WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pharmacia & Upjohn Ab v. Gabriel Sipa
Case No. D2000-0309
1. The Parties
1.1 Complainant:
Pharmacia & Upjohn AB, S-112 87 Stockholm, Sweden.
1.2 Respondent:
Gabriel Sipa, 3138 LaClede Avenue, Los Angeles, CA 91207, USA.
2. The Domain Name and Registrar
2.1 Domain Name:
I-P ("the Domain Name")
2.2 Registrar:
R
3. Procedural History
3.1 The Complaint, citing the respondent as being "If you want this domain name, please contact me", was received by WIPO by email on April 18, 2000, and in hard copy on April 20, 2000. The Complaint wrongly identified Network Solutions Inc as the registrar of the Domain Name, but that error was noticed and corrected and r, the true registrar, has been notified in accordance with the Rules. R confirmed that the Respondent, Gabriel Sipa, is the current registrant of the Domain Name. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
3.2 The Complaint was properly notified in accordance with the Rules, paragraph 2(a), and the Respondent responded to the Complaint within time by email on May 27, 2000.
3.3 The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
3.4 Given the confusion as to the precise identity of the Respondent (see paragraphs 3.1 above and 4.3 and 4.5 below), the Panel asked WIPO if it would be possible for the registrar to identify in what name the Domain Name was first registered. The registrar subsequently confirmed that Gabriel Sipa was the original registrant as well as the current registrant.
3.5 No further submissions were received by WIPO or the Panel as a consequence of which the date originally scheduled for the issuance of the Panel�s Decision was July 28 2000. However, on reading the papers, it seemed to the Panel that the Respondent was in possession of documentation (a business plan), which, if produced to the Panel, could assist his case. Accordingly, on July 24, 2000, the Panel issued its Procedural Order No. 1, which is annexed as Appendix 1. The parties were invited to make representations. The Complainant confirmed through its attorneys that if the business plan was produced, it would keep it confidential and would not use its contents otherwise than for the purpose of this complaint procedure and any related litigation which might ensue. The Respondent did not respond.
3.6 On August 7, 2000, WIPO notified Procedural Order No. 2, which is annexed as Appendix 2. The Respondent duly produced a severely expurgated version of the business plan within the time allotted under cover of a letter in which he made further representations. The Complainant failed to comply with the timetable for its representations, but lodged them out of time on September 6, 2000. Since the Respondent is in no way prejudiced by the delay and since the Panel is still able to meet the new date scheduled for the Panel�s Decision (September 13, 2000), the Panel has accepted these out of time representations.
4. Factual Background
4.1 The Complainant is an internationally known research based pharmaceutical company incorporated in Sweden.
4.2 The Complainant is the proprietor of inter alia US trademark registrations numbers 1,277,927 (issued May 15 1984), 1,025,527 and 1,025,528 (both issued November 25 1975) (together hereinafter referred to as "the Trade Marks").
4.3 The Respondent, who describes himself as an entrepreneur and full-time financial analyst, registered the Domain Name on August 10 1999 under his name, Gabriel Sipa. Very shortly thereafter he added to the ownership record the note "If you want this domain name, please contact me".
4.4 On April 17, 2000, the Complainant�s attorneys wrote to the Respondent drawing his attention to the Complainant�s rights in the name PHARMACIA and requesting immediate transfer of the Domain Name to the Complainant.
4.5 On April 17, 2000, the WHOIS record for the Domain Name was amended in two respects. First, the note was changed from "If you want this domain name, please contact me" to "This domain is not for sale!". Secondly, the Respondent�s postal code was omitted from the record.
5. Parties� Contentions
A. Complainant
5.1 The Complainant contends that:-
5.1.1 It has used the trademark PHARMACIA for upwards of 25 years.
5.1.2 As a result of long and substantially exclusive use of the name Pharmacia in the course of trade in the United States and elsewhere, it has become well known among the general public as well as among healthcare professionals. Indeed, the Complainant characterizes the trademark as a famous mark.
5.1.3 The Domain Name is identical and/or confusingly similar to the Complainant�s trademark.
5.1.4 The Respondent has no rights or legitimate interests in the Domain Name as the Complainant has not agreed or consented to its use by the Respondent. The Complainant dismisses the Respondent�s business plan as a document produced after the event to suit his case.
5.1.5 The Domain Name should be regarded as having been registered and used in bad faith "because
(a) the Pharmacia name is known to be a mark of the Complainant
(b) the Respondent registered it for no other purpose than to sell, rent or otherwise transfer the registration to the Complainant or to a competitor of the Complainant
(c) the Respondent has refused to co-operate with the Complainant to resolve the dispute
(d) the WHOIS record history referred to above
(e) the conduct of the Respondent in the exchanges of emails referred to above
B. Respondent
5.2 The Respondent who identifies himself as Gabriel Sipa contends that:
5.2.1 He is an honest, hardworking entrepreneur and holds down a full-time job as a financial analyst. He is planning to start a business under "I-P" that will not compete with the Complainant but which is targeted at the large Spanish speaking population of the United States. He produces an expurgated version of his business plan to verify the state of his bona fide plans in this regard prior to notification to him of the Complainant�s objections.
5.2.2 He acquired the Domain Name in the belief that it meant "internet pharmacy". He was, he says, under the mistaken impression that "pharmacia" is the Spanish word for "pharmacy". He says that he still likes the word because notwithstanding his mistake, it is easily recognizable by the French, the English, the Italian and the Spanish etc. as meaning pharmacy.
5.2.3 He was not aware of the existence of the Complainant at the time he applied for registration of the Domain Name; nor was he aware that Pharmacia is a trademark.
5.2.4 The word pharmacia is a generic word and should never have been registered as a trademark.
5.2.5 He will be lodging a complaint to "the US and International Trade Mark Office".
5.2.6 After he acquired the Domain Name and at the suggestion of a friend, he identified himself on the WHOIS record by reference to what he describes as a "note", namely "If you want this domain name, please contact me." He contends that he did this not with a view to disposing of the Domain Name but to assist him in evaluating the worth of the Domain Name. He says "the re
