WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Biogen, Inc. v. N, Inc.
Case No. D2002-0270
1. The Parties
The Complainant is Biogen, Inc., a Massachusetts (USA) corporation with its principal place of business in Cambridge, Massachusetts (USA). Biogen, Inc. is represented by Roberta Jacobs-Meadway and Richard E. Peirce of Ballard Spahr Andrews & Ingersoll, LLP of Philadelphia, Pennsylvania (USA).
The Respondent is N, Inc. of Concord, California (USA).
2. Domain Names and Registrar
The domain name at issue is:
It is referred to as the Domain Name. The Registrar is the Respondent, NameS.
3. Procedural History and Jurisdiction
The WIPO Arbitration and Mediation Center (the Center) received the Complaint on March 20, 2002, (electronic copy), and March 25, 2002, (hard copy). The Center verified that the Complaint satisfies the formal requirement of the ICANN Uniform Domain Name Dispute Resolution Policy (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). Complainant made the required payment to the Center. The formal date of the commencement of this administrative proceeding is April 5, 2002.
On March 28, 2002, the Center transmitted via email to the Registrar, NameS, a request for registrar verification in connection with this case. On March 28, 2002, NameS transmitted via email to the Center, NameS's Verification Response, confirming that it, N, Inc., is the registrant and administrative, technical, zone, and billing contact.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, on April 5, 2002, the Center transmitted to the Respondent Notification of Complaint and Commencement of the Administrative Proceeding via post/courier and e-mail.
Respondent failed to respond to the Notification of Complaint and Commencement of the Administrative Proceeding and the Center notified it of its default on April 26, 2002, via email.
In view of the Complainant's designation of a single Panelist and Respondent's default the Center invited Mr. Richard G. Lyon to serve as a Panelist.
Having received Mr. Lyon's Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties a Notification of Appointment of Administrative Panel on May 6, 2002. The Projected Decision Date was May 20, 2002. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules, and that the Panel has jurisdiction over this dispute. Given that Respondent, in its capacity as Registrar, replied to the Center's verification inquiry, there is no doubt that Respondent received notification of this proceeding.
The Administrative Panel shall issue its Decision based on the Complaint, the evidence presented, the Policy, the Rules, and Supplemental Rules.
4. Factual Background
The Complainant is the legal owner of the trademark AMEVIVE. The mark was registered in July 2001, based upon an intent to use application filed in July 1998, and Complainant�s subsequent statement of use that claimed a date of first use of the mark in commerce as August 29, 2000. Complainant also has registrations in 59 countries for its AMEVIVE mark, and pending applications in thirty other countries, including Canada. The AMEVIVE mark is used in connection with pharmaceutical preparations for use in the treatment of dermatological disorders, autoimmune disorders, inflammatory disorders, and psoriasis.
Respondent registered the Domain Name on June 4, 2001. As of the date of the filing of the Complaint the site remains inactive, with only the name appearing in the middle of the screen, and a link to the Respondent/Registrar's homepage. The Respondent owns and operates the Registrar and the Registrar's website for domain name registration.
On January 5, 2002, counsel for Complainant allegedly[1] contacted Respondent regarding its ownership of the Domain Name. On January 28, 2002, counsel for Complainant once again contacted Respondent. Respondent replied to neither contact. At the time of the filing of the Complaint counsel for Complainant had yet to receive any Response from Respondent.
5. Parties' Contentions
The Complainant's contentions may be summarized as follows:
The domain in question is identical to its AMEVIVE mark, and consumers searching for information on the Complainant and its trademarked product would be confused by the Respondent's website.
Respondent has no rights or legitimate interests in respect to the Domain Name because it is not engaging in any business that used or uses the term AMEVIVE, as evidence Complainant notes that Respondent registered for the Domain Name after the Complainant made its mark publicly known, the Respondent is not only the Registrant of the Domain Name but also the Registrar of the Domain Name and normally registers domain names to third parties, and because the website using the Domain Name is inactive with only a link to the Respondent's website.
