WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Pharmacia & Upjohn Ab v. Gabriel Sipa

Case No. D2000-0309

 

1. The Parties

1.1 Complainant:

Pharmacia & Upjohn AB, S-112 87 Stockholm, Sweden.

1.2 Respondent:

Gabriel Sipa, 3138 LaClede Avenue, Los Angeles, CA 91207, USA.

 

2. The Domain Name and Registrar

2.1 Domain Name:

I-Pharmacia.com ("the Domain Name")

2.2 Registrar:

Register.com

 

3. Procedural History

3.1 The Complaint, citing the respondent as being "If you want this domain name, please contact me", was received by WIPO by email on April 18, 2000, and in hard copy on April 20, 2000. The Complaint wrongly identified Network Solutions Inc as the registrar of the Domain Name, but that error was noticed and corrected and register.com, the true registrar, has been notified in accordance with the Rules. Register.com confirmed that the Respondent, Gabriel Sipa, is the current registrant of the Domain Name. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.

3.2 The Complaint was properly notified in accordance with the Rules, paragraph 2(a), and the Respondent responded to the Complaint within time by email on May 27, 2000.

3.3 The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

3.4 Given the confusion as to the precise identity of the Respondent (see paragraphs 3.1 above and 4.3 and 4.5 below), the Panel asked WIPO if it would be possible for the registrar to identify in what name the Domain Name was first registered. The registrar subsequently confirmed that Gabriel Sipa was the original registrant as well as the current registrant.

3.5 No further submissions were received by WIPO or the Panel as a consequence of which the date originally scheduled for the issuance of the Panelís Decision was July 28 2000. However, on reading the papers, it seemed to the Panel that the Respondent was in possession of documentation (a business plan), which, if produced to the Panel, could assist his case. Accordingly, on July 24, 2000, the Panel issued its Procedural Order No. 1, which is annexed as Appendix 1. The parties were invited to make representations. The Complainant confirmed through its attorneys that if the business plan was produced, it would keep it confidential and would not use its contents otherwise than for the purpose of this complaint procedure and any related litigation which might ensue. The Respondent did not respond.

3.6 On August 7, 2000, WIPO notified Procedural Order No. 2, which is annexed as Appendix 2. The Respondent duly produced a severely expurgated version of the business plan within the time allotted under cover of a letter in which he made further representations. The Complainant failed to comply with the timetable for its representations, but lodged them out of time on September 6, 2000. Since the Respondent is in no way prejudiced by the delay and since the Panel is still able to meet the new date scheduled for the Panelís Decision (September 13, 2000), the Panel has accepted these out of time representations.

 

4. Factual Background

4.1 The Complainant is an internationally known research based pharmaceutical company incorporated in Sweden.

4.2 The Complainant is the proprietor of inter alia US trademark registrations numbers 1,277,927 (issued May 15 1984), 1,025,527 and 1,025,528 (both issued November 25 1975) (together hereinafter referred to as "the Trade Marks").

4.3 The Respondent, who describes himself as an entrepreneur and full-time financial analyst, registered the Domain Name on August 10 1999 under his name, Gabriel Sipa. Very shortly thereafter he added to the ownership record the note "If you want this domain name, please contact me".

4.4 On April 17, 2000, the Complainantís attorneys wrote to the Respondent drawing his attention to the Complainantís rights in the name PHARMACIA and requesting immediate transfer of the Domain Name to the Complainant.

4.5 On April 17, 2000, the WHOIS record for the Domain Name was amended in two respects. First, the note was changed from "If you want this domain name, please contact me" to "This domain is not for sale!". Secondly, the Respondentís postal code was omitted from the record.

 

5. Partiesí Contentions

A. Complainant

5.1 The Complainant contends that:-

5.1.1 It has used the trademark PHARMACIA for upwards of 25 years.

5.1.2 As a result of long and substantially exclusive use of the name Pharmacia in the course of trade in the United States and elsewhere, it has become well known among the general public as well as among healthcare professionals. Indeed, the Complainant characterizes the trademark as a famous mark.

5.1.3 The Domain Name is identical and/or confusingly similar to the Complainantís trademark.

5.1.4 The Respondent has no rights or legitimate interests in the Domain Name as the Complainant has not agreed or consented to its use by the Respondent. The Complainant dismisses the Respondentís business plan as a document produced after the event to suit his case.

5.1.5 The Domain Name should be regarded as having been registered and used in bad faith "because

(a) the Pharmacia name is known to be a mark of the Complainant

(b) the Respondent registered it for no other purpose than to sell, rent or otherwise transfer the registration to the Complainant or to a competitor of the Complainant

(c) the Respondent has refused to co-operate with the Complainant to resolve the dispute

(d) the WHOIS record history referred to above

(e) the conduct of the Respondent in the exchanges of emails referred to above

B. Respondent

5.2 The Respondent who identifies himself as Gabriel Sipa contends that:

5.2.1 He is an honest, hardworking entrepreneur and holds down a full-time job as a financial analyst. He is planning to start a business under "I-Pharmacia.com" that will not compete with the Complainant but which is targeted at the large Spanish speaking population of the United States. He produces an expurgated version of his business plan to verify the state of his bona fide plans in this regard prior to notification to him of the Complainantís objections.

