Eurax.com

The timeline behind eurax.com

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 Ranbaxy Laboratories Inc. v. Satoshi Shimoshita Claim Number: FA0902001247091 PARTIES Complainant is Ranbaxy Laboratories Inc. (“Complainant”), represented by Lynda J. Zadra-Symes, of Knobbe Martens Olson & Bear LLP, California, USA. Respondent is Satoshi Shimoshita (“Respondent”), Japan. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <eurax.com>, registered with Enom, Inc. PANEL The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. Timothy D. O’Leary as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on February 11, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 12, 2009. On February 11, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <eurax.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 February 13, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 5, 2009 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@eurax.com by e-mail. A Response was received electronically on February 13, 2009, however, a hard copy was not received prior to the Response deadline of March 5, 2009. On March 16, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Timothy D. O’Leary as Panelist. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PRELIMINARY ISSUE: Deficient Response Respondent’s Response was submitted only in electronic format prior to the Response deadline; a hard copy was not subsequently received. Thus the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5. The Panel, in its discretion, chooses to accept and consider this Response. PARTIES’ CONTENTIONS I. Complainant’s Contentions. A. Identical and/or Confusingly Similar Complainant is one of the world’s top 10 generic pharmaceutical companies. This Complaint is based on the 101RAX(8) mark, which Complainant has used in connection with at least antipsoric ointment. Complainant’s EURAX® antipsoric ointment is a well known and well-respected brand. From July 2007 through December 2008, EURAX® branded products generated gross sales of $2 million. Complainant’s EURAX® mark was first registered with the United States Patent and Trademark Office in 1947 (Reg. No. 434,497). Complainant acquired the EURAX® mark from Westwood-Squibb Pharmaceuticals in 2007. Ownership of a registered trademark satisfies the threshold requirement of having ownership rights. Complainant has such ownership and therefore has such rights pursuant to Policy ¶ 4(a)(i). Since acquiring the EURAX® mark, Complainant has prominently promoted the mark and products branded with the mark. On 15 December 2008, Complainant sent Respondent a cease-and-desist letter demanding transfer of the disputed domain name. The letter was sent by certified mail and email to the address and email address then listed for the registrant of <eurax.com>: Satoshi Shimoshita, 1-12-3-304, Furuishiba, Koto-ku, Tokyo 1350045, Japan, toho@hcm.vnn.vn. Complainant has received no response to the cease-and-desist letter. The disputed domain name <eurax.com> is letter-for-letter identical to Complainant’s mark EURAX® except for the inclusion of the TLD “.com.” The addition of “.com” is irrelevant when conducting a Policy ¶ 4(a)(i) analysis. Respondent’s domain name is thus identical to or confusingly similar to Complainant’s mark. B. Rights or Legitimate Interests It is generally accepted by UDRP panelists that Complainant need only establish a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name: to hold otherwise is to require Complainant to prove a negative. According to WHOIS records, <eurax.com> was registered on 10 March 2003. Respondent does not own the EURAX® mark and is not licensed or authorized to use it. Respondent has not been commonly known by the domain name, either as an individual, as a business, or as any other organization. Respondent is not using <eurax.com> in any bona fide offering of goods or services. The web page at this domain (displayed in Annex J) is densely populated with links to <searchportal.information.com>, and Respondent profits when users follow those links. The web page induces users to click on links purporting to link to information about Complainant’s products but instead linking to pages with information about Claimant’s competitors. The entire configuration of the web pages and links to <searchportal.information.com> at <eurax.com> serves to associate Complainant’s EURAX® mark with a disreputable spam and search redirection operation. Respondent has been found to have registered domain names in violation of UDRP policy before. Respondent’s use of <eurax.com> as described above is not 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). C. Registration and Use in Bad Faith Respondent’s use of the disputed domain name <eurax.com> demonstrates that Respondent is attempting to profit from Complainant’s mark by hosting advertisements for Complainant’s competitors and earning money from click-through linking. Respondent is creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the web site at the disputed domain and is using such confusion to attract, for commercial gain, users to his web site. Respondent is directing users to Complainant’s competitors by invoking as his own the authority and reputation