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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Warner Lambert Export Limited v. Mr. Darren Darcy
Case No. D2000-0453
1. The Parties
The Complainant in this administrative proceeding is Warner Lambert Export Limited (trading as Parke Davis Research Laboratories) a corporation organized and incorporated under the law of the Republic of Ireland and whose registered office is at Pottery Road, Dun Laoghaire, Co. Dublin, Ireland.
The Respondent in this administrative proceeding is Mr. Darren D Darcy.
A "Whois" database search conducted by the complainant on April 27, 2000, lists simply "darcy" as the registrant for both names in suit and in each case "Mr. Darren Darcy" as Administrative and Billing contact. The identity of the registrant is considered later in this determination.
2. The Domain Name(s) and Registrar(s)
This dispute concerns the domain names:
The registrar with which the domain names are registered is Easyspace Limited of West Byfleet, Surrey, England.
3. Procedural History
The complaint was filed with the WIPO Arbitration and Mediation Center ("the Center") in hard copy on May 18, 2000, and by e-mail on June 1, 2000. Receipt was acknowledged by the Center on May 24, 2000, when it also sought registration details from the registrar. These were supplied on June 6, 2000, when the Center satisfied itself that the complaint was administratively compliant and that the requisite fee had been paid.
On May 23, 2000, the complainant notified the Center under Rule 2(j) of the ICANN Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") of several unsuccessful attempts, by courier, fax, post and email, to serve a copy of the complaint on the respondent at all his known addresses, some of which turned out to be incomplete or non-existent. Delivery of a full copy of the complaint was nevertheless made to the technical contact, Easyspace Limited. The Panel finds delivery to Easyspace constituted proper service for the purposes of Rule 2(b).
As will appear later, one of the respondent’s contact email addresses was believed by the complainant to be RonanDarcy@aol.com.
On June 8, 2000, the Center, by post/courier, fax and email to all the respondent’s known addresses and contacts, notified the respondent of the complaint and of the commencement of these administrative proceedings. The Panel finds this notification was properly given in accordance with Rule 2(a)(i). The notification specified June 27, 2000, as the last day for the respondent to respond to the complaint.
No response was received by the Center.
On June 28, 2000, the Center, by similar means, notified the respondent it was in default in submitting his response and that an Administrative Panel would be appointed.
On June 29, 2000, the Center received an email from RonanDarcy@aol.com reading as follows:-
"Subject: Re: WIPO CASE No. D2000-0453/Notification of Respondent
verify with philip harris
Mr. Philip Harris is the complainant’s authorized representative in these proceedings.
On June 30, 2000, the Center responded by email to the effect that a formal request must be received from the complainant before the Center will suspend or terminate the proceedings. Later that same day the Center received another message from RonanDarcy@aol.com saying:
"The complainant, Pfizer-Warner-Lambert will give notice after I have transferred over the names to them which I am currently doing. Many thanks, Ronan"
On July 4, 2000, the Center invited Mr. Alan Lawrence Limbury to accept appointment as sole panelist in these proceedings and that day Mr. Limbury accepted the appointment and transmitted to the Center the required Declaration of Impartiality and Independence. Next day the Center transmitted the file to Mr. Limbury, notified the parties in the same way as before of the appointment and stated the date for the decision of the Panel was July 18, 2000.
The Panel has satisfied itself that the administrative requirements of the complaint and its notification to the respondent satisfy the requirements of the Rules and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").
4. Factual Background (uncontested facts)
The domain names which are the subject of these proceedings were registered on February 10, 2000, and are governed by the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the Policy), the Rules and the Supplemental Rules.
This complaint is based on the following prior rights of the complainant:
- UK Trade Mark Registration No. 2044177 LIPITOR covering "pharmaceutical and medicinal preparations and substances, vaccines and sera" dated November 10, 1995;
- Republic of Ireland Trade Mark Registration No. 172566 LIPITOR covering "pharmaceutical preparations for use in the treatment of cardiovascular disorders and cholesterol reduction" dated November 16, 1995;
- The portfolio of registrations owned by the complainant throughout the principal countries of the world for LIPITOR covering the same or essentially the same goods;
- The notoriety of the trade mark LIPITOR, which has been used extensively throughout the world, including the UK, in connection with a cholesterol-reducing pharmaceutical product since at least January 1997. Gross sales in the UK in 1999 amounted to in excess of Ј68 million. The complainant, trading as Parke Davis Research Laboratories, holds the necessary governmental marketing authorization for the United Kingdom; the product is packaged and sold in the UK by Pfizer Limited which company is licensed by the complainant to use the mark for all relevant purposes, the benefit of such use accruing to the complainant;
- The complainant’s parent company, Warner-Lambert Company (a US corporation) has from September 11, 1997, owned the domain name LIPITOR.COM and has since November 1998 operated a website under that name promoting the complainant’s LIPITOR products.
