WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
N.V. Organon v. n/a
Case No. D2001-1076
1. The Parties
The Complainant is N.V. Organon, Kloosterstraat 6, 5349 AB Oss, Netherlands and is represented by Kenyon & Kenyon, One Broadway, New York, NY 10004 USA.
The Respondent is n/a of Slovenia.
2. The Domain Name and Registrar
The Domain Name at issue is . The Registrar is Tucows Inc. of Toronto, Canada.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) by e-mail on August 29, 2001, and a hardcopy was received by the Center on September 3, 2001. The Center acknowledged the receipt of the Complaint on August 31, 2001.
On September 3, 2001, the Center sent to Tucows Inc. a request for verification of registration data. On September 5, 2001, Tucows Inc. confirmed to be the Registrar, that n/a is the Registrant of the domain name , that the administrative and billing contact is Kutschnig Hans with an address identical to that of the Respondent, that the technical contact is Rozic Miha, Cesta Toneta Tomsica 80, 4270 Jesenice, Slovenia and that the domain name is at present on hold.
The Center verified that the Complaint satisfies the Rules and the Supplemental Rules and that payment was properly made. The Panel is satisfied this is the case.
On September 10, 2001, the Complaint was properly notified in accordance with the Rules, paragraph 2(a), and the administrative proceedings commenced. On September 18, the Center received a communication by e-mail from the Respondent, signed . On inquiry of the Center, the Respondent, on October 1, 2001, confirmed that this e-mail should be considered to be its Response. On September 25, 2001, the Complainant filed an addition to the Complaint by e-mail (hardcopy was received by the Center on October 2, 2001) and on October 1, 2001, the Center informed the Complainant that this communication with attachments would be forwarded to the Panel for consideration once it had been appointed.
On October 8, 2001, the Center notified the Parties that an Administrative Panel, composed of a single member, Dr. Gerd F. Kunze, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
No further submissions were received by the Center or the Panel. The date scheduled for issuance of the Panel�s decision is October 22, 2001.
4. Factual Background
A. Complainant
The Complainant is the owner of trademark registrations for the word mark DECA-DURABOLIN in the Benelux countries (for pharmaceutical preparations etc.), in Canada (for hormone preparations and in the USA (for hormone preparations) and for the word mark DECA DURABOLIN in the Benelux countries (for medicine and pharmaceutical preparations), Germany (medical products and pharmaceutical products) and the United Kingdom (for pharmaceutical preparations). The product, which has been sold since the early sixties under the trademark DECA-DURABOLIN respectively DECA DURABOLIN is meant to treat testosterone deficiency in men, it is a prescription drug, and its distribution is strictly controlled. It is not intended to be used for body building purposes. The Complainant, on its home page of the websites and , explains that the product is strictly for medical use only and displays a warning against the misuse of the product in sports, for instance in bodybuilding. It is stated that use in sports is not only illicit as doping but also may bear serious health risks.
These facts are evidenced by the attachments to the Complaint and, in the absence of any submission of the Respondent to the contrary, the Panelist is satisfied that the documents submitted by the Complainant are truthfully reflecting the factual circumstances of the case (the Respondent, in his e-mail response, considers the exhibits evidencing the above cited trademark registrations of the Complainant as "none important" and, contrary to its obligations under Rule 5(b)(i), does not take position to the arguments of the Complainant concerning the misuse of DECA-DUARABOLIN for sports, nor to exhibit M showing the warning of the Complainant on its website).
B. Respondent
The Respondent registered the domain name with Tucows Inc. It has established a website under this domain name on which it promotes amongst others the Complainant�s product DECA-DURABOLIN for body building purposes. The Respondent in its e-mail response dated September 21, 2001, commented on exhibit I to the Complaint that its contents related to a different website (), supposed to be totally unrelated to the Respondent (the domain name ( is the subject of another Complaint pending with the Center; WIPO Case No. D2001-1077). As concerns exhibit J, showing a part of Respondent�s website, which is particularly devoted to DECA-DURABOLIN, Respondent acknowledges that this information indeed stems from its website, and explains that this display is from the website with permission of the owner of that website. In addition to the Complaint, dated September 27, 2001, the Complainant substituted a new Exhibit I for the Exhibit I, which it had submitted with the Complaint, and which, due to a clerical error, indeed related to the website . The Panelist sees no reason not to accept this rectification, which has not been contested by the Respondent, the more as the submissions of the Complainant in its Complaint already refer to the evidence as shown in the substitute-exhibit I (actually, there is no doubt that the corrected exhibit I refers to the Respondent�s website, as the Panelist could verify visiting that website).
