WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

1. The Parties

The Complainant is Weber & Weber GmbH & Co. KG of Inning, Germany, represented by Tiajoloff & Kelly of New York, New York, United States of America.

The Respondent is Kim, Hyoungil, Petadolex Solutions of Gyeonggi, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name, <petadolex.com>, is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2004. The Respondent was indicated as Kim, Seokjun. On April 14, 2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On April 21, 2004, the Registrar, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the registrant is listed as Kim, Hyoungil and providing the contact details for the administrative, billing, and technical contact.

The Center reviewed the Complaint to verify whether it 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”).

On April 26, 2004, the Center notified the Complainant of the formal deficiency of the Complaint with respect to the correct Respondent. In accordance with the Complainant’s request on April 28, 2004, the administrative proceeding was suspended until May 29, 2004, due to negotiations between the parties. On May 28, 2004, the Complainant requested to re-institute the administrative proceedings. The Complaint was properly amended by the Complainant and submitted to the Center on June 2, 2004.

The administrative proceedings were re-instituted by the Center as of June 4, 2004. In accordance with Paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint using all known postal and electronic addresses of the Respondent, and the proceedings commenced on June 7, 2004. In accordance with Paragraph 5(a) of the Rules, the due date for Response was June 27, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 30, 2004.

The Center appointed Irina V. Savelieva as the sole panelist in this matter on July 7, 2004. 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 Paragraph 7 of the Rules.

4. Factual Background

The Complainant, Weber & Weber GmbH & Co. KG, is a German company which is a leader in manufacturing and selling of many types of pharmaceutical products, including dietary supplements, in many countries of the world. Complainant conducts its business in the United States through its wholly-owned German subsidiary, Weber & Weber International GmbH & Co. KG, United States of America.

Weber & Weber has marketed and sold dietary supplements under the trademark PETADOLEX in Europe for 28 years and in the United States for 6 years.

Weber & Weber sells and promotes pharmaceutical products under the PETADOLEX mark through the domain name <petadolex.de>. Weber & Weber International GmbH & Co. KG is the owner of United States trademark registration for PETADOLEX, No. 2373815. Weber & Weber is the owner of PETADOLEX International Registration No. 534344, as well as national trademark registrations for PETADOLEX in Germany (Reg. No. 988375 registered in 1979), Japan (Reg. No. 4731650) and the United Kingdom (Reg. No. M534344) and a pending application in Canada (Application No. 1165044) (Annex 1 to the Declaration of Mr. Gallichio, President of Weber & Weber International GmbH & Co. KG).

Weber & Weber has attempted to obtain the <petadolex.com> domain name. At one time, the <petadolex.com> domain name was owned by a different registrant (Kim, Seokjun) who agreed not to renew the domain name and to redirect the “www.petadolex.com” website to Complainant in order for Weber & Weber to be able to obtain this domain name. However, when Weber & Weber attempted to obtain the disputed domain name, it learned that Respondent (Kim, Hyoungil) had stepped in and obtained the disputed domain name, <petadolex.com>.

The Respondent (Kim, Hyoungil) registered the disputed domain name, <petadolex.com>, allegedly sometime in April 2004. However, the first registration of the disputed domain name, <petadolex.com> by a previous registrant (Kim, Seokjun) took place in September 2003.

5. Parties’ Contentions

A. Complainant’s Summarized Contentions

- The disputed domain name, <petadolex.com>, is identical and confusingly similar to the Complainant’s trademarks.

- The Complainant has used the PETADOLEX mark in Europe for 28 years and in the United States since 1998. The Complainant has rights in the PETADOLEX trademark. The various federal trademark registrations of PETADOLEX cover dietary supplements. Weber & Weber’s registrations are prima facie evidence of the validity of its trademark and its exclusive right to use the PETADOLEX trademark in commerce in relation to dietary supplements.

- Weber & Weber currently maintains a website advertising and promoting its goods at “www.migraineaid.com” and “www.webernweber.com” which contain information regarding the PETADOLEX dietary supplement (Annex 2 to Mr. Gallichio’s Declaration).

- As a result of exclusive use of the PETADOLEX trademark and the advertising expenditures promoting the trademark, the relevant public in Europe, the United States and arguably worldwide given the reach of the Internet have come to associate goods sold under the PETADOLEX trademark with the Complainant, Weber & Weber. Due to the notoriety of the PETADOLEX mark, users of the Internet are likely to enter to find information about this dietary supplement. Relevant consumers are likely to be confused into thinking that the <petadolex.com> domain name and the information contained on the websites at this domain name (which may have misstatements regarding the PETADOLEX product) emanate from, are affiliated with or sponsored by Weber & Weber (see Annex 6 to Mr. Gallichio’s Declaration).

