WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Pharmacia & Upjohn AB v. Monsantopharmacia.com Inc.

Case No. D2000-0446

 

1. The Parties

The Complainant is Pharmacia & Upjohn AB, a Swedish corporation with a place of business at S-112 87 Stockholm, Sweden.

The Respondent is Monsantopharmacia.com Inc. of Dacom Building, 65-228 Ga. Hangang-Ro, Yongsan-Ku, Seoul, 140-013, Korea.

 

2. The Domain Names and Registrar

The domain names at issue are "MONSANTOPHARMACIA.COM" and "MONSANTOPHARMACIA.NET". The domain names are registered with Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, United States of America ("NSI").

 

3. Procedural History

The Complaint submitted by Pharmacia & Upjohn AB was received on May 15, 2000, by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").

On or about May 23, 2000, a request for Registrar verification was transmitted by the WIPO Center to NSI, requesting it to:

Confirm that a copy of the Complaint had been sent to it by the Complainant as required by the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).

Confirm that the domain names at issue are registered with NSI.

Confirm that the person identified as the Respondent is the current registrant of the domain names.

Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrarís WHOIS database for the registrant of the disputed domain names, the technical contact, the administrative contact and the billing contact for the domain names.

Confirm that the Uniform Domain Name Dispute Resolution Policy is in effect.

Indicate the current status of the domain names.

By email dated May 30, 2000, NSI advised WIPO Center as follows:

NSI had received a copy of the Complaint from the Complainant.

NSI is the Registrar of the domain name registrations "MONSANTOPHARMACIA.COM" and "MONSANTOPHARMACIA.NET".

Monsantopharmacia.com Inc. is shown as the "current registrant" of the said domain names. The registrantís address is given as Dacom Building, 65-228, 3 Ga. Hangang-Ra Yongsan-Ku, Seoul, 140-013, Korea.

The administrative and billing contact is Oh, Min at the above address. Email address enor2000@HOTMAIL.COM.

The technical and zone contact for both domain names was shown as Ben Neumann, 7775 Sunset Boulevard, #102, Los Angeles, CA 90046, USA. Telephone 323-436-0247; Fax 323-436-0248. Email address: hostmaster@DOMAINSAREFREE.COM.

NSIís 5.0 Service Agreement is in effect.

The domain name registrations "MONSANTOPHARMACIA.COM" and "MONSANTOPHARMACIA.NET" are in "Active" status.

NSI has currently incorporated in its agreements the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").

The advice from NSI that the domain names in question are still "active", indicates the Respondent has not requested that the domain names at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with NSI. Accordingly, the Respondent is bound by the provisions of NSIís Domain Name Dispute Resolution Policy, i.e., the ICANN policy. The Respondent has not challenged the jurisdiction of the Panel.

Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the WIPO Center on June 2, 2000, transmitted by post/courier a notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to NSI and ICANN. The post/courier notification should have been received by Respondent no later than June 10, 2000, in the normal course of delivery. A Notification of Default was sent by courier to the Respondent by WIPO Center on June 26, 2000.

There was some concern that an email notification of Complaint and Commencement of Administrative Proceedings had not been received by the Respondent. Hence, on July 18, 2000, the WIPO Center emailed the Respondent as follows:

"On June 2, 2000, the WIPO Arbitration and Mediation Center sent you the attached documents by courier and requested you to reply to them by June 21, 2000. As we did not receive a response by this deadline, a Notification of Default was sent to you by courier on June 26, 2000. We are sending you this message to confirm whether you actually received these documents. As you know from communications we have sent to you earlier today, a Panel has been appointed to rule upon the case by the end of this month. Please inform us whether you still wish to submit a response."

Subsequent to this message, the Respondent established contact with the WIPO Center and, by email of July 26, 2000, the WIPO Center informed the Respondent as follows: "in view of ... exceptional circumstances, it will be possible to grant you extra time to respond to the Complaint. Please indicate how much extra time you would need to submit your response...".

No reply to that email was ever received from the Respondent.

The Respondent was advised in the couriered communication that a Response to the Complaint was required within 20 calendar days of the email advice (i.e., by June 21, 2000). The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. Because of the uncertainty over the email notification to the Respondent, the Panel considered that the Respondent should have had until July 1, 2000, i.e., within 20 days of the presumed delivery of the documents by post/courier, within which to make a Response.

