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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hoffmann-La Roche Inc. v. NASR ANAIZI
Case No. D2001-0767
1. The Parties
The Complainant is Hoffmann-La Roche Inc., a corporation organized and existing under the laws of the State of New Jersey, with its principal place of business located at 340 Kingsland Street, Nutley, New Jersey 07110, USA.
The Respondent is NASR ANAIZI, located at 19 Crest View Drive, Pittsford, New York 14534, USA.
2. The Domain Name and Registrar
This dispute concerns the following domain name:
The Registrar with which this domain name is registered is Network Solutions, Inc., located at 505 Huntmar Park Drive, Herndon, VA 20170-5142, USA.
3. Procedural History
On June 8, 2001, and June 11, 2001, respectively, the World Intellectual Property Organization Arbitration and Mediation Center (the WIPO Center) received a Complaint electronically and by hard copy for a decision in accordance with 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).
On June 12, 2001, the WIPO Center acknowledged receipt of the said Complaint.
On June 12, 2001, the WIPO Center sent a Request for Registrar Verification to the Registrar. On June 13, 2001, the Registrar, Register.com, confirmed to the WIPO Center that it was the Registrar of the said Disputed Domain Name and also that the current registrants of the said Domain Name was the Respondent.
On June 13, 2001, having found that the Complaint had satisfied the formal requirements of the Policy, the Rules, and the Supplemental Rules, the WIPO Center sent the Notification of Complaint and Commencement of Administrative Proceeding (the Notification) by post/courier, facsimile, and e-mail to the Respondent and transmitted electronically copies of said documents to the Complainant, ICANN, and the Registrar. The said Notification particularized the formal date of the commencement of this administrative proceeding as June 13, 2001, and required the Respondent to submit a Response to the Complaint within 20 calendar days from the date of receipt of the Notification, failing which the Respondent would be considered to be in default.
The Respondent failed to file the Response with the WIPO Center by the last date, i.e. July 2, 2001. On July 3, 2001, the WIPO Center sent the Notification of Respondent Default to the Respondent by facsimile and e-mail and copied the Complainant via e-mail. The Complainant elected to have the dispute decided by a single-member panel (the Panel). On July 10, 2001, the WIPO Center appointed Mr. Terrell C. Birch to be the panelist after receiving a Statement of Acceptance and Declaration of Impartiality and Independence from him and sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Complainant and the Respondent and copied it to the Panel by e-mail. On the same day, the WIPO Center sent a Transmission of Case File to the Panel.
The Panel finds that the WIPO Center has discharged its obligations and responsibility under the Rules. The Panel will hereby issue its Decision based on the Complaint, the Policy, the Rules, and the Supplemental Rules, without the benefit of any Response from the Respondent.
4. Factual Background
A. Hoffman-La Roche and its Trademark
This complaint is based on the following grounds:
Complainant is a large manufacturer of a wide variety of pharmaceutical preparations in the United States and has been in business in the United States for over 75 years. Its pharmaceutical preparations are advertised and sold under numerous trademarks which have been registered in the U.S. Patent and Trademark Office.
Complainant is the owner of an intent-to-use application (Serial No. 76-214,676) for the mark VALCYTE for a pharmaceutical antiviral preparation. This application was filed on February 22, 2001. Complainant has begun to ship its VALCYTE antiviral preparation into its regular distribution channels of trade.
On March 8, 2001, shortly after Complainant had filed its intent-to-use application to register VALCYTE, the Respondent registered the domain name <valcyte.com>.
The domain name at issue here is identical to the Complainant’s trademark VALCYTE which it seeks to register. As such, the domain name is likely to be confused with Complainant and is confusingly similar to Complainant’s claimed trademark VALCYTE.
Complainant avers, upon information and belief, that Respondent is an individual and that Respondent does not conduct any business under "NASR ANAIZI" except the sale of domain names. This is shown in a WHOIS report dated May 22, 2001 covering Respondent’s domain name registration of <valcyte.com> wherein it is stated, "Make an offer to get this domain."
On May 1, 2001, Complainant’s counsel sent Respondent a cease and desist letter together with a Registrant Name Change Agreement to be completed and returned to Complainant’s counsel. The letter was sent by certified mail and a receipt card was signed and returned to Complainant’s counsel. No answer has been received to the letter of May 1, 2001.
5. Parties’ Contentions
Essentially, the contentions of the Complainant are as follows:
The Disputed Domain Name wholly incorporates the Complainant’s VALCYTE mark, trade name, and domain name, and is confusingly similar to that mark,
The Respondent has no rights or legitimate interests in the Disputed Domain Name; and
The Respondent has registered and is using the Disputed Domain Name in bad faith.