5.2.2 He acquired the Domain Name in the belief that it meant "internet pharmacy". He was, he says, under the mistaken impression that "pharmacia" is the Spanish word for "pharmacy". He says that he still likes the word because notwithstanding his mistake, it is easily recognizable by the French, the English, the Italian and the Spanish etc. as meaning pharmacy.

5.2.3 He was not aware of the existence of the Complainant at the time he applied for registration of the Domain Name; nor was he aware that Pharmacia is a trademark.

5.2.4 The word pharmacia is a generic word and should never have been registered as a trademark.

5.2.5 He will be lodging a complaint to "the US and International Trade Mark Office".

5.2.6 After he acquired the Domain Name and at the suggestion of a friend, he identified himself on the WHOIS record by reference to what he describes as a "note", namely "If you want this domain name, please contact me." He contends that he did this not with a view to disposing of the Domain Name but to assist him in evaluating the worth of the Domain Name. He says "the reason why I wanted to get [the Domain Name] appraised was because I wanted to know how much more value this Domain Name will add to my business idea."

 

6. Discussion and Findings

6.1 General

According to paragraph 4(a) of the Uniform Dispute Resolution Procedure Policy, the Complainant must prove that:-

6.1.1 the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

6.1.2 the Respondent has no rights or legitimate interest in respect of the Domain Name; and

6.1.3 the Domain Name has been registered and is being used in bad faith.

6.2 The burden of proof lies with the Complainant, but in relation to 6.1.2, once the Complainant has made out a good prima facie case, the obligation is on the Respondent to come forward with material countering the prima facie case.

6.3 The standard of proof is not defined in either the Policy or the Rules. However, a finding against the Respondent is a finding of bad faith and where the Respondent has come forward with an explanation and the Panel rejects the explanation the finding is essentially a finding that the Respondent has not told the truth. Accordingly, the Panel has to approach the evidence with caution. Moreover, in most jurisdictions there is a presumption of innocence. In the Panelís view the ordinary civil standard of proof of "on the balance of probabilities" is not good enough.

6.4 Identical or Confusing Similarity

The Domain name comprises three elements, namely the prefix "I-", which is a generic refers to "Internet", "pharmacia", which is identical to the Complainantís trademark, and ".com", which is a non-distinctive reference to the domain. The Panel finds that the Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights.

6.5 Respondentís Rights or Legitimate Interests

The Complainant asserts that the Respondent has no such rights or legitimate interests and knew of the Complainantís name or trademark when he registered the Domain Name. The Complainant dismisses the Respondentís business plan as a sham.

6.6 The Complainantís name and trademark are certainly very well known among those engaged in the field of pharmacies. Given that the Domain Name (at any rate in the Internet context) is substantially identical to the Complainantís trademark and that the Respondent claims to have been proposing to use the name in relation to an Internet pharmacy business and that the Respondent posted on the ownership record the notice "If you want this domain name, please contact me.", the Panel finds that the Respondent has a case to answer.

6.7 The Respondentís rights or legitimate interests in respect of the Domain Name rest entirely on the bona fides of his preparations to use the Domain Name for an Internet pharmacy business. In making the Procedural Orders in this case, the Panel drew to the Respondentís attention the importance of his demonstrating to the Panel the nature of his preparations for his new business and gave him every opportunity of doing so.

6.8 There are a number of features of the Respondentís position that the Panel finds difficult to accept. First, it is odd, to say the least, that someone intending to provide a substantial Internet pharmacy service to the Spanish-speaking population of the United States does not know the Spanish word for pharmacy; secondly, it is strange that a financial analyst in the United States proposing to set up a pharmacy business in the United States is unaware of the Complainant; thirdly, it is strange that a financial analyst (or anyone else for that matter) would elect to test the value of a domain name to a business (otherwise than with a view to selling the domain name) by posting a notice of the kind in question and before the business has commenced trading.

6.9 The Panel is mindful of the need to be cautious (see paragraph 6.3 above), but nonetheless finds that the business plan is a sham. The document appears to have been produced without any serious attention to detail and provides no useful information of any kind. It is undated and contains nothing to suggest that the Respondent had any serious intention of using the Domain Name for the purpose given. Taken with the posting of the aforementioned notice on the ownership record, a clear indication that the Domain Name was available for purchase, the Panel has no hesitation in finding that the Respondent has at no material time had any rights or legitimate interests in respect of the Domain Name.

