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and Mediation Center
Sanofi-Aventis, Aventis Pharma SA and Aventis Pharma Deutchland GmbH v. 1N4 Web Services
Case No. D2005-0938
1. The Parties
The Complainants are Sanofi-Aventis, of Gentilly, France, Aventis Pharma SA, of Antony, France, Aventis Pharma Deutchland GmbH, of Frankfurt, Germany, represented by Selarl Marchais De Candй, France.
The Respondent is 1N4 Web Services, of Lexington, Texas, United States of America.
2. The Domain Names and the Registrar
The disputed domain names <amaryllid.com> and <amaryllids.com>
are both registered with eNom Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2005. On September 2, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On September 2, 2005, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the 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 September 9, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was September 29, 2005. The Response was filed with the Center on September 29, 2005.
The Center appointed Mr. Debrett Gordon Lyons as the Sole Panelist in this matter on October 10, 2005. 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.
The Panel notes that the Complaint is made by three
companies in the same group of companies against the one Respondent. The Rules,
paragraph 3(a), provide that “any person or entity may initiate a complaint”.
The Panel considers that members of the same group of companies may constitute
an “entity” for the purposes of this provision, in line with the
decisions in Sociйtй Gйnйrale and Fimat International Banque v. Lebanon Index/La
France DN and Elie Khouri, WIPO Case No. D2002-0760
and Compagnie Gйnйrale des Etablissements Michelin CGEM – Michelin
& Cie, Michelin Recherche et Technique S.A. v. Horoshiy Inc., WIPO
Case No. D2004-0752, and so will refer in this decision to the three companies
collectively as the Complainant.
After considering the Complaint and the Response,
the Panel considered it helpful to use the power given to it under paragraph 12
of the Rules to issue a Procedural Order. The Order was issued on November 14, 2005,
and gave the Parties until November 21, 2005, to each provide further information
(see below under “Administrative Panel Procedural Order No. 1”).
Both Parties responded to the Procedural Order within the stipulated time frame.
4. Factual Background
The Complainant is the third largest pharmaceutical company in the world with a presence in more than 100 countries across 5 continents. It produces a wide range of drugs to treat various conditions including, for the purposes of these proceedings, diabetes.
The Complainant sells throughout the world a drug for the correction of insulin deficiency under the trademark AMARYL. The trademark AMARYL has been long registered in a number of jurisdictions as detailed later. A website operated by the Complainant at “www.amaryl.com” is dedicated to the drug and its indications.
1N4 Web Services is a business
name registered in Texas. The nature of the business is described as “Internet
Services”. It has websites at “www.1n4.com”
and “www.1n4.net” where its business
includes Internet web hosting and domain name registration, lease and sale.
It is the Registrant Organisation for both disputed domain names which were
registered on March 17, 2005.
The business name certificate (dated May 20, 2005) identifies Alvin L Sisk and Patricia A Sisk as the joint owners of 1N4 Web Services. A L Sisk is also the administrative and other contact point for the disputed domain names.
The Response appears to have been prepared by Mr. Sisk and it is signed by him. The Response describes A L Sisk as an entrepreneur with business interests in consulting, appraisal, Internet, manufacturing, horticulture, and farming/ranching.
On or very soon after March 17, 2005, both disputed domain names were put up for sale by means of a link to “www.afternic.com”, an online domain name auction service. During this time both sites carried miscellaneous matter including the Complainant’s trademark, together with links to other information and products connected with the correction of insulin deficiency.
The website at “www.amayllid.com” remained largely in this state up until at least the time the Complaint was filed. The website “www.amaryllids.com” was withdrawn from sale and matter of a botanical nature was then posted on the site.
There was no indication of a letter of demand from the Complainant prior to filing of the Complaint and no evidence of any other direct correspondence between the parties.
The Complainant requests
the Administrative Panel to issue a decision that the domain names <amaryllid.com>
and <amaryllids.com> be transferred to Aventis Pharma Deutschland GmbH.
The Respondent, on the other hand, petitions the Panel to find Reverse Domain
5. Parties’ Contentions
The Complainant has provided evidence that it is the owner of the following trademark registrations:
AMARYL German trademark n° 2 017 807 registered on July 28, 1992, in class 5 and duly renewed.
AMARYL United States trademark n° 1 912 174 registered in August 15, 1995, in class 5.
AMARYL Canadian trademark n° 574 280 registered on August 28, 1992, and in class 5 duly renewed.
