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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
N.V. Organon v. Johnatan Johnston
Case No. D2001-1077
1. The Parties
The Complainant is N.V. Organon, Kloosterstraat 6, 5349 AB Oss, Netherlands and is represented by Kenyon & Kenyon, One Broadway, New York, NY 10004 USA.
The Respondent is Johnatan Johnston, Postno lezeèe 1000, 1000 Ljubljana, Slovenia.
2. The Domain Name and Registrar
The Domain Name at issue is <decadurabolin.org>. The Registrar is Tucows Inc. of Toronto, Canada.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) by e-mail on August 30, 2001, and a hardcopy was received by the Center on September 3, 2001. The Center acknowledged the receipt of the Complaint on August 31, 2001.
On September 3, 2001, the Center sent to Tucows Inc. a request for verification of registration data. On September 5, 2001, Tucows Inc. confirmed to be the Registrar, that Johnatan Johnston is the Registrant of the domain name <decadurabolin.org>, that the administrative and billing contact is Dusa, Igor, having the same mailing and e-mail address as the Respondent and that the technical contact is Gorazd Velner, Savska c.34, 4000 Kranj, Slovenia.
The Center verified that the Complaint satisfies the Rules and the Supplemental Rules and that payment was properly made. The Panel is satisfied this is the case.
On September 10, 2001, the Complaint was properly notified in accordance with the Rules, paragraph 2(a), and the administrative proceedings commenced. On September 25, 2001, the Complainant filed an addition to the Complaint by e-mail (hardcopy was received by the Center on October 2, 2001).
On October 1, 2001, the Center received a belated inquiry by e-mail from the Respondent (in which he indicated a post box address which is different from that indicated in the registration data), stating that he never had received the Complaint by email or in paper form. On October 2, 2001, the Center replied to the Respondent that in addition to the Complaint sent to his address as indicated in his domain name registration, he had received on September 10, 2001, by e-mail a Notification of Complaint and Commencement of Administrative Proceeding together with a copy of the Complaint. Therefore the Center had fulfilled its responsibility under Paragraph 2(a) of the Rules and the Respondent had not submitted a Response in time. Consequently, on the same day, the Center sent to the Respondent a Notification of Respondent Default.
On October 8, 2001, the Center notified the Parties that an Administrative Panel, composed of a single member, Dr. Gerd F. Kunze, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
No further submissions were received by the Center or the Panel. The date scheduled for issuance of the Panel’s decision is October 22, 2001.
4. Factual Background
The Complainant is the owner of trademark registrations for the word mark DECA-DURABOLIN in the Benelux countries (for pharmaceutical preparations etc.), in Canada (for hormone preparations and in the USA (for hormone preparations) and for the word mark DECA DURABOLIN in the Benelux countries (for medicine and pharmaceutical preparations), Germany (medical products and pharmaceutical products) and the United Kingdom (for pharmaceutical preparations). The product, which has been sold since the early sixties under the trademark DECA-DURABOLIN respectively DECA DURABOLIN is meant to treat testosterone deficiency in men, it is a prescription drug, and its distribution is strictly controlled. It is not intended to be used for body building purposes. The Complainant, on its home page of the websites <www.decadurabolin.com> and <www.deca-durabolin.com>, explains that the product is strictly for medical use only and displays a warning against the misuse of the product in sports, for instance in bodybuilding. It is stated that use in sports is not only illicit as doping but also may bear serious health risks.
These facts are evidenced by the attachments to the Complaint and, in the absence of any submission of the Respondent, the Panelist is satisfied that the documents submitted by the Complainant are truthfully reflecting the factual circumstances of the case.
The Respondent registered the domain name <decadurabolin.org> with Tucows Inc. It has established a website under this domain name on which it promotes amongst others the Complainant’s product DECA-DURABOLIN for body building purposes and offers it for sale (as evidenced by exhibits I and J of the Complaint).
5. Parties’ Contentions
The Complainant submits that (1) the domain name <decadurabolin.org> is identical or confusingly similar to a trademark or service mark, in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; (3) the domain name was registered and is being used in bad faith.
The Respondent did not submit a Response. The Panelist will draw his conclusions from this omission according to Rule 14(b).
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant:
1) The domain name is identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights; and
2) the Respondent has no rights or legitimate interests in respect of the domain name; and
3) the domain name has been registered and is being used in bad faith.