5. Parties’ Contentions
On March 2, 2000, a Mr. Ronan Darcy, by an email sent from the address "email@example.com" addressed to the complainant’s associated company, Parke Davis & Co, identified himself as the owner of the domain names the subject of this complaint. Ronan Darcy included his personal email address of firstname.lastname@example.org. The complainant believes this email was in fact sent by or on behalf of Darren Darcy. The originating address in question was email@example.com, and it incorporates what is clearly a reference to Darren (dar-) Darcy.
A series of emails dated March 22-23, 2000, received by the complainant’s representative were signed simply "Mr. Darcy" but originated from "Darren<dardarcy@eircom.Net".
An email dated April 12, 2000, responding to a communication from the complainant’s representative, was signed "yours darren darcy" (sic). The complainant contends that whatever the role of Ronan Darcy, the true owner of the domain names can be taken as being the registrant/respondent; further, that all claims to ownership purportedly made by "Mr. Darcy" and Mr. Ronan Darcy can be treated as being made by or on behalf of Darren Darcy, the respondent.
In response to the email of March 2, 2000, from Mr. Ronan Darcy asserting ownership of the domain names in dispute, the complainant’s representatives sent by email and by posted/couriered letter to the respondent and Mr. Ronan Darcy at all of their then known addresses a notification that the LIPITOR trade mark was owned by the complainant, advising them that their actions breached the complainant’s rights, and requesting the domain names to be transferred to the complainant. A Mr. Darcy (believed to be Darren Darcy, the respondent) replied in various emails over the period March 22-23, 2000, repeating the assertion of ownership.
The respondent’s domain names were registered via a UK-domiciled registrar, and the email of March 2, 2000, gives a correspondence address at 10 Wellesley Court, Maida Vale, London, UK. Furthermore, the registrar’s Service Agreement provides that the contract is governed by the law of England and Wales and that the respondent shall accept the jurisdiction of the courts thereof. It is therefore submitted that notwithstanding the fact that the contact address given by the respondent to the registrar is in the Republic of Ireland, the law applicable to this case is the law of England and Wales. The relevant law is the law of passing-off, which governs breaches of trade marks irrespective of registration, and the UK Trade Marks Act 1994, which deals with registered rights.
The domain names are confusingly similar to a trade mark in which the complainant has rights
The domain names in question both contain as the first and principal element the word LIPITOR being identical to the complainant’s trade mark. It is self evident that the domain names will be referred to primarily by the LIPITOR element and thus are liable to be confused with the complainant’s trade mark, either in the sense that they will be mistaken for genuine sites or as relating, or in the sense that their existence will otherwise be detrimental to, shall take unfair advantage of and shall dilute, the reputation and distinctiveness of the complainant’s trade mark.
The Respondent has no rights or legitimate interests in respect of the domain names
The respondent has no known basis for claiming any legitimate interest in the word LIPITOR as part of the domain names.
The trade mark is an invented word and it is not reasonably conceivable the respondent could have created it as part of the domain names in question without knowledge of the said trade mark. No trader would legitimately choose the term for inclusion in a domain name in such a brazen fashion unless they wished to imply that the domain name was associated with the complainant.
The key elements of the two domain names are phonetically equivalent to the phrase LIPITOR FOR SALE. There is no evidence the respondent intends to sell LIPITOR product of the complainant or at all. The respondent is not an authorized licensee of the complainant nor is he otherwise authorized to use the complainant’s trade mark. To the best of the complainant’s knowledge and belief, the respondent has no authorization of any kind that would enable him to deal in pharmaceutical products in any way howsoever, or to offer pharmaceutical services. Extensive enquiries into the activities of the respondent and his associates have failed to reveal any interest in or connection with the pharmaceuticals industry, either by way of a business link or as medical/pharmacy/pharmaceutical industry professionals.
The domain names were registered and are being used in bad faith.
The respondent has not used the domain names in any other good faith fashion known to the claimant. He has not at the date hereof set up a website.
The complainant contends that the true interpretation to be placed on the element LIPITOR4SALE in the domain names is that it is the names themselves that are available for sale.
Mr. Ronan Darcy’s email of March 2, 2000, stated
"i legally own the worldwide exclusive domain lipitor4sale.com lipitor4sale.net please do not use without my permission" (sic).
