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ADMINISTRATIVE PANEL DECISION
King Pharmaceuticals, Inc. v. Whois ID Theft Protection
Case No. D2007-0009
1. The Parties
The Complainant is King Pharmaceuticals, Inc., Bristol, Tennessee, United States of America, represented by Jenner & Block LLP, United States of America.
The Respondent is Whois ID Theft Protection, Cayman Islands, United Kingdom
of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <bicillin.com> is registered with Rebel.com
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2007. On January 5, 2007, the Center transmitted by email to Rebel.com Services Corp a request for registrar verification in connection with the domain name at issue. On January 19, 2007, Rebel.com Services Corp transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 24, 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 January 29, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 18, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 20, 2007.
The Center appointed Mary Padbury as the sole panelist
in this matter on March 5, 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. The Panel extended the decision due date to April 30, 2007.
4. Factual Background
The Complainant, by itself and through its predecessors and related companies, is and has been for many years engaged in the business of manufacturing, marketing, distributing and selling a wide variety of pharmaceutical products. Since at least 1951 the Complainant has used the trademark BICILLIN in the United States of America to identify “dibenzylethylenediamine dipenicillin” produced by or under the authority and control of the Complainant or its predecessor. The Complainant’s mark has been used on or in connection with its penicillin products since that date. The Complainant, by itself and through its predecessor, has widely advertised and promoted its penicillin products under this mark including BICILLIN C-R, BICILLIN C-R 900/300, BICILLIN C-R Pediatric, BICILLIN L-A and BICILLIN L-A Pediatric and it has achieved substantial sales of such products under this mark. The Complainant’s penicillin products are used to treat various severe infections including syphilis.
The Complainant is the owner of United States of America trademark Reg. No. 2,865,269 for the word mark BICILLIN registered on July 20, 2004. The Complainant also owns United States of America trademark Reg. No. 2, 925,042 for BICILLIN in stylized form, registered on February 8, 2005. The Complainant and/or a related company also owns registrations for the mark in Canada (Reg. No. UCA040373 dated December 13, 1951, Australia (Reg No. 160042 dated May 17, 1960) and New Zealand (Reg. No. 52046 dated December 9, 1952). These registrations are current.
The Respondent registered the domain name <bicillin.com>
on July 28, 2006. The Respondent in this administrative proceeding is “Whois
ID Theft Protection”. According to the Whois database of the registrar,
this identification is used when a registrant has voluntarily blocked its identity.
5. Parties’ Contentions
The Complainant contends that the domain name <bicillin.com> is identical to the Complainant’s BICILLIN trademark. The Complainant notes that the Respondent’s domain name is identical save for the addition of “.com” which it contends is not a distinguishing difference and is without legal significance in the overall commercial impression conveyed by the domain name.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name <bicillin.com>. The Complainant alleges that the Respondent has made no use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods and services. The domain name has been used in connection with a web portal that prominently features the Complainant’s trademark, along with searches for “penicillin”, “syphilis”, “medicine”, “disease”, “treatment”, “care” and “physician”, among others, that provided links to third party websites, in a purported attempt to mislead and deceive consumers. The Complainant notes that, after receiving the Complainant’s cease and desist letter dated November 8, 2006, to which it received no reply, that the Respondent has altered its website to provide links to third party websites in categories such as storage, credit report, rental, travel, finance, entertainment and lifestyle but that the Respondent continues to use <bicillin.com> as a domain name and on the associated website with the tag line “what you need, when you need it”. The Complainant has not licensed the mark BICILLIN to the Respondent. The mark itself is fanciful and distinctive and is not a mark a third party would legitimately choose unless seeking to create an impression of an association with the Complainant or its products. The Respondent has never been commonly known by the domain name or trademark and has never acquired any trademark or service mark rights in the name. The Respondent is not making a legitimate non-commercial or fair use of the domain name. Rather, the Respondent is using the domain name with intent for commercial gain to divert Internet users to the website. By registering and using the domain name, the Respondent is allegedly intending to confuse Internet users and draw them to its website when they type in the Complainant’s product name. Such Internet users intend to reach Complainant’s website but are unknowingly directed to the Respondent’s website which advertises links for a wide variety of third party products and services and for which the Respondent presumably receives click-through fees.
The Complainant alleges that the domain name <bicillin.com> was registered and is being used in bad faith. It contends that the Respondent registered the domain name <bicillin.com> with constructive knowledge of the Complainant’s rights in BICILLIN due to Complainant’s registrations of the mark with the United States Patent and Trademark Office. The Complainant refers to unsuccessful attempts to contact the Respondent. By using the domain name <bicillin.com>, the Complainant alleges that the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. These activities of the Respondent are said to constitute bad faith.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
The Panel must decide a complaint on the basis of the statements in documents submitted and in accordance with the Policy, the Rules and the Supplementary Rules. Under paragraph 4(a) of the Policy, the Complainant has the onus of proving three elements:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights:
(ii) the 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
The Panel finds that the domain name <bicillin.com> is confusingly similar to registered trademarks for BICILLIN in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel must decide whether the Respondent has any rights or legitimate interests in respect of the domain name. In doing so, under paragraph 4(c) of the Policy, regard may be had to circumstances which might demonstrate rights or legitimate interests to the domain name as follows:
(i) before notice to the respondent of the dispute, the respondent’s 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) the respondent, as an individual, business or other organization, has been commonly known by the domain name, even if it acquired no trademark or service mark rights; or
(iii) the respondent, making a legitimate non-commercial 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.
In relation to paragraph 4(c)(i) of the Policy, the domain name has been used in connection with an offering of goods and services. The Panel accepts the contention of the Complainant that the Respondent’s use of a domain name which is confusingly similar to the Complainant’s trademark is not bona fide. In light of the facts recited above including the Complainant’s long and extensive use of its trademark, the fanciful and distinctive nature of the mark and the words which direct to the Respondent’s website, the Panel finds that the Respondent probably registered the domain name in issue with knowledge of the Complainant’s mark. The Complainant has not licensed or otherwise permitted the respondent to use its trademark.
The Panel finds that the Respondent does not have rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following non-exclusive list of circumstances, if found by the Panel to be present, shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered 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 for valuable consideration in excess of the respondent’s out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location of a product or service on the respondent’s website or location.
The Panel is satisfied on the material before it, that the domain name was
registered and is being used in bad faith. In accordance with paragraph 4(b)(iv)
of the Policy the Panel considers that, by using the domain name, the Respondent
is intentionally attempting to attract, for commercial gain, Internet users
to its website, by creating a likelihood of confusion with the Complainant’s
trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s
website of a product or service on the Respondent’s website.
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 <bicillin.com> be transferred to the Complainant.
Dated: April 30, 2007