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BioCryst Pharmaceuticals, Inc. v. Kumar Patel [2005] GENDND 1475 (4 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BioCryst Pharmaceuticals, Inc. v. Kumar Patel

Case No. D2005-0674

1. The Parties

The Complainant is BioCryst Pharmaceuticals, Inc., Birmingham, Alabama, United States of America, represented by Bradley Arant Rose & White LLP, United States of America.

The Respondent is Kumar Patel, Wisbech, Cambs, United Kingdom of Great Britain and Northern Ireland, represented by himself.

2. The Domain Name and Registrar

The disputed domain name <biocrystpharmaceuticals.com> is registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2005. On June 27, 2005, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On June 27, 2005, Wild West Domains, Inc. 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, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 19, 2005. The Response was filed with the Center on July 18, 2005.

The Center appointed Daniel J. Gervais as the sole panelist in this matter on July 25, 2005. 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.

The Complainant filed a Supplemental Filing and a Request for Acceptance of Supplemental Filing on July 20, 2005. The Respondent filed an Objection to the Supplemental Filing on July 21, 2005.

4. Factual Background

The Complainant is BioCryst Pharmaceuticals, Inc, a Delaware corporation, whose principal office is located in Birmingham, Alabama, United States of America. The Complainant is the owner of the mark BIOCRYST PHARMACEUTICALS, INC. The mark is used in relation to the Complainant’s business and to identify pharmaceuticals for the treatment of viral, inflammatory, autoimmune, cancer, and cardiovascular disease and disorders. The Complainant maintains Internet websites located at “www.biocryst.com”. The Complainant has continuously used the mark since 1991, and the mark has been continuously used in interstate commerce since 1992. The mark was registered on November 9, 2004.

The Respondent operates a website at “www.biocrystpharmaceuticals.com”.

5. Parties’ Contentions

A. Complainant

The disputed domain name <biocrystpharmaceuticals.com> is identical and confusingly similar to the Complainant’s registered mark BIOCRYST PHARMACEUTICALS, INC. The Respondent has no rights or legitimate interests in the domain name. The Respondent is not commonly known or identified by the name “Biocryst Pharmaceuticals”, nor is he affiliated or connected in any way with the Complainant. The Respondent is not making a legitimate noncommercial or fair use of the domain name. The Respondent is using the Complainant’s mark to misleadingly divert consumers or to tarnish the BIOCRYST PHARMACEUTICALS, INC. mark.

The Respondent has registered the disputed domain name in order to prevent Complainant from reflecting its mark in the corresponding domain name. The domain name has been registered and is being used in bad faith. The Respondent has registered and used the domain name with full knowledge of the rights of the Complainant in the mark BIOCRYST PHARMACEUTICALS, INC.

B. Respondent

The Respondent is making a legitimate non-commercial use of the domain name for the purpose of bona-fide criticism of the Complainant and his products. The Respondent’s website does not intend to tarnish the Complainant’s mark, nor to disrupt its business. The disputed domain name has not created consumer confusion. Furthermore, the Respondent refutes the allegations that the website is commercial in nature, and it also finds that the Complainant has not provided evidence to support any of its claims.

Finally, the Respondent is asking this Panel to make a finding of reverse domain name hijacking.

6. Preliminary Procedural Issues

First, the Panel must discuss the procedural issue of Complainant’s supplemental filing of July 20, 2005. The Complainant justified the supplemental filing by the change of factual situation, i.e. that the content of the Respondent’s website has substantially changed after the filing of the Complaint, and the need to address the Respondent’s request for reverse domain name hijacking.

There are two issues with respect to this supplemental filing. First, whether and under what circumstances the Rules permit such a filing and, second, if the Rules do allow the filing, whether the applicable conditions, if any, are met in this case.

With respect to the first issue, the Rules provide for the submission of a Complaint by the Complainant (Paragraph 3 of the Rules) and a Response by the Respondent (Paragraph 5 of the Rules). Paragraph 12 of the Rules provides that “[i]n addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties”.

