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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Nycomed Danmark ApS v. Antonio Diaz

Case No. D2006-0779

 

1. The Parties

The Complainant is Nycomed Danmark ApS, Roskilde, Denmark, represented by Delacour Law Firm, Denmark.

The Respondent is Antonio Diaz, Stockholm, Sweden.

 

2. The Domain Name and Registrar

The disputed domain name <lepigen.com> is registered with Network Solutions, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2006. On June 23, 2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the Domain Name at issue. On June 27, 2006, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 June 28, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 18, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 19, 2006.

The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on August 2, 2006. 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.

 

4. Factual Background

The Complainant, Nycomed Danmark ApS, is the Danish subsidiary of the Nycomed Group, a pharmaceutical company founded in 1874 in Norway, which, since 1999, has been rapidly expanding throughout Europe. By the end of 2005, the total net turnover of the Nycomed Group in 2005 was an estimated EUR 747.5 millions.

One of the Nycomed Group’s products in the 1990’ties was an appetite suppressant with the active ingredients ephedrine and caffeine, a prescription drug marketed under the trademark LETIGEN. In 2000 and 2001 around 90,000 persons in Denmark alone were treated with LETIGEN.

The Complainant has registered the following trademarks:

LETIGEN, Danish Trademark No. VR 1989 03513, registered on June 16, 1989, in Class 5.

LETIGEN, Swedish Trademarks No. 250503, registered on June 6, 1993, and No. 357580, registered on August 30, 2002, in Class 5.

The Domain Name <letigen.dk> was registered on January 24, 2001.

Following an intensive media debate in Denmark during 2002, as to whether appetite suppressants including ephedrine and caffeine (such as LETIGEN) could have serious adverse effects, the Complainant decided to end the production and sale of LETIGEN by the end of 2002.

The Complainant’s trademark registration of LETIGEN in class 5 in Denmark is enforceable, the trademark is registered for a period covering until June 16, 2009. A Google search for “letigen” on June 16, 2006, showed approximately 46,000 hits.

The Respondent registered the domain name <lepigen.com> on August 19, 2004. The disputed Domain Name does not resolve into a website but is linking to the website under the domain name <lepigen.se>. On this website, the company Umbrella Enterprises Inc. is marketing and offering for sale the food supplement LEPIGEN, an appetite suppressant containing ephedrine and caffeine. LEPIGEN is not a prescription drug as LETIGEN, but one of several unauthorized appetite suppressants being traded via internet after the withdrawal of LETIGEN from the market.

The Swedish trademark authorities (Patent- och Registreringsverket), by decision of October 4, 2005, rejected an application for trademark registration of LEPIGEN due to confusing similarity with the Complainant’s trademark LETIGEN.

The facts mentioned above have been established on the basis of the Complaint and documents attached thereto, which have remained uncontested, in accordance with paragraph 3(b)(xv) of the Rules.

 

5. Parties’ Contentions

A. Complainant

The Complainant requests transfer of the disputed Domain Name and contends that each of the three requirements specified in paragraph 4(a) of the Policy are satisfied in this case. In particular, the Complainant claims that:

(i) The Domain Name in dispute is confusingly similar to the trademark “LETIGEN” in which the Complainant has rights.

The Complainant, first of all, contends that, as consistently stated in previous decisions by WlPO Arbitration and Mediation Center panels the mere addition of the .com TLD suffix shall not be taken into consideration when evaluating whether a .com domain name shall rightfully be considered to be identical with or confusingly similar to a third party trade mark.

Complainant further claims that the designation LEPIGEN must be considered to be confusingly similar with the Complainant’s trademark LETIGEN.

It points out that the registered trademark LETIGEN and the designation LEPIGEN both have 7 characters of which 6 are identical, the only difference thus being the change of the letter “T” with the letter “P” as the third character.

Complainant also states that the reputation of the Complainant’s trademark LETIGEN and the visual resemblance of the designations LETlGEN and LEPIGEN must be seen in relation with the fact that the disputed designation LEPIGEN is used for sale of products on the Internet.

