ARBITRATION AND MEDIATION CENTER
ADMINISTRATIVE PANEL DECISION
A. Nattermann & Cie. GmbH and Sanofi-aventis
v. Watson Pharmaceuticals, Inc.
Case No. D2010-0800
1. The Parties
The Complainants are A. Nattermann & Cie. GmbH of Cologne, Germany, and Sanofi-aventis of Paris, France, represented by Selarl Marchais De Candé, France.
The Respondent is Watson Pharmaceuticals, Inc. of California, United States of America (“USA”), represented
by Forsyth Simpson Solicitors, United Kingdom of Great Britain and Northern Ireland (“UK”).
2. The Domain Name and Registrar
The disputed domain name <ferrlecit.com> (the “Domain Name”) is registered with MarkMonitor Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2010. The
Center transmitted its request for registrar verification to the Registrar on May 19, 2010. The Registrar replied the same day, confirming that it had received a copy of the Complaint, that it was the registrar for the Domain Name, that the registration agreement was in English and that it had placed a registrar lock on the Domain Name in compliance with the Uniform Domain Name Dispute Resolution Policy (the ”Policy” or “UDRP”). The
Registrar also provided the full contact details held on its WhoIs database in respect of the Domain Name; in relation to the registrant these identified the contact as “Domain Manager Watson Pharmaceuticals, Inc.”
Notwithstanding the reference in this entry to “Domain Manager”, the Panel considers that the Respondent is
correctly identified as Watson Pharmaceuticals, Inc., as stated in both the Complaint and the Response.
The Center verified that the Complaint satisfied the formal requirements of the UDRP, 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 21, 2010. In accordance with paragraph 5(a) of the Rules, the due date for Response was June 10, 2010. The Response was filed with the Center June 10, 2010. In it the Respondent elected to have the dispute decided by a three-member panel.
The Complainant submitted observations on the Response to the Center by email of 14 June, 2010. In accordance with the Center‟s normal practice, these observations were forwarded to the Panel following its appointment for consideration in its discretion.
The Center appointed Jonathan Turner, M. Scott Donahey and Warwick Smith as panelists in this matter on July 26, 2010. 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 paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
4. Procedural Ruling
The observations on the Response sent by the Complainant to the Center do not contain any request by the Complainant to admit them as an additional submission but the Panel has nevertheless considered whether it should do so.
Whether supplemental submissions can and should be admitted in proceedings under the UDRP has been considered in many cases. In The E.W. Scripps Company v. Sinologic Industries, WIPO Case
No. D2003-0447, the Panel summarised the position as follows:
“The principles adopted and confirmed in these decisions are that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimise prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.
These principles are based on the purpose of the Policy and Rules of providing an expeditious and relatively inexpensive procedure for determining a certain type of domain name dispute, in which each party is entitled to make just one submission. One of the matters which the Panel has to bear in mind is that the admission of a further submission from one party may lead the other party to submit a further document in reply, which may lead to a further submission by the first party, and so on, thereby compromising the procedural economy sought to be established by the Policy and the Rules.”
In this case, the Panel considers that the first point in the Complainant‟s observations on the Response is a
repetition of a point already made in the Complaint, and that the third point is one which the Complainant could and should have made in the Complaint. The Panel therefore does not admit these points.
By contrast, the second point of the Complainant‟s observations responds to a statement made in the
Response which, in the Panel‟s view, the Complainant could not reasonably have been expected to anticipate. The Panel therefore admits this point.
The Respondent has not asked for an opportunity to reply to the Complainant‟s observations. The Panel has
nevertheless considered whether the Respondent should be invited to do so. Given the limited significance of the only point in the Complainant‟s observations which the Panel is admitting, the Panel considers that it is not necessary or desirable to invite any further submission by the Respondent.
5. Factual Background
The first Complainant is a subsidiary of the second Complainant which is the parent of a leading pharmaceutical group. The first Complainant owns the trademark FERRLECIT which is used for an intravenous treatment of iron deficiency. The trademark is registered in the name of the first Complainant in the USA and other countries.
The Respondent is also a pharmaceutical company.
In 1993 the first Complainant or a predecessor entered into a distribution agreement granting the Respondent an exclusive licence to import, use and sell the product in the USA, Canada and Greece, and a trademark agreement granting the Respondent an exclusive licence to use the FERRLECIT trademark for the product in the same territory.
The Respondent registered the Domain Name in 1999 and used it to promote the FERRLECIT product.
An arbitration between the parties in Switzerland in 2009 resulted in an award which declared that these agreements would expire on December 31, 2009 and ordered the Respondent to cease selling the product after that date and to transfer various documents and materials to the Complainant promptly following that date. However, it appears that the award (at least as quoted in the provided pleadings) did not refer to the Domain Name.
The Respondent has retained the Domain Name following the expiry of the agreements and has directed it to a web page which states that the Respondent no longer markets FERRLECIT and that this product is now being marketed by the second Complainant. The web page goes on to invite readers to submit contact details to receive information from the Respondent about alternatives and to promote an alternative intravenous remedy for iron deficiency.
The second Complainant asked the Respondent to return the Domain Name by letter of January 7, 2010. Following several reminders the Respondent replied on April 21, 2010, offering to transfer it to the second Complainant for $25,000.
6. Parties’ Contentions
The Complainants contend that the Domain Name is identical to the trademark FERRLECIT registered in the name of the first Complainant in the USA and other countries.
The Complainants submit that the Respondent has no rights or legitimate interests in respect of the Domain Name. They state that it is not commonly known by the Domain Name and that it has no current licence, contract or consent to use the FERRLECIT mark in a domain name. The Complainants acknowledge that the parties signed a distribution agreement in 1993 allowing the Respondent to market FERRLECIT in the USA and other countries, but state that this agreement has now terminated, as confirmed by the arbitration award.
The Complainants allege that the Domain Name was registered and is being used in bad faith. They note that the second Complainant requested the return of the Domain Name on January 7, 2010, but (despite repeating the request) did not receive an answer from the Respondent until April 21, 2010, when the latter offered to sell the Domain Name for $25,000. The Complainants submit that the Respondent‟s offer to sell the Domain Name
for a sum greatly exceeding the expenses incurred in registering it shows that it was registered for the purpose of selling, renting or otherwise transferring the Domain Name to the owner of the mark for valuable consideration in excess of the Respondent‟s out-of-pocket costs directly related to the Domain Name. The
Complainants accordingly rely on paragraph 4(b)(i) of the UDRP.
The Complainants also note that the Respondent is using the Domain Name to promote a competing product and to build a database for its own commercial benefit. The Complainants submit that the Respondent has
intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant‟s mark as to the source, sponsorship or affiliation of the website.
The Complainant requests a decision that the Domain Name be transferred to A. Nattermann & Cie. GmbH.
The Respondent does not make any submission in response to the Complainants‟ contention that the Domain
Name is identical to the mark FERRLECIT in which the first Complainant has rights.
The Respondent submits that it used the Domain Name in connection with a