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Teva Pharmaceutical Industries Limited v. BLTC Research [2005] GENDND 292 (22 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Teva Pharmaceutical Industries Limited v. BLTC Research

Case No. D2005-0113

1. The Parties

The Complainant is Teva Pharmaceutical Industries Limited, Petach Tikva, Israel, represented by Eversheds Solicitors, United Kingdom of Great Britain and Northern Ireland.

The Respondent is BLTC Research, Brighton, East Sussex, United Kingdom of Great Britain and Northern Ireland, represented by David Pearce, of the same address.

2. The Domain Name and Registrar

The disputed domain name, <rasagiline.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2005. On February 1, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On February 3, 2005, Go Daddy Software 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 February 16, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 8, 2005. The Response was filed with the Center on March 8, 2005.

The Center appointed Debrett G. Lyons, Nick J. Gardner and Henry H. Perritt, Jr. as panelists in this matter on March 24, 2005. The Panel finds that it was properly constituted. Each member of 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 specialises in the development, production and marketing of generic and proprietary branded pharmaceuticals. In about 1988, it collaborated with others to develop a new drug for the treatment of, amongst other things, Parkinson’s disease. In 1994 this drug was given the International Nonproprietary Name (“INN”), rasagiline. The drug is protected by patents in a number of countries. FDA approval for the drug which should be obtained during the first half of 2005. Rasagiline is to then be marketed under the names AGILECT in the US and AZILECT in Europe.

The INN system is operated by the World Health Organization (“WHO”) to identify pharmaceutical substances or active pharmaceutical ingredients. Each INN is unique and provides health professionals with a universally available designated name to identify pharmaceutical substances.

The names of pharmacologically related substances use a common “stem” so that health professionals will recognise that any particular substance belongs to a group of substances having similar pharmacological activity. Rasagiline is a specific inhibitor for which the stem is “giline”.

The Domain Name was registered to the Respondent on February 12, 2000. The Respondent is an unincorporated organisation, based in the UK. According to its website “www.bltc.com”, ‘BLTC’ is an acronym for “Better Living Through Chemistry”. The website states that the Respondent was founded in 1995, to promote, amongst a variety of other things, “ the abolition of the chemical substrates of suffering in all sentient life…”. At the site to which the Domain Name resolves, the Respondent provides detailed information about ragasiline and a host of other drugs.

On July 8, 2004, the Complainant sent an email to the Respondent’s principal, Mr. David Pearce, which stated “…Hello, My associate is interested in purchasing your domain name. Are you interested in selling it?” By return, Mr. Pearce replied “..Hi Joanne It’s 25k very best wishes from the UK Dave.” On July 26, 2004, the Complainant’s US attorneys offered to acquire the Domain Name from the Respondent for $4,000 United States dollars. Mr. Pearce did not accept that offer. On October 26, 2004, the Complainant’s representative offered 5,000 United States dollars but this too was rejected. On November 26, 2004, the Complainant’s representative sent a further email to Mr. Pearce in which it was suggested that the parties should try to reach an amicable settlement otherwise the Complaint would be filed. No further meaningful dialogue took place.

The Complainant now seeks transfer of the Domain Name.

5. Parties’ Contentions

Both parties present lengthy arguments which are summarized in essential detail below.

a. Complainant

Identical or Confusingly Similar to a Trademark or Service Mark in which the Complainant has Rights

The Complainant argues that the Domain Name is identical to the name, rasagiline, it being usual to ignore the ‘.com’ suffix which is inevitable in the context of a domain name.

The Complainant does not directly assert rights in a mark identical to the Domain Name, but claims a de facto right to the name, rasagiline. It states that it is the largest generic pharmaceutical company in the world and has, over the past 16 years, invested more than $100 million developing the drug. The Complainant concedes that whilst rasagiline is an INN and, as such, cannot be registered as a trademark, Teva is the only entity which has control over the sale of any products which contain rasagiline and is the only entity through which rasagiline will be supplied. It argues that this unique position arises through its exclusive licence agreements with others, its patent protection, and the terms of the regulatory approval of rasagiline. As a result, the Complainant reasons that it is exclusively associated with rasagiline in the eyes of the public, including health professionals and sufferers of Parkinson’s disease and for all practical purposes, rasagiline should be regarded as an unregistered mark in which it plainly has substantial rights.

The Complainant cites Boehringer Ingelheim Corporation v. Kumar Bhatt, NAF Case No. FA0006000095011). In that case, the complainant asserted that it had rights in names:

telmisartan - which it sold under its ‘Micardis’ trademark; and

meloxicam - which it sold under its ‘Mobic’ trademark.

