WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Chemical Works of Gedeon Richter Plc v. Covex Farma S.L. Case No. D2008-1379 1. The Parties
Complainant is Chemical Works of Gedeon Richter Plc, Budapest, Hungary, representing itself.
Respondent is Covex Farma S.L. of Madrid, Spain, represented by Anne-Sophie Belamine, Spain. 2. The Domain Names and Registrar
The disputed domain names , and are registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2008. On September 10, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain names. On September 10, 2008, Network Solutions, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 24, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 14, 2008. The Response was filed with the Center on October 7, 2008.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on October 17, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant asserts ownership of trademark registrations for the term CAVINTON in 86 countries, including but not limited to Hungary, Brazil, Switzerland, China, the Czech Republic, Germany, France, United Kingdom of Great Britain and Northern Ireland, Japan, Norway, Peru, the Russian Federation, Ukraine and South Africa. Complainant provided registration numbers with respect to the aforesaid claimed registrations, but did not provide further supporting evidence such as copies of certificates of registration, trademark registration office database reports, or otherwise. The Panel used the WIPO Madrid Express Database to confirm that Complainant registered the CAVINTON trademark in Hungary on May 27, 1968, and registered the mark under the Madrid Agreement, international registration number (IRN) 393619, dated November 27, 1972, in international class (IC) 5, covering “pharmaceutical product for cerebral vasodilatation”. Although the Madrid Agreement and Protocol do not authorize designation of all the countries for which Complainant alleges ownership of trademark registrations, more than 40 such designations are indicated on the Madrid Express Database report. (Panel visit to WIPO Madrid Express Database of October 31, 2008.)
The Panel notes that parties alleging ownership of trademark registrations in administrative proceedings as a matter of routine should submit evidence of ownership such as copies of certificates of registration or trademark office database reports. Without such evidence, administrative panelists are unable to determine ownership or status of registration. Self-generated lists of trademark registrations are not sufficient to demonstrate ownership and status.
Complainant indicates that both Complainant and Respondent are engaged in the manufacture of “Vinca Alkaloids”, that “Vinpocetine” was originally patented by Complainant in 1971, “and has been used internationally always under the trademark Cavinton”.
According to the Registrar's verification report, Respondent is registrant of the disputed domain names. According to that report, the record of registration of the disputed domain name was created on December 23, 1996, the record of registration of the disputed domain name was created on March 20, 2007, and the record of registration of the disputed domain name was created on March 20, 2007.
Respondent has provided evidence (in the form of a certificate a registration) of ownership of trademark registration for CAVINTON in the Republic of Slovenia, registration number 9971255, dated October 17, 2000, in IC 5, covering “pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; materials for stopping teeth [sic], dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides”. The application for registration of the aforesaid trademark was filed on September 27, 1999.
There is no evidence on the record of this proceeding to indicate that Respondent has ever made use of the disputed domain names.
Complainant indicates there have been patent negotiations and opposition proceedings involving Complainant and Respondent. By letter of June 11 (year not indicated), Complainant objected to Respondent's registration of the disputed domain names. Respondent indicated by return letter (undated) that Respondent has never used the disputed domain names, and that it would “not build, use, design or make any profit from them up until the expiry date of each domain name. From the expiration date of such protection [Respondent] undertakes to not renew such protection.” Respondent “undertakes to not sell to any third person the domain names in question” and Respondent “will not be responsible in the case of [Complainant] not being able to obtain the exclusive rights which derive from the ownership of such domain names at the end of the protection period”. This correspondence is furnished by Complainant. Its authenticity is not disputed by Respondent.
Respondent describes itself as a company specializing since 1977 in manufacturing, development and commercialization of chemical and pharmaceutical products. It states “After a quarter of a century of research and development COVEX, a company that began modestly on the outskirts of Madrid, Spain, is now firmly established and leading in the production of the periwinkle family products in the world. Over the last 15 years COVEX has exported more than 95% of its production to over 55 countries and now has affiliates in nine countries around the world. Presently, the company holds more than 110 patents in over 100 countries.”