AMARYL Japanese trademark n° 3 183 036 registered on July 31, 1996, in class 5.
AMARYL UK trademark n°1 511 641 registered on August 26, 1992, in class 5 and duly renewed.
AMARYL international trademark n° 591 304 registered on August 22, 1992, in class 5 and designating among other Austria, Benelux, Bulgaria, China, Egypt, Spain, Russia, France, Hungary, Italia, Morocco, Monaco, Portugal, Romania, Switzerland, Poland, Czech republic, Albania, Kenya, Vietnam, Latvia, Croatia, Slovenia, Cuba.
AMARYL Mexican trademark n° 462 557 registered on September 25, 1992, in class 5 and duly renewed.
The Complainant has also registered the following domain names:
<amaryl.com> registered on October 13, 1998
<amaryl.us> registered on April 19, 2002
<amaryl.org> registered on January 6, 2003
<amaryl.biz> registered on November 19, 2000
<amaryl.info> registered on July 31, 2001
<amaryl.ca> registered on November 13, 2007
<amaryl.at> registered on October 18, 2002
<amaryl.it> registered on December 22, 2001
The Complainant submits that the domain names entirely reproduce the trademark AMARYL which itself has no particular meaning and is therefore highly distinctive. It goes on to argue that the addition of the common noun “lid” or “lids” to its mark does nothing to avoid confusion and so the Complainant concludes that the disputed domain names are confusingly similar to a mark in which it has rights.
The Complainant submits that the Respondent has no legitimate interest or rights in the domain names. The Complainant states that the Respondent’s home page at “www.amaryllid.com” offers registration of domain names and carries links to web addresses devoted to diabetes and more generally to pharmaceutical products. The website at “www.amaryllids.com” describes plants and has no connection with the Complainant’s products under the AMARYL mark. The Complainant therefore argues that since there is no connection between it and the Respondent and no permission has been given to use the trademark, the Respondent can not have any right or legitimate interest in the name.
Finally, the Complainant argues that the domain names were registered in bad faith and are being used in bad faith. It states that the Respondent was undoubtedly aware at the time of registration of the domain names of:
the drug named AMARYL developed and sold by the Complainant,
the trademarks AMARYL owned by the Complainant,
the domain names <amaryl.com>, <amaryl.net>, <amaryl.org>, <amaryl.biz> and <amaryl.info> registered by the Complainant, and
the website “www.amaryl.com” where the Complainant presents its product.
This knowledge is shown, reasons the Complainant, by the fact that the AMARYL trademark is used on the Respondent’s website at “www.amaryllid.com”.
The Complainant posits that the disputed domain names were not only registered in bad faith but are also being used by the Respondent in bad faith since at “www.amaryllid.com” there is a list of websites specialized in the fields of health care and notably in the field of diabetes medication. It claims that the Respondent is therefore seeking to exploit user confusion by diverting Internet users to the Respondent’s website for its own benefit and commercial gain. In addition, it alleges that the banner stating “Amaryllid.com is for sale” on the Respondent’s website demonstrates another example of bad faith use since, in the absence of legitimate rights or interests in the domain name, the Respondent has reserved the domain name for the purpose of selling it to the Complainant or a competitor of the Complainant.
The Complainant cites in
support WIPO Case No. D2000-0036, EFG
Bank European Financial Group SA v. Jacob Foundation, where it was said
“The posting of the announcement: ‘This domain is for sale’ constitutes satisfactory evidence, when combined with the Respondent’s lack of legitimate rights to or interests in the domain name, that the Respondent’s primary purpose in registering the domain name was to sell it in contravention of the Policy.”
Turning to the domain name <amaryllids.com>, the Complainant argues that by registering a name which is confusingly similar to the Complainant’s trademark, the Respondent has created a likelihood of confusion and is attempting to take advantage of the Complainant’s brand recognition or is trying to prevent the Complainant from doing business under its mark on the internet.
The Respondent denies the Complainant’s allegations of confusing similarity, lack of legitimate interests and bad faith registration of the two names.
It responds that the word “amaryllid” (and its plural form) has nothing to do with the Complainant’s mark but refers to a member of the botanical family amaryllidaceae. In support, the Respondent cites the following articles:
Amaryllids are referred to in the Journal of the Royal Horticultural Society, London 1904-1905, 29:86-90, “Something about Hippeastrums”, By Dr. E. Bonavia F.R.H.S.
