WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nycomed Danmark Aps v. Patrick Granberg
Case No. D2006-0780
1.
The Parties
The Complainant is Nycomed Danmark Aps, Roskilde, Denmark, represented by
Delacour Law Firm, Denmark.
The Respondent is Patrick Granberg, Holland, Netherlands.
2.
The Domain Name and Registrar
The disputed Domain Name <letigen.com> is registered with DSTR Acquisition VII,
LLC d/b/a Dotregistrar.com.
3.
Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the
“Center”) on June 21, 2006. On June 23, 2006, the Center transmitted by email to
DSTR Acquisition VII, LLC d/b/a Dotregistrar.com a request for registrar verification
in connection with the Domain Name at issue. On June 28, 2006, DSTR Acquisition
VII, LLC d/b/a Dotregistrar.com transmitted by email to the Center its verification
response confirming that the Respondent is listed as the registrant and providing the
contact details for the administrative, billing, and technical contact. 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 June 29, 2006. In
accordance with the Rules, paragraph 5(a), the due date for Response was
July 19, 2006. The Respondent did not submit any response. Accordingly, the Center
notified the Respondent’s default on July 20, 2006.
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The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on
August 2, 2006. 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
The Complainant, Nycomed Danmark ApS, is the Danish subsidiary of the Nycomed
Group, a pharmaceutical company founded in 1874 in Norway, which since 1999, has
been rapidly expanding throughout Europe. By the end of 2005, the total net turnover
of the Nycomed Group in 2005 was an estimated EUR 747.5 millions.
One of the Nycomed Group’s products in the 1990’ties was an appetite suppressant
with the active ingredients ephedrine and caffeine, a prescription drug marketed under
the trademark LETIGEN. In 2000 and 2001 around 90,000 persons in Denmark alone
were treated with LETIGEN.
The Complainant has registered the following trademarks:
LETIGEN, Danish Trademark No. VR 1989 03513, registered on June 16, 1989, in
Class 5.
LETIGEN, Swedish Trademarks No. 250503, registered on June 6, 1993 and No.
357580, registered on August 30, 2002 in Class 5.
The Domain name <letigen.dk> was registered on January 24, 2001.
Following an intensive media debate in Denmark during 2002 as to whether appetite
suppressants including ephedrine and caffeine (such as LETIGEN) could have serious
adverse effects, the Complainant decided to end the production and sale of LETIGEN
by the end of 2002. The Complainant’s trademark registration of LETIGEN in class 5
in Denmark is enforceable, the trademark is registered for a period covering until
June 16, 2009. A Google search for “letigen” on June 16, 2006 showed approximately
46,000 hits.
The Respondent registered the Domain Name <letigen.com> on October 7, 2003. The
disputed Domain name does not resolve into a website but is linking to the website
under the Domain Name <lepigen.se>. On this website, the company Umbrella
Enterprises Inc. is marketing and offering for sale the food supplement LEPIGEN, an
appetite suppressant containing ephedrine and caffeine. LEPIGEN is not a prescription
drug as LETIGEN, but one of several unauthorized appetite suppressants being traded
via internet after the withdrawal of LETIGEN from the market.
The Swedish trademark authorities (Patent- och Registreringsverket), by decision of
October 4, 2005, rejected an application for trademark registration of LEPIGEN due to
confusing similarity with the Complainant’s trademark LETIGEN.
The facts mentioned above have been established on the basis of the Complaint and
documents attached thereto, which have remained uncontested, in accordance with
paragraph 3(b)(xv) of the Rules.
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5.
Parties’ Contentions
A.
Complainant
The Complainant requests transfer of the disputed Domain name and contends that each
of the three requirements specified in paragraph 4(a) of the Policy are satisfied in this
case. In particular, the Complainant claims that:
(i) The Domain name in dispute is confusingly similar to the trademark “LETIGEN” in
which the Complainant has rights.
The Complainant, first of all, contends that, as consistently stated in previous decisions
by WlPO Arbitration and Mediation Center panels the mere addition of the .com TLD
suffix shall not be taken into consideration when evaluating whether a .com Domain
Name shall rightfully be considered to be identical with or confusingly similar to a third
party trade mark.
As a consequence, it considers that the Domain Name <letigen.com> to be identical
with the Complainant’s trademark LETIGEN.
(ii)
The Respondent has no rights or legitimate interests in respect of the Domain
name in dispute.
Complainant contends that Respondent is using the Domain Name <letigen.com> for
the purpose of attracting customers to the website under the Domain Name
<lepigen.se> promoting inter alia the illegal food supplement LEPIGEN with
ephedrine and caffeine. It claims that Respondent, in doing so, creates a likelihood of
confusion with the Complainant’s well known trademark LETIGEN.
