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Low testosterone case: Pharma corp lost #UDRP against Aveed.com

Endo Pharmaceuticals Inc. is a pharmaceutical company that since 2014 has provided its injectable testosterone replacement therapy for men’s health under the trademark AVEED.

Meanwhile, the domain Aveed.com was registered in 2005, predating the mark by almost a decade. Despite that, they went ahead and filed a UDRP while they operate from aveedusa.com.

The Respondent in this UDRP acquired the domain in 2021 on the secondary market of expired domains, paying $1,025 dollars for it. Source: NameBio.

According to the Respondent, Aveed is a common first name in Iran, which translates to “wisdom, intelligence, or sense.”

Respondent states in his Declaration that he often registers “common word domain names because they best fulfill the purpose of a domain name which is to be easy to remember” and, hence, “commercially valuable”. Respondent states that he has registered other domain names reflecting Greek, Persian, or Arabic first names, such as “aveea.com”, “aradia.net”, and “ayrman.com”. Respondent also states in his declaration that he was not aware of Complainant when registering the Domain Name.

When contacted by the Complainant, the Respondent sought to get $3,000 dollars in exchange. The WIPO Panel did not find this price to be exuberant:

The Panel also observes that Respondent paid USD 1,025 for the Domain Name at an open auction, and responded to an unsolicited offer of USD 2,500 by asking for a payment closer to USD 3,000. In the circumstances of this case, and given Respondent’s stated investment strategy vis-à-vis domain names, the Panel cannot conclude that Respondent’s conduct runs afoul of the above-quoted Policy paragraph 4(b)(i).

Note: The Respondent’s counsel was ESQwire, which just so happens to be a premium sponsor of DomainGang. This case’s particulars were acquired from the daily UDRP report.

Final decision: Deny transfer of Aveed.com to the Complainant.

The domain transfer was denied.

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Endo Pharmaceuticals Inc. v. Tanzim Ahmad
Case No. D2021-0511

1. The Parties

Complainant is Endo Pharmaceuticals Inc., United States of America (“United States”), represented by Cozen O’Connor LLP, United States.

Respondent is Tanzim Ahmad, United States, represented by ESQwire.com PC, United States.

2. The Domain Name and Registrar

The disputed domain name <aveed.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2021. On February 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 23, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 24, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 24, 2021.

The Center verified that the Complaint, together with the amended Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “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 the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 17, 2021. The Response was filed with the Center March 17, 2021.

The Center appointed Robert A. Badgley, Douglas Clark, and The Hon Neil Brown Q.C. as panelists in this matter on April 9, 2021. 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

Complainant describes itself as “a global specialty pharmaceutical company focused on developing and delivering high-value branded products in the area of men’s health, pain management, urology, orthopedics, endocrinology and medical aesthetics”. According to Complainant, since 2014 it has “provided its injectable testosterone replacement therapy for men’s health” under the trademark AVEED. Complainant states that the AVEED product cannot be sold via the Internet, but must be administered at a doctor’s office, a clinic, or a hospital. Complainant is also the exclusive distributor of the AVEED product. Complainant promotes its AVEED product within the United States via its website located at “www.aveedusa.com”.

Complainant holds various trademark registrations for the mark AVEED, including United States Patent and Trademark Office (“USPTO”) Reg. No. 4,538,915, registered May 27, 2014, for the word mark AVEED in connection with “hormonal preparations” with a March 9, 2014 date of first use in commerce, and USPTO Reg. No. 4,794,099, registered August 18, 2015, for the design mark AVEED in connection with “providing online healthcare information on the subject of testosterone deficiency” with a March 9, 2014 date of first use in commerce.

Complainant asserts that the AVEED mark has “become well known throughout the pharmaceutical industry and in the minds of the public”. There is no evidence annexed to the Complaint which addresses the extent of the AVEED mark’s renown.

The Domain Name was first registered on December 12, 2005, and was acquired by Respondent on January 16, 2021. Respondent paid USD 1,025 for the Domain Name at an open auction of expired domain names.

Respondent states, in a sworn Declaration annexed to the Response:

“I was attracted to and purchased the Disputed Domain solely because it is a female Persian first name with inherent value. The name ‘Aveed’ roughly translates to ‘wisdom, intelligence, or sense’ in English. (…) As a Persian first name, I believed that the Disputed Domain was subject to third-party use and was a valuable purchase.”