The name Amaryllids is used in an article written by Les Hannibal, “Crinums and Other Amaryllids in Australia and the Pacific Isles”, as published in Plant Life Vol 21, 1965, p12-17, American Plant Life Society.
Mulford B. Foster, in his article “Collecting Amaryllids in Latin America”, (Plant Life 7, 1951, page 17)
The name Amaryllids is used extensively in the book “The Little Bulbs: A Tale of Two Gardens”, by Elizabeth Lawrence, Published by Duke University Press” Reprint edition March 1986.
“Amaryllids In A Southern Garden”, by Elizabeth Lawrence, Raleigh, NC, and As Published in Herbertia 10: pp. 12-23, 1943, International Bulb Society.
The Respondent states that these and numerous other examples of use of the terms amaryllid and amaryllids existed prior to the Complainant adoption and use of the mark AMARYL.
The Respondent goes on to argue that a “Google” search of the term “amaryllid” returns 522 results, none of which contain references to the trademark “Amaryl”. A Google search of the term “amaryllids” returns 839 results, none of which contain references to the trademark “Amaryl”. Conversely, a Google search of the term “amaryl” returns 609,000 results, the first 300 results of which do not reference the terms, amaryllid or amaryllids. Accordingly, the Respondent argues that there appears to be no capacity for confusion between the Complainant’s trademark and the disputed domain names.
The Respondent states that when it registered the domain names <amaryllid.com> and <amaryllids.com> on March 17, 2005, the domain names <amaryllid.net>, <amaryllid.org>, <amaryllid.biz>, and <amaryllid.info> were all unregistered. On June 1, 2005, the Respondent states that it therefore also “defensively” registered the domain names <amaryllids.net>, <amaryllids.org>, <amaryllid.biz>, and <amaryllid.info>.
The Respondent goes on to state that the website at “www.amaryllid.com” is not owned by 1N4 Web Services, but it is in fact owned by Fabulous.com. The Respondent states that it has no control over the content provided by Fabulous.com.
On the other hand, the Respondent submits that the pages of the website <amaryllids.com> provide the plant growers name, location, the date the pictures of the flowers were taken, cultivar characteristics and known history of the specific species or cultivar. Accordingly, the Respondent argues that before it received any notice of the dispute, demonstrated rights to and legitimate interest in this domain name existed. This use, it says, shows no intent to violate the trademark rights of the Complainant.
The Respondent explains that pending development of the sites it listed them for sale and parked them using the facilities of AfterNIC, Inc. (“www.afternic.com”). The domain names were listed for sale in an appropriate sale category, namely, “Consumer Goods and Services/Home & Garden”. On or about May 20, 2005, the Respondent then removed the sale listing for <amaryllids.com>, and began development of the website that now appears there. An email submitted in evidence and dated May 20, 2005, to another amaryllid grower details plans for the development of “www.amaryllids.com”. A second email, June 26, 2005, further discusses development of the website.
The Respondent states that it has grown Amaryllids (Crinum and Hymenocallis) for more than 10 years. It argues that the lack of a developed website attaching to the domain name <amaryllid.com> does not show bad faith registration or use, as the registration is defensive in nature to the registration of the principal domain name of interest, <amaryllids.com>.
The Respondent submits that it has no medical or pharmacological training or experience and had no knowledge of the drug AMARYL until after the commencement of these proceedings.
The Respondent finally argues that the Complainant had the resources to know
the meaning of the word “amaryllid” and has used the Policy in bad
faith to attempt to deprive a registered domain-name holder of a domain name.
The Respondent therefore asks the Administrative Panel to find that the Complainant
has engaged in so-called “reverse domain name hijacking”.
6. Administrative Panel Procedural Order No. 1
After considering the arguments and the available evidence, the Panel asked the Center to issue a Procedural Order in the following terms:
“1. The Complainants are requested to indicate whether any of the three companies or their external representatives communicated with the Respondent prior to the filing of the Complaint. If so, would the Complainants please provide the date(s) and details thereof including copies of correspondence if the communication was in writing.
2. Both Parties are also requested to submit evidence of when the current contents of the webpage at “www.amaryllids.com” were first posted.
3. The Respondent is requested to provide further information concerning AL Sisk (in particular, means of identification, such as copies of driver’s license or passport) and better information of the Respondent’s business of selling domain names (including what kind of domain name the Respondent registers and whether the Respondent conducts any searches online before it registers a domain name).