associated with Complainant’s mark. This unauthorized use of the <eurax.com> domain name is likely to disrupt Complainant’s business and shows Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iii). Respondent’s use of the disputed domain name is also likely to create confusion among customers searching for Complainant’s business or products. This confusion is heightened by the fact that the disputed domain name is identical to Complainant’s mark. Respondent is attempting to capitalize on the goodwill associated with Complainant’s mark, and this evidences bad faith registration and use. II. Respondent’s Contentions. A. Identical and/or Confusingly Similar Respondent did not make any contentions regarding this policy. B. Rights or Legitimate Interests I do not know this company name, even this company products “EURAX”. Is this item famous all over the world right ? Everybody knows this items? But I did not know. I registered this domain for development website near future. imaging “Eurasia” Euro x Asia, “X” means Crossing. This is my naming base. I consider this naming and I could registered .com domain for EURAX at that time. Sound easy to remember so I intend making website near future. If thier EURAX is world famous brand name, I did not register this domain. But I think nobody knows Ranbaxy Laboratories Inc and their EURAX items in Japan even Asia I think. I am not sure specific country or specific area. C. Registration and Use in Bad Faith I do not have any bad faith registered my EURAX.com for them. I will development website near future use this domain, so keep domain parking site. Trade mark are many many field, this is one of them. And not wellknown brand all over the world. Once again, I do not have any bad faith and .com domain name is not equal trademark, except wellknown world wid famous brand. DISCUSSION Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.” Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the 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. FINDINGS A. Identical and/or Confusingly Similar I find the issues on this element in favor of Complainant. Complainant has provided evidence of the registration of its EURAX mark with the United States Patent and Trademark Office (“USPTO”) on November 18, 1947 (Reg. No. 434,497), and the subsequent assignment of the EURAX mark to Complainant. The Panel finds Complainant has established rights in its EURAX mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also remithome Corp v. Pupalla, FA 1124302 (Nat. Arb. Forum Feb. 21, 2008) (finding the complainant held the trademark rights to the federally registered mark REMITHOME, by virtue of an assignment). Complainant alleges Respondent’s <eurax.com> domain name is identical to Complainant’s EURAX mark because it contains the mark in its entirety with the addition of the generic top-level domain “.com.” The Panel finds Respondent’s <eurax.com> domain name is identical to Complainant’s EURAX mark under Policy ¶ 4(a)(i). See SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.”). B. Rights or Legitimate Interests I find the issues on this element in favor of Complainant. The Panel is reminded that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. Complainant contends Respondent is not commonly known by the <eurax.com> domain name. Complainant states neither Complainant nor its predecessors have authorized Respondent to use its EURAX mark in any manner. Furthermore, the WHOIS information lists Respondent as “Satoshi Shimoshita.” Therefore, the Panel finds Respondent is not commonly known by the <eurax.com> domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Complainant has provided evidence that Respondent is using the <eurax.com> domain name to display links to the <searchportal.information.com> domain, which purports to offer information about Complainant but instead links to pages with information about Complainant’s competitors and commercial search engines. Complainant alleges Respondent is profiting from this use of the disputed domain name. The Panel finds Respondent’s use of the disputed domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process). C. Registration and Use in Bad Faith I find the issues on this element in favor of Complainant. Complainant alleges Respondent is using the disputed domain name to display links to third-party websites that compete with Complainant’s business and direct Internet users to a commercial search engine. The Panel finds Respondent’s actions constitute a disruption of Complainant’s business, which the Panel finds is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)). Complainant asserts Respondent is profiting from its use of the identical disputed domain name. The Panel finds Respondent is attempting to profit from the goodwill Complainant has established in its EURAX marks. The Panel finds this is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant). 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 <eurax.com> domain name be TRANSFERRED from Respondent to Complainant. Timothy D. O’Leary, Panelist Dated: March 30, 2009 NATIONAL ARBITRATION FORUM Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

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