5. Parties� Contentions
A. Complainant
The Complainant submits that (1) the domain name is identical or confusingly similar to a trademark or service mark, in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; (3) the domain name was registered and is being used in bad faith.
B. Respondent
The Respondent, acting as "Anabolic Training" and using the domain name address , in a Response which does not comply with the Rules as set out in paragraph 5, submits essentially that it does not sell anything and especially not anabolic steroids.
To the extent that the Response does not comply with the Rules, the Panelist will draw his conclusions according to Rule 14(b).
6. Discussion and findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant:
1) The domain name is identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights; and
2) the Respondent has no rights or legitimate interests in respect of the domain name; and
3) the domain name has been registered and is being used in bad faith.
1) Confusing similarity with a mark in which the Complainant has rights
The domain name is identical to the registered wordmark DECA-DURABOLIN of the Complainant. Phonetically it is also identical to the Complainant's registrations of the trademark DECA DURABOLIN. The generic top level domain indicator ".org", cannot be taken into consideration when judging confusing similarity. Based on general principles of trademark law, that domain name is therefore at least confusingly similar, if not identical, with the Complainant's trademarks. This is also the case, when considering the particular circumstances of use on the Internet. A person who is searching for the drug DECA-DURABOLIN on the Internet and types the domain name will normally expect to find a website provided by the owner of the DECA DURABOLIN brand and the manufacturer of the product sold under that mark, or at least by an authorized sales agent. Instead he will visit Respondent�s website and the fact that on this website the DECA-DURABOLIN product of the Complainant is promoted, will add to his confusion.
The domain name is therefore confusingly similar, if not identical, to a mark in which the Complainant has rights in many countries. For the Policy to apply, the Complainant need not have rights in his mark in the country, where the Respondent's site is hosted or where the Respondent is located.
2) Legitimate rights or interests in respect of the domain name
The Respondent has no connection or affiliation with the Complainant, who has not consented to the Respondent's use of the domain name. Furthermore, the Respondent does not purport to use the website in connection with a bona fide offering of goods or services. Whilst the Complainant submits that the Respondent offers its products illegally for sale, the Respondent submits that it does not sell anything on its website. Furthermore, the Respondent does not even claim that it has been commonly known by the domain name.
Since the Respondent submits that it does not offer anything for sale, the only circumstance listed under paragraph 4(c) of the Policy possibly demonstrating rights or legitimate interests, to be more closely considered, is that the Respondent makes a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
Apart from the submission that it does not sell anything on its website, the Respondent does not submit any argument speaking in favor of such legitimate or fair use of the domain name. However. The Complainant submits arguments and evidence showing that the Respondent does not use the domain name in a legitimate or fair manner.
The Respondent�s website promotes anabolic training and the use of anabolic steroids for muscle buildup, and refers in that context in particular to DECA DURABOLIN which according to the text contained in the website almost every athlete connects with the substance contained in the product. Thus the Complainant�s trademark is abused for a domain name referring to a possible use of the medicine which is not within its description and which may cause health risks. Such use must be considered to be tarnishing the Complainant�s trademark. The Complainant is right that the Respondent cannot justify such promotion of the Complainant�s product on a website, accessed by a domain name consisting of the Complainant�s trademark, which stands for the product, with the argument that the text was taken with permission from a source called . The Respondent is responsible for the contents of its website, which may be reached by typing the domain name consisting of the Complainant�s trademark.
As can be seen in Exhibit I (as submitted on September 25, however already commented in the Complaint) the website on its homepage also contains a link to suppliers. When going to that link the visitor is informed that he should send an e-mail to the Respondent in order to receive the list of suppliers from it. Absent any submissions of the Respondent the Panelist is satisfied that the Respondent does not supply such information for altruistic purposes. Furthermore, suppliers are invited to advertise (for more details see below 6,3). In conclusion, the purported non-commercial use is most likely to be a commercial use, anyhow it cannot be considered to be legitimate or fair.
Therefore, in the absence of any submission of the Respondent, which would show a present or future legitimate interest in the domain name, the Panel concludes that the Respondent has no rights or legitimate interests in the domain name
.