The Respondent has filed no Response by July 1, 2000, or later.

The Complainant elected to have its Complaint resolved by a single panel member: it has duly paid the amount required of it to the WIPO Center.

On July 10, 2000, the WIPO Center invited the Honourable Sir Ian Barker QC of Auckland, New Zealand, to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.

On July 11, 2000, the Honourable Sir Ian Barker QC advised his acceptance and forwarded to the WIPO Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.

On July 14, 2000, WIPO Center forwarded to the Honourable Sir Ian Barker QC by courier the relevant submissions and the record. These were received by him on July 17, 2000. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel would have been required to forward its decision by July 26, 2000.

The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules.

The language of the administrative proceeding is English, being the language of the registration agreement.

 

4. Factual Background

Pharmacia & Upjohn is a research-based pharmaceutical company. For more than 25 years, Pharmacia & Upjohn and its predecessors in interest and title and related companies have used the name and mark "PHARMACIA" in connection with its well-known pharmaceutical business and products.

In early December 1999, it was announced that Pharmacia & Upjohn and Monsanto Company had entered into a definitive agreement to merge their two companies to create a powerful new player in the global pharmaceutical industry. The merged company would have one of the strongest sales forces in the global pharmaceutical industry, an expansive product portfolio, a robust pipeline of new drugs and an annual pharmaceutical research and development budget of more than $2 billion. It was also announced that the new company would have one of the worldís leading fully integrated agricultural businesses. It estimated 1999 sales of $17 billion with a market capitalization of more than $50 billion.

On April 3, 2000, Pharmacia Corporation ("Pharmacia") officially came into being from the merger of Pharmacia & Upjohn and Monsanto Company. With the merger, Pharmacia Corporation now employs more than 60,000 people worldwide and has research, manufacturing, administration and sales operations in more than 60 countries.

Pharmacia & Upjohn remains a subsidiary of Pharmacia Corporation and the owner of Pharmacia & Upjohnís intellectual property, including its trademark properties. Pharmacia & Upjohn owns trademark registrations throughout the world for "PHARMACIA". For example, Pharmacia & Upjohn owns US Registration Nos. 1,277,927; 1,025,528; and 1,025,527, issued May 15, 1984, November 25, 1975 and November 25, 1975, respectively. Such registrations are valid and subsisting.

By virtue of the long and substantially exclusive use of the "PHARMACIA" name and mark in the United States and abroad, such name and mark have been and are well-known among the general public, as well as among healthcare professionals worldwide.

On April 17, 2000, counsel for Pharmacia & Upjohn sent to the Respondent communications via email informing the Respondent of Pharmacia & Upjohnís rights in the "PHARMACIA" trademark. Counsel stated that the Respondentís use and registration of the "MONSANTOPHARMACIA.COM" and "MONSANTOPHARMACIA.NET" domain names violated Pharmacia & Upjohnís rights in its "PHARMACIA" mark under United States law in that persons attempting to find Pharmacia & Upjohn on the Internet may become discouraged upon reaching the Respondentís "MONSANTOPHARMACIA.COM" and "MONSANTOPHARMACIA.NET" websites and search no further for Pharmacia & Upjohnís website, to Pharmacia & Upjohnís detriment. Pharmacia & Upjohn demanded that the Respondent promptly transfer the "MONSANTOPHARMACIA.COM" and "MONSANTOPHARMACIA.NET" domain name registrations to Pharmacia & Upjohn.

The Respondent responded to counsel for Pharmacia & Upjohnís communication on April 21, 2000, alleging that the Respondent registered the domain names in Korea and that "at that time, there had not been exist such trademarks or any infringement that you insist" [sic].

Counsel for Pharmacia & Upjohn responded on April 28, 2000 that the "PHARMACIA" mark was a valuable trademark of Pharmacia & Upjohn and asked for confirmation that the Respondent would transfer the domain names to Pharmacia & Upjohn. On May 1, 2000, the Respondent responded to the April 28, 2000 communication stating, inter alia: "I donít know who your client is and what they do".