4. The Respondent is requested to provide proof of its claim that it has grown amaryllids for more than ten years.”
Pursuant to paragraph 1 of the Order, the Complainant produced the following email dated June 17, 2005:
“De: [email address]
Envoyй: vendredi 17 juin 2005 14:49
А: [email address]
Objet: Domain names AMARYLLID.COM and AMARYLLIDS.COM
We represent sanofi-aventis, a French corporation, and one of the world’s leading companies in the healthcare field.
We have become aware of your registration of the domain names <amaryllid.com> and <amaryllids.com>. Despite the fact your registration of domain names related to the trademark AMARYL is an illegal infringement on sanofi-aventis Group trademark rights, in an effort to solve this matter amicably, we propose you return the above domain names to us without any delay.
Please be aware that we will consider your use of any of these domain names as infringing sanofi-aventis intellectual property rights if you choose to activate your website under these domain names to sell and/or promote our drugs.
If activation does ever arise, we will not hesitate to take all appropriate steps to preserve our rights.
We look forward to hearing from you.
[ name ]
Direction Juridique Marques/ Trademark Legal Department
The Complainant did not produce any evidence or make any submissions in relation to paragraph 2 of the Order.
Responsive to paragraph 2 of the Order, the Respondent provided a table of statistics manipulated in various ways which were said to establish that the current website at “www.amaryllids.com” was receiving traffic from June 2, 2005 onwards.
Responsive to paragraph 3 of the Order, the Respondent produced a photocopy of a Texas State drivers’ license, asking that its details be kept confidential. It went on to explain that it registers domain names consisting of a dictionary word or words that it believes to be generic or in common use. The domains are then parked on a “pay-per-click” advertising consolidator. The names are listed for sale at the same time. Not every name is searched, but “if any question exists in Respondent mind, the USPTO [United States Patent and Trademark Office] trademark database is searched”. The Respondent states that “no search results returned for either amaryllid or amaryllids”.
Pursuant to paragraph 4 of the Order, the Respondent
provided a notarised Affidavit of a James Colvin and an unsworn letter from
residential neighbours of Mr. Sisk, both attesting to the fact they have known
Mr. Sisk for 10 years or more and have known him to collect and grow amaryllids.
7. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the 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 domain name has been registered and is being used in bad faith.
Paragraph 4(c) of the Policy sets out circumstances which, in particular but without limitation, if found by the Panel to be proved based on its evaluation of the evidence, shall demonstrate the Respondent’s rights or legitimate interests for the purpose of paragraph 4(a)(ii).
Paragraph 4(b) of the Policy sets out circumstances, again in particular but without limitation, which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii) of the Policy.
The circumstances set out in paragraphs 4(b) and 4(c) are, therefore, not limiting. Other circumstances may apply to whether the requirements of paragraphs 4(a)(ii) and (iii) are met.
7.1 Identical or Confusingly Similar
The Panel has no hesitation in finding that the Complainant has rights in the trademark AMARYL by virtue of its numerous registrations around the world The question is whether the disputed domain names are similar to the mark. In answering that question, the gTLD “.com” can be ignored as trivial and incapable of adding distinctiveness. Additionally, no distinction can be drawn between the singular and plural forms of the term “amaryllid” and so the only comparison required is of the mark AMARYL and the term AMARYLLID.
The Panel accepts that the word AMARYLLID is a botanical name. Nonetheless that does not of itself resolve the issue of confusing similarity. The words BRAND and BRANDY might be held to be confusingly similar were it not for the fact that each has a well-known dictionary meaning. In this case however, neither the trademark, nor the botanical name, is so well known as to avoid or reduce confusion. The shared element “amaryl” has no common noun meaning and is distinctive. The added suffix “-lid” does not alter the mark, aurally or visually, in any substantial manner. Semantically it adds nothing extra and in the Panel’s opinion it has the resonance of a common pharmaceutical trademark suffix. For these reasons, the Panel finds the two domain names to be confusingly similar to the Complainant’s trademark.
The Respondent’s observations about the general failure of a “Google” search to locate “amaryl” when it entered “amaryllid”, and vice versa, can be interpreted as an indicator that there is in fact no trademark confusion. The Panel nonetheless notes in this regard that paragraph 4(a)(i) of the Policy does not require trademark confusion, merely that the domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.
Accordingly, the Panel holds that the Complainant has met the first requirement under the Policy.
7.2 Rights or Legitimate Interests
Paragraph 4(c) of the Policy states that any of the following circumstances if found by the Administrative Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests to the domain name for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to the domain name registrant of the dispute, the registrant’s 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) the domain name registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if the registrant has acquired no trademark or service mark rights; or
(iii) the domain name registrant 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 trademark or service mark at issue.