- The sale of dietary supplements is governed by federal law in the United States which restricts the claims that may be made in the advertising and promotion of PETADOLEX. Under United States law, the Complainant has the right to control the PETADOLEX trademark and it cannot properly do so if it is denied the right to <petadolex.com> domain name. By unlawfully registering the disputed domain name, the Respondent is preventing the Complainant from using <petadolex.com> as a domain name; is unlawfully diverting Complainant’s customers to the website of Respondent; and, possibly causing injury to the reputation of the PETADOLEX mark by making false and illegal statements about PETADOLEX at the “www.petadolex.com” website.

- The Respondent registered the disputed domain name, <petadolex.com>, on September 23, 2003, without authority or consent from Weber & Weber.

- The Respondent had constructive notice of Weber & Weber’s PETADOLEX trademark when it registered the disputed domain name, <petadolex.com> (See 15 U.S.C. § 1072: trademark registration provides constructive notice to others of registrant’s exclusive rights to mark).

- Furthermore, the United States Patent and Trademark Office’s database (as well as other international databases) are easily accessible and searchable by all parties. The Respondent’s registration of the disputed domain name thus breached the Network Solutions, Inc. service agreement, in which Respondent represented and warranted that “to the best of [its] knowledge and belief, neither the registration of the domain name nor the manner in which it is intended to be or is directly or indirectly used infringes the legal rights of a third party.” The Respondent also has actual notice of Weber & Weber’s superior rights in the <petadolex.com> domain name as a result of actual notice from Mr. Gallichio on October 23, 2003 (Annex 4 to Mr. Gallichio’s Declaration).

- The Respondent, upon information and belief, has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not a licensee of Weber & Weber, nor is it otherwise authorized by Weber & Weber to use PETADOLEX or any similar marks, nor is the Respondent either as an individual, business, or other organization, commonly known by the name Petadolex.

- The Respondent cannot assert any valid basis on which it has a right to register the disputed domain name. In fact, the Respondent lists the website of “www.goldname.com” as its contact information and this site indicates that the Respondent is in the business of warehousing domain names for sale to third parties (Annex 6 to Mr. Gallichio’s Declaration).

- The Respondent asserted in an email to Complainant (see Annex 4 to Mr. Gallichio’s Declaration) that it had long used the name ‘petadolex’ as an email marketing company. This assertion is, upon information and belief, a sham because the Respondent appears to be infringing the PETADOLEX mark at “www.innovisioncom.com” by using it in connection with dietary supplements, not email marketing.

- The Respondent cannot be considered to have legitimate rights to the disputed domain name, <petadolex.com>.

- The Respondent unlawfully registered the disputed domain name and is now effectively holding the name for sale to the Complainant or to a third party. The Respondent contacted the Complainant by email of November 10, 2003, and ransomed the transfer of the disputed domain name on a payment of $3,000.00 (Annex 4 to Mr. Gallichio’s Declaration). Although the mere holding for sale may not, of itself, demonstrate bad faith, in this case, the Respondent’s bad faith is evidenced by its offer for sale coupled with Respondent’s knowledge (actual and constructive) of the prior rights of PETADOLEX and the Respondent’s apparent infringement of the PETADOLEX mark at the website of “www.innovisioncom.com.”

- Additionally, the Respondent’s contact information of goldname.com indicates that Respondent is in the business of warehousing domain names for resale (Annex 5 to Mr. Gallichio’s Declaration).

- The Respondent’s use of the disputed domain name for its website intentionally attempts to attract for its own financial gain Internet users to the Respondent’s website by creating a likelihood of confusion with Complainant’s registered mark as to source, sponsorship or affiliation.

- The Respondent had actual and constructive notice of the PETADOLEX registered trademark. The Respondent registered the disputed domain name with knowledge that the Complainant herein is the only entity that could lawfully own the disputed domain name and the Respondent registered it to prevent the Complainant from reflecting the mark in a corresponding domain name. This constitutes bad faith.

- The disputed domain name, <petadolex.com>, should be transferred to the Complainant.

B. Respondent’s Summarized Contentions

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Respondent was given notice of this proceeding in accordance with the Rules. The Center discharged its responsibility under Paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint.

However, as previously indicated, the Respondent failed to file any reply to the Complaint and has not sought to answer the Complainant’s assertions, evidence or contentions in any other manner. The Panel finds that the Respondent has been given a fair opportunity to present its case, and the Panel will proceed to a decision on the Complaint.