The Registration Agreement in effect between Respondent and Network Solutions LLC subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)). 5. Parties' Contentions A. Complainant
Complainant asserts ownership of rights in the trademark CAVINTON as evidenced by registration in 86 countries. Complainant argues that the disputed domain names are identical with its trademark.
Complaining argues that Respondent has no rights or legitimate interests in the disputed domain names. Complainant alleges that Respondent has not been commonly known by the disputed domain names, has not made any preparations for or use of the disputed domain names, including any legitimate noncommercial use, and that Respondent conceded its lack of legitimate interests in the disputed domain names when it indicated its intention not to renew registration of those domain names.
Complainant alleges that it has long used its CAVINTON trademark internationally and that Respondent is a participant in the same international markets as Complainant. On the basis of prior disputes between Complainant and Respondent with respect to patents, Respondent was certainly aware of Complainant's trademark when it registered the disputed domain names.
Complainant requests that the Panel direct the registrar to transfer the disputed domain name to Complainant, and that the Panel direct the registrar to cancel registration of the domain names and . B. Respondent
Respondent argues that the disputed domain names are identical to a trademark owned by it, as evidenced by registration in the Republic of Slovenia “since September 27, 1999”. Respondent argues that it is thus entitled to register and use the identical disputed domain names.
Respondent repeats its argument with respect to ownership of trademark rights in Slovenia as the basis for rights and legitimate interests in the disputed domain names. Respondent states that it does not make any commercial use of the disputed domain names and does not use the names to divert consumers, to tarnish “the trademarks at issue”, nor for any advertising support. Respondent states “It does not have any active website develop under the domain names in question”.
Respondent argues that it did not register and use the disputed domain names in bad faith because it owns a registered identical trademark in Slovenia that entitled it to own the corresponding domain names. Respondent states “Also, due to a new internal policy of the Company, [Respondent] does not use the disputed domain names as an active website”.
Respondent indicates that it is a company specialized in the manufacturing and commercialization of chemical and pharmaceutical products with exports to over 55 countries.
Respondent indicates that it registered the disputed domain name on December 23, 1996, before adoption of the Policy, and “Therefore, at this moment the Rules were unknowing by the Respondent”. Respondent indicates that since it owns the identical trademark CAVINTON it is clear that it did not register the disputed domain names to intentionally attract Internet users for commercial gain. Respondent indicates that it did not register the disputed domain names for the purpose of selling, renting or otherwise transferring them to Complainant, but because of its identical trademark. 6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
Respondent received notice of the Complaint and commencement of the administrative proceeding from the Center and filed its Response in a timely manner. Respondent received adequate notice of these proceedings and had reasonable opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent's domain name is identical or confusingly similar to a trademark or service mark in which 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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief. A. Identical or Confusingly Similar
Complainant has demonstrated rights in the trademark CAVINTON through registration in a significant number of countries dating from as early as 1968 (see Factual Background, supra). Respondent has not challenged Complainant's assertion of trademark rights. The Panel determines that Complainant has rights in the trademark CAVINTON in a significant number of countries, including Hungary.
The disputed domain names are identical to Complainant's CAVINTON trademark. This fact also is undisputed by Respondent.
The Panel determines that Complainant owns rights in the trademark CAVINTON and that the disputed domain names are identical to that mark. B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))
Respondent has indicated that it has neither used nor has plans to use the disputed domain names. Respondent is not making legitimate noncommercial or fair use of the disputed domain names.
Respondent argues that it has rights or legitimate interests in the disputed domain names because it registered the trademark CAVINTON in the Republic of Slovenia in 1999. The registration data from Respondent's certificate of registration from Slovenia indicates that the registration issued on October 17, 2000, and Respondent has not presented evidence that trademark rights in Slovenia arose at an earlier date (for example, from the date of application). The Panel accepts that Respondent registered the trademark CAVINTON in the Republic of Slovenia on October 17, 2000.
