DECISION

Purdue Pharma L.P. v. Henry Chan

Claim Number:  FA0402000237523

PARTIES

Complainant is Purdue Pharma L.P. (“Complainant”) Stamford, CT, represented by Elizabeth A. Alquist, of Day, Berry & Howard LLP, City Place, Hartford, CT 06103.  Respondent is Henry Chan (“Respondent”) P.O. Box SS-6348/A124, Nassau, Bahamas.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <perduepharma.com>, registered with Iholdings.com, Inc. d/b/a Registrar.com.

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.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 18, 2004; the Forum received a hard copy of the Complaint on February 20, 2004.

On February 19, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain name <perduepharma.com> is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the name. Iholdings.com, Inc. d/b/a Dotregistrar.com has verified that Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.com 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 27, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 18, 2004 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@perduepharma.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On March 23, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condon as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 <perduepharma.com> domain name is confusingly similar to Complainant’s PURDUE PHARMA mark.

2. Respondent does not have any rights or legitimate interests in the <perduepharma.com> domain name.

3. Respondent registered and used the <perduepharma.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant Purdue Pharma L.P. was formed in 1991 to research, develop, produce, market, sell, distribute, and license analgesic medications and other pharmaceutical products. Complainant has conducted substantial research for the causes of chronic pain.

Complainant has developed and marketed a variety of well-known products, including prescription medications such as OxyContin®, and well-known over-the-counter medications such as Betadine® and Senokot®.

In connection with its analgesic preparations, Complainant filed a registration application for the PURDUE PHARMA mark with the United States Patent and Trademark Office (“USPTO”) on July 5, 2000 (Ser. No. 76/084193).  On June 10, 2003, the USPTO granted the registration number 2723050 to Complainant for the PURDUE PHARMA mark, which is now listed on the Principal Register.  Complainant now uses the PURDUE PHARMA mark on its labeling, package inserts, and in its advertisements, and has done so continuously since 1991.

Complainant also operates its business online at the <pharma.com> domain name, which was registered in 1996.  The attached website provides information about the company and its products, including employment opportunities.

Respondent registered the disputed domain name <perduepharma.com> on November 14, 2002.  The attached website contains the following statement displayed prominently at the top of the website:

“Perduepharma.com Your source for the most popular Perduepharma info!”

Respondent hosts pop-up advertisements at the disputed domain name and also provides information relating to “OxyContin,” even providing links to websites that sell the same. 

Previous Panels have required that Respondent Henry Chan transfer domain names that infringed upon third-party marks. E.g. Elsevier v. Chan, FA 161468 (Nat. Arb. Forum July 23, 2003); Yahoo! Inc. v. Chan, FA 162050 (Nat. Arb. Forum Jul. 16, 2003); LTD Commodities LLC v. Chan, FA 152617 (Nat. Arb. Forum May 8, 2003); Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003).

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.

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 owns the USPTO registration for the PURDUE PHARMA trademark, which was filed on July 5, 2000.  The PURDUE PHARMA mark has been used continuously in commerce by Complainant since 1991.  Therefore, the Panel finds that Complainant has established rights in the PURDUE PHARMA mark. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also FDNY Fire Safety Educ. Fund, Inc. v. Miller, FA 145235 (Nat. Arb. Forum March 26, 2003) (finding that Complainant’s rights in the successfully registered FDNY mark date back to the original registration application that was filed with the U.S. Patent and Trademark Office).

Under the Policy, whether a disputed domain name is confusingly similar to a registered mark is determined by examining the differences between only the domain name and the mark, without regard to other circumstances. See Porto Chico Stores, Inc. v. Otavio Zambon, D2000-1270 (WIPO Nov. 15, 2000) (stating that the issue of identicality or confusing similarity is to be resolved “by comparing the trademark and the disputed domain name, without regard to the circumstances under which either may be used”); see also Gavagai Tech. Inc. v. Gavagai, FA 135611 (Nat. Arb. Forum Feb. 3, 2003) (concurring with the Panel in Porto Chico Stores in finding that Policy ¶ 4(a)(i) is determined by comparing the domain name with the mark and refusing to “stray from the clear language of the ICANN Policy”).

In this case, the disputed domain name <perduepharma.com> has merely substituted the first letter “u” in Complainant’s PURDUE PHARMA mark with the letter “e.”  Such a minor change in spelling has consistently been held under the Policy to be insufficient to overcome the confusing similarity between a domain name and a mark. See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001)  (finding that the domain names <tdwatergouse.com> and <dwaterhouse.com> are virtually identical to Complainant’s TD WATERHOUSE name and mark); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to Complainant’s STATE FARM mark); see also Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that the domain names, <davemathewsband.com> and <davemattewsband.com>, are common misspellings and therefore confusingly similar).