The complainant sought the transfer of <telmisartan.com> and <meloxicam.com>. Meloxicam is an INN. The respondent alleged that he was assisting the public with numerous sites he had developed and that he had registered the names with the intent of creating a centralised reference site for information about medication overdose. In that case, the complainant argued that it had rights in the names as it had invested substantial amounts of money developing and marketing products which contained these active ingredients; had a US patent for products which contained telmisartan which gave it exclusive rights to such products; and was the only entity approved to market telmisartan and meloxicam by the FDA.

It was found that the complainant had superior rights to those of the respondent in the domain names and the names were transferred to the complainant. This case is considered further below.

The Respondent has no rights/legitimate interests in the Domain Name

The Complainant contends that neither the Respondent nor Mr. Pearce has any legitimate interest in the Domain Name: they are not known by the name rasagiline nor do (or could) they trade in it.

The Complainant suggests that a number of factors combine to show that the pattern of domain name registrations by the Respondent/Mr. Pearce, whilst purporting in some cases to be bona fide sites providing information to the public, is no more than a particularly sophisticated form of cyber-squatting. In particular;

- The Respondent/Mr. Pearce have registered over 90 names incorporating INNs. The Respondent/Mr. Pearce cannot have a genuine interest in operating sites under all the names, it is said;

- The lack of any bona fide use of the names suggests that the only reason the Respondent/Mr. Pearce have taken the names is to prevent other companies with better rights than them from using the names;

- The numerous inter-connected links at the Respondent’s website is an elaborate sham intended to make recovery of names under the UDRP more difficult;

- Mr. Pearce’s willingness to sell the Domain Name for £25,000 supports the assertion that he has no genuine interest in the name.

The Domain Name was registered and is being used in bad faith

The Complainant reasons that on February 12, 2000, when the Domain Name was registered, rasagiline had already been certified as an INN and the Respondent/Mr. Pearce clearly knew of the Complainant’s development of rasagiline at that time. As the Respondent/Mr. Pearce are not connected to the development of rasagiline, the Domain Name was therefore registered in bad faith.

In the Complainant’s submission, numerous instances of bad faith use under the Policy are claimed, the most salient being:

- Paragraph 4(b)(i) (to sell the Domain Name for a profit). At that time that the Respondent registered the Domain Name, the development of rasagiline was well advanced. Mr. Pearce then offered to sell the Domain Name for £25,000 which is greatly in excess of the costs incurred in relation to the registration of the Domain Name.

- Paragraph 4(b)(ii) (to prevent Complainant from registering the Domain Name and the Respondent has engaged in a pattern of such conduct). At the time the Respondent registered the Domain Name, it was clearly aware of the Complainant’s rights in the name, rasagiline, and it registered the Domain Name to prevent the Complainant from registering it.

- Paragraph 4(b)(iv) (to attract, for commercial gain, users to its websites by creating likelihood of confusion). The Complainant has been developing the drug for 16 years and rasagiline is now associated with it by the public and by health professionals. Health professionals and sufferers of Parkinson’s disease will go to the website in the belief that they will be able to obtain authoritative information about the drug from the developer and/or supplier of it. The site contains misleading and inaccurate information about rasagiline and provides information about the drug in a manner which may undermine the confidence of potential users of rasagiline and in the Complainant. Accordingly, by the Respondent’s use of the Domain Name, there is a legitimate and serious risk that sufferers of Parkinson’s disease will be harmed. The Complainant here relies on statements in the Boehringer Ingelheim Corporation v. Kumar Bhatt decision, referred to above.

In addition, a reverse whois search conducted by the Complainant against David Pearce revealed 905 domain names, most of which are, in some way, connected to the Respondent/Mr. Pearce/Knightsbridge Online: they are either the registrant, the administrative or technical contacts for many of the names. Mr. Pearce has also been involved in other UDRP proceedings (Countryside Alliance Limited v. David Pearce, Anti Censorship Alliance, WIPO Case No. D2001-0862; Meat & Livestock Commission v. David Pearce, AKA OTC/The Recipe for BSE, WIPO Case No. D2003-0645; The Chancellor, Masters and Scholars of the University of Oxford v. CQ,,WIPO Case No. D2001-0920), the details of which need not be set out here.

b. Respondent

(i) Whether the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The Respondent retorts in its reply that INNs exist in the public domain and fall outside the scope of the UDRP. It states that <rasagiline.com> is not identical or confusingly similar to any trademark or service mark in which the Complainant might have rights as it in no way resembles the Complainant’s brand names “Agilect” or “Azilect”. Unlike trademarks, international non-proprietary names of pharmaceuticals are generic terms that are globally recognized and free for all to use. They are the clearest possible examples of names that fall outside the scope of the UDRP, says the Respondent.