Paragraph 4(c)(ii) of the Policy indicates that a party may demonstrate rights or legitimate interests in a domain name as a consequence of having been commonly known by the domain name. It is reasonable to presume that a party owning rights in a trademark has been known by the trademark, and thus by an identical domain name. However, that presumption is not conclusive. It is sometimes the case that a domain name registrant has registered a trademark in circumstances indicating that the registrant was seeking to take unfair advantage of the owner of previously existing trademark rights. See, e.g, Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”WIPO Case No. D2000-0847. The facts in this case indicate that Respondent registered the trademark CAVINTON in Slovenia to facilitate taking unfair advantage of Complainant's previously existing trademark rights in CAVINTON:
1. Respondent is in the same line of business as Complainant and was certainly aware of Complainant's widely trademark-registered pharmaceutical product when it registered the trademark in Slovenia;
2. Respondent registered one of the disputed domain names, , in 1996, well before it applied for trademark registration in Slovenia;
3. Respondent has provided no evidence whatsoever of “use in commerce” in Slovenia or elsewhere of the trademark CAVINTON. Respondent has specifically disclaimed use of or intent to use the disputed domain names that incorporate that trademark.
The Panel determines that Respondent's trademark registration for CAVINTON in the Republic of Slovenia does not establish that Respondent was known by the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy, nor does it otherwise establish that Respondent has rights or legitimate interests in the disputed domain names.
The Panel determines that Complainant has established that Respondent does not have rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
The Policy indicates that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith” (Policy, paragraph 4(b)). Among these circumstances are that a respondent “(ii) [has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) [has] registered the domain name primarily for the purpose of disrupting the business of a competitor.”
Respondent has argued with respect to the disputed domain name that because it registered that domain name prior to adoption of the Policy it did not act to register and use the disputed domain name in bad faith within the meaning of the Policy because it was unaware of the Rules. Respondent has not challenged the fact that its registration of is presently governed by the Policy because its current registration is subject to the Registrar's service agreement that incorporates the Policy.
The Policy does not by its terms act to insulate Respondent with respect to actions undertaken prior to its adoption. Prior to adoption by ICANN of the Policy, the registrar of domain names would informally consider petitions for the cancellation of domain names based on allegations of trademark infringement. The Policy was adopted, inter alia, to regularize the mechanism for allowing trademark owners to dispute domain name registrations based on allegations of the taking of unfair advantage of trademark rights,1 but there is no reason to conclude that adoption of the Policy was intended to “legitimize” or insulate abusive practices taking place before its adoption.
Respondent was and remains a competitor of Complainant. Respondent has not disputed that it was aware of Complainant's CAVINTON trademark when it registered in 1996 – well prior to Respondent's trademark registration in Slovenia – and Respondent has not provided any explanation for why it undertook that first domain name registration. Respondent has not used . Nor has Respondent offered any explanation for its registration of the disputed domain names and , other than to state that it was entitled to do so because it registered a corresponding trademark in Slovenia (in 2000).
The Panel is satisfied that Respondent registered the three disputed domain names to prevent Complainant from registering those names corresponding to Complainant's trademark, and that the 10 year period between Respondent's first registration and subsequent registrations indicates a pattern within the meaning of paragraph 4(b)(ii) of the Policy. The Panel is also satisfied that Respondent registered the three disputed domain names to interfere with the business of a competitor (i.e., Complainant) within the meaning of paragraph 4(b)(iii) of the Policy.
Respondent registered and used the three disputed domain names in bad faith within the meaning of paragraph 4(b) of the Policy.
Complainant has expressly requested transfer of and cancellation of and . Although the Panel's determination in this proceeding would permit it to direct transfer of all three disputed domain names to Complainant, the Panel does not consider it appropriate to grant Complainant a form of relief that it has not requested. The Panel will therefore direct the Registrar to transfer to Complainant and to cancel Respondent's registration of and . 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to Complainant.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, and be cancelled.
Frederick M. Abbott
Sole Panelist
Dated: October 31, 2008
1 See, The Management Of Internet Names And Addresses: Intellectual Property Issues, Final Report of the WIPO Internet Domain Name Process, April 30, 1999, e.g., at paragraph 45-53.
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