DECISION

Purdue Pharma L.P. v. BANAGHER McTernan

Claim Number:  FA0403000250000

PARTIES

Complainant is Purdue Pharma L.P. (“Complainant”), represented by Elizabeth A. Alquist, of Day, Berry & Howard LLP, CityPlace, Hartford, CT 06103.  Respondent is BANAGHER McTernan (“Respondent”), 507 Charles Place, Malta, ID 83342.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <oxycontinonline.com>, registered with Enom, Inc.

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.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 26, 2004; the Forum received a hard copy of the Complaint on March 30, 2004.

On March 29, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain name <oxycontinonline.com> is registered with Enom, Inc. and that 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 April 5, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 26, 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@oxycontinonline.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 May 12, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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 <oxycontinonline.com> domain name is confusingly similar to Complainant’s OXYCONTIN mark.

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

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

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

FINDINGS

Complainant has developed and markets many well-known products, including the prescription medication OxyContin Tablets (“OxyContin”).  The drug has been marketed in the U.S. since December 15, 1995.  Complainant holds two registrations for the OXYCONTIN mark with the U.S. Patent and Trademark Office (“USPTO”), Reg. Nos. 2,033,914 and 2,004,586 (registered on January 28, 1997 and October 1, 1996, respectively).

Respondent registered the <oxycontinonline.com> domain name on September 10, 2002.  The domain name resolves to an online pharmacy called Trusted Canadian Pharmacy. 

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 has established rights in the OXYCONTIN mark through registration with the USPTO.  See 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 Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that 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.  Respondent has the burden of refuting this assumption).

Respondent’s <oxycontinonline.com> domain name is confusingly similar to Complainant’s OXYCONTIN mark because the domain name fully incorporates the mark and merely adds the generic term “online.”  The addition of the generic word “online” is insufficient to distinguish the domain name from Complainant’s mark.  See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Am. Online, Inc. v. Anytime Online Traffic School, FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity).

Furthermore, the addition of the generic top-level domain “.com” to the mark is irrelevant in determining whether the <oxycontinonline.com> domain name is confusingly similar to Complainant’s mark.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied. 

Rights or Legitimate Interests

Respondent has failed to contest the allegations of the Complaint; therefore, the Panel presumes that Respondent lacks rights and legitimate interests in the <oxycontinonline.com> domain name.  See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also 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).

Furthermore, nothing in the record establishes that Respondent is commonly known by the <oxycontinonline.com> domain name.  Moreover, Respondent is not licensed or authorized to register or use domain names that incorporate Complainant’s mark.  Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. 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 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).

In addition, Respondent’s <oxycontinonline.com> domain name is confusingly similar to Complainant’s mark and Respondent profits from the domain name by redirecting Internet users to a website that that sells pharmaceutical drugs.  Respondent’s use of the domain name does not constitute 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  MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using Complainant’s mark by redirecting Internet traffic to its own website); see also 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)).

           The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. 

Registration and Use in Bad Faith

Respondent commercially benefits from using a domain name confusingly similar to Complainant’s mark, which is evidence that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through Respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using Complainant’s famous marks and likeness); see also 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)).

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 <oxycontinonline.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated:  May 17, 2004

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