Respondent registered and continues to use the Domain Name in bad faith because it registered the Domain Name with the intent of luring Internet users through its own link on the website and ultimately selling, renting, or transferring the Domain Name to the Complainant at an above-normal price[2]. This is evidenced by the Respondent's registration of the Domain Name after the Complainant made its mark publicly known and after the date of its first use in commerce, the lack of use of the Domain Name in a commercial manner, and the only feature of the website being a link to the Respondent's website.
Respondent has failed to reply to the Complaint.
6. Discussion and Findings
The Complainant must prove the elements set out in paragraph 4(a) of the Policy. These elements are as follows:
(i) Respondent's Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent's Domain Name has been registered and is being used in bad faith.
Complainant bears the burden of proof on each of these elements. Respondent's default does not automatically result in judgment for the Complainant, however the Panel may draw any inferences from the default that it deems appropriate.
Identity and Confusion
The Domain Name incorporates verbatim the Complainant's AMEVIVE mark. The Domain Name is therefore identical to the Complainant's mark and is likely to cause confusion among Complainant's customers.
Legitimate Interest
Complainant has alleged that Respondent has no rights or legitimate interests in the Domain Name and evidence shows that Respondent's only use of the term AMEVIVE is in the Domain Name. Since Respondent did not respond to the Complaint, Respondent has failed to offer any evidence that it has ever used or will use the term AMEVIVE in connection with a business or in a commercial manner, why it needs to use the Complainant's mark, or that it has any legitimate interest in the Domain Name. This is evidenced further by the fact that the word AMEVIVE appears to be an invented word and not one people would legitimately choose unless seeking to create an impression of an association with the Complainant. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Complainant has met its burden of proof on this issue.
Bad Faith
Paragraph 4(b) of the Policy sets out nonexclusive examples of conduct that will constitute evidence of the registration and use of a domain name in bad faith. Sections 4(b)(iv) of the Policy provide that the following will be evidence of bad faith:
[B]y using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or of a product or service on your web site or location.
In this case, the use of the Complainant's mark in the Domain Name lures Complainant's customers and prospective customers to the Respondent's website. From there the only link is to Respondent's main on-line location. Respondent is presumably looking to gain from this increased activity on its website through increased registrations or advertising revenues. Respondent has provided no evidence of a good faith use of the Domain Name.
Moreover, Respondent is a domain name registrar that (in this instance at least) used another's registered mark as a domain name for a website linked only to its own business. If any party could be presumed to know and honor the Policy, it is this one. Respondent's conduct in this case is more blameworthy than that of the Respondent in Caixa d'Estalvis y Pensions de Barcelona v. N, WIPO Case No. D2001-0360, in which the Panel reached a similar conclusion ("an ICANN accredited Registrar . . . must be the first to honor the Uniform Domain Name Dispute Resolution Policy when registering domain names under their name"). In Caixa, Respondent Namezero, an accredited ICANN registrar, registered and held for its "members" (a euphemism for customers) any available domain name that the "member" requested, as part of a service by which Namezero acted as the "member's" agent for registering and maintaining the selected domain name. Namezero's services were openly described on its website, including a warning on its website against the "member's" infringing another's marks. In the WIPO proceeding it sided with the Complainant, describing to the Panel the services it offered and professing adherence to the Policy. While there was some question regarding the propriety of an accredited registrar's operating a service that resulted in occasional breaches of the policy, there was at least an otherwise legitimate business and full candor before the Panel.
In the present case, Respondent has ignored the Complaint and the proceeding, and has engaged in a classic violation of the Policy. In these circumstances "it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate." Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. On this record Respondent has registered and is using the Domain Name in bad faith.
7. Decision
For the foregoing reasons, the Panel orders that the registration of the Domain Name be transferred to the Complainant.
Richard G. Lyon
Sole Panelist
Dated: May 20, 2002
1. Although the Complaint includes various materials as annexes, the two "contacts" referred to in the Complaint are not included. The Panelist notes that there is no apparent reason for this omission, and therefore gives no weight to the allegation that Complainant twice contacted Respondent prior to initiating this proceeding.
2. Again, Complainant offers no evidence to support this charge.
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