WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Biogen, Inc. v. ASC
Case No. D2003-0037
1. The Parties
The Complainant in this administrative proceeding is Biogen, Inc., a Massachusetts corporation, located at 14 Cambridge Center, Cambridge, Massachusetts 02142, United States of America.
The Respondent is ASC, whose postal address is 2 East End Avenue, New York, New York, United States of America.
2. The Domain Name and Registrar
The domain name in dispute is as follows: . The domain name was registered with N, Inc. on June 4, 2001.
3. Procedural Background
On January 17, 2003, the WIPO Arbitration and Mediation Center received from Complainant a complaint, via e-mail, for decision in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation of Assigned Names and Numbers (ICANN) on August 26, 1999 ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules). The Complaint was filed in compliance with the requirements of the Rules and the Supplemental Rules, payment was properly made, and the administrative panel was properly constituted
The instant Administrative Proceeding was commenced on January 28, 2003.
Respondent did not file a Response and a "Notification of Respondent Default," dated February 18, 2003, was forwarded by WIPO to Respondent.
The decision of the Panel was due to WIPO on or before March 20, 2003.
4. Factual Background
Complainant Biogen owns U.S. Trademark Registration No. 2,470,063 for the mark AMEVIVE, as used on pharmaceutical preparations for use in the treatment of dermatological disorders, autoimmune disorders, inflammatory disorders, and psoriasis. The registration issued on July 17, 2001, based on an intent-to-use application that was filed with the United States Patent and Trademark Office (PTO) on July 6, 1998 (Serial No. 75/514,383). Complainant's Statement of Use filed with the PTO alleged a date of first use in commerce of August 29, 2000, although the AMEVIVE mark began to achieve publicity as early as October 5, 1998. Complainant has registrations in 74 countries for its AMEVIVE mark and is also the owner of several domain names that incorporate its AMEVIVE mark, including and .
As noted above, Respondent registered the domain name in dispute with N, Inc. on June 4, 2001. On February 15, 2002, counsel for Complainant first contacted Respondent regarding its ownership and use of the domain name. On September 17, 2002, Complainant once again contacted Respondent. As of January 17, 2003, counsel for Complainant had not received any response from Respondent.
5. Parties' Contentions
Complainant contends that the disputed domain name, , is nearly identical and confusingly similar to Complainant's AMEVIVE mark.
Complainant further argues that Respondent has no rights or legitimate interests in the disputed domain name, maintaining, upon information and belief, that Respondent has not engaged in, nor is currently engaging in, any business in which it used or uses the terms AMEVIVE, AMEVIVEGROUP, or AMEVIVE GROUP.
Complainant finally argues that Respondent registered the domain name in bad faith and continues to use such in bad faith. According to Complainant, Respondent registered the domain name: (1) with the intent of selling, renting, or otherwise transferring the domain name registration to Complainant; (2) in order to prevent Complainant from reflecting its AMEVIVE mark in a major, top-level corresponding domain name; (3) primarily for the purpose of disrupting Complainant's business by attempting to confuse both current and potential consumers that there is some level of affiliation between the parties' businesses; and (4) to intentionally attempt to attract for commercial gain internet users to its website by creating a likelihood of confusion with Complainant's AMEVIVE mark as to source, sponsorship, affiliation or endorsement.
In support of its "bad faith" argument, Complainant also maintains that Respondent is associated with, or working for or on behalf of, Namesecure, the registrar of the disputed domain name. On March 20, 2002, Complainant filed an ICANN complaint against Namesecure requesting that the domain name be transferred. The domain name was transferred to Complainant as a result of a favorable WIPO decision. See Biogen, Inc. v. N, Inc., D2002-0270 (WIPO May 20, 2002). Complainant notes that the administrative contact e-mail addresses for both Namesecure (for the domain name whois listing prior to transfer) and the current Respondent are the same.
6. Discussion and Findings
The Panel has carefully reviewed the evidence presented and determines that Complainant clearly has met all the requirements set forth in para. 4 a. of the Policy.
As an initial matter, the Panel concludes that Biogen has established trademark rights in its AMEVIVE mark through its registrations in the U.S. and in other countries. The Panel further finds that the domain name is confusingly similar to the AMEVIVE mark. The addition in the domain name of the generic and non-distinctive terms GROUP and ".com" clearly do not avoid a finding of confusing similarity. See, e.g. Kabushiki Kaisha Hitachi Seisa Kusho d/b/a Hitachi Ltd. v. Hi!Tachi Group, D2002-0335 (WIPO June 6, 2002) ("The Panel agrees with the Complainant that the word "group" is generic and descriptive, and lacks distinctiveness.)
The Panel further concludes that the evidence supports a determination that Respondent has no legitimate rights or interests in the disputed domain name. There is no evidence that Respondent has ever used the domain name in connection with a bona fide offering of goods or services, is commonly known by the domain name, or is making a legitimate noncommercial or fair use of the domain name, within the meaning of para. 4 c. of the Policy.
With respect to the issue of "bad faith" registration and use, the Panel concludes that the requisite "bad faith" exists. The evidence establishes, for example, that Respondent is not "using" the disputed domain name. Such "passive" holding of the domain name constitutes evidence of "bad faith" registration and use. See Mondich and American Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO February 16, 2000) (it is "possible to infer from this failure of use that the domain name was registered without a bona fide intent to make good faith use"). Further, it appears that Respondent registered the domain name in dispute in order to prevent Complainant from reflecting the mark in a corresponding domain name and has engaged in a "pattern of such conduct," within the meaning of para. 4 b.(ii) of the Policy. The Panel refers to Complainant's unrebutted assertion that the instant Respondent is related in some manner with the registrar Namesecure, which was the named Respondent in an ICANN proceeding involving the domain name .
7. Decision
In view of the above, the Panel grants Complainant's request for transfer to it of the domain name .
Jeffrey M. Samuels
Sole Panelist
Date: March 15, 2003
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