As the panel in Ravissant Limited. v. Vama Inc., Mehul Kotecha, WIPO Case No. D2003-0747 noted: “no party has the right to insist upon the admissibility of additional evidence”. Based on the lack of explicit reference to additional unsolicited filings in the Rules, numerous panels in the past refused to consider supplemental filings, additional evidence and amendments to the Complaint. See, inter alia, The Hun, BV v. Hun.com, WIPO Case No. D2005-0406, Rollerblade, Inc. v. CBNO and Ray Redican Jr., WIPO Case No. D2000-0427; The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447; PepsiCo, Inc. v. “The Holy See”, WIPO Case No. D2003-0229; Deutsche Post AG v. MailMij LLC, WIPO Case No. D2003-0128; Kirkbi AG v. Michele Dinoia, WIPO Case No. D2003-0038; Helsingin yliopiston ylioppilaskunta and HYY Group Ltd. v. Paul Jones, WIPO Case No. D2002-1164; Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin, WIPO Case No. D2002-0635; Victor Chandler Limited and International Sports Marketing Limited v. Thierry Leray, WIPO Case No. D2002-0624; VISIVA S.r.l. v. VISIVA di Rocca Sergio, WIPO Case No. D2001-1130; AT&T Corp. v. Randy Thompson, WIPO Case No. D2001-0830; Avanade Inc. v. Robert Tansey, WIPO Case No. D2001-0824; Rolex Watch U.S.A., Inc. v. Spider Webs, Ltd., WIPO Case No. D2001-0398; Telstra Corporation Limited v. Heaydon Enterprises, WIPO Case No. D2000-1672; Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151; Parfums Christian Dior S.A. v. Jadore, WIPO Case No. D2000-0938; Viz Communications, Inc. v. Redsun dba www.animerica.com and David Penava, WIPO Case No. D2000-0905; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662; AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553; Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416; Plaza Operating Partners, Ltd.; Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Easyjet Airline Company Ltd v. Andrew Steggles, WIPO Case No. D2000-0024.)

Several panels in the past accepted supplemental filings, but as an exception based on the particular circumstances of the case, as well as the quality and importance of the supplemental filings and evidence (see e.g., Wollongong City Council v. Viva La Gong, WIPO Case No. D2003-0113; SES Astra S.A. v. Design Technology Ltd. (t/a Transcom ISP), WIPO Case No. D2002-1078; Nabor B.V. Stanhome S.P.A., v. Organization Francisco Vicente, WIPO Case No. D2000-0757; HER MAJESTY THE QUEEN, in right of her Government in New Zealand, as Trustee for the Citizens, Organizations and State of New Zealand, acting by and through the Honourable Jim Sutton, the Associate Minister of Foreign Affairs and Trade v. Virtual Countries, Inc, WIPO Case No. D2002-0754).

In this Panel’s view, the circumstances of the current case do not reach the required level and therefore do not call for an exception to permit supplemental filings. Basically, a supplemental filing is in order when the Response addresses facts or issues that the Complainant could not have been expected to address in the initial Complaint.

As a matter of policy, and with a view to ensuring that procedures under the Policy proceed diligently, it seems preferable, absent special circumstances, to consider that the record is complete once the Complaint (and, if applicable, a response) has been filed, unless the Center or panel requests additional filings. The Panel will render its decision based solely on the evidence and arguments submitted in the Complaint.

7. Discussion and Findings

In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements is satisfied:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 7.A);

2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 7.B); and

3. The domain name has been registered and is being used in bad faith (see below, section 7.C).

Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.

Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.

A. Identical or Confusingly Similar

This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.

As to the first question, the record confirms that the Complainant is the registered owner of the mark BIOCRYST PHARMACEUTICALS, INC since 2004. According to the record the Complainant has used the mark since 1992.

As to the second question, the Panel finds that the domain name is confusingly similar to the Complainant’s mark. The disputed domain name <biocrystpharmaceuticals.com> consists of the words “biocryst pharmaceuticals” and the generic top-level domain name reference “.com”. The disputed domain name incorporated the words ‘“biocryst” and “pharmaceuticals”, which are the substantial part of the Complainant’s mark BIOCRYST PHARMACEUTICALS, INC. The only difference between the Complainant’s mark and the disputed domain name is the lack of the abbreviation “Inc.” (which stands for ‘Incorporated”) in the domain name. As a rule, when a domain name uses the abbreviated version of the mark that is sufficient to establish the confusing similarity for the purpose of the Policy. See Société pour l’œuvre et la mémoire d’Antoine de Saint Exupéry- Succession Saint Exupéry - D’Agay v. The Holding Company, WIPO Case No. D2005-0165, Banque Saudi Fransi v. ABCIB, WIPO Case No. D2003-0656, Dow Jones & Company, Inc. & Dow Jones LP v. T.S.E. Parts, WIPO Case No. D2001-0381, ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, Worldcup2002.com, W Co., and Worldcup 2002, WIPO Case No. D2000-0034. Furthermore, the distinction between the domain name and the Complainant’s mark is de minimis, and as such is sufficient to prove confusing similarity. See United Airlines, Inc v. United Airline Dot Com, WIPO Case No. D2002-0835, Gardere Wynne Sewell LLP v. DefaultData.com, WIPO Case No. D2001-1093, ARTISTdirect, Inc. v. OLDGlory.com, WIPO Case No. D2000-1367, Lana Marks, Ltd., Inc. v. SYP Web, WIPO Case No. D2000-0304.

The Panel finds for the Complainant on this first part of the test.

B. Rights or Legitimate Interests

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name based on Complainant’s right in the mark BIOCRYST PHARMACEUTICALS, INC. The Respondent contends that he is making a legitimate non-commercial use of the disputed domain name and that he is using the disputed domain name for bona-fide criticism of the Complainant.

