While the Disputed Domain Name incorporates the Complainant's registered trade mark PROAIR, the additional word Albuterol is descriptive of the name of the active drug, namely Albuterol sulfate. Indeed the online USPTO records show that other related marks and applications of the Complainant disclaim any exclusivity in that word for the same reasons. The Panel finds the Disputed Domain Name to be similar to the Complainant's trade mark, based on the inclusion of the mark. Therefore, the Complainant has, to the satisfaction of the Panel, shown the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the UDRP).
The Panel accepts the Complainant’s assertions that the Respondent is not affiliated with nor authorised by the Complainant. However, this is not the end of the inquiry. Other legitimate uses would include bona fide offering based on descriptive and nominative honest use under paragraph 4(c)(i) of the UDRP.
The Panel could not access any of the pharmacy sites in issue other than www.trustedgenerics-online.com (visited 20 January 2015) and that site advertised many medicines and a search on it gave the result that they did not carry PROAIR at this time but suggested a form could be completed requesting it. That site had the following notice:
“Some products available in our pharmacy require a valid prescription. If the law of your country or territory requires you to obtain prescription for any of the products which you plan to purchase you will be asked by our customer support representative to send it after you complete the order. Please be informed that we require a valid prescription for your order. You should fax it to or send a scan copy to the email. Please be advised that in case you don't provide a valid prescription within a three-day period your order will not be processed. We strongly recommend you to consult your physician, prior to ordering, to be sure that the medicine you are about to order, is the one you need.”
The way back machine had a listing for and archived pages for www.myskypharmacy.com (as of 18 December 2014) and while that site then listed alternative products, it did not appear to list PROAIR. The pages with the fine print were not archived so it is not clear what notices were given.
This is not therefore a simple reseller case where the pharmacies are re-selling the genuine PROAIR product. Subject to the issues below, if this was a case where the pharmacies were selling the genuine product, even together with other competing products (just as offline pharmacies do), then this would come very close to honest descriptive and nominative use in the Panel's view.
The spam trackers site relied on in evidence led to a press release from the FDA and also had a link to this guidance: http://www.fda.gov/
Drugs/ResourcesForYou/Consumers/BuyingUsingMedicineSafely/BuyingMedicinesOvertheInternet/BeSafeRxKnowYourOnlinePharmacy/default.htm. The FAQ at that site include the following:
“3 To identify a safe online pharmacy, make sure that the online pharmacy:
Requires a valid prescription
Provides a physical address in the United States
Is licensed by the state board of pharmacy in your state and the state where the pharmacy is operating
Has a state-licensed pharmacist to answer your question
4. Is it okay to buy prescription medicine online from other countries?
FDA does not have jurisdiction of prescription medication from other countries; therefore, FDA cannot guarantee the safety or effectiveness of those medication….”
See also:
“7. Why are consumers increasingly turning to online pharmacies for their medicines? The Internet provides consumers with instant access to information and services, including online pharmacies for prescription medicines. Health insurance plans are encouraging home delivery of maintenance medications and use of pharmacy services online. As the cost of prescription medicine continues to increase, consumers may look for cost savings from online pharmacies to afford their medicines. In addition, many consumers value the convenience and privacy of purchasing their medicines online. For those consumers that may be considering purchasing from online sources that are not associated with health insurance plans or local pharmacy, these consumers need to know the risks of buying from fraudulent online pharmacies.”
It is very important to recognise that online pharmacies represent a new business model and this development may be regarded as disruptive but it is not per se illegal.
Purchases and imports of medicines from online foreign pharmacies for limited amounts for personal use appear (from online public resources viewed by the Panel) to be legal (in the UK at least) provided a prescription can be produced to customs on request, if any. It seems online domestic pharmacies can be legitimate in the US if they comply with the requirements listed above. Outside the US jurisdiction, other countries legal approaches will vary. This Panel therefore considers these activities can in theory be honest and bona fide. Therefore, as noted above, if this was a reseller case where the pharmacies were re-selling the genuine PROAIR product even together with other competing products (just as offline pharmacies do), then this would come very close to honest descriptive and nominative use in the Panel's view, no greater commercial connection would be assumed by consumers than in the case of offline pharmacies.
The Panel notes also that the UDRP might protect the pharmacies if selling only the Complainant’s own medicines under the authority of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No.D2001-0903. However, the Panel is compelled to note again that EU trade mark law may protect the sales and advertisements of the Complainant’s own medicines alongside alternatives. However, trade mark law in the EU in relation to permitted comparative advertising of alternative products alone by keywords and domain names is in flux. The Panel must record its concern that the UDRP must be bought further into alignment with changing legal norms and public expectations in this regard. It seems unreasonable that resellers should be limited to one product.
However, under the UDRP the Complainant need only make a prima facie showing of absence of rights or legitimate interest in the Disputed Domain Name on the part of the Respondent and the evidentiary burden then shifts to the Respondent to show it has rights or legitimate interests in that name. The Respondent has made no attempt to do so here. It would not therefore be right to explore the legitimate use issues further here where there is no response.
The Panel notes also that the FDA press release at the link given above discusses enforcement action against 9,600 websites selling unapproved prescription medicines including some operated by "an organised criminal network" with websites that purport to be "Canadian Pharmacies" and this appears to have included www.canadianhealthandcaremall.com. It is not possible on the evidence here for the Panel to be certain this is the same site complained of above or to properly determine the application to this case and so these matters have been disregarded in this decision.
Therefore, this Panel finds the Complainant has shown the Respondent to have no rights or legitimate interests in respect of the Domain Disputed Name (within the meaning of paragraph 4(a)(ii)of the Policy).
As to bad faith, the Panel finds on the balance of probabilities that the Respondent was likely aware of the Complainant´s trademark when registering the Disputed Domain Name.
Therefore, in light of the failure of the Respondent to come forward and defend its use as legitimate and rebut bad faith, the Complainant has, to the satisfaction of the Panel, shown the Disputed Domain Name has been registered and is being used in bad faith within the meaning of paragraph 4(a)(iii)of the UDRP.
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