Domain name dispute against an unlicensed e – pharmacy

We successfully represented a Singapore based pharmaceutical company (the “Complainant”) in a dispute before WIPO Arbitration and Mediation Centre against a domain name that closely resembled the Complainant’s trade mark and which was purportedly used for an unlicensed e- pharmacy website by the Respondent. The Respondent claimed that its business is based in Singapore but investigations ultimately revealed that the Respondent had a UK based address.

The disputed domain name was registered by the Respondent under the country code top level domain (ccTLDs) name “.IO”’ which stands for “British Indian Ocean Territory”.   Domain name disputes involving the ccTLDs are governed by the .IO Domain Name Dispute Resolution Policy, which is a variant of the Uniform Dispute Resolution Policy administered by WIPO.

The Complainant complained that:

  • The disputed domain name was identical or confusingly similar to the Complainant’s registered trade mark;
  • The Respondent had no rights nor legitimate interests in the disputed domain name and was not using the domain name in connection with a bona fide offering of goods or services. The Complainant contended that the Respondent was using the disputed domain name to operate a fake online pharmacy or to sell counterfeit pharmaceutical products.  This was inferred from the fact that the Respondent’s website offered prescription medicines for sale without a prescription.  The Respondent’s website also used broad and misleading statements about the efficacy of the products and the sale prices of the medicines on the website were well below the market price.  Furthermore, although the Respondent claimed to be based in Singapore, the Respondent did not have a licence to operate as an e-pharmacy in Singapore.
  • The use by the Respondent of the disputed domain name to carry out illegal or unlicensed activity was evidence that the domain name was registered and used in bad faith.

The WIPO panel decided in favour of the Complainant and held that:

  • The disputed domain name is confusingly similar to the Complainant’s trade mark.
  • The Complainant had made out a prima facie case that the Respondent was using the disputed domain name to sell illegal pharmaceuticals. The Panel highlighted that the use of a domain name for the sale of counterfeit goods or illegal pharmaceuticals can never confer rights or legitimate interests in the Respondent.   The Panel was prepared to conclude that the Respondent was using the website to conduct illegal activity because (i) the products on the website were offered significantly below market value and (ii) the Respondent did not have an e-pharmacy licence in Singapore even though it claimed to be based in Singapore.
  • The Complainant had provided unrefuted evidence that suggest the Respondent is illegally operating as an e -pharmacy. Such behaviour is manifestly considered evidence of bad faith.

For the foregoing reasons, the WIPO panel ordered that the disputed domain name be transferred to the Complainant.

Ferzana Haq of hslegal LLP is proud to have represented the Complainant in this matter and to be involved in combating the harmful phenomenon of illegal or unauthorised e – pharmacies, which is a serious threat to public health and safety.  Moreover, the WIPO domain name dispute procedure is a useful, speedy and cost – effective method of tackling the use and registration of domain names for the purposes of illegal or unauthorised activity over the internet, in which the true identity of the persons conducting such activity may be concealed.

For more information please contact ferzanahaq@hslegal.com.sg