Further, Complainant refers to the decision of the Swedish trademark authorities (Patent- och Registreringsverket) of October 10, 2005 rejecting an application for trademark registration of LEPIGEN due to confusingly similarity with the trademark LETIGEN.

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name in dispute.

Complainant contends that Respondent is using the domain name <lepigen.com> for the purpose of attracting customers to the website under the domain name <lepigen.se> promoting inter alia the illegal food supplement LEPIGEN with ephedrine and caffeine. It claims that Respondent, in doing so, creates a likelihood of confusion with the Complainant’s well-known trademark LETIGEN.

Additionally, it claims that the Respondent’s registration and use of the domain name <lepigen.com> serves the sole purpose to illegally create a false impression in the market of a connection between the Respondent’s product LEPIGEN and the product formerly marketed by the Complainant under the trademark LETIGEN. It states that such conduct constitutes illegal benefit from third parties’ trademarks and reputation and is clearly contrary to basic trademark principles as well as to the rules on protection of commercial identity.

Complainant further contends that there is an obvious risk of the consumers being lead to believe that the illegal product LEPIGEN is related to the previous prescription drug LETIGEN and thus to the Complainant. It claims that, according to the Swedish Medicines Agency, marketing and sale of LEPIGEN is prohibited in Sweden and that, therefore, it is very damaging for its company to be related to products such as LEPIGEN that are illegal or even harmful to the health of its consumers.

It concludes that the Respondent’s use of the Domain Name <lepigen.com> must be considered to be illegal and damaging for the Complainant and that, therefore, it has at least substantiated prima facie evidence of the absence of any rights or legitimate interests by the Respondent in relation to the disputed domain name and that the burden of proof thus shifts to the Respondent.

(iii) The Domain Name in dispute was registered and is being used in bad faith.

The Complainant claims that the registration and use of the disputed Domain Name <lepigen.com> in bad faith are due to the Complainant’s rights in the well reputed trademark LETIGEN.

It contends that first, LETIGEN is a well-known and reputed trademark and, secondly, Respondent has registered as domain name a designation confusingly similar to the Complainant’s trademark LETIGEN. Thirdly, Complainant states that Respondent is using the domain name “lepigen.com” for commercial gain by attracting customers to a website promoting inter alia the illegal and unauthorized food supplement LEPIGEN and thus not only creates a likelihood of confusion with the Complainant’s trademark LETIGEN but also a serious risk of damaging the Complainant’s goodwill and reputation. It concludes by arguing that Respondent must have been well aware of the Complainant and the Complainant’s trademark rights in LETIGEN as Respondent sold products under the name LEPIGEN claiming to serve the same purposes as those previously sold by the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions by the date fixed by the Center in accordance with the Rules, paragraph 5(a).

 

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the following facts must be established in order to grant the Complainant the requested remedy:

(1) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(3) that the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The distinctive part of the contested Domain Name is “lepigen”. For the purpose of deciding whether a domain name is identical or confusingly similar to a trademark or service mark, the suffix “.com” must be disregarded as indicating solely the nature of a top level domain (Sharman License Holdings, Limited v. KazaaLite.com Inc., WIPO Case No. D2004-0402).

The contested Domain Name “lepigen.com” is almost identical to the Complainant’s trademark LETIGEN, except of the letter “T” in the fantasy designation LETIGEN being changed to the letter “P”. Nevertheless, 6 out of 7 letters of the designation are identical and the Domain Name and the trademark are also phonetically similar to a degree that they create an almost identical impression. The Panel, therefore, finds that replacing the consonant “t” with the consonant “p” is not adequate to sufficiently distinguish both terms but constitutes a case of “typosquatting” (AltaVista Company v. Saeid Yomtobian, WIPO Case No. D2000-0937; <aollnews.com>, America Online, Inc. v. Johuathan Investments, Inc., and AOLLNEWS.COM, WIPO Case No. D2001-0918; <mirival.com>, Sierra HealthStyles LLC v. Modern Limited - Cayman Web Development, WIPO Case No. D2006-0020).