Additionally, it claims that the Respondent’s registration and use of the Domain Name
<letigen.com> serves the sole purpose to illegally create a false impression in the
market of a connection between the Respondent’s product LEPIGEN and the product
formerly marketed by the Complainant under the trade mark LETIGEN. It finds that
such conduct constitutes illegal benefit from third parties’ trademarks and reputation
and is clearly contrary to basic trademark principles as well as to the rules on protection
of commercial identity.
Complainant further contends that there is an obvious risk of the consumers being lead
to believe that the illegal product LEPIGEN is in any way related to the previous
prescription drug LETIGEN and thus to the Complainant. It claims that, according to
the Swedish Medicines Agency, marketing and sale of LEPIGEN is prohibited in
Sweden and that, therefore, it is very damaging for its company to be related to
products as LEPIGEN that are illegal or even harmful to the health of consumers.
It concludes that the Respondent’s use of the Domain Name <letigen.com> must be
considered to be illegal and damaging for the Complainant and that, therefore, it has at
least substantiated prima facie evidence of the absence of any rights or legitimate
interests by the Respondent in relation to the disputed Domain Name and that the
burden of proof thus shifts to the Respondent.
(iii) The Domain Name in dispute was registered and is being used in bad faith.
The Complainant claims that the registration and use of the disputed Domain Name
<letigen.com> in bad faith are due to the Complainant’s rights in the well reputed
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trademark LETIGEN.
It contends that first, LETIGEN is a well-known and reputed trademark and, secondly,
Respondent has registered as Domain Name a designation identical to the
Complainant’s trademark LETIGEN. Thirdly, Complainant states that Respondent is
using the Domain Name <letigen.com> for commercial gain by attracting customers to
a website promoting inter alia the illegal and unauthorized food supplement LEPIGEN
and thus not only creates a likelihood of confusion with the Complainant’s trademark
LETIGEN but also a serious risk of damaging the Complainant’s goodwill and
reputation. It concludes that Respondent must have been well aware of the Complainant
and the Complainant’s trademark rights in LETIGEN as Respondent sold products
under the confusingly similar name LEPIGEN claiming to serve the same purposes as
those previously sold by the Complainant.
B.
Respondent
The Respondent did not reply to the Complainant’s contentions by the date fixed by the
Center in accordance with the Rules, paragraph 5(a).
6.
Discussion and Findings
Paragraph 4(a) of the Policy provides that the following facts must be established in
order to grant the Complainant the requested remedy:
(1)
(2)
(3)
A.
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
that the Respondent has no rights or legitimate interests in respect of the
Domain Name; and
that the Domain Name has been registered and is being used in bad faith.
Identical or Confusingly Similar
The distinctive part of the contested domain is “letigen”. For the purpose of deciding
whether a Domain Name is identical or confusingly similar to a trademark or service
mark, the suffix “.com” must be disregarded as indicating solely the nature of a top
level domain, Sharman License Holdings, Limited v. KazaaLite.com Inc., WIPO Case
No. D2004-0402).
The contested Domain Name <letigen.com> is identical to the Complainant’s
trademark LETIGEN.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the
Policy.
B.
Rights or Legitimate Interests
a.
The Respondent, by not responding, has failed to provide any evidence of
circumstances of the type specified in paragraph 4(c) of the Policy or of any other
circumstances giving rise to a right or legitimate interest in the Domain Name in
dispute.
b.
The Respondent’s name “Patrick Granberg” bears no similarity to the contested
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Domain Name.
c.
However, it is a moot point whether Respondent, with the direct link to the
website “lepigen.se”, is using the Domain Name “in connection with a bona fide
offering of goods or services” according to paragraph 4(c)(i) of the Policy. In this
respect, it is crucial whether Umbrella Enterprises, the company operating the
website, is offering goods or services bona fide. This being denied, the
Respondent with his use of the Domain Name or rather by letting a third party
make use of , would participate in the illegitimate business of a third party.
aa.
The Complainant has pointed out that Umbrella Enterprises, on its website
“lepigen.se”, promotes and offers for sale the illegal food supplement LEPIGEN
with ephedrine and caffeine. It contends that this usage of the website creates a
likelihood of confusion with the Complainant’s trademark LETIGEN, that it
exploits the goodwill and the reputation of the trademark LETIGEN and that the
Complainant’s reputation could be damaged if the company is related to illegal
products that could be harmful to health. As a proof, the Complainant has
submitted the decision of the Swedish trademark authorities (Patent- och
Registreringsverket) of October 4, 2005 rejecting an application for trademark
registration of LEPIGEN due to confusing similarity with the Complainant’s
trademark LETIGEN.
bb.
The Panel finds that the Complainant has submitted prima facie evidence that the
Respondent lacks rights or legitimate interests with respect to the Domain Name.
Taking into account the difficulty to prove a negative fact without specific
knowledge of Respondent’s rights or interests there is a constant ruling in UDRP
decisions that the Complainant’s submission of a prima facie evidence is
sufficient in this case, Intocast Ag v. Lee Daeyoon, WIPO Case No. D2000-1467;
Anti Flirt S.A. and Mr. Jaques Amsellem v. WCVC, WIPO Case No. D2000-1553;
Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D20030455).
cc.
