Automated Summary
Key Facts
The expert ruled that B D Healthcare Ltd's registration of clarityn.co.uk was abusive under Nominet policy because it was confusingly similar to Schering-Plough Corporation's Clarityn trademark and used to divert traffic to the Respondent's Chemist Direct website. The decision ordered the domain transferred to Schering-Plough Corporation after finding the registration and use unfairly disrupted the Complainants' business.
Issues
- The Complainants established rights in the Clarityn trademark through UK registration since 1985 and US federal registrations since 1988, with extensive use in the pharmaceutical industry including over 40 million units sold in the US in 2006 and significant marketing expenditures.
- The Respondent registered clarityn.co.uk and redirected users to Chemist Direct UK, selling Clarityn products without authorization. The Expert determined this constituted an abusive registration under the Policy by misleading users into believing the site was affiliated with the Complainants, causing commercial confusion and unfair advantage.
Holdings
The Expert determined that the Respondent registered and used the domain name clarityn.co.uk in an abusive manner, taking unfair advantage of the Complainants' trademark rights. The Respondent redirected traffic from the domain to its Chemist Direct website for commercial gain, causing consumer confusion by mimicking the Complainants' official site. The Expert ordered the domain transferred to the Lead Complainant as an abusive registration under the Policy.
Remedies
The Expert directs that the Domain Name, clarityn.co.uk, be transferred to the Lead Complainant (Schering-Plough Corporation) unless the Lead Complainant informs Nominet within 10 days of this decision that the transfer should be made to one of the other Complainants.
Legal Principles
- The Expert applied the civil standard of proof, requiring the Complainants to establish their case on the balance of probabilities as mandated by the Policy for disputes under the Nominet DRS. This standard was central to evaluating the evidence presented by both parties.
- The Expert relied on two key presumptions: (1) that copying a trademark creates a presumption of secondary meaning and likelihood of confusion (Osem Food Ind Ltd v Sherwood Foods Inc), and (2) that for well-known marks, the absence of a license or permission creates a presumption that no legitimate use of the domain name can be claimed (Guerlain S.A. v PeiKang). These presumptions were critical to the finding of abusive registration.
Precedent Name
- Seiko UK Limited v Designer Time
- Koninklijke Philips Electronics N.V. v. Nick French
- Osem Food Ind Ltd v Sherwood Foods Inc
- Guerlain S.A. v PeiKang
- Schering-Plough Corporation et al v B D Healthcare Ltd
- Dell Inc. v. Ronnie Lamont/PC Warehouse
- Brookfield Com, Inc v West Coast Ent Corp
Cited Statute
Lanham Act
Judge Name
Steve Ormand
Passage Text
- In light of the foregoing findings, namely that the Complainants have Rights in a name which is identical to the Domain Name, and the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name, clarityn.co.uk, be transferred to the Lead Complainant unless the Lead Complainant informs Nominet within 10 days of this decision that the transfer should be made to one of the other Complainants.
- The Expert finds that the Respondent registered the Domain Name in a manner which at the time took unfair advantage of the Complainants' Rights and that the Domain Name, in the hands of the Respondent, is an Abusive Registration.