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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Solvay Pharmaceuticals, Inc. and Unimed Pharmaceuticals, Inc. v. Javier Murcia
Case No. D2002-0356
1. The Parties
The Complainants are Solvay Pharmaceuticals, Inc. ("Solvay"), 901 Sawyer Road, Marietta, Georgia 30062, United States of America, and Unimed Pharmaceuticals, Inc. ("Unimed"), 4 Parkway North, Deerfield, Illinois 60015, United States of America. Complainants’ authorized representatives in this Administrative Proceeding are Thomas F. Zych, Esq., and Hope E. Durant, Esq., of Thompson Hine LLP, 3900 Key Center, 127 Public Square, Cleveland, Ohio 44114, United States of America.
The Respondent was identified by the Complainants as Javier Murcia, according to Go Daddy Softwater, Inc.’s Whois database, based on a search for, and confirmation of, which result was set forth in Annex 1 to the Complaint. Javier Murcia is located at RGRH MT, 1900 Sunset Harbor Drive, #1507, Miami Beach, Florida 33139, United States of America. The Respondent has filed no response or other pleadings in connection with this Administrative Proceeding nor advised of a representative.
2. The Domain Name and Registrar
The Domain name in issue is <androgel.org>. The current Registrar with which the disputed domain name is registered is Go Daddy Software, Inc., 14455 North Hayden Road, Suite 219, Scottsdale, Arizona 85260, United States of America.
3. Procedural History
On April 16, 2002, the Complaint was received via email by the WIPO Arbitration and Mediation Center ("the Center"); a hard copy having been received on April 19, 2002. Receipt of the e-mailed copy was acknowledged by the Center on April 18, 2002.
On April 18, 2002, the Center requested verification of the Registrar identified in the original Complaint (iHoldings.com Inc., d/b/a DotRegistrar.com). Upon notification on April 18, 2002, that the Registrar was changed, verification of the changed Registrar (Go Daddy Software Inc.) was requested, as a result of which the Center requested, on April 23, 2002, an amendment (First Amendment) to the Complaint to so state. The First Amendment to the Complaint was thus received by the Center on April 24, 2002, by e-mail with a hard copy following and received on April 26, 2002. As a result of the e-mailed First Amended Complaint and communications thus following between the Center and the Complainants on April 25, 2002, a Second Amended Complaint was received by the Center on April 26, 2002, by e-mail with a hard copy received on April 30, 2002.
On May 1, 2002, the Center completed a Formal Requirements Compliance Checklist, following which notification was sent to the Respondent of the Complaint and the Commencement of Administrative Proceedings (all references to the Complaint are based upon the Second Amended Complaint).
The Respondent failed to reply within twenty (20) days pursuant to Paragraph 5(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"). Pursuant to the election of the Complainants on May 24, 2002, the Center appointed Harry L. Arkin, Esq. ("Mr. Arkin") as the Sole Panelist. Mr. Arkin duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence. The Center, on June 4, 2002, forwarded Notification of Appointment to the Complainants and Respondent of Mr. Arkin as the Single Member Administrative Panel to decide the case and the originally Projected Decision Date.
The original date for the Administrative Panel’s decision was extended to July 1, 2002, in accordance with Pargraph 10(c) of the Rules.
4. Factual Background
The factual background is based entirely upon the Second Amended Complaint of the Complainants inasmuch as the Respondent did not file any response whatsoever in this Administrative Proceeding.
The Complainant, Unimed, has a United States Trademark, ANDROGEL, filed August 28, 1995, and registered March 16, 1999. The Administrative Panel notes that there is no transfer of the trademark of which evidence has been supplied to the Administrative Panel that the trademark has been transferred to or shared jointly by the Complainant, Unimed with Complainant Solvay; however, the Complaint sets forth that Unimed is a subsidiary of Solvay (see Paragraph (12)(a)(ii) of the Complaint)
5. Parties’ Contentions
(1) The Complaint is based upon the Trademark described in Section 4 set forth above and cites the only difference between the Trademark and the domain name used by the Respondent is the addition of ".org" to the trademark.