The Respondent’s default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove the elements required by the Policy. In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements are satisfied:

(i) disputed domain name 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 disputed domain name has been registered and is being used in bad faith.

Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate from the Respondent’s failure to reply to the Complainant’s assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel’s decision is based upon the Complainant’s assertions and evidence and inferences drawn from the Respondent’s failure to reply.

Identical or Confusingly Similar

The Complainant has exhibited its trademark registration PETADOLEX in many countries all over the world. Weber & Weber International GmbH & Co. KG is the owner of a United States trademark registration for PETADOLEX, No. 2,373,815. Weber & Weber is the owner of PETADOLEX International Registration No. 534344, as well as national trademark registrations for PETADOLEX in Germany (Reg. No. 988375 registered in 1979), Japan (Reg. No. 4731650) and the United Kingdom (Reg. No. M534344) and a pending application in Canada (Application No. 1165044) (Annex 1 to the Declaration of Mr. Gallichio, President of Weber & Weber International GmbH & Co. KG).

Respondent has not filed any reply to the Complaint or contested the Complainant’s assertions. In the circumstances, the Panel finds that the Complainant has rights in the trademark PETADOLEX.

The disputed domain name, <petadolex.com>, is identical to the Complainant’s trademark PETADOLEX. The gTLD suffix, .com, cannot be considered as eliminating identity since this suffix is inherent in all domain names in this gTLD.

The word “petadolex” in the disputed domain name neither bears any specific meaning nor represents a commonly known or generic name. Therefore, the Respondent would not have been able to demonstrate any justified connection with this name.

The Panel finds the Complainant has satisfied its burden of proof under Paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

The Complainant contends the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has never given any authorization to the Respondent or its representative to use the Complainant’s trademark or to register domain name containing its trademark.

Even though the Respondent has not filed any reply to the Complaint and has not contested the Complainant’s assertions, it is upon the Panel to consider whether the Respondent’s use of the disputed domain name demonstrates rights or legitimate interests in the domain name.

According to Paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a Respondent’s rights or legitimate interests in a domain name:

(i) Respondent used or demonstrably prepared to use the domain name or a corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute;

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or

(iii) Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s mark.

The Respondent may elect to show rights and legitimate interests, non-exhaustively, by producing proof under Paragraphs 4(c)(i-iii) of the Policy. By not responding to the Complainant’s contentions, the Respondent in this proceeding has never attempted to show its rights and legitimate interests.

The Panel has reviewed the circumstances of this case and has reached the following conclusions:

Firstly, there is no evidence that before any notice of a dispute with the Complainant, the Respondent was using the disputed domain name for a legitimate offering of goods or services.

The Respondent asserted in his earlier email to the Complainant that it had long used the name ‘petadolex solutions’ as an email marketing company (Annex 4 to Mr. Gallichio’s Declaration). This assertion is not accepted by the Panel because Respondent appears to be infringing the PETADOLEX trademark at “www.petadolex.com” and “www.innovisioncom.com” by using it in connection with dietary supplements, not email marketing (the “www.innovisioncom.com” website lists an email contact information of “sally@petadolex.com” and the Respondent has used “info@petadolex.com,” which certainly indicates that Respondent is behind the infringement). Moreover, even assuming that the Respondent did use the name in email marketing, the Complainant’s rights must have arisen long prior to the Respondent’s rights because the Complainant has been selling products under the PETADOLEX trademark in Europe for over 28 years and in the United States for 6 years.

Secondly, as for the Respondent’s proof under Paragraph 4(c)(ii) of the Policy there is no evidence that the Respondent has been commonly known by the disputed domain name.

There is no information that the Respondent may be known under the disputed domain name as its business name or its company name. In e-mail correspondence with the Complainant, the Respondent never demonstrated or proved any rights to or legitimate interests in the word ‘petadolex.’ The Complainant contends the Respondent is not commonly known by the disputed domain name <petadolex.com>.

The Panel does not have any grounds to believe that the Respondent may be known under the name ‘petadolex.’ The fact that the Respondent’s administrative, billing, and technical contact is “Kim, Hyoungil, Petadolex Solutions,” in the absence of any response from the Respondent, is not sufficient for the Panel to believe that the Respondent has a registered company, Petadolex Solutions, or is known in business under this name.

The Panel recalls that the Respondent registered the disputed domain name in April 2004. The Complainant and its trademark PETADOLEX have been well known for 28 years. The PETADOLEX trademark is registered in many countries of the world. The Panel believes that the Respondent knew about the Complainant’s trade mark.

