WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novartis Corporation v. Negation Industries
Case No. D2001-1420
1. The Parties
1.1 The Complainant is Novartis Corporation, a corporation organized under the laws of the State of New York, United States of America, having its principal place of business at 564 Morris Avenue, Summit, New Jersey, United States of America.
1.2 The Respondent is Negation Industries, an entity having an address at 5841 Geary Blvd., San Francisco, California, United States of America.
2. The Domain Name and Registrar
The domain name at issue is , which domain name is registered with Tucows, Inc., based in Toronto, Ontario, Canada ("Tucows").
3. Procedural History
3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on November 30, 2001, and the signed original together with four copies was received on December 4, 2001. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated December 5, 2001.
3.2 On December 5, 2001, a Request for Registrar Verification was transmitted to the registrar, requesting it to: (1) confirm that the domain name at in issue is registered with Tucows; (2) confirm that the person identified as the Respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar�s Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain name.
3.3 On December 5, 2001, Tucows confirmed by reply e-mail that the domain name is registered with Tucows, is currently on hold status, and that the Respondent, Negation Industries, is the current registrant of the name. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
3.4 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Rules, and the Supplemental Rules. The required fees for a three person Panel were paid on time and in the required amount by the Complainant.
3.5 No formal deficiencies having been recorded, on December 7, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of December 27, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in Tucow�s confirmation. In addition, the complaint was sent by express courier to the postal address given. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
3.6 On December 28, 2001, not having received any response, the WIPO Center sent the parties a formal Notification of Respondent Default.
3.7 On February 11, 2002, in view of the Complainant's designation of a three-member Panel, the WIPO Center appointed M. Scott Donahey, Jeffrey M. Samuels, and Maxim H. Waldbaum to serve as Panelists, with M. Scott Donahey to act as Presiding Panelist.
4. Factual Background
4.1 Complainant's predecessor registered the trademark RITALIN in connection with a pharmaceutical preparation having a stimulating action with the United States Patent Office ("USPTO") on November 22, 1949, for a period of 20 years, and most recently renewed the application for an additional 20-year period on November 21, 1989. Complaint, Annex 5. The RITALIN mark has been registered in 43 other countries.
4.2 Complainant and its predecessor have used the RITALIN mark in connection with a pharmaceutical product in the United States since 1957. Prior to 1975, when it went off patent, the pharmaceutical RITALIN had 100% of the United States market for the treatment of attention-deficit hyperactivity disorder (ADHD), and after 1974 has remained the largest selling pharmaceutical for treatment of ADHD in the United States.
4.3 The pharmaceutical RITALIN has received substantial international press, including a cover story in Time magazine on November 30, 1998.
4.4 On April 11, 2000, Respondent registered the domain name .
4.5 To date, Respondent has not used the domain name to develop a web site.
4.6 Respondent has registered other domain names, some of which appear to include famous trademarks (i.e., , , and . Complaint, Annex 6.
4.7 Complainant has sent Respondent a letter requesting transfer of the domain name at issue. Complaint, Annex 8. Respondent did not respond to the request.
5. Parties� Contentions
5.1 Complainant contends that Respondent has registered a domain name which is identical to the trademark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect to the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
5.2 Respondent has not contested the allegations of the Complaint.
6. Discussion and Findings
6.1 Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
6.2 Since both the Complainant and Respondent are domiciled in the United States, and since United States� courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
6.3 Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no legitimate interests in respect of the domain name; and,
3) the domain name has been registered and is being used in bad faith.
6.4 It is clear that the domain name at issue is identical to the trademark in which the Complainant has rights. Credit Management Solutions, Inc. v. Collex Resource Management, WIPO Case No. D2000-0029.
6.5 Complainant has alleged and Respondent has failed to deny that Respondent has no legitimate interests in respect of the domain name at issue. Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayai ve Tic. A.S., WIPO Case No. D2000-0011.
6.6 Complainant's allegations fail to come within any of the four examples of bad faith registration and use set out in Paragraph 4(b) of the Policy.
6.7 However, the Examples in Paragraph 4(b) are intended to be illustrative, rather than exclusive. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
6.8 In Telstra it was established that "inaction" can constitute bad faith use, and the Telstra decision has since been cited for that proposition and followed by subsequent Panels. Ingersoll-Rand v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; Guerlain, S.A. v. Peikang, WIPO Case No. D2000-0055; Compaq Computer Corp. v. Boris Beric, WIPO Case No. D2000-0042; Association of British Travel Agents Ltd. v. Sterling Hotel Group Ltd., WIPO Case No. D2000-0086; Sanrio Co. Ltd. and Sanrio, Inc. v. Lau, WIPO Case No. D2000-0172; 3636275 Canada, dba eResolution v. eR, WIPO Case No. D2000-0110; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090; Stralfors AB v. P D S AB, WIPO Case No. D2000-0112; InfoS, Inc. v. Ofer, WIPO Case No. D2000-0075.
6.9 Telstra established that whether "inaction" could constitute bad faith registration and use could only be determined by analyzing the facts in a given case.
6.10 In this case, the Panel finds that where (1) the mark is one that is widely known in the United States, where Respondent purportedly resides, and was widely known at the time Respondent registered the domain name at issue; (2) Respondent has registered, but is not using, domain names corresponding to other well known trademarks; (3) Respondent failed to respond to a letter from Complainant; and (4) Respondent failed to Respond to the Complaint at issue or to deny any of its allegations, that Respondent's inaction constitutes bad faith registration and use of the domain name at issue.
7. Decision
For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is identical to the trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name at issue, and that the Respondent's domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name be transferred to the Complainant.
M. Scott Donahey
Presiding Panelist
Jeffrey M. Samuels
Panelist
Maxim H. Waldbaum
Panelist
Dated: February 22, 2002
Full & Egal Universal Law Academy