1) Confusing similarity with a mark in which the Complainant has rights
The domain name <decadurabolin.org> is not identical to the registered word marks DECA-DURABOLIN and DECA DURABOLIN of the Complainant. However, phonetically it is identical to the Complainant's registered trademarks. The generic top level domain indicator ".org", cannot be taken into consideration when judging confusing similarity. Based on general principles of trademark law, that domain name is therefore confusingly similar to the Complainant's trademarks. This is also the case, when considering the particular circumstances of use on the Internet. A person searching for the drug DECA-DURABOLIN respectively DECA DURABOLIN on the Internet in the ".org" domain may, following Internet habits, try to find a corresponding website typing the trademark in one sequence, i.e. <decadurabolin>. When doing so, the person will normally expect to find a website entertained by the owner of the DECA DURABOLIN brand and the manufacturer of the product sold under that mark, or at least by an authorized sales agent. Instead he will visit Respondent’s website and the fact that on this website the DECA-DURABOLIN product of the Complainant is promoted, will add to his confusion.
The domain name <decadurabolin.org> is therefore confusingly similar to a mark in which the Complainant has rights in many countries. For the Policy to apply, the Complainant need not have rights in his mark in the country, where the Respondent's site is hosted or where the Respondent is located.
2) Legitimate rights or interests in respect of the domain name
The Respondent has no connection or affiliation with the Complainant, who has not consented to the Respondent's use of the domain name. Furthermore, the respondent does not use the website in connection with a bona fide offering of goods or services. The Respondent itself hints on its website to the fact that anabolic steroids are not legal in all countries and it is no doubt aware of the fact that the medicine sold by the Complainant under its trademark is not dedicated to be used for bodybuilding purposes. Thus the Complainant’s trademark is abused for a domain name referring to a possible use of the medicine which is not within its description and which may cause health risks.
The Respondent does not claim that it has been commonly known by the domain name. Since the Respondent is offering the Complainant’s product on its website, the Respondent makes no legitimate noncommercial or fair use of the domain name.
Therefore, in the absence of any submission of the Respondent, which would show a present or future legitimate interest in the domain name, the Panel, based on the arguments and evidence submitted by the Complainant, concludes that the Respondent has no rights or legitimate interests in the domain name <decadurabolin.org>.
3) Registration and use in bad faith
For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith. Apparently the Respondent has not offered and does not intend to offer the domain name for sale. However, the Complainant has submitted evidence that the Respondent uses the domain name <decadurabolin.org> for a website, on which it promotes, amongst others, the use of Complainant’s prescription drug DECA DURABOLIN for sports purposes, in particular for the purpose of body building, and offers that product for sale.
As has been said above 4 A, the product, which has been sold since the early sixties under the trademark DECA-DURABOLIN, is meant to treat testosterone deficiency in men and its distribution is strictly controlled. It is not intended to be used for body building purposes. The Complainant, on its home page of the websites <www.decadurabolin.com> and <www.deca-durabolin.com>, displays the following warning notice: "Misuse of Deca-Durabolin in sports, for instance in bodybuilding, must be strongly rejected. Such practice is not only illicit as doping but also goes far beyond the product’s investigated and officially acknowledged therapeutic use. It may therefore bear serious health risks".
Since no clear information about the proprietor of Respondent’s website is given, visitors of that website will be confused with the complainant’s mark as to the source, possible sponsorship, affiliation, or endorsement of the website by the Complainant. Thus a connection between the Complainant and the illicit and under medical considerations undesirable use of its product, which does not exclude health risks, is created. Such connection clearly damages the reputation of the Complainant as a honest and legitimate drug manufacturer.
The Panelist is therefore satisfied that the Respondent, by using the domain name <decadurabolin.org>, has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
The Complainant has also submitted evidence that the Respondent has accepted payment for products, including DECA DURABOLIN, but did not send the actual products in return. Such behavior will, under the circumstances, even further damage the reputation of the Complainant’s business.
As a further indication of registration of the domain name <decacurabolin.org> in bad faith, the Respondent, when registering that domain name, did not indicate any phone or fax number and indicated a post box address, under which it was apparently not possible to contact the Respondent. When, in its much belated e-mail dated October 1, 2001, the Respondent purported not to have received the Complaint, it did indicate a different postbox address (which was not communicated to Tucows Inc).
Since the Respondent did not fulfill its obligation to submit any and all bases for it to retain registration and use of the disputed domain name (as requested under Rule 5(b)(i)), the Panelist is satisfied that the facts and evidence submitted by the Complainant, as described, prove registration and use of the domain name <decadurabolin.org> by the respondent in bad faith.
The Panel decides that the Complainant has proven each of the three elements of paragraph 4(a) of the Policy.
Pursuant to paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel requires that the registration of the domain name <decadurabolin.org> be transferred to the Complainant.
Dr. Gerd F. Kunze
Dated: October 16, 2001