Clearly, subparagraph (ii) has no relevance to this case, however based on the facts and on the Respondent’s submissions the Panel must assess whether the circumstances described in either of subparagraphs (i) or (iii) are present.
Turning to subparagraph (i), the first issue is to determine when the Respondent had notice of the dispute. On September 9, 2005, when the Center transmitted the Complaint to the Respondent but the Procedural Order drew out the fact that the Complainant had sent a demand letter to the Respondent by email on June 17, 2005.
The address of that email is the same email address for communications with the Respondent in these proceedings and is the contact email address for the two domains held by eNom Inc. There is no evidence of a reply to that email but there is no reason to assume it did not reach the Respondent. Moreover, the Respondent has not denied receiving it. The Respondent was therefore of actual notice of this dispute on June 17, 2005.
A questions exists as to whether the Respondent was on constructive notice of the Complainant’s trademark rights at yet an earlier point in time but examination of that issue follows later since even imputed knowledge of the trademark rights, if found, is not notice of this dispute.
The question then becomes whether what was done by the Respondent prior to June 17, 2005 amounted to use, or preparations for use, of the domain names in connection with a bona fide offering of goods or services.
Since the use of each disputed name is so different the Panel will study them separately.
7.2.1 The “www.amaryllid.com” website
A preliminary issue is that the Respondent claims not to be the owner of this website. There is no doubt that the Respondent is the registrant of the domain name; however, it would seem that its point is that it has no control or proprietary rights over the material which is posted at “www.amaryllid.com”. It states this belongs to Fabulous.com but gives no more information in the Response. Reacting to the Procedural Order it elaborated in a little more detail on its domain name registration business, stating that newly registered domains are parked on a “pay-per-click” advertising consolidator.
These pieces of information do not form a transparent picture. There is, however,
a consensus view that an Administrative Panel may visit Internet sites connected
with the disputed domain name in order to obtain more information about the
Respondent and the use of the domain name. The Panel may also undertake limited
factual research into matters of public record if it feels that it needs that
assistance in reaching a decision.
In this case, it was readily discoverable by the Panel that an Australian company, Fabulous Pty Ltd, trades a Fabulous.Com and operates an online business at “www.fabulous.com” which, in its words, “specializes in generating revenue through pay per click (PPC) links from the traffic your domains receive”. This site goes on to explain that:
“Signing up with us gives you access to our exclusive and established partnerships with PPC providers and comprehensive management tools originally created for our in-house domain portfolio.
How we do it
Fabulous applies revenue producing contextual links to your domains. Using our unique phrase breaking technology we categorize your domain and provide relevant content for maximum click through rates.”
Based on the limited evidence available to the Panel, a construction of the facts is that the Respondent may have played no part in directing or controlling the matter which appeared at “www.amaryllid.com”, hoping only to share in whatever financial benefits accrued through the pay per click scheme. The question for the Panel is whether this action constituted use of the domain name in connection with a bona fide offering of goods or services.
The evidence clearly shows
that whatever goods and services were on offer at the site, these were not the
goods or services of the Respondent. That, however, is not required under the
Policy. What is required is that the offering be bona fide. Although
a case concerned with the activities of an authorized user/Respondent, the panelist
in Oki Data Americas, Inc. v. ASD, Inc., WIPO
Case No. D2001-0903, held that to be bona fide within paragraph 4(c)(i),
the offering must meet several minimum requirements, including that:
- the Respondent must actually be offering the goods or services at issue;
- the Respondent must use the site to sell only the trademarked goods;
- the site must accurately disclose the Respondent’s relationship with the trademark owner.
The Respondent has not met any of these requirements of bona fide use. It seems to exercise little control over, and arguably only takes a fiscal interest in, the way in which the domain name is used. Additionally, the site then directs those Internet users interested in AMARYL to third-party websites where a wide range of pharmaceuticals are promoted, including diabetic products which are competitive with the Complainant’s goods.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the domain name <amaryllid.com> and that the Complainant has established this second element of its case in relation to this name.
7.2.2 The www.amaryllids.com website
Again, the question is whether what was done by the Respondent prior to June 17, 2005 amounted to use, or preparations for use, of this domain name in connection with a bona fide offering of goods or services.