3) Registration and use in bad faith
For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith. Apparently the Respondent has not offered and does not intend to offer the domain name for sale. Furthermore, the Complainant has not submitted sufficient proof that the Respondent offers products for sale on its website. As the Respondent, in its e-mail Response, rightly pointed out, the evidence submitted by the Complainant in Exhibit L about offers for sale, which after payment have not been carried out, refers to a different website accessed through the domain name . However, the Complainant has submitted other facts and evidence, which the Panelist considers to proof registration and use of the domain name in bad faith:
Respondent uses the domain name for a website, on which it promotes, amongst others, the use of Complainant�s prescription drug DECA- DURABOLIN for sports purposes, in particular for the purpose of body building. For example, the website states: "Deca is a good basic steroid when preparing for a competition, many athletes also achieve good results during this phase� Since Deca-Durabolin has no negative effects on the liver it can even be used for persons with liver diseases"
As has been said (above 4 A), the product, which has been sold since the early sixties under the trademark DECA-DURABOLIN, is meant to treat testosterone deficiency in men and its distribution is strictly controlled. It is not intended to be used for body building purposes. The Complainant, on its home page of the websites and , displays the following warning notice: "Misuse of Deca-Durabolin in sports, for instance in bodybuilding, must be strongly rejected. Such practice is not only illicit as doping but also goes far beyond the product�s investigated and officially acknowledged therapeutic use. It may therefore bear serious health risks".
The Respondent, on its website, not only promotes illicit use of the Complainant�s trademark, it also offers information for suppliers of the DECA DURABOLIN product, stating that supplier�s e-mail addresses are totally free of charge. Respondent furthermore encourages suppliers to advertise on Complainant�s website! As evidenced by substitute Exhibit I, the following statements can be found on Respondent�s website (): "ADVERTISE ; "How to advertise on ; "Please use the email addresses on this page for correspondence regarding ADVERTISING on ; "Our sales team will be happy to speak with you about opportunities to promote your products and services on ". These statements are followed by a link to Respondent�s e-mail address. It is interesting to note that, in the context of its promotion of advertising, under a heading referring to its own website, the Respondent three times cites the Complainant�s website.
Since no clear information about the proprietor of Respondent�s website is given, visitors of that website will be confused with the complainant�s mark as to the source, possible sponsorship, affiliation, or endorsement of the website by the Complainant. Thus a connection between the Complainant and the illicit and under medical considerations undesirable use of its product, which does not exclude health risks, is created. Such connection clearly damages the reputation of the Complainant as a honest and legitimate drug manufacturer. Furthermore, visitors may follow the Respondent�s invitation to advertise on the Complainant�s website (of course without authorization from the Complainant) and no doubt to pay for such advertising on the Complainant�s website to the Respondent (advertising is an activity which nobody expects to be offered free of charge and the Respondent, on its website, does not offer such advertising free of charge). Even if the Respondent�s statement is true that, on its website, it does not sell anything and especially no anabolic steroids, the contents of its website therefore shows strong indications that the Respondent nevertheless makes use of the domain name for commercial gain.
The Panelist is satisfied that this invitation for advertising together with the use of the domain name for a website, which promotes the Complainant�s DECA DURABOLIN medical product for illicit non-medical use and offers lists of suppliers free of charge, must be considered to be use of the Complainant�s trademark in bad faith. Since no doubt the Respondent has registered the domain name for the purpose of using it for a website dedicated to the promotion of, amongst others, the DECA DURABOLIN medical product for sports activities such as body building, the Panelist is also satisfied that the Respondent has registered the domain name in bad faith.
An additional element of registration in bad faith is the fact that the Respondent has not, when registering the domain name with Tucows Inc, or in the Response, provided a name and postal address and a telephone and/or telefax number, as requested by the registration agreement and by the Rules of the Policy. The Respondent hides behind the indication "n/a" + postbox address. It is therefore not possible for the Complainant, based on such information, to contact the Respondent.
In that context the Panelist has also taken into consideration that the Respondent, in its e-mail response, has not undertaken any effort to explain in any manner the purpose of its registration and use of the domain name . It has contented itself to hint to clerical errors in the Complaint, where indeed in two places evidence was submitted which referred to the use of a website under the domain name (a case pending at the Center under the number D2001-1077). Since the Respondent did not fulfill its obligation to submit any and all bases for it to retain registration and use of the disputed domain name (as requested under Rule 5(b)(i)), the Panelist is satisfied that the facts and evidence submitted by the Complainant, as described, prove registration and use of the domain name by the respondent in bad faith.
7. Decision
The Panel decides that the Complainant has proven each of the three elements of paragraph 4(a) of the Policy.
Pursuant to paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel requires that the registration of the domain name be transferred to the Complainant.
Dr. Gerd F. Kunze
Sole Panelist
Dated: October 16, 2001
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