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

a. The Respondent, by not responding, has failed to provide any evidence of circumstances of the type specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to a right or legitimate interest in the Domain Name in dispute.

b. The Respondent’s name “Antonio Diaz” bears no similarity to the contested Domain Name.

c. However, it is a moot point whether Respondent, with the direct link to the website “lepigen.se”, is using the domain name “in connection with a bona fide offering of goods or services” according to Paragraph 4(c)(i) of the Policy. In this respect, it is crucial whether Umbrella Enterprises, the company operating the website, is offering goods or services bona fide. This being denied, the Respondent, with his use of the domain name or rather letting third parties make use of the Domain Name , would participate in the illegitimate business of a third party.

aa. The Complainant has pointed out that Umbrella Enterprises, on its website “lepigen.se”, promotes and offers for sale the illegal food supplement LEPIGEN with ephedrine and caffeine. It contends that this usage of the website creates a likelihood of confusion with the Complainant’s trademark LETIGEN, that it exploits the goodwill and the reputation of the trademark LETIGEN and that the Complainant’s reputation could be damaged if the company is related to illegal products that could be harmful to health. As a proof, the Complainant submitted the decision of the Swedish trademark authorities (Patent- och Registreringsverket) of October 4, 2005 rejecting an application for trademark registration of LEPIGEN due to confusing similarity with the Complainant’s trademark LETIGEN.

bb. The Panel finds that the Complainant has submitted prima facie evidence that the Respondent lacks rights or legitimate interests with respect to the domain name. Taking into account the difficulty to prove a negative fact without specific knowledge of Respondent’s rights or interests there is a constant ruling in UDRP decisions that the Complainant’s submission of a prima facie evidence is sufficient in this case (Intocast Ag v. LEE Daeyoon, WIPO Case No. D2000-1467, Anti Flirt S.A. and Mr. Jaques Amsellem v. WCVC, WIPO Case No. D2000-1553; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

cc. Further, the Panel takes into account that the spelling of the product LEPIGEN and the Complainant’s trademark LETIGEN is almost identical and that the marketing of the product LEPIGEN on the website “lepigen.se” is aiming at the Scandinavian market of appetite suppressants, precisely the same target that Complainant’s product LETIGEN used to focus on. The combination of both circumstances permits the conclusion that Complainant’s trademark LETIGEN is being exploited for commercial purposes.

dd. It has remained uncontested that the product LEPIGEN is unauthorized and thus because of the high degree of similarity of LETIGEN and LEPIGEN t could cause damage to the Complainant’s reputation. In view of the identity of goods and the uncontested media debate regarding LETIGEN, the choice of the product LEPIGEN cannot have been without purpose. Thus the Panel draws the conclusion that Umbrella Enterprises, on its website “lepigen.se”, is not using the domain name in connection with a bona fide offering of goods or services.

As a consequence, the Panel concludes that the Respondent’s use of the contested Domain Name to link to Umbrella Enterprises’ website “lepigen.se” does not give rise to a right or legitimate interest in the disputed domain name.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

ee. In order to establish the Respondent’s relation to Umbrella Enterprises beyond the Complainants contentions, the Panel considers that it has, under Paragraph 10(a) of the Rules, the power to independently search the Internet, in order to verify information as required to render a decision (see InfoSpace.com, Inc. v. Hari Prakash, WIPO Case No. D2000-0076, Eroski, S. Coop. v. Getdomains Ishowflat Limited, WIPO Case No. D2003-0209; Longs Drug Stores California, Inc. v. Seung Nam Kim, WIPO Case No. D2005-0426).