Respondent states in his Declaration that he often registers “common word domain names because they best fulfill the purpose of a domain name which is to be easy to remember” and, hence, “commercially valuable”. Respondent states that he has registered other domain names reflecting Greek, Persian, or Arabic first names, such as “aveea.com”, “aradia.net”, and “ayrman.com”. Respondent also states in his declaration that he was not aware of Complainant when registering the Domain Name.

The Domain Name does not resolve to an active website.

On January 21, 2021, five days after Respondent acquired the Domain Name, Complainant’s counsel sent a cease-and-desist letter to the Registrar, since Respondent’s identity and contact information were hidden by a privacy service. The letter asserted that the registration of the Domain Name was in violation of Complainant’s trademark rights and federal trademark law.

Complainant’s counsel conveyed through the Registrar’s domain name brokerage service an offer to pay USD 2,500 for a transfer of the Domain Name to Complainant. Respondent told the broker that he would consider an offer “in the 3k range”.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has established all three elements required under the Policy for a transfer of each of the Domain Names.

B. Respondent

Respondent denies having registered the Domain Name in bad faith, and asserts that his “investment strategy” of registering common word or first-name domain names has been recognized by numerous UDRP panels as “a legitimate business activity”.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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

The Panel concludes that Complainant has rights in the trademark AVEED through registration demonstrated in the record. The Panel also concludes that the Domain Name is identical to the AVEED mark.

Complainant has established Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, 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.

In view of its conclusion below regarding the Policy’s “bad faith” element, the Panel need not decide whether Respondent lacks rights or legitimate interests in respect of the Domain Name. With regard to Respondent’s argument that registering domain names reflecting common words or first names, the Panel will not render a blanket statement that such conduct is per se a legitimate business activity. Each case must be considered on its own merits. In this case, the record is quite bare, and hence the Panel is not inclined to pass judgment on Respondent’s alleged legitimate interest when it is not necessary to the disposition of this case.

C. Registered or Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:

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

(ii) that 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) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Complainant has failed to carry its burden of proving that the Domain Name was registered and is being used in bad faith. Respondent denies having targeted Complainant when registering the Domain Name, and Respondent presents an explanation of his motives vis-à-vis the Domain Name. The foregoing denial and explanation are not implausible on their face, and Complainant bears the burden of providing evidence on which to overcome Respondent’s stated position.

As noted above, Complainant provided absolutely no evidence to support its allegation that AVEED is a well-known trademark. The Panel observes that the AVEED product appears to be a niche product (male hormone replacement), and it has been on the market for just over seven years. The Panel also notes that five-letter domain names, especially when they have vowels and can be pronounced easily, have inherent value regardless of whether they also reflect a trademark.

On the limited record presented here, even when supplemented by common knowledge upon which the Panel members may draw, there is simply no basis upon which the Panel may conclude that Respondent more likely than not had Complainant’s AVEED trademark in mind when registering the Domain Name.

The Panel also observes that Respondent paid USD 1,025 for the Domain Name at an open auction, and responded to an unsolicited offer of USD 2,500 by asking for a payment closer to USD 3,000. In the circumstances of this case, and given Respondent’s stated investment strategy vis-à-vis domain names, the Panel cannot conclude that Respondent’s conduct runs afoul of the above-quoted Policy paragraph 4(b)(i).

Finally, with respect to Complainant’s argument that Respondent’s “passive holding” of the Domain Name may constitute bad faith pursuant to the seminal decision in Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the Panel rejects this argument. The Telstra decision is typically (though not always) reserved to famous trademarks, and, again, there is no evidence here that AVEED enjoys such renown. Moreover, unlike the respondent in Telstra, Respondent in the instant case has come forward and explained, under oath, why he registered the Domain Name.

Complainant has not established Policy paragraph 4(a)(iii). The Complaint fails.

7. Decision

For the foregoing reasons, the Complaint is denied.

Robert A. Badgley
Presiding Panelist

Douglas Clark
Panelist

The Hon Neil Brown Q.C.
Panelist
Date: April 19, 2021


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