6.10 Bad Faith

In light of the above findings, the Panel has no alternative but to find that the Respondent knew of the Complainantís name/trademark and registered it with the intention of selling it, hoping and anticipating that the Complainant would conduct a WHOIS search and, on seeing the notice, would make an offer. The Respondentís unsuccessful attempt to deceive the Panel by producing a sham business plan aggravates the situation. The Panel is entitled to assume that the Respondent would not have agreed to the transfer of the Domain Name otherwise than for a sum well in excess of his out-of-pocket-expenses.

6.11 The Panel finds that the Domain Name has been registered and is being used in bad faith.

 

7. Decision

In the result, the Panel having found that the Domain Name is confusingly similar to a trademark in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered in bad faith and is being used bad faith, the Complaint succeeds.

The Panel directs that the Domain Name, I-Pharmacia.com, be transferred to the Complainant.

 


 

Tony Willoughby
Sole Panelist

Dated: September 13, 2000


 

ADMINISTRATIVE PANEL

PROCEDURAL ORDER NO. 1

 

Pharmacia & Upjohn AB v. Gabriel Sipa d/b/a If you want this domain name, please contact me d/b/a This domain name is Not for sale!

Case No. D2000-0309

 

For a Complainant to succeed, he has to prove amongst other things that the Respondent has no rights or legitimate interests in respect of the domain name in issue (paragraph 4.a.(ii) of the Policy). A Respondent's rights or legitimate interests in respect of the domain name shall be demonstrated if the Respondent is able to prove, for example, that before he was notified of the dispute he had made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services (paragraph 4. b.(i)).

In this dispute the Respondent claims rights and legitimate interests in the domain name. In his email of April 19 the Respondent states that he is planning to open a business under the domain name, which "will not compete with the Complainant". He refers to a business plan, which is "available on request only for the ICANN dispute commission members". In his email of May 27 he says that the business plan is only available to Mr. Erik Wilbers, the Case Manager. It is evident to the Panel that the business plan is potentially very important to the Respondent's case.

If the Panel is to take account of this business plan in reaching a decision, the Panel must see it and if the Panel sees it, natural justice demands that the Complainant must also see it. If the Respondent's reason for wishing to restrict circulation of the business plan is the fact that it is commercially sensitive in nature, that problem can be resolved by a confidentiality regime restricting circulation, but since the Respondent's planned business is not to compete with that of the Complainant, the Panel will need to be persuaded that anything other than a very basic confidentiality regime is necessary.

Subject to any representations the parties wish to make, the Panel is provisionally disposed to make a direction on the following lines:

1. The Panel will not take account of the business plan unless it is produced for inspection by the Panel and the Complainant;

2. The Complainant must confirm that if the business plan is disclosed to it, the Complainant will keep the business plan confidential and will not use it or its contents otherwise than for the purpose of this dispute procedure and any related litigation, which may follow;

3. On receipt by the Case Manager of the above confirmation from the Complainant, the Respondent will have 7 days within which to lodge a copy of the business plan with the Case Manager for distribution to the Panel and the Complainant;

4. On production of the business plan, the Complainant will have 7 days within which to make representations in relation to it and thereafter the Respondent will have 7 days within which to respond;

5. The date for the Panel's decision be put back until a date 7 days following receipt of the Respondent's representations pursuant to paragraph 4 hereof.

The parties must be given an opportunity to make representations in relation to the above and the Panel directs that each party has until July 28 in which to do so.

 


 

 

Tony Willoughby
Presiding Panelist

Dated: July 24, 2000

 


 

Appendix 2 to Decision D2000-0309

ADMINISTRATIVE PANEL

PROCEDURAL ORDER NO. 2

 

Pharmacia & Upjohn AB v. Gabriel Sipa d/b/a If you want this domain name, please contact me d/b/a This domain name is Not for sale!

Case No. D2000-0309

 

Whereas the Panel has received confirmation from the Complainant that it will abide by the confidentiality regime outlined in Administrative Panel Procedural Order No. 1, and from the Respondent that it has received Order No. 1.

Whereas no other representations have been received in relation to that Order from either party.

The Panel directs as follows:-

1. The Panel will not take account of the business plan unless it is produced for inspection by the Panel and the Complainant;

2. If, notwithstanding the confirmation as to confidentiality provided by the Complainant, the Respondent nonetheless feels he needs to expurgate certain particularly sensitive sections of the business plan before submitting it, the Panel will still take it into account, although the weight to be given to it will have to depend upon what is left of it after expurgation;

3. The Respondent has until close of business on Monday, August 14, 2000, to lodge a copy of the business plan with the Case Manager;

4. Any representations which the Complainant wishes to make in relation to the business plan must be lodged with the Case Manager by close of business on Monday, August 21, 2000;

5. Any representations in answer which the Respondent wishes to make must be lodged with the Case Manager by close of business on Monday, August 28, 2000;

6. If the business plan is lodged as provided for above, the date for the Panelís decision will be Wednesday, September 6, 2000. If the business plan is not lodged, the date for the Panelís decision will be Thursday, August 24, 2000.

 


 

Tony Willoughby
Presiding Panelist

Dated: August 7, 2000