In view of the fact that the Respondent has not filed a Response, the Panel is in no position to make out its contentions.
6. Discussion and Findings
6.1 Effect of Respondent's Default
By paragraph 5(b)(i) of the Rules, it is expected of a Respondent to:
"[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…"
In the event of a default, under paragraph (14)(b) of the Rules:
"…the Panel shall draw such inferences therefrom as it considers appropriate."
As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004 (February 16, 2000):
"Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent."
In the instant administrative proceeding, the Respondent’s default entitles the Panel to conclude that Respondent has no evidence to rebut the assertions of the Complainant. It enables the Panel to proceed to make a finding in favor of the Complainant.
6.2 Elements to be proven
However, paragraph 4(a) of the Policy envisages that for the Complaint to succeed, the Complainant must establish that:
i) the Respondents' Domain Name(s) is(are) identical or confusingly similar to a trademark in which the Complainant has rights; and
ii) the Respondents have no rights or legitimate interests in respect of the Domain Name(s); and
ii) the Respondents' Domain Name(s) has(have) been registered and is(are) being used in bad faith.
The Panel in Cortefiel, S.A. v. Miguel Garcia Quintas, WIPO Case No. D2000-0140 (April 24, 2000) notes that under the Policy, even if the respondent is in default,
"…the complainant must prove that each of these three elements are present."
6.3 Identical or Confusingly Similar
The Complainant claims and has established first use and ownership of the VALCYTE mark. Ownership of this mark is clearly in the Complainant. Under the Policy, all that is required of the Complainant is to establish its rights in the mark, and the extent of the geographical area in which the rights accrue does not matter. The Panel has compared the Disputed Domain Name with the Complainant’s VALCYTE mark and finds that the second level domain thereof is dominated by the Complainant’s mark. The Panel finds that there is such similarity in sound, appearance, and connotation between the VALCYTE mark and the said Disputed Domain Name as to render said Disputed Domain Name confusingly similar to Complainant’s VALCYTE mark.
6.4 Respondents' Rights or Legitimate Interests in the Disputed Domain Name
Under paragraph 4(c) of the Policy, the Respondent may demonstrate its rights and interests in the said Disputed Domain Name by showing:
i) its use of, or demonstrable preparations to use, the said Disputed Domain Name or a name corresponding to the said Disputed Domain Name in connection with a bona fide offering of goods or services before any notice to him of the dispute; or
ii) it (as individuals, a business, or other organization) has been commonly known by the said Disputed Domain Name, even if it has acquired no trademark or service mark rights; or
iii) it is making a legitimate noncommercial or fair use of the said Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence presented by Respondent in demonstrating any of the foregoing factors because Respondent is in default and has failed to respond in this action. Accordingly, the evidence available contains nothing that may justify a legitimate noncommercial or fair use of the said Disputed Domain Name by Respondent. Neither is there any evidence for any of the other two foregoing requirements.
Furthermore, in the absence of any license or permission from Complainant to use its VALCYTE name and mark or to apply for or use any domain name incorporating that mark, it is clear that no actual or contemplated bona fide or legitimate use of the contested domain name could be claimed by Respondent. Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055 (March 21, 2000).
6.5 Registration and Use in Bad Faith
As stated by the panel in World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001 (January 14, 2000) in order for the Complainant to succeed:
"... the name must not only be registered in bad faith, but it must also be used in bad faith."
The Complainant must prove that the Respondent registered and also used the said Domain Name in bad faith in order to establish ‘bad faith’ on the part of the Respondent.
Respondent’s bad faith in registering and using the domain name <valcyte.com> is evident in a number of ways. First, as discussed above, Respondent owns no trademark registrations that include the mark VALCYTE, nor does it do business under a name that incorporates the VALCYTE mark prior to Complainant's establishment of rights in the mark.
Respondent did not respond to notice letters, sent by Hoffman-La Roche’s counsel, nor a follow-up letter.