Moreover, the disputed domain name <perduepharma.com> and Complainant’s PURDUE PHARMA mark are phonetically identical.  The identical pronunciation of a domain name and mark has also been consistently held under Policy ¶ 4(a)(i) to establish confusing similarity between names and marks. See Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to Complainant’s mark satisfies ¶ 4(a)(i) of the Policy); see also Vivendi Universal Games v. Chang d/b/a Domain543.com, FA 206328 (Nat. Arb. Forum Dec. 17, 2003) (finding the <warcraft3.net> domain name confusingly similar to Complainant's mark where the name retained the "predominant word" in Complainant's registered mark and "merely cloaked the substance of the remainder of the mark in a different form, specifically by substituting Roman numerals with Arabic"); see also Pfizer Inc. v. Phizer's Antiques & Phizer, D2002-0410 (WIPO July 3, 2002) (finding the <phizer.com> domain name phonetically equivalent and confusingly similar to the PFIZER mark).

Therefore, Complainant has established that the disputed domain name <perduepharma.com> is confusingly similar to Complainant’s mark PURDUE PHARMA pursuant to Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not provided the Panel with a Response to Complainant’s allegations that Respondent lacks rights and legitimate interests in the disputed domain name.  Accordingly, the Panel finds that Respondent’s failure to respond is an implicit admission that it lacks rights and legitimate interests in the <perduepharma.com> domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard.”).

The record before the Panel fails to indicate that Respondent is commonly known by the disputed domain name. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Furthermore, Respondent is using a domain name confusingly similar to Complainant’s mark to host information relating to Complainant’s OxyContin® product.  This information includes hyperlinks to third-party websites that sell Complainant’s OxyContin® product. Using a domain name confusingly similar to Complainant’s mark and providing Complainant’s products or links to such products on the attached website is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See G.D. Searle & Co. v. Mahoney, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding Respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from Complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where Respondent used Complainant’s mark without authorization to attract Internet users to its website, which offered Complainant’s products and those of its competitors).

Respondent is also using the disputed domain name to host pop-up advertisements.  Such use does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) because Respondent commercially benefits from the confusing similarity between its domain name and Complainant’s mark. See Wells Fargo & Co. v. Party Night Inc. & Carrington, FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (holding that Respondent’s use of confusingly similar derivatives of Complainant’s WELLS FARGO mark to divert Internet users to websites featuring pop-up advertisements was not a bona fide offering of goods or services); see also Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that Respondent did not have rights or legitimate interests in a domain name that used Complainant’s mark and redirected Internet users to website that pays domain name registrants for referring those users to its search engine and pop-up advertisements).

Therefore, Complainant has established that Respondent lacks rights to and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent has registered a domain name confusingly similar to Complainant’s mark.  The domain name is then used to expose Internet users to a series of pop-up advertisements for the purpose of earning revenue for each referred user.  These two facts, taken together, evidence that Respondent is profiting from the work of Complainant in establishing a respected reputation and goodwill associated with Complainant’s registered PURDUE PHARMA trademark.  Thus, Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by attempting to attract Internet users to its online location, for commercial gain, by creating a likelihood of confusion with Complainant’s PURDUE PHARMA mark. See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent used the confusingly similar domain name to attract Internet users to its commercial website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).

Furthermore, Respondent has a lengthy history of registering domain names that infringe upon third-party marks.  Many of these domain names were found to be intentional misspellings of third-party marks that were registered in an attempt to siphon Internet users, who make common spelling mistakes, to Respondent’s sponsored website. This activity is often referred to as “typosquatting.”  In this case, the Panel finds that Respondent is engaged in typosquatting, evidence of bad faith registration and use under the Policy. See Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith.”); see also L.L. Bean, Inc. v. Cupcake Patrol, FA 96504 (Nat. Arb. Forum Mar. 12, 2001) (finding that Respondent acted in bad faith by establishing a pattern of registering misspellings of famous trademarks and names); see also Sports Auth. Mich., Inc. v. Internet Hosting, FA 124516 (Nat. Arb. Forum Nov. 4, 2002) (stating that, “Redirecting Internet users attempting to reach a complainant’s website in order to gain a profit off of a complainant is one example of bad faith use and registration under the Policy”).

Therefore, Complainant has established that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

Accordingly, it is Ordered that the <perduepharma.com> domain name be TRANSFERRED from Respondent to Complainant.

Louis E. Condon, Panelist

Dated:  March 31, 2004

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