Trademarks for medicine are subject to specific rules; they need to comply not only with the trademark legislation, but also with the legislation governing the authorising of medicine. For instance, trademarks cannot derive from International Nonproprietary Names (INN).
Also, depending on whether the medicine is released over the counter (OTC) or with medical prescription, the relevant consumer to determine the risk of confusion might be considered by courts of law to be different (doctors, pharmacists, on one hand, or the normal average consumer, on the other hand). Moreover, the well-known status of prescription medicine might be evaluated on different terms than in case of OTC medicine.
Generally speaking, for both prescription and OTC medicine, counterfeit claims could be allowed even if the differences between the trademarks are lower, compared to counterfeit claims in other areas.
The specifics of the regime concerning trademarks for medicine is also reflected in the field of domain name disputes. I will address these specifics below.
Protection of Medicine Brands under UDRP
Companies acting in the area of biotechnology and pharmaceuticals rank third in terms of filing complaints against cybersquatters, at least with WIPO, which is the leading UDRP provider.
It means not only that such companies are careful in protecting their brands, but also that pharmaceutical companies and their brands are targeted by cybersquatters to a larger extent than businesses in other areas.
Recent example of cases where pharmaceutical companies obtained protection of their trademarks against cybersquatters include:
- the WIPO case D2021-3274, where the GILEAD trademark of the complainant was used to seek sensitive information from users.
- also, the WIPO case D2021-2097, where the IVAX trademark of the complainant was used for a phishing scheme targeting the complainant’s employees and vendors.
- or, the WIPO case D2021-1707, where the TEVA trademark of the complainant was used in the domain name that resolved to a copycat of the complainant’s official website.
For medicine released with medical prescription, using UDRP against abusive registration of domain names is critical, as public health concerns are an additional threat.
I will look into recent UDRP cases where prescription medicine brands were targeted, and I will point to specific concerns that are addressed by UDRP panels in such cases.
Prescription Medicine: The Second Element of the UDRP
Under the second element of the UDRP, as discussed in more detail in a previous post, a complainant must prove that the respondent lacks rights or legitimate interests in the disputed domain name.
Panels have considered that in cases where respondents are using the domain name in dispute to redirect to an online pharmacy (that was either offering for sale a generic alternative of the complainant’s medicine or other medication including those of the complainant), the complainant has made its case under the second element.
As an example, in the WIPO case D2021-1234 concerning the domain name <provigilgenericinusa.com>, the respondent used it to redirect to an online pharmacy website. The mentioned website was offering for sale a generic alternative to the complainant’s PROVIGIL medicine. According to the complainant, such medicine cannot be sold without a prescription.
The panel in the above case took into account that, based on the information on the website at the disputed domain name, the respondent attempts:
“to sell an alternative competing product without prescription and without disclosing the contents of the shipment to the custom authorities”.
It also considered that, as per the unrebutted statements of the complainant, “sales of such medicinal products without prescription would be illegal”.
These facts satisfied the panel that:
“it is more likely than not that the Respondent has registered and used the disputed domain name in an attempt to exploit the trademark’s goodwill to attract Internet users to the Respondent’s website, and to offer them for commercial gain the product of a competitor of the Complainant without complying with the applicable legal and customs requirements. To the Panel, such conduct does not appear to be legitimate nor giving rise to rights or legitimate interests of the Respondent in the disputed domain name.”
In another UDRP case (WIPO case D2021-1754, concerning the domain name <ritalinchina>), the respondent was using it for a website in Chinese that promoted the online sale of medications, including the complainant’s medicine, RITALIN.
According to the complainant, its medicine RITALIN (used for the treatment of attention deficit hyperactivity disorder (ADHD) and narcolepsy in children and adults) can only be sold under medical prescription and cannot be purchased online.
The panel found that use of a domain name for sale of illegal pharmaceuticals can never confer rights or legitimate interests on a respondent.