It can be reasonably inferred either that Mr. Ronan Darcy is an alias of Mr. Darren Darcy the respondent, or that the he was authorized to speak on behalf of the respondent. The email can only be interpreted as a warning to Parke Davis and Company, and ultimately to the complainant, that the respondent wishes them to stop using LIPITOR. From this it is clear that the respondent’s primary intention is to interfere with the legitimate exploitation of the complainant’s trade mark or to prevent its use or other exploitation in a corresponding domain name.
Further, the registrar’s Service Agreement incorporates the Policy and consequently the respondent must be taken to have given the warranties contained in section 2 thereof. Such representations and warranties could not, in all the circumstances, have been given in good faith.
In the TELSTRA case (WIPO Case D2000-0003) it was confirmed that in assessing whether a domain name has been used in bad faith, all the surrounding circumstances of the respondent’s behavior must be taken into account such that even passive registration and possession can amount to bad faith within the Policy. In the light of the foregoing, it is submitted that it is not possible to conceive of any legitimate use of the domain names that could have been intended by the respondent.
In the UK case of "Marks & Spencer PLC v. One in a Million Ltd" the trial judge Mr. Jonathan Sumption QC, in finding that the registration of domain names including the trade marks of others amounted to "passing off", held "Where the value of a name consists solely in its name or resemblance to the...trade mark of another enterprise, the court will normally assume that the public will be deceived, for why else would the defendants choose it?...Any person who deliberately registers a domain name on account of its similarity to the...trade mark of an unconnected commercial organization must expect to find himself on the receiving end of an injunction to restrain the threat of passing off."
In the Appeal judgment in the same case, Lord Justice Aldous said as regards infringement under Section 10 (3) of the UK Trade Marks Act 1994 (and upholding the first instance judgment of Mr. Sumption) "The domain names were registered to take advantage of and be detrimental to the distinctive character and reputation of the respondents’ trade marks. That is unfair and detrimental." It is submitted that registration for such a purpose constitutes use in bad faith and that this is applicable to the actions of the respondent in this case.
The Policy provides para. 4(b)(1) that it is evidence of bad faith where there are "circumstances indicating that the domain name was acquired primarily for the purpose of...transferring (it) to the complainant...for valuable consideration in excess of the domain name registrant’s out-of-pocket costs directly related to the domain name".
By an "open" email dated April 11, 2000, the complainant’s representative reasserted his view that the respondent’s acts amounted to a breach of the complainant’s rights but proposed that, purely in order to settle the matter quickly, a transfer should be agreed for a consideration of Ј1500 for both names in dispute.
The respondent replied by an "open" email dated April 12, 2000, stating
"I am prepared to transfer my domain names...to your clients.....the costs I have incurred to date are at the moment eight thousand four hundred and fifty pounds....as I am sure you are aware my costs will have to be covered. Yours darren darcy".
The complainant’s representative responded on April 13, 2000, pointing out the costs alleged to have been incurred were much greater than would have been expected, and asking for a breakdown.
The respondent replied the same day stating
"I shall not be furnishing you with a breakdown of my costs...we have stated our position which is final".
It is significant that although the respondent was given the opportunity to do so, he refused to justify his alleged expenditure to any degree whatsoever.
Easyspace’s price list shows that they offer domain name registration for Ј12.50 per annum. The cost of registering the two names in suit will have been Ј25. In the absence of the creation of any active website, or advertising, or other legitimate business expenditure, it is inconceivable that the respondent could have incurred the additional expenditure of Ј8425 that is claimed.
The complainant submits that the Panel should infer from this that the respondent is clearly asking for a consideration greatly in excess of his out-of-pocket expenses from which it can be deduced that the respondent’s real intention in acquiring these domain names was to sell them for profit.
It is also relevant to note that the respondent has registered VIAGRA4SALE.COM, VIAGRA4SALE.NET, ZANTAC4SALE.COM and ZANTAC4SALE.NET; VIAGRA is a trade mark of Pfizer, Inc, and ZANTAC is the property of GlaxoWellcome PLC. Details of these registrations were obtained from the Network Solutions "whois" site on April 27, 2000. It will be well-known to the Panel that VIAGRA and ZANTAC are household names and it is self-evident that the respondent cannot reasonably have registered domain names which include them for any purpose other than to traffick in them. An inference of bad faith must inevitably be drawn from the respondent’s actions.
Finally, it is submitted that the lack of candour by the respondent and his apparently authorised representatives and/or associates as to their identities and their intentions/motivation in registering the domain names in suit, is further evidence of the bad faith of the respondent.
In the circumstances the complainant contends that the respondent’s acts would amount to passing-off and trade mark infringement under the law of England and Wales, and further that both under that law and generally the respondent has registered and used the domain names in suit in bad faith within the meaning of Paragraph 4(b) of the Policy.