The website itself is very limited, both in its content and its functionality. The navigation does not work. The contacts are empty. Some of the links are inactive. The horticultural information is marginal. It is not easy to discern whether the purpose of the site is commercial or merely for hobbyists. Certainly there are no offerings of goods or services.
There is no evidence from either party that the site existed in a more developed form at an earlier point in time and since that would seem to be counter intuitive the Panel concludes that prior to June 17, 2005, there was no use of the website in connection with a bona fide offering of goods or services.
The question then remains as to whether there was any other use, or preparations for use, of the domain name prior to June 17, 2005, in connection with a bona fide offering of goods or services.
The Respondent refers to emails to another amaryllid grower from May and June 2005 which detail development of the website. The email recipient is unidentified, referred to merely as “nestor”. The later email is dated June 26, 2005, and so for reasons explained above must be ignored, although it is the Panel’s opinion that this email does not advance the Respondent’s position. The May 20, 2005 email, makes indirect references to the purchase of plant reproductive material by Mr. Sisk but not to any offering of goods or services. The email states in part, “Take a look at ‘www.amaryllids.com’ I have started working on the site. Each variety will have a section. Would you like to participate in the site? …. I want to link each picture to the site of the grower of the bulb if I can get their permission”.
There is no reply to either email submitted in evidence.
The only other indirect evidence of use comes from the statements of James Colvin and the residential neighbours of Mr. Sisk, Doris and Larry Eldridge. Mr. and Mrs. Eldridge state that Mr. Sisk has been collecting crinium and other types of bulbs for at least 10 years. Mr. Colvin swears that during the 18 years he has known Mr. Sisk they have spent many hours visiting garden centers shopping for plants. He says, “The common factor in Al and my friendship has been our interest of growing and sharing plants. We have shared in our gardening endeavors and he has shared his amaryllids and crinium bulbs with me”.
Earlier UDRP decisions have held that even perfunctory preparations for use have sufficed (Shirmax Retail Ltd. v. CES Marketing Group, Inc., AF-0104; Lumena s-ka so.o. v. Express Ventures Ltd., FA00030000094375 and Royal Bank of Canada v. Xross, AF-0133) but here there is such meager evidence of preparatory activity and none which is ultimately directed towards the offering of goods or services that this Panel does not find that the Respondent has sufficiently established the circumstances described in paragraph 4(c)(i) of the Policy.
The Panel therefore returns its attention to paragraph 4(c)(iii) of the Policy and to the different question of whether the domain name registrant 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 trademark or service mark at issue.
According to eNom Inc., the registrant organization is 1N4 Web Services. Evidence provided in the form of a photocopy of an Assumed Name Certificate from Texas State dated May 20, 2005, shows this to be the joint business name of Alvin L Sisk and Patricia A Sisk, both of Lexington, Texas. The nature of the business described on the certificate is “Internet Services”. It has a website at “www.1n4.com” and another at “www.1n4.net”. The latter website, for example, carries the following information:
“Domain name recognition is one of the keys to online business success. An easily remembered domain name is a significant asset to any business. Names with ten or fewer characters are the easiest to remember. Hosting for leased domain names will be provided at 1N4 Web Services. Domain name sales may also include hosting. The following domain names and those listed in the Categorized Name Links are available for lease or sale.
Featured Domain Names
Acidize.com - Price $3,500 - Acidize is an oilfield term. Acid is pumped into the producing zone to increase porosity of a producing zone permitting oil to flow more freely to the well bore.
BeltLoop.com - Price $5,000 - An excellent compound word generic term.
MensInfo.com - Price $5,000 - A domain name with a wealth of uses. The “.biz”, “.net”, “.info”,” .u” and “.org” TLD’s are also available.
PoolWear.com - Price $4,500 - A premium two word domain name for a pool and beach fashion site.
NeapTide.com - Price $5,000 - A term referring to the two periods a month when the tide is at its smallest variation between high and low tide.
Weanling.com - Price $6,500 - A single word referring to a child or animal that has just been weaned.
TryHerbs.com - Price $4,000 - A top short, two word domain name for a health food store.
Yessiree.com - Price $2,500 - A self explanatory domain name. An excellent name for a service site.
Hedgehop.com - Price $5,000 - A dictionary term describing flying very low over the ground.”
Other parts of these sites list hundreds of domain names for sale or lease and it is clear that the Respondent has developed a capacity in this area. The Panel performed a “whois” search against a random selection of these names. All were registered in the name of 1N4 Web Services. Nowhere on these sites did the Panel observe a marked focus on botanical interests or botanical names.