In another similar case, the respondent was using the domain name to resolve to a website where putative Epidiolex branded medication and accessory products were offered for sale online (WIPO case D2021-2241 concerning the domain name <epidiolexheadshop.com>). The complainant submitted that its EPIDIOLEX product is only available by prescription.
The panel decided that the respondent is not an authorised reseller with a legitimate interest in a domain name incorporating a complainant’s trademark. Importantly, the panel underlined, as per prior UDRP decisions, that the principle that resale of branded products cannot be considered nominative use where competing products are sold through the same website may have particular weight in the pharmaceutical context, where risks to the public must be considered.
A similar ruling in the WIPO case D2021-2621 concerning the domain name <gskpharm.com>.
Prescription Medicine: The Third Element of the UDRP
Under the third element of the UDRP, as discussed in more detail in a previous post, a complainant must prove that the domain name in dispute has been registered and is being used in bad faith.
Panels have considered that the offering by the respondent of prescription medication on the website at the domain name in dispute amounts to registration and use in bad faith in the absence of proof that it is a licenced pharmacy or of other right to make the medication available for sale online.
As an example, in the WIPO case D2021-1546 concerning the domain name <saxendathai.com>, the domain name was used to resolve to a website on which the respondent purports to sell the complainant’s trademarked SAXENDA product. The complainant argued that SAXENDA is a prescription medication which is not available OTC and that it is unlawful to sell such a product directly to consumers online or “over the counter,” unless it is being dispensed by a licensed pharmacy.
The panel found in the above case that the respondent has registered and is using the domain name in dispute in bad faith as:
“[r]espondent is using the disputed domain name to resolve to web sites in English and Thai, which are for purposes of this analysis virtually identical to Complainant’s web site. Respondent is offering Complainant’s SAXENDA pharmaceutical product for sale on its web site, and Respondent has offered no proof that it is a licensed pharmacy nor has any other right to make the medication available for purpose online. Therefore, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith.”
In another UDRP case, the panel considered relevant for the third element the fact that the respondent was not complying with the legal regulations for the sale of a prescription medication. In that case, the respondent was using the domain name in dispute to offer for sale an alternative product of a competitor of the complainant without prescription, while the complainant’s product could only be sold with a medical prescription. The targeted trademark was PROVIGIL, a special medicine for the central nervous system.
A similar solution in another UDRP case, where the panel has held that the respondent’s offer for sale of the relevant drugs without prescription (and considering the complainant’s case that its products can only be sold under medical prescription), appears to amount to illegal sale of controlled pharmaceuticals, indicating bad faith registration and use of the disputed domain name.
Moreover, panels have held, with respect to bad faith use, that:
“the obvious danger of online consumers being afforded inaccurate, incomplete or misleading information about medical products, services and applications and the probable diversion of actual sales reinforces the Respondent’s bad faith”.
For example, the WIPO case concerning the disputed domain name <epidiolexheadshop.com>, where the targeted trademark was EPIDIOLEX (aimed at treating two rare forms of epilepsy), or the WIPO case concerning the disputed domain name <gskpharm.com>, where the targeted trademark was the GSK trademark.
In another UDRP case concerning the domain name <koopritalin.net>, the panel has also held that “the addition on the website of text in the Dutch language stating that these pharmaceutical products could be bought without prescription is further evidence of bad faith use of the Domain Name, as this is contrary to Dutch pharmaceuticals legislation.” This is a situation where national laws might become relevant in solving domain name disputes, as discussed in a previous post; otherwise, recourse to the Policy itself should be sufficient.
Final Remarks
Abusive registration of domain names consisting of or including trademarks used for prescription medicine harms the trademark owner that invested resources to innovate in new medicine.
Moreover, such activity might represent a serious threat to consumer health.
UDRP is an efficient ADR to curb abusive domain name registration, and UDRP panels consider the specifics of this area in their decisions.