Further, the Panel takes into account that the spelling of the product LEPIGEN
and the Complainant’s trademark LETIGEN is almost identical and that the
marketing of the product LEPIGEN on the website “lepigen.se” is aiming at the
Scandinavian market of appetite suppressants, precisely the same target that
Complainant’s product LETIGEN used to focus on. The combination of both
circumstances permits the conclusion that Complainant’s well known trademark
LETIGEN is being exploited for commercial purposes.
dd.
It has remained uncontested that the product LEPIGEN is unauthorized and thus
because of the high degree of similarity of LETIGEN and LEPIGEN t could
cause damage to the Complainant’s reputation. In view of the identity of goods
and the uncontested media debate regarding LETIGEN, the choice of the product
LEPIGEN cannot have been without purpose. Thus the Panel draws the
conclusion that Umbrella Enterprises, on its website “lepigen.se”, is not using the
Domain Name in connection with a bona fide offering of goods or services.
As a consequence, the Panel concludes that the Respondent’s use of the contested
Domain Name to link to Umbrella Enterprises’ website “lepigen.se” does not give rise
to a right or legitimate interest in the disputed Domain Name.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the
Policy.
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C.
Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must prove the
registration as well as the use in bad faith of the disputed Domain Name.
aa.
Registration in bad faith
The Panel is satisfied with the Complainant’s allegation that Respondent must have
been aware of the well-known trademark LETIGEN when registering an identical
Domain Name in October 2003.
Indeed the Complainant has submitted only very little evidence to prove that its
LETIGEN mark is well-known. The Panel cannot estimate the marketing efforts
Complainant used to make for the promotion of LETIGEN nor is it possible to verify
the estimated number of users of the drug, as Complainant has not submitted any
statistical documents provided by its company.
On the other hand, Complainant has submitted the proof that its trademark LETIGEN
has been registered in Denmark already in 1989 and in Sweden already in 1993. Also,
in June 2006, three and a half years after the expiry of the production of the drug, there
was still the impressing number of 46.700 Google matches for LETIGEN, indicating
that the drug, in its best time between the years 2000 and 2002, had gained an
enormous popularity at least in the Scandinavian part of Europe. Considering also that
LETIGEN is a pure fantasy designation and in particular considering the identity of
goods for which Respondent lets the Domain Name be used, it appears most unlikely
that the Respondent in October 2003 did not know of the Complainant’s trademark and
register the fantasy name “letigen” bona fide (see Designor OY AB v Bamse
Enterprises, WIPO Case No. D2001-0643; <allaboutlevitra.com>, Bayer
Aktiengesellschaft v. Henrik Monssen, WIPO Case No. D2003-0275).
Therefore, the Panel finds that the Respondent was probably aware of the
Complainant’s trademark when registering the Domain Name in dispute. This finding
leads to the conclusion that the Domain Name in dispute was registered in bad faith.
bb.
Use in bad faith
Paragraph 4(b) of the Policy enumerates in several factors, without limitation, that if
found by the Panel to be present, shall be evidence of the use of a Domain Name in bad
faith. In particular, paragraph 4(b)(iv) states:
“(iv) by using the Domain Name, you [the Respondent] have intentionally
attempted to attract, for commercial gain, Internet users to your web site or other
on-line location, by creating a likelihood of confusion with the Complainant’s
mark as to the source, sponsorship, affiliation, or endorsement of your web site or
location or of a product or service on your web site or location.”
By using the Domain Name <letigen.com> that is identical to the Complainant’s
trademark LETIGEN, Respondent has created a likelihood of confusion with the
Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the
location and of the products and services on the website the location is linked with.
Moreover the direct link of the Domain Name <letigen.com> to the website of a
competing company offering the drug LEPIGEN, an imitation of the product marketed
under the protected trademark, is the typical case of a bad faith use. Offering an
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imitation of the product marketed under a protected trademark is the typical case of a
bad faith use because it attracts customers who were not looking for the imitation of the
drug but for the original product, known by the trademark LETIGEN. Such use of a
trademark can create customer confusion or dilution of the mark, The Chip Merchant,
Inc. v. Blue Star Electronics, d/b/a Memory World, WIPO Case No. D2000-0474;
Rádio Globo S.A. v. Rádio Morena, WIPO Case No. D2000-1558; Yamaha
Corporation v. Zhoulei, WIPO Case No. D2004-0126).
Further, the Panel finds that the Respondent’s use of the contested Domain Name has
the purpose of commercial gain. It appears unlikely that Respondent set a direct link to
a direct competitor without considering a potential economic profit.
For all the foregoing reasons, the disputed Domain Name is also being used in bad
faith.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) 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 <letigen.com> be transferred to
the Complainant.
Andrea Jaeger-Lenz
Sole Panelist
Dated: August 15, 2006
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