The Respondent takes the view that the decision in Boehringer Ingelheim Corporation v. Kumar Bhatt can be distinguished (see discussion below).

The Respondent goes on to argue that if international non-proprietary names are not a safe generic choice of URL, then just what sort of website address is immune from challenge under the UDRP? Unlike international non-proprietary names, most generic and descriptive terms in our language do not have their non-proprietary status enshrined by international convention.

(ii) Whether the Respondent has rights or legitimate interests in respect of the domain name

The Respondent was founded in 1995. It aims to promote the relief of all kinds of suffering via biotechnology. The Good Drug Guide grew out of an original extended review essay written in 1997 entitled, Clinical Advances In Monoamine Oxidase Inhibitor Therapies. The Respondent advocates a free speech policy, stating that what is critical to patient safety is to have more readily accessible independent sources of information about drugs and medicines online.

(iii) Whether the domain name has been registered and is being used in bad faith

The Respondent explains that it also runs a web hosting service and is an authorized reseller for the domain registrar Tucows. It says that the fact that many of the domains of other registrants which appear on its server have a Knightsbridge technical address but this does not mean they are owned or run by it. It does concede ownership of many domains, but explains that these relate to generic names of drugs or classes of drug. The majority of the names/sites have no conceivable commercial or resale value, it argues.

So far as the offer to part with the Domain Name for £25,000 is concerned, the Respondent states: “…..we wouldn’t allow the use of our domains to promote the secondary market; but if a company can expect to make hundred of millions of dollars annually in profits in excess of its drug development costs without being guilty of “profiteering”(sic), then why can’t we plough a windfall back into ethical projects we care about?”.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar to a Trademark or Service Mark in which the Complainant has Rights

The disputed Domain Name is identical to rasagiline, save the irrelevant “.com” suffix.

Paragraph 4(a)(i) of the Policy then requires a “Trademark or Service Mark” in which the Complainant has rights. Those rights might have arisen through use and reputation or through registration. This raises a fundamental issue which is at the heart of this dispute and which may be key to this decision – is an INN a trademark within the meaning of the Policy?

So far as the Panel is aware this important issue has only been considered in one previous decision under the Policy (see below) although it has been considered in two WIPO discussion processes where the Policy has been considered (see below).

The Complainant concedes that “Each INN is a unique name that is recognized throughout the world and is public property”. It argues that it has a monopoly in the supply and distribution of rasagaline (by virtue of its patent rights, its commercial arrangements and the applicable regulatory approvals) and hence states that “for all practical purposes, rasagaline can be regarded as an unregistered mark of Teva in which it plainly has substantial rights”.

The precise nature of an INN is described by the WHO as follows:

“An International Nonproprietary Name (INN) identifies a pharmaceutical substance or active pharmaceutical ingredient by a unique name that is globally recognized and is public property. The system of recommended International Nonproprietary Names was initiated in 1950, by a World Health Assembly resolution (WHA 3.11), and has been in operation since 1953. It is aimed at providing health professionals with a clear mechanism of identification for the safe prescription and dispensing of medicines to patients, and to allow health professionals and scientists worldwide to communicate and exchange information in an unambiguous manner.”

and

“The World Health Organization collaborates closely with INN experts and national nomenclature committees to select a single name of worldwide acceptability for each active substance that is to be marketed as a pharmaceutical. To avoid confusion, which could jeopardize the safety of patients, trade-marks should neither be derived from INNs nor contain common stems used in INNs.”

International conventions mean that all countries which are members of the WHO are required to implement arrangements which prevent INNs from being registered as trademarks. Thus the United Kingdom Trademarks Registry, for example, will reject applications for trademarks for pharmaceuticals and related products which correspond to INNs. It does so on the basis that INNs cannot by definition be capable of distinguishing a particular pharmaceutical supplier’s goods.

The advent of the Internet and the availability of domain names on a “first come first served” basis does however enable anybody to obtain a registration for a domain name which corresponds to an INN. As described below it has been recognized that this may be at odds with the fundamental nature of the INN system.

