WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Schering Corporation and Schering –Plough Ltd. v. Eurocontrol Ltd. Case No. D2008-1741 1. The Parties
The Complainants are Schering Corporation, of New Jersey, United States of America and Schering-Plough Ltd, of Lucerne, Switzerland, represented by ALG India Law Offices, of India.
The Respondent is Eurocontrol Ltd. of Saint-Petersburg, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with DomReg Ltd. d/b/a LIBRIS.com. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by e-mail on November 11, 2008 and in hardcopy on November 17, 2008. The amendment to the Complaint was submitted by e-mail on December 2, 2008 and in hardcopy on December 4, 2008. After several reminders, on November 21, 2008, DomReg Ltd. d/b/a LIBRIS.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 27, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an Amended Complaint on December 2, 2008. The Center verified that the Amended 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 the Respondent of the Complaint, and the proceedings commenced on December 5, 2008. In such notification, it was stated that the Center will: accept the Complaint as filed in English, accept a Response in either English or Russian, appoint a Panel familiar with both languages mentioned above, if available. In accordance with the Rules, paragraph 5(a), the due date for Response was December 25, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 31, 2008.
The Center appointed Ladislav Jakl as the Sole Panelist in this matter on January 22, 2009. 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
The disputed domain name was first registered on November 21, 2001; as there is no Response it is not clear if the Respondent registered at that time.
The Complainants are the holders of the identical trademarks TEMODAL and TEMODAR, worldwide registered in 113 countries, including Russian Federation, application date 6/4/1997, registration No. 167544.
TEMODAL is a trademark of the Complainants portfolio since 1978 when the earliest applications for there registration were filed in Denmark (12/12/1978), Sweden (12/12/1978) and Finland (12/20/1978). Copies of registration and renewal certificates along with English translation were submitted with the Complaint. These trademarks are worldwide used in class 5 for cancer drugs, particularly brain cancer drugs.
In accordance with paragraph 4(i) of the Policy, the Complainants request the Panel in this administrative proceeding to issue a decision that the disputed domain name be transferred to the Complainant No.1, the Schering Corporation.
Under Rules paragraph 11, the Panel may determine the language of proceedings. The Complainant argues that the Respondent offers the domain name for sale in English, has been in other English cases (e.g., BrandStrategy, Inc. v. BusinessService Ltd., WIPO Case No. D2007-0749; Imperial Chemical Industries Plc , Desowag GmbH v. BusinessService Limited,WIPO Case No. D2007-0998), and to order translation would cause unnecessary delay and cost in this proceeding. The Respondent did not reply. The Panel determines that the language of the proceeding is English. See e.g., Deutsche Post AG v. Liu Shen,WIPO Case No. D2008-0294. 5. Parties' Contentions A. Complainants
The Complainants contend that the disputed domain name reproduces entirely trademarks TEMODAL owned by them in more than 100 countries, including Russian Federation. The disputed domain name is identical to the Complainants trademark TEMODAL in which Complainants have rights. The disputed domain name is moreover similar to Complainants trademark TEMODAR in which Complainants have rights.
The Complainants further contend that TEMODAL (as also TEMODAR) is a well known trademark having international fame and recognition. Through long years of marketing, advertisement, promotion, testing and use has acquired distinctiveness as a trademark owned exclusively by the Complainants. TEMODAL has acquired secondary meaning and is used to refer to the anti cancer drug developed by the Complainants. Any search on the Internet and in medical literature immediately reveals TEMODAL as being extremely well known and associated exclusively with the Complainants and the Respondent will be deemed to have constructive knowledge of Complainants` rights in TEMODAL. Rights or Legitimate Interests
The Complainants contend that the Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence of the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding thereto in connection with bona fide offering of goods or services. The Respondent acts under anonymity. Respondent is further precluded from claiming a right or legitimate interests in the disputed domain name by the fact that he had notice of the TEMODAL and TEMODAR trademarks before any use or demonstrable preparation to use the disputed domain name. The Respondent has never been commonly known by the disputed domain name and has not acquired trademark or service mark rights in the disputed domain name.
The Complainants further contend that the Respondent is not making any legitimate non-commercial or fair use of the disputed domain name. The website hosted by Respondent at the disputed domain name merely offers it for sale without even revealing who the Respondent is, much less what it does or even what its contact particulars are.
The Complainants also contend that there have not been any past dealings between them and Respondent. And that there has never been any relationship between Complainants and Respondent and Respondent has never been licensed or authorized to use the TEMODAL mark in any manner, including in domain name.
The Complainants emphasize that the Respondent has absolutely no rights or legitimate interests in the disputed domain name. Bad faith
The Complainants contend that disputed domain name was registered and is being used in bad faith. The Respondent has registered the domain name solely for expropriating the goodwill and brand image of the Complainant's trademarks by selling or transferring the domain name at a price far in excess of any reasonable out of pocket expenses directly related to the disputed domain name, to other cybersquatters and infringers like itself for the same ulterior purpose, or else to competitors of the Complainants for completely illegitimate purposes. As the Complainant's further introduce, the website of the Respondent hosted at the disputed domain name significantly displays that this domain name is for sale at introduced price and that the owners of the domain name are accepting offers from interested parties willing to obtain ownership rights over the domain name.
The Complainants emphasize that this is the case of manifested bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) 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
(ii) the respondent has no rights or legitimate interests in respect of the domain Name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainants have filed a list of its above 113 mentioned trademarks and enclosed copies of trademark registration decisions of the corresponding industrial property offices. The Panel finds that these trademarks comprise the word TEMODAL. These trademarks are worldwide used in class 5 for cancer drugs, particularly brain cancer drugs. The Panel finds that disputed domain name is identical to the Complainants trademark TEMODAL in which Complainants have rights.
Therefore, the Panel finds that requirement of the paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances, in particular but without limitation, which may be effective for a respondent to demonstrate that it has rights to, or legitimate interests, in the domain name at issue, for purpose 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.”
According to paragraph 15(a) of the Rules a Panel shall decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, Rules and any rules and principles of law that it deems applicable.
According to paragraph 5(e) of the Rules, if a respondent does not submit a response, in the absence of exceptional circumstances, the panel shall decide the dispute based upon the complaint.
From the facts and circumstances established by the Complainant as set out in section 5 above, the Panel finds that Complainants have made a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name.
Having received no response from the Respondent within the fixed period of time from the Notification of Complaint, the Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstance giving rise to a right to or legitimate interests in the domain name at issue. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that domain name has been registered or acquired by Respondent primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent 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 Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) the Respondent by using the domain name has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as the source, sponsorship, affiliation, or endorsement of Respondent's website or location of a product or service on its website or location.
Based on the Complaint the Panel finds, that the Respondent has registered the domain name solely for expropriating the goodwill and brand image of the of the Complainant's trademarks by selling or transferring the domain name at a price far in excess of any reasonable out of pocket expenses directly related to the disputed domain name, to other cybersquatters and infringers like itself for the same ulterior purpose, or else to competitors of the Complainants for completely illegitimate purposes. The website of the Respondent hosted at the disputed domain name significantly displays that this domain is for sale at introduced price and that the owners of the domain name are accepting offers from interested parties willing to obtain ownership rights over the domain name.
On the basis of the above mentioned arguments the Panel finds that the Respondent has acted in bad faith within the meaning of paragraph 4(b) of the Policy. 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 the Complainant No.1, the Schering Corporation.
Ladislav Jakl
Sole Panelist
Dated: February 4, 2009
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