The registration of the domain name identical to Complainant’s claimed trademark can only have been intended either to confuse the medical profession and public or as an act of cyberpiracy. Likelihood of confusion has been the basis for ICANN panels and the U.S. Courts to transfer ownership of domain names, or enjoin the use of domain names that are so identical or confusingly similar. See, e.g., Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202 F.3d 489 (2nd Cir. 2000) (Federal Trademark Dilution Act and Anti-Cybersquatting Consumer Protection Act support injunction of domain name adopted in bad faith); E. & J. Gallo Winery v. Spider Webs Ltd., 129 F.Supp.2d 1033 (S.D. Tex. 2001 (Anti-Cybersquatting Consumer Protection Act supports permanent injunction and surrender of <ErnestandJulioGallo.com> domain name to the trademark owner); Northern Light Technology, Inc. v. Northern Lights Club, 236 F.3d 57 (lst Cir. 2001) (affirming preliminary injunction of <northernlights.com> domain name based on bad faith of registrant); Joseph C. Shields v. John Zuccarini, 89 F.Supp.2d 634 (E.D. Pa 2000) (Anti-Cybersquatting Consumer Protection Act supports preliminary injunction of five domain names similar to "Joe Cartoon" trademark); Paccar, Inc. v. Telescan Technologies, L.L.C., 115 F.Supp.2d 772 (E.D. Mich. 2000) (Preliminarily enjoining use of any domain names containing the trademarks "Peterbilt" and "Kenworth" owned by the plaintiff because they are likely to cause confusion in the same marketing channels); Broadbridge Media v. Hypercd.com, 106 F.Supp.2d 505 (S.D.N.Y. 2000) (<Hypercd.com> infringes "HyperCD" trademark under Anti-Cybersquatting Consumer Protection Act); OBH, Inc. v. Spotlight Magazine, Inc., 86 F.Supp.2d 176 (W.D.N.Y. 2000) (finding <thebuffalonews.com> infringes upon plaintiff’s registered mark "the Buffalo News" because of dilution and consumer confusion); Ford Motor Company v. Ford Financial Solutions, Inc., 103 F.Supp.2d 1126 (N.D. Iowa 2000) (<fordfinancialsolutions.com> infringes on plaintiff’s "Ford Financial" trademark and causes consumer confusion and dilution).
The fact that Complainant’s claimed trademark is the subject of an intent-to-use application does not negate Complainant’s rights. See, e.g., WIPO Administrative Panel Decision, Case No. D2000-0253 dated May 29, 2000, Quixtar Investments, Inc. v. Dennis Hoffman, holding for the Complainant stating, "The evidence also establishes that Complainant through the filing of its intent-to-use trademark application on January 26, 1999 and its March 1999 promotional activities, has ‘rights’ in the QUIXTAR mark. These activities predate Respondent’s registration of the domain name in dispute and National Arbitration Forum, Decision File No. FA94859 dated June 27, 2000 holding for Complainant and stating: "In addition, on July 23, 1999, Mondera filed intent-to-use applications in the United States Patent and Trademark Office for the service marks MONDERA and <mondera.com>. These applications … are currently pending." Here, as stated on page 5, Complainant has begun to ship its VALCYTE product into its regular distribution channels of trade.
Section 4(b) of the ICANN Policy identifies certain, non-exclusive categories of evidence, any of which alone "shall be evidence of the registration and use of a domain name in bad faith." The pertinent category in this case is the circumstances which clearly establish that Respondent registered or acquired the domain name primarily for the purpose of selling it to Complainant or to a competitor for profit. (Paragraph 4(b)(i)). This is shown on the WHOIS which states "Make an offer to get this domain."
Respondent’s clear intent was to pre-empt Complainant’s use of a domain name using its company’s proposed trademark VALCYTE. Complainant filed its application to register the mark VALCYTE on February 22, 2001 and Respondent registered its domain name <valcyte.com> on March 8, 2001, just fourteen (14) days later. The most reasonable inference is that Respondent registered the domain name to sell to Complainant or to a competitor. Respondent undoubtedly recognized the value of a domain name which was the same as the application to register this mark in the U.S. Patent and Trademark Office by a well-known pharmaceutical company. Respondent’s registration of the domain name alone constitutes bad faith use. In fact, even a completely dormant domain name can satisfy the paragraph 4(b) "use" requirement. See Telstra Corp. Ltd. v. Nuclear Marshmallows, Case No. D2000-0003, at §7.9 (WIPO February 18, 2000). After analyzing the language of the Policy and the legislative history, the Telstra panel concluded that "inaction (e.g. passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith." In fact, the panel in Telstra transferred the domain name at issue even though there was "no positive action being undertaken by the Respondent in relation to the domain name," and no evidence presented that the respondent was a serial cybersquatter. Id. at §7.8 ("The domain name <telstra.org> does not resolve to a website or other online presence. There is no evidence that a website or other online presence is in the process of being established which will use the domain name. There is no evidence of advertising, promotion or display to the public of the domain name.")
For the above reasons, there is no doubt that the domain name <valcyte.com> was registered and is being used in bad faith by Respondent in violation of Paragraph 4(a) of the Policy.
For all the foregoing reasons and pursuant to the ICANN Rules, paragraph 15, the Panel finds that the Complainant has proved each of the three elements of paragraph 4(a) of the Policy. The Panel requires that the said Disputed Domain Name, namely <valcyte.com>, be transferred to the Complainant pursuant to paragraph 4(i) of the Policy.
Terrell C. Birch
Dated: August 1, 2001