Complainant was JPI Commercial, LLC from Minnesota, USA. Respondent was Alan Capalditallon from United Kingdom.
Complainant, a pharmaceutical company, owns numerous US and EU trademark registrations for XYREM, used in connection with various pharmaceutical goods and services. Respondent is a professional product designer in mechanical engineering.
Respondent registered the disputed domain name, xyram.com, on April 21, 2006.
Complainant submitted the Complaint to the National Arbitration Forum on August 16, 2012. The National Arbitration Forum appointed David E. Sorkin as Panelist.
The Panelist found for the Complainant in the first 2 elements of the UDRP: Identical and/or Confusingly Similar and Rights or Legitimate Interests. The Panel said the disputed domain name comprised of the term “xyrem” with the top-level domain suffix “.com” appended thereto. The relevant portion of the domain name was identical to Complainant’s registered trademark XYRAM, but for the substitution of the letter “e” for the letter “a.” In light of the very similar visual appearance and pronunciation, the Panel considered the domain name to be confusingly similar to Complainant’s mark. Also The Panel said the Respondent offered no such evidence of his rights or legitimate interests, beyond an unsubstantiated assertion that he intended to use the domain name as a brand name in the future. The Panel therefore concluded that Complainant met its burden on this element.
The third element of the UDRP Policy requires Complainant to prove that Respondent both registered and is using the disputed domain name in bad faith. The Panel said that Complainant asserted that Respondent had constructive notice of Complainant’s mark as a result of Complainant’s US and EU trademark registrations. But constructive notice is insufficient under the Policy; actual knowledge is required. The Panel also said that although Respondent was under no duty to perform a trademark search prior to registering the domain name, see Trade Me Limited v. Vertical Axis Inc, D2009-0093 (WIPO Apr. 7, 2009), Respondent claimed that he exercised “due diligence” and “after relevant checks” did not believe he was infringing on any registered marks. Complainant questions this claim, asserting that had Respondent searched the Community Trademark Database in 2006, he would have found Complainant’s registration. The Panel said that a simple search of the CTM database for XYRAM, the term of interest to Respondent, yields no indication of registrations by Complainant or any other entity. Of course, absent other evidence that Respondent was intentionally targeting Complainant’s mark, there is no reason to expect that Respondent would have searched for Complainant’s XYREM mark rather than for XYRAM.
The Panel noted that Complainant’s strongest argument was based upon the website containing an image of a medicine bottle and pills, potentially supporting an inference that Respondent was aware of the connection between the domain name and Complainant’s mark. This website, however, was apparently automatically generated by Sedo.com, a domain name marketplace. Respondent is of course responsible for the content of the site, as he delegated control to Sedo.com. But, the fact that a third party with whom Respondent contracted made a connection between the domain name and Complainant’s mark in late 2010 through mid-2011 is not particularly probative of Respondent’s intentions when he registered the domain name more than four years earlier.
Finally the Panel said that with little or no evidence on either side, the Panel was left to speculate as to Respondent’s motives upon registering the disputed domain name. The similarity to Complainant’s mark is substantial, but the mark is not sufficiently famous or distinctive to lead the Panel to reject Respondent’s explanation as entirely implausible, nor to support an inference that Respondent must have had Complainant’s mark in mind upon registering the domain name. The Panel, therefore, was left to decide this issue based upon the burden of proof, and found that Complainant failed to meet its burden of showing that Respondent registered and used the disputed domain name in bad faith.
So the Panel concluded that relief shall be DENIED.