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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Teva Pharmaceutical USA, Inc. v. Mode L

Case No. D2007-0369

 

1. The Parties

The Complainant is Teva Pharmaceutical USA, Inc., Horsham, Pennsylvania, United States of America, represented by Kenyon & Kenyon LLP, United States of America.

The Respondent is Mode L, Geneva, Switzerland.

2. The Domain Name and Registrar

The disputed domain name <adipexp.com> (the “Disputed Domain Name”) is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2007. On March 15, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On March 15, 2007 eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the registrant 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 March 28, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 19, 2007.

The Center appointed Alistair Payne, Michael A. Albert and Michael A.R. Bernasconi as panelists in this matter on June 12, 2007. The Panel finds that it was properly constituted. Each member of 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 is a pharmaceutical company that markets products in a range of therapeutic areas. One of the Complainant’s products is a diet and weight loss tablet, containing the ingredient phentermine hydrochloride, which it markets under the name “ADIPEX-P” (the “ADIPEX-P Product”). Since 1998, this product has generated €220,000,000 in sales for the Complainant.

The Complainant is the registrant of the United States trade mark ADIPEX-P in respect of “anti-obesity preparation” which was registered on April 12, 1977.

The Respondent registered the Disputed Domain Name on September 4, 2001.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Disputed Domain Name is identical or confusingly similar to the Complainant’s ADIPEX-P trade mark. The only difference between the two is that the dash between the “X” and the “P” has been removed from the Disputed Domain Name. The Complainant asserts that this is evidence that the Respondent has engaged in typosquatting.

The Complainant contends that the Respondent has no right or legitimate interest in the Disputed Domain Name. The Disputed Domain Name resolves to a website where links are provided to third-party vendors of the ADIPEX-P Product and of phentermine hydrochloride. No goods or services are sold at the Disputed Domain Name and the Complainant believes that the Respondent receives commission when Internet users click on the links provided. The Complainant cites the decision of Wells Fargo & Co. v. Lin Shun Shing, (FA 205699) (Nat. Arb. Forum Dec. 8, 2003) to support its argument that the use of a domain name to divert Internet users to a website featuring links and advertisements for third parties is not a legitimate or fair use of the domain name at issue.

The Complainant believes that the Respondent was aware of the Complainant’s business and mark before the Disputed Domain Name was registered. The Complainant contends that the Respondent has registered and is using the Disputed Domain Name in bad faith to attract for commercial gain Internet users to its website where third parties sell the ADIPEX-P Product by creating a likelihood of confusion with consumers that there is an affiliation between the Respondent’s website and the Complainant’s marks and its ADIPEX-P Product.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

If the Complainant is to succeed, it must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:

i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 Name; and

iii) the Disputed Domain Name has been registered and is being used in bad faith.

The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

The Disputed Domain Name and the Complainant’s trade mark ADIPEX-P are differentiated by the omission of the dash between the “X” and the “P” in the Disputed Domain Name. The Panel is of the view that this omission is insufficient to support a finding that the Disputed Domain Name is not confusingly similar to the Complainant’s mark. In this regard, the Panel notes the decision of Guinness UDV North America, Inc v. UKJENT WIPO Case No. D2001-0684. In that case, the panel noted that the inclusion of dashes between letters did not alter the way the domain name at issue was pronounced and thus did not differentiate it from the complainant’s marks. In the present case the same assertion is true as the Disputed Domain Name and the Complainant’s marks are pronounced in the same way despite the removal of the dash in the Disputed Domain Name.

The Panel finds that the Disputed Domain Name is confusingly similar, if not identical, to the Complainant’s trade mark ADIPEX-P and therefore that the Complainant fulfills paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Respondent has not filed a response in this case. As a result the Panel find no evidence to support that it is commonly known by the Disputed Domain Name.

It appears that the Respondent is using the Disputed Domain Name in an effort to divert Internet users to third parties who sell the ADIPEX-P Product or phentermine hydrochloride (see below). This is not a bona fide offering of goods or services and cannot be found to be a legitimate noncommercial or fair use of the Disputed Domain Name. Accordingly, the Panel finds that the Complainant has successfully demonstrated that the Respondent has no right or legitimate interest in the Disputed Domain Name.

The Panel finds that the Complainant fulfills paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b)(iv) of the Policy it shall be deemed to be evidence of registration and use in bad faith if the use of a domain name intentionally attempts to attract, for commercial gain, Internet users to a site by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of a website.

The Disputed Domain Name was registered over 24 years after the Complainant acquired registered rights in the trade mark ADIPEX-P. The Complainant is a major international pharmaceutical company and its ADIPEX-P Product has generated massive revenue for the Complainant since its launch in 1998. In light of this, the Panel infers that the registration of the Disputed Domain Name by the Respondent was in bad faith as the Respondent must have been aware of the Complainant’s prior rights in the Disputed Domain Name, especially as the Respondent offers links to the ADIPEX-P Product on the website shown at the Disputed Domain Name.

As stated above, the Disputed Domain Name resolves to a website where links are provided to third-parties who sell the ADIPEX-P Product or phentermine hydrochloride. The Panel finds that the obvious aim of this use of the Disputed Domain Name is to divert Internet traffic to the Respondent’s website by creating confusion in the minds of Internet users as to the affiliation of the Respondent’s website. The Complainant asserts that the Respondent receives a commission when an Internet user clicks through to one of the links provided. Although there is no evidence of this, due to the Respondent’s failure to reply, the Panel infers that, on the balance of probabilities, this is highly likely and accepts that commercial gain is made by the Respondent by its use of the Disputed Domain Name.

In addition to this, the obvious act of typosquatting by the Respondent is viewed by the Panel as further evidence of registration and use in bad faith.

Accordingly, the Panel finds that paragraph 4(b)(iv) of the Policy is satisfied and that the Respondent has registered and used the Disputed Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <adipexp.com> be transferred to the Complainant.

Date: June 26, 2007