(2) The Complainant, Solvay, also submits that it has expended "millions of dollars to promote" the Trademark ANDROGEL and good will related thereto which good will claim is substantial based upon the aforedescribed expenditure.
(3) The Complainants further submits that the Respondent does not own any rights in the Trademark ANDROGEL, which Trademark has never been owned by the Respondent.
(4) The Complainants thus contend that the Respondent has no rights or legitimate interests in respect of the domain name described above, thus the right of the Respondent to the use of said domain name is disputed by the Complainants.
(5) The Complainants contend that the Respondent registered, and is using, the aforedescribed domain name in bad faith in violation of the Uniform Domain Name Dispute Resolution Policy ("Policy").
The Respondent did not file a Response to the Complaint (nor to any of the
amended forms thereof).
6. Discussion and Findings
The Complainants submitted as Annex 7 to the Complaint, a sworn Declaration of one of the attorneys acting for the Complainants to the effect that the attorney telephoned the telephone number provided on the <androgel.org> website under "Fast Order Androgel". The Declaration states that the telephone was answered by "A customer service representative" who stated "‘Modern Therapy’" and who went on to inform the Complainants’ attorney that "‘Modern Therapy was located in Miami Beach, and specialized in anti-aging therapies for its patients’". The attorney for the Complainants went on, in the Annex, to state that she was advised by the "representative (of Modern Therapy, who answered the telephone), that the gel used in Modern Therapy’s programs was not Androgel, but was a generic compound…(and) that Androgel was not for sale…(and) that the clinic did not use Androgel at all in its programs". The Respondent thus does not have a legitimate interest in the domain name <androgel.org>.
The evidence submitted by the Complainants and Annexures to the Complaint, specifically, the copy of the United States Patent and Trademark Electronic Search System (TESS) that ANDROGEL was registered by Unimed on March 16, 1999, having been published for opposition on May 7, 1996 (there being no inconsistency in the aforedescribed time lapse), constitute a legitimate interest of the Complainants. While the domain name <androgel.org> was according to the Registrar created on January 16, 2002, by the Respondent based upon that fact and the undenied allegations of the Complainants relating to the manufacturer and sale of the product ANDROGEL® and expenditure of "millions of dollars" of the trademark, based upon the violations of the elements of the policy as set forth above.
Based on the foregoing, it is clear in the absence of a response that the Respondent has
violated the elements set forth in Paragraph 4(a) of the Policy and the Panel thus finds that:
i) "the domain name registered by the Respondent is identical…to (the) trademark…in which the complainant(s) have rights based on the filing in 1995 and registration in 1999 by the Complainant Unimed, a wholly owned subsidiary of the Complainant Solvay;"
ii) "that the Respondent has no rights or legitimate interests in respect of the domain name" in that it does not use the product ANDROGEL, the trademark of which was filed and registered years before the creation of the domain name <androgel.org> by the Respondent, and,
iii) "the domain name has been registered (by the Respondent) and is being used in bad faith" in that the Respondent’s employees acknowledge that their own product does not use or include any of the product which is the subject of the previously mentioned trade name, but, in fact, is competitive with the trademarked product, and is thus used only to attract to Respondent’s own product those seeking to purchase the trademarked product.
It is the decision of the undersigned, acting as the Panel, that the domain name is identical to the trademark which is owned by the Complainant, Unimed, a subsidiary of the Complainant, Solvay, that the Respondent has no rights nor legitimate interests in respect of the aforedescribed domain name, and that the aforesaid domain name has been registered by the Respondent and is being used by the Respondent in bad faith. Therefore, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <androgel.org> be transferred to the Complainant, Solvay.
Harry L. Arkin
Dated: July 1, 2002