Against these facts the Panel must assess whether 1N4 Web Services as registrant organization of the disputed domain name is making a legitimate non-commercial or fair use of the name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Clearly, the fact that the name was put up for sale immediately upon its registration indicated a commercial intention at that time. Adding the name to a “pay-per-click” programme again clearly was part of a commercial plan. Nonetheless, it is claimed that the website in its current machination has been receiving Internet traffic since June 2, 2005, and unlike paragraph 4(c)(i) of the Policy, paragraph 4(c)(iii) does not require proof of legitimate use prior to notice of the dispute. The key issue however is that of legitimacy. Aside from the website itself, all other evidence only shows Mr. Sisk, personally, to have taken an interest in growing flowers and sharing his flower growing experiences with others. The Panel located a portal style website at “www.thesisks.com” which, amongst other things, contains certain family information and shows an interest in and photographs of flowers which may or may not be amaryllids along with text which reads, “These are a few of the varieties of flowers that are raised in my flower and vegetable garden”, together with a statement that “We raise commercial Brangus cattle, Boer goats, and poultry”. A “whois” search of the domain <thesisks.com> shows that it is owned by A L Sisk. There is no mention of 1N4 Web Services.
The Panel is of the opinion that legitimate use is use that must be genuine in its intention. A genuine intention exists from the beginning, or not at all. That intention must have always been non-commercial. The domain name was registered by a commercial business with stated commercial intentions of dealing in domain names. It was put up for sale via an online auction service. It was used until about May 20, 2005, to generate revenue by means of third party added content which promoted hits on the site. It follows therefore that the circumstances comprehended by paragraph 4(c)(i) of the Policy do not exist.
The Panel therefore finds that the Respondent has not shown rights or legitimate interests in the domain name <amaryllids.com> and so the Complainant has established the second element of its case under the Policy in relation to this name also.
7.2.3 Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the circumstances which shall be evidence
of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 that complainant, for
valuable consideration in excess of your documented out-of-pocket costs directly
related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting
the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract,
for commercial gain, Internet users to your 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 your website or location
or of a product or service on your website or location.
These sets of circumstances are not exhaustive and other instances of bad faith might be in evidence however what is noteworthy about paragraphs 4(b)(i) – (iv) is that they are all cases of both registration and use in bad faith. Other times, there will be evidence of use in bad faith or registration in bad faith and the Panelist will need to find both since the requirements of paragraph 4(a)(iii) of the Policy are conjunctive.
It is therefore logical to first test the facts against these given circumstances.
The Panel is of the view that use of the <amaryllid.com> domain up until the time of the Complaint and use of the <amaryllids.com> name up to approximately May 20, 2005, fall squarely within paragraph (iv) above. The common intention of the websites was to attract Internet users for commercial gain. They did so, inter alia, by using the Complainant’s trademark. Whatever relationship the Respondent had come to with the party who created the website content is, in the Panel’s opinion, irrelevant to the finding for the purposes of this Policy that it was the Respondent which owned the domain name and which was responsible for whatever was posted there.
The Panel is satisfied that the disputed domain names were being used to attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark. The Panel finds that the Respondent either passively condoned or had a blameworthy indifference to the material posted to its domains by another.
In addition, the Panel finds that Respondent’s early attempts to auction the disputed domain names while being either aware or indifferent to the fact that the connected website might contain third party trademarks linked by similarity to the domain name also constituted use in bad faith.
A residual question is whether the use of <amaryllids.com> since June 2, 2005, somehow converts the bad faith use prior to May 20, 2005 into bona fide use. The Panel finds that it does not as it has reasoned earlier in this decision that the current use is not legitimate. Since it is not legitimate it could normally not be in good faith.
The Panel also holds that the registration of both disputed domain names falls within the circumstances described in paragraph 4(b)(i) of the Policy, set out above. The very circumstances of the case are that the Respondent registered the domain name for the purpose of selling, renting, or otherwise transferring the domain. This was its business rationale. By adding the Complainant’s mark to the corresponding websites the Complainant or a competitor of the Complainant were the likely target purchasers. The stated reserve sale price was US$3500 being consideration well in excess of the out-of-pocket costs normally connected with registering a domain name. The Panel finds that the disputed names were both registered and used in bad faith for this additional reason.