The Panel visited the whois-database of the Swedish national domain name registry “II-stiftelsen” in order to obtain information about the registrant of the domain name <lepigen.se>. The database excerpt from August 7, 2006 contains as registrant “Umbrella Enterprises Limited”, under the address Aintos, 22, CY-1082 Nikosia, Cyprus. It further provides as contact information “Antonio Diaz”.

The Panel concludes from this information that the Respondent has either been acting as a representative of Umbrella Enterprises when registering the disputed Domain Name <lepigen.com>, or that he later became a representative of the company as far as domain name registrations are concerned.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to Paragraph 4(a)(iii) of the Policy, the Complainant must prove the registration as well as the use in bad faith of the disputed Domain Name.

a. Registration in bad faith

The Panel is satisfied with the Complainant’s allegation that Respondent must have been aware of the trademark LETIGEN when registering an almost identical domain name in October 2003.

Indeed the Complainant has submitted very little evidence to prove that its LETIGEN name is well known. The Panel cannot estimate the marketing efforts Complainant used to make for the promotion of LETIGEN nor is it possible to verify the estimated number of users of the drug, as Complainant has not submitted any statistical documents provided by its company.

On the other hand, Complainant has submitted the proof that its trademark LETIGEN has been registered in Denmark already in 1989 and in Sweden already in 1993. Additionally, in June 2006, three and a half years after the expiry of the production of the drug, there was still the impressing number of 46.700 Google matches for “LETIGEN”, indicating that the drug, in its best time between the years 2000 and 2002, had gained an enormous popularity at least in the Scandinavian part of Europe. Considering also that LETIGEN is a pure fantasy designation, it appears most unlikely that in August 2004 the Respondent - whether he was acting as a representative of Umbrella Enterprises at that precise time or not - did not know of the Complainant’s trademark and therefore registered the fantasy domain name bona fide (see Designor OY AB v. Bamse Enterprises, WIPO Case No. D2001-0643; Bayer Aktiengesellschaft v. Henrik Monssen, WIPO Case No. D2003-0275).

Therefore, the Panel finds that the Respondent was probably aware of the Complainant’s trademark when registering the Domain Name in dispute. This finding leads to the conclusion that the domain name in dispute was registered in bad faith.

b. Use in bad faith

Paragraph 4(b) of the Policy enumerates in several factors, without limitation, that if found by the Panel to be present, shall be evidence of the use of a domain name in bad faith. In particular, paragraph 4(b)(iv) states:

“(iv) by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”

aa. By using the Domain Name <lepigen.com> –with only a single letter being different, and which possesses a maximum similarity to the Complainant’s trademark LETIGEN, Respondent has created a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the location and of the products and services on the website the location is linked with. Such confusion may arise already from the anticipation of consumer’s spelling mistakes (Volvo Trademark Holding AB v. Domaincar, WIPO Case No. D2006-0631; Swarovski A.G v. Modern Empire Internet Ltd, WIPO Case No. D2006-0148; National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011). Moreover, the direct link of the Domain <lepigen.com> to the website of a competing company offering the drug LEPIGEN, an imitation of the product marketed under the protected trademark, is the typical case of a bad faith use because it attracts customers who were not looking for the imitation of the drug but for the original product, known by the trademark LETIGEN. Such use of a trademark can create customer confusion or dilution of the mark (The Chip Merchant, Inc. v. Blue Star Electronics, d/b/a Memory World, WIPO Case No. D2000-0474; Rбdio Globo S.A. v. Rбdio Morena, WIPO Case No. D2000-1558; Yamaha Corporation v. Zhoulei, WIPO Case No. D2004-0126).

bb. Further, the Panel finds that the Respondent’s use of the contested Domain Name also serves on the purpose of commercial gain. It appears unlikely that Respondent set a direct link to a direct competitor without considering a potential economic profit.

For all the foregoing reasons, the disputed domain name is also being used in bad faith.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) 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 <lepigen.com> be transferred to the Complainant.

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Andrea Jaeger-Lenz
Sole Panelist

Dated August 15, 2006