered.
Complainant directed the Panel to several prior UDRP proceedings in which Respondent, Johnny Carpella, was found to have registered and used in bad faith domain names corresponding to the trademarks of others. In each case, the Panel directed that the domain name(s) be transferred to the complaining party. See Brystol-Meyers Squibb Company, Westwood-Squibb Pharmaceuticals, Inc. v. Johnny Carpela,
WIPO Case No. D2007-0354, Valeant Pharmaceuticals International and Valeant Canada Limited v. Johnny Carpela, WIPO Case No. D2005-0786, AstraZeneca AB v. Johnny Carpela,WIPO Case No. D2005-0352, Glaxo Group Limited and The Wellcome Foundation Limited v. Johnny Carpela, WIPO Case No. D2005-0202, Gerd Petriik v. Johnny Carpela, WIPO Case No. D2004-1043, and CVS Pharmacy, Inc. v. Johnny Carpela, WIPO Case No. D2004-0038.
5. Parties’ Contentions
A. Complainant
Complainant asserts that the subject domain name is identical or confusingly similar to a trademark in which Complainant has rights; that the Respondent has no rights or legitimate interests in the domain name; and that the domain name was registered and is being used in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Complainant has the burden of establishing each of the three following elements under paragraph 4(a) of the Policy:
(i) The domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which 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.
Failure to prove any one of these factors is fatal to the Complaint.
Respondent had the opportunity to respond and present evidence that he has rights or legitimate interests in respect of the contested domain names. Respondent chose not to do so. Complainant is not entitled to relief simply by reason of Respondent’s default, but the Panel can and does draw evidentiary enforces from Respondent’s failure to respond. Patelco Credit Union v. ActiveIdeas.com, Inc., WIPO Case No. D2005-1295, citing, Talk City, Inc. v. Robertson,
WIPO Case No. D2000-0009.
For example, paragraph 14 of the Rules provides that:
“(a) In the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules, the Panel shall proceed to a decision on the Complaint.
(b) If a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such enforces therefrom as it considers appropriate.”
The Panel must now decide whether Complainant has come forward with sufficient evidence to satisfy the requirements of paragraphs 4(a)(i), (ii) and (iii) of the Policy.
A. Identical or Confusingly Similar
Complainant has demonstrated its rights in the TEMOVATE mark to the Panel’s satisfaction by its submission with the Complaint of information pertaining to its federal U.S. trademark registration, as well as assertions of its common law usage of this mark. These contentions are unchallenged by Respondent. The disputed domain name, <temovate.com>, is confusingly similar, if not identical, to the TEMOVATE mark in which Complainant has rights. The addition of “.com” to Complainant’s TEMOVATE mark in the subject domain name does not change the fact of confusing similarity. The addition of the “.com” top level domain is irrelevant in distinguishing a Complainant’s mark from a contested domain name. Microsoft Corp. v. Amit Mehrotra,
WIPO Case No. D2000-0053.
The Panel therefore finds that Complainant has met its burden with respect to paragraph 4 (a)(i) of the Policy.
B. Rights or Legitimate Interests
Respondent has not come forward to rebut Complainant’s prima facie showing that Respondent has no rights or legitimate interests in the disputed domain names. In particular, Respondent has not come forward to provide any evidence of the following:
(i) Before any notice to Respondent of this dispute, her use of, or demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if he has acquired no trademark or service mark rights therein; or
(iii) He is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish Complainant’s trademarks and service marks at issue.
Paragraphs 4(c)(i) – (iii) of the Policy.
Therefore, in the absence of any evidence or argument submitted by Respondent and in light of the findings under the third element of the Policy, the Panel finds that Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The intent of the Policy is to preclude registration and use of domain names that contain the trademarks of others in an attempt to mislead Internet users into believing there is an association with the true trademark owners. The Nasdaq Stock Market, Inc. v. Green Angel,
WIPO Case No. D2001-1010, (finding bad faith where Respondent’s use of the domain names at issue in connection with websites that sold financial books and newsletters is likely to confuse users as to the source, sponsorship, affiliation or endorsement of Respondent’s websites); Identigene, Inc. v. Genetest Lab.,
WIPO Case No. D2000-1100, (finding bad faith where Respondent’s use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site); eBay, Inc. v. Progressive Life Awareness Network,
WIPO Case No. D2001-0068, (finding bad faith where Respondent took advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to Respondent’s website).
Specifically, the Policy recites the following examples as bad faith use and registration of a contested domain name:
(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 that 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.
Paragraphs 4(b)(i) – (iv) of the Policy.
Complainant has shown to the Panel’s satisfaction that the circumstances described in paragraphs 4(b)(ii), 4(b)(iii), and 4(b)(iv) are present in this proceeding. Respondent registered the contested domain name in order to prevent Complainant from reflecting its TEMOVATE mark in a corresponding “.com” domain name; and prior UDRP Panel decisions show that Respondent has engaged in a pattern of such conduct. Because the <temovate.com> website, as used by or with the approval of Respondent, directs Internet users to Canadian online pharmacies, Respondent has registered and is using the contested domain name primarily for the purpose of disrupting the business of Complainant, a competitor-seller of topical drug products. Respondent also has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant’s TEMOVATE mark as to the source, sponsorship, affiliation, or endorsement of his website or of a product or service promoted on his website.
The Panel also finds that Respondent’s failure to respond to Complainant’s correspondence relating to the contested domain name is further evidence of Mr. Carpela’s bad faith. See, eBay Inc. v. Sunho Hong,
WIPO Case No. D2000-1633; and Encyclopaedia Britannica, Inc. v. John Zuccarini and the Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party,
WIPO Case No. D2000-0330.
These facts all point to the inevitable conclusion that Respondent has registered and is using the disputed domain name in bad faith. Therefore, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 <temovate.com> be transferred to the Complainant.
Jonathan Hudis Sole Panelist
Dated: January 17, 2008
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