There are further grounds of bad faith in this case. In previous UDRP decisions,
opinion has been split as to whether constructive notice of earlier registered
trademark rights can form a basis for finding registration and/or use in bad
faith. The affirmative viewpoint finds most consistent support where a complainant
has a United States registered trademark and the respondent is located in the
United States (See: Toronto Star Newspaper Ltd. v. Elad Cohen DTV2000-0006,
Kate Spade, LLC v. Darmstadter Designs WIPO
Case No. D2001-1384, Alberto-Culver Company v. Pritpal Singh Channa
WIPO Case No. D2002-0757, Sterling
Inc. v. Sterling Jewelers, Inc and Domain Traffic WIPO
Case No. D2002-0772, and The Sportsman’s Guide, Inc. v. Modern
Limited, Cayman Islands WIPO Case No.
The UDRP Rules provide that the Panel may have regard to principles of law
that it deems applicable in addition to the Policy. The Respondent is
situated in the United States. The Complainant is the proprietor of United States
trademark n° 1 912 174 for AMARYL registered on August 15, 1995. The mark is
on the Principal Register. Registration of a mark on the Principal Register
establishes constructive notice of the mark as a matter of Federal trademark
law. Registration of the mark therefore put the Respondent on statutory notice
in March 2005 of the Complainant’s rights in the mark.
There is further reason to impute this knowledge to the Respondent. In its own words, “if any question exists in Respondent mind, the USPTO trademark database is searched”. The Respondent states that in this instance “no search results returned for either amaryllid or amaryllids”. Clearly, on this occasion a question did exist in the Respondent’s mind as to whether registration of the disputed domain names would impact on third party rights. A search was made of the Federal register. The search seems to have been of the exact terms planned for registration and produced no adverse findings. Such a search is by no means conclusive under US trademark law of whether the names would infringe other similar marks already registered. The two names were headed, upon registration, for exploitation and possibly sale. In those circumstances a thorough going search would not only have been prudent but mandatory to defeat the imputation of knowledge of the registration.
The Panel finds that for these further reasons the disputed domain names were registered in bad faith.
The Panel is of the opinion that there is an underlying reason to hold that
both names were registered in bad faith. In the recent decision of Herbalife
International, Inc. v. Surinder S. Farmaha, WIPO
Case No. D2005-0765, the panelist there explained that:
“The Complainant contends that when it became aware of the Respondent’s
registration and use of the domain name in dispute, the said domain name was
parked at a website hosted by Domain Sponsor.com which website has been addressed
by many UDRP panels. See Southern Communications Services, Inc. d/b/a Southern
LINC v. Henry Chan, WIPO Case No. D2004-0214,
Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, WIPO
Case No. D2004-0430, PepsiCo, Inc. v. LaPorte Holdings, Inc. and Pepsiemployment.com
alkla Henry Chan, WIPO Case No. D2005-0087,
Ameriquest Mortgage Company v. Ling Shun Shing, WIPO
Case No. D2003-0294, B and J Garcia, S.L., Arnedo, Spain v. Gorila,
WIPO Case No. D2004-1071.
According to the Complainant, Domain Sponsor.com operates a revenue program whereby domain name holders who redirect Internet users to its websites are eligible for a referral fee allegedly offering the ‘highest payouts’ and the website also adds that the program helps domain holders maximize revenue from their parked domains by providing a straightforward and easy-to-use monetization system. The panel in PepsiCo, Inc. v. LaPorte Holdings, Inc. and Pepsiemployment.com alkla Henry Chan, supra, held that parking domain names with Domain Sponsor.com has become an increasingly ‘popular’ and ‘crude’ practice among cybersquatters and that using the domain names to divert web traffic to search engines and linking portals is done for a financial benefit.”
These cases indicate the
extreme caution with which any domain name registrant must approach such schemes.
In the present case, the Respondent routinely enters newly registered domain
names into a “pay-per-click” scheme. On the available evidence,
the Panel found that the Respondent either passively condoned or was indifferent
to the material posted to its domains by another party. The very intention of
that other party is to drive traffic through the websites. It would appear from
the evidence that one strategy to do so maybe to use a third party trademark
which is similar to the domain name. The Panel believes that registrations made
as part of such a scheme are made and used in bad faith for the purposes of
this Policy if it is held that the domain name in point is confusingly similar
to a mark in which a third-party complainant has rights.
8. Reverse Domain Name Hijacking
In view of the above findings there is no need for
the Panel to address this point.
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 names <amaryllid.com> and <amaryllids.com> be transferred to Aventis Pharma Deutschland GmbH.
Debrett G Lyons
Dated: November 24, 2005