According to Paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There are no elements showing that the Respondent is or was commonly known by the domain name. The Respondent is not making or preparing to make a bona fide offering of goods or services. The only option available to the Respondent is thus subparagraph (iii) above.

The use of the domain name to criticize a company is prima facie fair use. The Respondent is entitled to use the Internet to exercise his free speech rights and express his opinion in this way, subject to other laws of course (copyright, fraud, libel, etc.). However, by reflecting the exact trade name and trademark of the Complainant, the Complainant argues that Respondent’s intent is to tarnish the mark. The Panel acknowledges that the distinction between constructive criticism and tarnishment can be a difficult one to draw (See Shell International Petroleum Company Limited v. Alfred Donovan, WIPO Case No. D2005-0538). In this case, the Complainant did not show that the Respondent’s actions are for “commercial gain” or that they are intended to tarnish the Complainant’s mark as required by Paragraph 4(c)(iii) of the Policy.

This case is different from McLane Company, Inc. v. Fred Craig, WIPO Case No. D2000-1455, because the Respondent is not using the Complainant’s mark to criticize the industry in general. Its criticism (on the site to which the domain name resolves) is very clearly directed at the Complainant.

The Panel also noted the comments made by the learned panelist in The Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A&A System Solutions and Alberto Rodriguez, WIPO Case No. D2002-0823, who stated the following: “…while one must concede that criticism per se is not a commercial use and that a criticism site may well be entirely legitimate, an argument can be made that a non controlled use can be anti-commercial when it has the effect of driving regular customers away from one’s business. Having said that, the Panel also noted that the Respondents have used domain names that are identical and substantially similar to Complainants’ trademarks to exercise their freedom of expression and this has the direct consequence of tarnishing Complainants’ trademarks.” See also The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez, WIPO case No. D2003-0166. The instant case is different because the use is apparently “controlled.” It is no doubt possible that uncontrolled use of domain name would indeed cross the above-mentioned border between tarnishment, on the one hand, and constructive criticism, on the other. Once use of domain name crosses that line, perhaps one can no longer claim a legitimate interest under the Policy. The facts in the instant case do not support such a finding, however.

The Panel is also aware of the findings in Monty & Pat Roberts Inc. v. J.Bartell, WIPO Case No. D2000-0300 and Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763, in which it was found that by taking the exact trademark of a company to criticize it actions the “Respondent has impermissibly taken advantage of Complainant’s commercial interests in the mark.” This argument is in some ways similar to the test of initial interest confusion in US trademark law¹. However, that test as this Panel understands it requires a direct or indirect commercial element in the use of the domain name, which, based on the record, is not present in this case. In light the wording of Paragraph 4(c)(iii), absent a direct or indirect commercial element, and in the presence of a genuine, serious free speech site, the use of an exact trademark in a domain name does not, in this Panel’s view, lead one automatically to a finding of illegitimacy under the Policy.

The Panel thus finds that the Respondent has a legitimate interest in the domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website 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 Respondent’s website or location or of a product.

There is no evidence of the situation described in Paragraph 4(b)(i) and Paragraph 4(b)(iv). The Complainant argues that there is evidence of the situations described in Paragraph 4(b)(ii) and Paragraph 4(b)(iv).

The Respondent himself admitted that he has registered several other domain names that incorporate marks of other pharmaceutical companies, which the Complainant takes as evidence of the situation described in Paragraph 4(b)(ii). The Panel is of the view, however, that the admission by the Respondent on its own is not sufficient to establish bad faith. The Respondent’s assertion that his actions are justified by his desire to “inform” the public about alleged issues concerning the Complainant and possibly other companies and a fair use of his free speech right are believable. The Complainant did not discharge his burden of showing that they are motivated by the desire to prevent the Complainant or any other company from reflecting its trademarks in a domain name.

With respect to the situation described in h Paragraph 4(b)(iii), the Panel cannot find that the Respondent registered the disputed domain name for the purpose of disrupting the Complainant’s business. Some panels have held that under the Policy the word “competitor” does not apply only to commercial competitors but also covers any person “who acts in opposition to another, and the context does not imply or demand any restricted meaning such as a commercial or business competitor.” Women on Waves Foundation v. Yale Galanter, WIPO Case No. D2003-0165. See also Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279, The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571, Accord, Gallo v. Hanna Law Firm, WIPO Case No. D2000-0615. While the Respondent’s website does provide information severely critical of the Complainant and its products, that does not make him a competitor even defined very broadly. A “competitor” need not be a direct competitor, and someone may be indirectly in competition with another. However, and with respect, in this Panel’s view serious, genuine, noncommercial criticism is not “competition”.

The Panel thus finds for the Respondent on this part of the test.

8. Decision

For all the foregoing reasons, the Complaint is denied.

Daniel J. Gervais
Sole Panelist

Dated: August 4, 2005