Westpharma.net

The timeline behind westpharma.net

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION West Pharmaceuticals Services Inc. v. Marketing Total S.A. Claim Number: FA0706001009010 PARTIES Complainant is West Pharmaceuticals Services Inc. (“Complainant”), represented by Hal E. Borden, of Dechert LLP, Cira Centre, 2929 Arch Street, Philadelphia, PA 19104-2808, USA. Respondent is Marketing Total S.A. (“Respondent”), P.O. Box 556, Main Street, Charlestown KN. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <westpharma.net>, registered with Capitoldomains, LLC. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. Judge Ralph Yachnin as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on June 15, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 20, 2007. On June 20, 2007, Capitoldomains, LLC confirmed by e-mail to the National Arbitration Forum that the <westpharma.net> domain name is registered with Capitoldomains, LLC and that Respondent is the current registrant of the name. Capitoldomains, LLC has verified that Respondent is bound by the Capitoldomains, LLC registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On June 22, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 12, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@westpharma.net by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On July 18, 2007 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <westpharma.net> domain name is identical to Complainant’s WEST PHARMA mark. 2. Respondent does not have any rights or legitimate interests in the <westpharma.net> domain name. 3. Respondent registered and used the <westpharma.net> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, West Pharmaceutical Services Inc., is a worldwide manufacturer of components and systems for drug delivery, including components used in vials, syringes, intravenous, and blood collection systems. Complainant has conducted business under the WEST PHARMA and related marks for over 80 years and currently operates a website at the <westpharma.com> domain name. Complainant holds a trademark registration with the Benelux Trademark Authority (“Benelux”) for the WEST PHARMA mark (Reg. No. 793,365 issued February 17, 2006). Respondent registered the <westpharma.net> domain name on May 14, 2007. Respondent’s domain name resolves to a website featuring links to third-party websites offering various pharmaceutical products and services in direct competition with Complainant. Respondent has also been the respondent in several previous UDRP decisions in which the disputed domain names in those cases were transferred from Respondent to the respective complainants. See Sico Inc. v. Mktg. Total S.A., FA 949597 (Nat. Arb. Forum May 15, 2007); see also SR Holdings, Inc. v. Mktg. Total S.A., FA 915273 (Nat. Arb. Forum Mar. 15, 2007); see also Hershey Entm’t & Resorts Co. v. Mktg. Total S.A., FA 888088 (Nat. Arb. Forum Feb. 20, 2007). DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. Identical and/or Confusingly Similar Complainant’s registration of the WEST PHARMA mark with Benelux sufficiently establishes its rights in the mark under Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”). Respondent’s <westpharma.net> domain name is identical to Complainant’s WEST PHARMA mark, as it incorporates the entire mark, simply deleting the space between the words in the mark. Although the disputed domain name adds the generic top-level domain (“gTLD”) “.net” to the mark, it is a well-established principle that the addition of a gTLD to a mark is irrelevant to a Policy ¶ 4(a)(i) analysis, as a top-level domain is a required element of all domain names. Therefore, the Panel finds that Respondent’s <westpharma.net> domain name is identical to Complainant’s WEST PHARMA mark pursuant to Policy ¶ 4(a)(i). See Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is plainly identical to the complainant’s MYSTIC LAKE trademark and service mark). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Under Policy ¶ 4(a)(ii), Complainant has the initial burden of proving that Respondent lacks rights or legitimate interests in the <westpharma.net> domain name. Once Complainant has made a prima facie case, however, the burden shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain name. In the instant case, the Panel finds that Complainant has established a prima facie case. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). Respondent’s failure to respond to the Complaint raises the presumption that Respondent lacks rights or legitimate interests in the disputed domain name. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”). Nevertheless, the Panel will still examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c). There is nothing in the record to suggest, and Respondent’s WHOIS information does not indicate, that Respondent is commonly known by the <westpharma.net> domain name. Furthermore, Respondent is not licensed or authorized to use the disputed domain name for any purpose. Thus, the Panel finds that Respondent lacks rights or legitimate interests under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name). Furthermore, Respondent’s <westpharma.net> domain name resolves to a website displaying links to various third-party websites in direct competition with Complainant. The Panel presumes that Respondent accrues click-through fees when Internet users click on these links. This does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Respondent is using the <westpharma.net> domain name to redirect Internet users to a website featuring links to third-party websites offering pharmaceutical goods and services in direct competition with Complainant. This constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business). The Panel presumes that Respondent benefits commercially from click-through fees when Internet users click on the links featured on the website that resolves from the <westpharma.net> domain name. Respondent is thus taking advantage of the likelihood that users will confuse the source of the disputed domain name as being affiliated with Complainant. This is additional evidence that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant). Furthermore, Respondent has been the respondent in several previous UDRP decisions in which the disputed domain names in those cases were transferred from Respondent to the respective complainants. See Sico Inc. v. Mktg. Total S.A., FA 949597 (Nat. Arb. Forum May 15, 2007); see also SR Holdings, Inc. v. Mktg. Total S.A., FA 915273 (Nat. Arb. Forum Mar. 15, 2007); see also Hershey Entm’t & Resorts Co. v. Mktg. Total S.A., FA 888088 (Nat. Arb. Forum Feb. 20, 2007). Under Policy ¶ 4(b)(ii), this pattern further indicates that Respondent registered and is using the current disputed domain name, <westpharma.net>, in bad faith pursuant to Policy ¶ 4(a)(iii). See Nabisco Brands Co. v. Patron Group, Inc., D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in bad faith); see also Société Air France v. Mert, D2004-0759 (WIPO Dec. 3, 2004) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the complainant provided evidence of a pattern of registration of “numerous other domain names” by the respondent). The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <westpharma.net> domain name be TRANSFERRED from Respondent to Complainant. Hon. Ralph Yachnin, Panelist Justice, Supreme Court, NY (Ret.) Dated: July 30, 2007 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.