 

5. Partiesí Contentions

Pharmacia & Upjohn submits that the Respondent has clearly registered the domain names at issue to prevent Pharmacia & Upjohn from registering such domain names: that it has engaged in a pattern of such conduct by registering the two domain names at issue shortly after it was announced that Pharmacia & Upjohn and Monsanto had entered into merger discussions. The Respondentís claim in its communication of May 1, 2000 to counsel for Pharmacia & Upjohn that it does not know of Pharmacia & Upjohn is belied by the domain names which the Respondent has registered. The Respondent clearly had knowledge or reasonably should have had knowledge of Pharmacia & Upjohnís prior adoption and usage and rights in the "PHARMACIA" mark.

Counsel for the Complainant cited Interstellar Starship Services, Ltd v. Epix, Inc. (CA 9th, 1999) 184 F.3d 1107, 1111, where it was said:

"However, ISS became aware of the "EPIX" trademark when it applied for its own registration of "EPIX". Adopting a designation with knowledge of its trademark status permits a presumption of intent to deceive. See Brookfield, 174 F.3d at 1059 (citing Official Airline Guides, Inc. v. Goss, 6 F.3d 1385 (9th Cir. 1993)). In turn, intent to deceive is strong evidence of a likelihood of confusion. Sleekcraft, 559 F.2d at 354." [Emphasis in original].

The Respondent has made no submissions.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to:

"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".

The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

· That the domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

· That the Respondent has no rights or legitimate interests in respect of the domain names; and

· That the domain names have been registered and are being used by the Respondent in bad faith.

The domain names "MONSANTOPHARMACIA.COM" and "MONSANTOPHARMACIA.NET" are confusingly similar to the Complainantís mark. The insertion of the word "Monsanto" to the domain name is devious given that the domain name was registered by the Respondent soon after the announced merger of two giants in the pharmaceutical industry whose names must be known worldwide. Persons worldwide accessing the domain names would be bound to think that the domain names had a connection with Monsanto and Pharmacia & Upjohn Ė the merged entity. The Panel decides that the domain names are confusingly similar to the Complainantís marks.

Likewise, the Panel decides that the Respondent has no rights or legitimate interests in the domain names at issue. The Respondent has never suggested to the contrary.

Paragraph 4(b) of the ICANN Policy states:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, 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 web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

It should be noted that the circumstances of bad faith are not limited to the above.

The Panel considers that the Respondent has registered and used the domain names "MONSANTOPHARMACIA.COM" and "MONSANTOPHARMACIA.NET" in "bad faith" for the reason that the words "MONSANTOPHARMACIA.COM" and "MONSANTOPHARMACIA.NET" are so obviously connected with such well-known pharmaceutical companies that their very use by someone with no connection with either of these companies suggests opportunistic bad faith. Particularly so when the domain name registrations were effected so shortly after the merger of Monsanto Company and Pharmacia & Upjohn had been commenced.

Although there is no evidence, as is often the case, of the Respondent trying to sell the domain name, either by auction on the net or by offer to the Claimant, the ingenuous email correspondence from the Respondent indicates sufficient use of the domain name for the purposes of this adjudication. The fact that the Complainantís trademark may not have been registered in Korea does not affect the situation of multi-nationals merging. The inference from the Respondentís joinder of the names of Monsanto and Pharmacia shows it was positioning itself to capitalize on the joinder of two multi-national giants.

Accordingly, for all the various reasons discussed above, the Panel finds that the domain names "MONSANTOPHARMACIA.COM" and "MONSANTOPHARMACIA.NET" have been registered and are being used by the Respondent in bad faith.

 

7. Legal Considerations

Although entitled to consider principles of law deemed applicable, the Panel finds it unnecessary to do so in any depth. The jurisprudence which is being rapidly developed by a wide variety of Panelists world-wide under the ICANN Policy provides a fruitful source of precedent which is unnecessary to repeat here. Blatant "cyber-squatting", such as is disclosed in this case, should be discouraged. A clearer example would be hard to find.

 

8. Decision

For the foregoing reasons, the Panel decides:

(a) that the domain names registered by the Respondent are identical or confusingly similar to the trademark to which the Complainant has rights;

(b) that the Respondent has no rights or legitimate interests in respect of the domain names; and

(c) the Respondentís domain names have been registered and are being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain names "MONSANTOPHARMACIA.COM" and "MONSANTOPHARMACIA.NET" be transferred to the Complainant.

 


 

Hon Sir Ian Barker QC
Presiding Panelist

Dated: August 1, 2000