In accordance with Paragraph 4(b)(i) of the Policy, the complainant requests the Administrative Panel to issue a decision that each of the contested domain names be cancelled.
The respondent made no response to the complaint.
6. Discussion and Findings
The Panel has reviewed all the correspondence including in particular:-
· the email of March 2, 2000, by which "Ronan Darcy" asserted ownership of the domain names in dispute;
· the email of March 23, 2000, by which "darren"<dardarcy@EIRCOM.NET>, signing "yours mr Darcy" said "i fear there is something you may not understand. i did legally purchase these names and i do own them. as far as i am concerned i have broken no law by my ownership of these names";
· the email of April 12, 2000, by which "Darren"dardarcy@EIRCOM.NET said he was prepared to transfer "my domain names regarding lipitor4sale" to the complainant, signed "yours darren darcy"
· the emails from "Ronan" to the Center indicating a knowledge of these proceedings, of the domain names involved and of the complainant and its representative.
The Panel is of the view that the complainant was justified in regarding the respondent Mr. Darren Darcy as the domain name registrant "darcy", whose Administrative and Billing contacts are Mr. Darren Darcy and in regarding Mr. Ronan Darcy as either the respondent himself or an agent of the respondent. Accordingly these proceedings have been properly brought against the registered owner of the domain names in dispute.
The Panel is satisfied that, by virtue of the terms of the registrar’s Service Agreement with the respondent, the applicable law for the purposes of these proceedings is the law of the United Kingdom, namely the law of passing off and trade mark law.
To qualify for cancellation or transfer, a complainant must prove each element of paragraph 4(a) of the Policy, namely:-
(i) the disputed domain name is 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 domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The registration by the complainant’s parent company, Warner-Lambert Company, of the domain name LIPITOR.COM is not a matter on which the complainant may rely in these proceedings as affording any right to relief. The relevant test is in paragraph 4(a)(i) of the Policy.
Identity or confusing similarity
The disputed domain names are not identical to the registered trademarks. However, it is clear that they are both confusingly similar since each incorporates the primary, distinctive element of the relevant trademarks of the complainant. The complainant has proved element 4(a)(i).
The trade mark is an invented name, used worldwide to denote the goods of the complainant and its related companies. The Panel accepts that it is not reasonably conceivable that the domain names could have been registered without knowledge of the complainant’s trade marks. The very names themselves, LIPITOR4SALE.COM and LIPITOR4SALE.NET, coupled with the approach of March 2, 2000, to the President of Parke Davis, less than a month after registration of the domain names, warning him not to use them without permission, is inconsistent with any legitimate interest in the domain names on the part of the registrant. The complainant has proved element 4(a)(ii).
Despite the fact that the first offer to pay for the names was made by the complainant, all the surrounding circumstances, including
· the names themselves;
· the absence of any web site associated with the names or other use for any legitimate purpose;
· the impossibility of using the names in trade without either infringing the complainant’s marks or committing passing off;
· the initial contact of March 2, 2000, addressed to the President of Parke Davis; and
· the sum sought, being so much in excess of registration costs
indicate that the names were registered primarily for the purpose of selling their registrations to the complainant for valuable consideration in excess of out-of-pocket expenses directly related to the names, and are thus evidence of registration and use in bad faith under paragraph 4(b)(i) of the Policy.
Further, the email of March 2, 2000, coupled with the registration by the same registrant of VIAGRA4SALE.COM, VIAGRA4SALE.NET, ZANTAC4SALE.COM and ZANTAC4SALE.NET establish, to the satisfaction of the Panel, that the names here in dispute were registered in order to prevent the owner of the trademark LIPITOR from reflecting that mark in a corresponding domain name and that the respondent has engaged in a pattern of such conduct. This is evidence of registration and use in bad faith under paragraph 4(b)(ii) of the Policy.
The circumstances set out in paragraph 4(b) of the Policy are not exhaustive. The Panel finds that the conduct of the respondent in eluding service of process and in making communications under different guises demonstrates that his registration and use of the domain names (by way of passive use and offering for sale for a large sum which only the complainant might be thought willing to pay) was in bad faith.
Accordingly, the complainant has proved element 4(a)(iii).
The Panel finds the complainant has established all the elements required to be proved under paragraph 4(a) of the Policy. Accordingly pursuant to paragraph 4(i) of the Policy the registrar is required to cancel the domain names LIPITOR4SALE.COM and LIPITOR4SALE.NET.
Alan L. Limbury
Dated: July 16, 2000