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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Warner Chilcott Company, Inc. v. Vinu Vishnu

Case No. D2007-0558

 

1. The Parties

The Complainant is Warner Chilcott Company, Inc., Puerto Rico, United States of America, represented by Donovan & Yee, LLP, United States of America.

The Respondent is Vinu Vishnu, Mumbai, India.

2. The Domain Name and Registrar

The disputed Domain Name <loestrin.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2007. On April 13, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name at issue. On April 13, 2007, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details of the registrant. 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 April 23, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 14, 2007.

The Center appointed Alexandre Nappey as the sole panelist in this matter on May 22, 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.

 

4. Factual Background

Warner Chilcott Company Inc. (hereafter the “Complainant”) is a pharmaceutical company focused on women’s healthcare and dermatology.

The Complainant has used the LOESTRIN trademark in connection with pharmaceutical preparations, namely contraceptive preparations, for over thirty years.

The Complainant is the registered owner of United States Trademark Registration Number 1156945 for the mark LOESTRIN. A nunc pro tunc assignment of the trademark LOESTRIN was recorded in the United States Patent and Trademark Office on the Principal Register on May 19, 2005 (Complaint, Annex C). United States Trademark Registration Number 1156945 for LOESTRIN was registered on June 9, 1981, by a predecessor in title Warner-Lambert Inc.

The Complainant also owns registrations for the LOESTRIN mark in over thirty countries.

The Complainant holds numerous domain names including the LOESTRIN mark among which <loestrin24.com> was registered on March 18, 2004, operating a website exclusively devoted to the promotion of the Complainant’s products.

The Respondent registered <loestrin.com> on June 15, 2006. On September 25, 2006 and October 12, 2006, the Complainant attempted to contact the Respondent at the address listed in the WHOIS database to notify it of its trademark rights and demanding that the Respondent cease and desist use of the disputed Domain Name.

The letters were never delivered because the listed address was not valid. A copy of each formal notice was sent by e-mail.

The Complainant never received a response and therefore decided to file a complaint under the Policy.

At the date of the Complaint, the Respondent was operating a website providing sponsored links to other parties’ websites.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed Domain Name is identical to its LOESTRIN trademark.

According to the Complainant, the disputed Domain Name is not the trade name or company name of the Respondent.

To the best knowledge of the Complainant, the Respondent is not and has never been commonly known as LOESTRIN.

The Respondent is not related to the Complainant’s business in any way; it is not an agent of the Complainant nor does it carry out any activity for it or business with it. No license or authorization has been granted by the Complainant to the Respondent to make any use of the disputed Domain Name.

The Complainant contends that the Domain Name <loestrin.com> was registered and is being used in bad faith based on the following factors:

- Thanks to its strong reputation and known character, the Respondent had actual knowledge of the LOESTRIN trademark at the time it registered the Domain Name in issue.

- This is further evidenced by the fact that the website associated with the disputed Domain Name contains references to the Complainant’s mark and goods.

- Moreover the Respondent did not provide complete contact details when registering the disputed Domain Name.

- At last the Domain Name is used to attract Internet users to a website featuring click-through opportunities that compete directly with the products sold by the Complainant.

B. Respondent

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

 

6. Discussion and Findings

Paragraph 4(a) of the Policy directs the Complainant to prove each of the following:

(i) 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

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

(iii) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established extensive registered and common law rights in the trademark LOESTRIN which substantially pre-date the Respondent’s registration of the Domain Name.

The Domain Name <loestrin.com> is identical to the Complainant’s trademark.

It is well established that domain suffixes are disregarded for the purpose of this comparison.

The Panel concludes that the Domain Name is identical to a trademark in which the Complainant has rights.

The Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

There is no evidence that the Respondent has ever been known by the name “Loestrin”, or that it has any rights or legitimate interest in respect of the Domain Name <loestrin.com>.

The Respondent is not affiliated with the Complainant, nor has the Complainant authorized, licensed or permitted the Respondent to use its LOESTRIN trademarks.

There is no indication that the Respondent is using the Domain Name in connection with a bona fide offering of goods or services. Instead, the Respondent apparently uses the Domain Name as a way to attract Internet users to its website which consists entirely of links to other commercial websites in what appears to be a “click through” site.

Previous panels have found that the operation of sponsored link services of this type designed to divert Internet users to other commercial sites by the use of domain names identical or similar to a complainant’s trademark, do not confer a legitimate right to or interest in a domain name. See for instance: Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584.

The Panel is satisfied that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the Domain Name <loestrin.com>. The Respondent has failed to rebut this presumption.

The Panel therefore finds that the Complainant has satisfied the second requirement of Paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The unchallenged evidence shows that the Complainant’s trademark LOESTRIN is distinctive and has been widely known for more than 30 years.

The Panel is of the opinion that the Respondent had actual knowledge of the Complainant’s trademark rights when it registered the <loestrin.com> Domain Name.

The Panel then finds that the Respondent registered the Domain Name and is operating a website for the purpose of monetary gain by providing links to sites of other companies, some of which are direct competitors of the Complainant, in the form of a “click-through” site.

The Respondent, by trading on the goodwill of the Complainant’s trademark, has disrupted the business of the Complainant and diverted Internet traffic intended for the Complainant’s website to the Respondent’s website.

Furthermore the Respondent apparently used false WHOIS information preventing the Complainant to contact the Respondent before filing the current proceedings, so as to find an amicable settlement. See for example: Lilly ICOS LLC v. Tudor Burden d/b/a BM Marketing/Burden Marketing, WIPO Case No. D2005-0313.

Finally, the Respondent did not reply to the Complainant’s contentions. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064.

All of these factors lead to the conclusion that the Respondent registered and used the Domain Name <loestrin.com> in bad faith under paragraph 4(b) of the Policy.

The Panel therefore finds that the Complainant has satisfied the third requirement of paragraph 4(a) 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 <loestrin.com> be transferred to the Complainant.

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Alexandre Nappey
Sole Panelist

Dated: June 5, 2007