WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

iNova Pharmaceuticals (Singapore) Pte. Limited v. Domain Admin, Whois Privacy Corp.

Case No. D2018-1828

1. The Parties

The Complainant is iNova Pharmaceuticals (Singapore) Pte. Limited of Singapore, internally represented.

The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, New Providence, Bahamas.

2. The Domain Names and Registrar

The disputed domain names <buy-duromine.com> and <cheapduromine.com> are registered with Internet Domain Service BS Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2018. On August 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 13, 2018, the Registrar 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” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 10, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 11, 2018.

The Center appointed Edoardo Fano as the sole panelist in this matter on September 18, 2018. 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.

The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.

Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a Response from the Respondent.

The language of the proceeding is English, being the language of the Registration Agreements, as per paragraph 11(a) of the Rules.

4. Factual Background

The Complainant is iNova Pharmaceuticals (Singapore) Pte. Limited, a Singaporean company operating in the pharmaceutical field in Australia, Asia and South Africa, owning many trademark registrations for DUROMINE, including:

- Australian Trademark Registration No. 162353 DUROMINE, registered on September 9, 1960;

- New Zealand Trademark Registration No. 69024 DUROMINE, registered on March 8, 1962;

- Singaporean Trademark Registration No. T0904581H DUROMINE, registered on March 23, 2010.

The Complainant’s trademark DUROMINE is used for weight-management drugs.

The Complainant provided evidence in support of the above.

The disputed domain names <buy-duromine.com> and <cheapduromine.com> were registered on April 30, 2013.

The disputed domain names <buy-duromine.com> and <cheapduromine.com> both redirect to the same website, “www.australiaweightloss.com”, where the Duromine drugs and other weight-management drugs are on sale.

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain names <buy-duromine.com> and <cheapduromine.com> are confusingly similar to its trademark DUROMINE.

Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names since it has not been authorized by the Complainant to use them.

The Complainant submits that the Respondent has registered the disputed domain names in bad faith, since the Complainant’s trademark DUROMINE is well known in Australia in the field of weight management and the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain names and is using them to mislead consumers for its commercial gain, by selling Duromine drugs as well as alternative products at the website where both disputed domain names are redirected.

B. Respondent

The Respondent has made no reply to the Complainant’s contentions and is in default. In reference to paragraphs 5(e) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.

A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International PLC v. Mark Freeman, WIPO Case No. D2000-1080; Altavista Company v. Grandtotal Finances Limited et. al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288).

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant is the owner of the trademark DUROMINE, both by registration and by acquired reputation and that the disputed domain names <buy-duromine.com> and <cheapduromine.com> are confusingly similar to the trademark DUROMINE.

The Panel notes that it is now well established that the addition of descriptive terms or letters to a domain name does not necessarily avoid confusing similarity between the domain name and a complainant’s trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713). The addition of the descriptive words “buy” and “cheap” do not therefore prevent the disputed domain names from being confusingly similar to the Complainant’s trademark.

It is also well accepted that a generic Top-Level Domain (“gTLD”) suffix, in this case “.com”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607).

The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain names are confusingly similar to the Complainant’s trademarks, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Respondent has failed to file a Response in accordance with the Rules, paragraph 5.

The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. It asserts that the Respondent has not been authorized by the Complainant to use them.

The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain names. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain names.

Should the products sold on the website to which the disputed domain names is redirecting Internet users be genuine products, legitimately acquired by the Respondent, the question that would arise is whether the Respondent would therefore have a legitimate interest in using the disputed domain names that are confusingly similar to the Complainant’s trademark in circumstances that are likely to give rise to initial interest confusion.

According to the current state of UDRP panel decisions in relation to the issue of resellers as summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 3.0”):

“(...) resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the ‘Oki Data test’, the following cumulative requirements will be applied in the specific conditions of a UDRP case:

(i) the respondent must actually be offering the goods or services at issue;

(ii) the respondent must use the site to sell only the trademarked goods or services;

(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and

(iv) the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.”

This summary is mainly based on the UDRP decision in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.

On the other hand, should the products offered for sale on the website to which the disputed domain names are redirecting Internet users be counterfeit products, that would be clear evidence that the Respondent does not have any rights or legitimate interests in the disputed domain names.

In the present case, although in the homepage of the website where both disputed domain names are redirected there is a box in which it is written that “This site does not have any relation to iNova Pharmaceuticals company”, the Panel is of the opinion that the evidence provided by the Complainant, regarding the use of the Complainant’s trademark by the Respondent to sell not only Duromine drugs but also alternative products of the Complainant’s competitors, is sufficient to support the allegation of the lack of rights or legitimate interests of the Respondent in relation to the disputed domain names.

The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the Respondent has failed to rebut or deny this allegation.

The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that [the respondent has] registered or has 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 its documented out-of-pocket costs directly related to the domain name; or

(ii) that [the respondent has] 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 [the respondent has] engaged in a pattern of such conduct; or

(iii) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”

As regards to the registration in bad faith of the disputed domain names, the reputation of the Complainant’s trademark DUROMINE in Australia in the field of weight management drugs is clearly established and the Panel finds that the Respondent knew or must have known that the disputed domain names were confusingly similar to the Complainant’s trademark, especially because the content of the website where both disputed domain names are redirected is addressed to the Australian public for the sale of Duromine drugs as well as other weight-management drugs of the Complainant’s competitors.

The Panel further notes that the Respondent is also using the disputed domain names in bad faith, trying to attract Internet users to its website by creating likelihood of confusion with the Complainant’s trademark DUROMINE in order to sell different weight-management drugs, including but not limited to the Duromine drugs, an activity clearly detrimental to the Complainant’s business.

The above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain names in order to create confusion with the Complainant’s trademarks and attract, for commercial gain, Internet users to its website in accordance with paragraph 4(b)(iv) of the Policy.

The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain names in bad faith.

The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <buy-duromine.com> and <cheapduromine.com> be transferred to the Complainant.

Edoardo Fano
Sole Panelist
Date: September 28, 2018