Furthermore, regarding these facts, it is the Panel’s view that the Respondent set out to register the disputed domain name since he knew it was valuable and he was well aware of the Complainant’s trademark interests in the domain name.

Thus, the Panel does not find that the Respondent’s use of the disputed domain allegedly for email marketing is a bona fide offering of services under Paragraph 4(c)(i) the Policy. Nor does it show any demonstrable preparations to use the disputed domain name. Rather, the Respondent essentially is using a holding pattern for the disputed domain name while the Respondent tries to find out how best to exploit it for generating profit by selling it.

Furthermore, the Panel draws an adverse inference from the Respondent’s failure to provide any explanation or rationale for its use of the disputed domain name.

The Panel finds the Complainant has carried out its burden of proof to show the Respondent has no legitimate rights or interests in the disputed domain name.

Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a Respondent has registered and used a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the domain name 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 its 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 the 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) by using the domain name, the Respondent 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 to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location.

The Complainant contends the Respondent has violated the bad faith provisions of Paragraph 4(b)(i) of the Policy because it intends to sell the disputed domain name to the Complainant (who is the owner of the trademark) for much more than Respondent’s out-of-pocket costs directly related to domain name. There is sufficient evidence that this is the case.

Respondent contacted Complainant by email of November 10, 2003, and proposed to transfer the disputed domain name, <petadolex.com>, for the price of USD 3,000.00, the price far exceeding what Respondent paid for it (Annex 4 to Mr. Gallichio’s Declaration).

Thus, the Respondent is in violation of the bad faith provisions of the Policy in paragraph 4(b)(i), i.e., the Respondent registered the disputed domain name with the intention of selling it for far more than it paid for it.

The Panel does not interpret the Policy to mean that the mere offer for sale of a domain name for a substantial sum of money has to be considered an act of bad faith. Selling of domain names is prohibited by the Policy if the other elements of Paragraph 4(a) of the Policy are also violated, i.e., that the domain name “has been registered and is being used in bad faith.”

According to the widely cited case Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003): “the requirement in paragraph 4(a)(iii) that the domain name “has been registered and is being used in bad faith” will be satisfied only if the Complainant proves that the registration was undertaken in bad faith and that the circumstances of the case are such that Respondent is continuing to act in bad faith.”

Firstly, the Panel finds that the Respondent “has registered the disputed domain name in bad faith.” The Respondent does not conduct any legitimate business activity using the disputed domain name. Given the Complainant’s numerous trademark registrations for, and its wide reputation in, the word ‘petadolex,’ it is not possible to conceive of a circumstance in which the Respondent could legitimately use the domain name <petadolex.com>.

It is also not possible to conceive of a situation in which the Respondent would have been unaware of this fact at the time of registration. These findings, together with the finding that the Respondent has no rights or interests in the domain name, lead the Panel to conclude that the domain name <petadolex.com> has been registered by the Respondent in bad faith.

Additionally, Respondent’s contact information of <goldname.com> indicates that Respondent is in the business of warehousing domain names for resale (Annex 5 to Mr. Gallichio’s Declaration). This proves that the Respondent is in violation of the bad faith provisions of the Policy in paragraph 4(b)(ii).

Secondly, the Panel has sufficient grounds to believe that the disputed domain name is being used by the Respondent in bad faith in accordance to Paragraph 4(b)(iv) of the Policy. The Respondent’s use of the disputed domain name for its website intentionally attempts to attract for its own financial gain Internet users to the Respondent’s website by creating a likelihood of confusion with Complainant’s registered mark as to source, sponsorship or affiliation.

The Panel finds that the disputed domain name is being used in bad faith by the Respondent. The domain name <petadolex.com> does not resolve to any proper website or other on-line business presence. The <petadolex.com> web page is merely a homepage which indicates that “this homepage may not be operated more by financial reasons” and that “this domain is for sale now.” Furthermore, this web page is used to promote certain products of Viagra’s type which may be mistakenly taken by potential customers to be Weber & Weber products (Annex 6 to Mr. Gallichio’s Declaration).

The Panel finds the Complainant has shown the Respondent registered and is using the disputed domain name in bad faith.

7. Decision

The Administrative Panel decides that the Complainant has proven each of the three elements in Paragraph 4(a) of the Policy. In accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel orders that the disputed domain name, <petadolex.com>, be transferred to the Complainant.

Irina V. Savelieva
Sole Panelist

Dated: July 22, 2004