In June 1998, WIPO undertook an international process to develop recommendations concerning the intellectual property issues associated with Internet domain names, including domain name dispute resolution. The WIPO Internet Domain Name Process was finalized on April 30, 1999, with the publication of the Final Report. The recommendations contained in the Final Report were made available to the Internet Corporation for Assigned Names and Numbers (ICANN), that manages the policy and technical aspects of the Internet Domain Name System. They were also made available to the Member States of WIPO for their consideration. The Report reflected submissions that had been made by various interested parties in relation to the systems in place for the allocation of domain names. It recorded concerns that had been submitted by the WHO that it was undesirable for INNs to be available as domain names, as the INN should be freely available for all to use and not, in the form of a domain name, be owned by any one party. The Report explored two eventual solutions. The first was to exclude such names from registration. The second was to extend the definition of abusive registration to include INNs. A recommendation was made that ICANN take steps to address this problem.

On June 28, 2000, WIPO received a letter of request from the Government of Australia and 19 of its other Member States to initiate a Second WIPO Process to address certain intellectual property issues relating to Internet domain names, that remained to be considered after the first WIPO Internet Domain Name Process. In response to this request, on July 10, 2000, WIPO commenced the Second WIPO Internet Domain Name Process. In September 2001 WIPO published the Report of the Second WIPO Internet Domain Name Process. This contained (amongst other matters) further and more detailed consideration of the issues relating to INNs. This repeated the concerns expressed by WHO and concluded with a recommendation that ICANN should take steps to require registrars to refuse to register INNs as domain names. The Report discussed, but did not recommend, the alternative proposal of amending the UDRP. In doing so it noted that “the current UDRP does not cover INNs”. The Report also recommended that any INNs already registered as domain names should be cancelled.

To date, these recommendations have not been implemented.

Taking all of this into account the Panel concludes that an INN is not a trademark. It is, and had been deliberately designed to be, a generic and non-proprietary term for describing a particular pharmaceutical. As such it falls outside the scope of the Policy. The Panel does not accept that the Complainant’s rights as detailed in the Complaint and summarized above amount to a “Trademark” within the meaning of the Policy. The Panel notes that the Complainant’s own submission is not that it actually has a trademark, but that it has rights which “for all practical purposes” can be regarded as a trademark. The Panel doubts that this correct – for example suppose a third party were to manufacture rasagiline in a jurisdiction where the Complainant had no patent protection (or where its patent protection had expired) it does not seem to the Panel that it is likely that the Complainant could successfully bring trademark proceedings. In any event even if, contrary to this view, the Complainant’s rights do function “for all practical purposes” as a trademark, the Panel does not consider that this amounts to an actual trademark, which is required in order for the Policy to apply. The Panel notes that its view in this regard is consistent with the WIPO Reports referred to above which conclude that INNs fall outside the present UDRP.

Whether this is desirable is debatable, as the WIPO Reports acknowledge, but that is not a matter for this Panel.

The Panel has carefully considered the decision in Boehringer Ingelheim Corporation v. Kumar Bhatt, NAF Case No. FA 0006000095011, which is relied upon by the Complainant. That case concerned three domain names, one of which corresponded to a registered trademark (Micardis) and two of which corresponded to INN’s (telmisartan and meloxican). The panel concluded that all three domains should be transferred to the Complainant pharmaceutical company which, it appears, had exclusive rights to market the products which corresponded to the INNs – such products were marketed under the Micardis trademark in the case of telmisartin and under the name Mobic in the case of meloxican.

The decision in respect of the domain name <micardis.com> which corresponded to a registered trademark is straightforward. The decision in respect of the domain names corresponding to the INNs is not explained in any detail. In particular the decision does not contain any analysis or discussion as to the fact that the entire system of INNs is based upon the fundamental premise that INNs are non-proprietary in nature. Indeed the panel in the Boehringer case finds that the Complainant had received approval from the WHO for these terms as “tradenames” and that the Complainant had “patent rights in these names”, neither of which, to this Panel, appear to be an accurate assessment of the nature of INNs. This Panel respectfully declines to follow this decision.

Accordingly the Panel concludes that the Complainant does not have an applicable trademark within the meaning of paragraph 4(a) of the Policy. The Panel having come to this finding, it is unnecessary to consider and decide on the other two principal elements under the Policy that the Complainant would need to establish in order to succeed.

B. Rights or Legitimate Interests

For the reasons given above, the Panel is not required to make a finding under this head.

C. Registered and Used in Bad Faith

For the reasons given above, the Panel is not required to make a finding under this head.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Debrett G. Lyon Presiding Panelist
Nick J. Gardner Panelist	Henry H. Perritt, Jr. Panelist

Dated: April 22, 2005