WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

American Home Products Corporation v. Healthy Futures

Case No. D2000-0454

 

1. The Parties

The Complainant is American Home Products Corporation, a corporation organized in the State of Delaware, United States of America (USA), with place of business in Madison, New Jersey, USA.

The Respondent is Healthy Futures, with place of business in Huntington Beach, California, USA.

 

2. The Domain Name(s) and Registrar(s)

The disputed domain name is "americanhomeproductscorporation.com".

The registrar of the disputed domain name is Registrars.com, with business address in San Francisco, California, USA.

 

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

a) Complainant initiated the proceeding by the filing of a complaint via courier mail received by WIPO on May 18, 2000. Complainant transmitted the requisite filing fees to WIPO. On May 19, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Registrars.com.

b) On June 12, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail and courier mail. WIPO also transmitted notification of the complaint and commencement of the proceeding to Respondentís Administrative Contact via e-mail and courier mail.

c) On July 3, 2000, WIPO transmitted notification to Respondent of its default in responding to the complaint via e-mail and courier mail. Because of a potential technical problem with the e-mail transmission, WIPO retransmitted the notification of default via e-mail on July 19, 2000.

d) On July 6, 2000, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On July 6, 2000, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.

e) On July 19, 2000, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by August 3, 2000. On July 19, 2000, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondentís default in responding to the complaint). The proceedings have been conducted in English.

 

4. Factual Background

Complainant is a multinational enterprise that, inter alia, manufactures and distributes pharmaceutical products. Complainant uses the trademark and trade name "American Home Products Corporation" in connection with the promotion and sale of its products. Complainant has provided evidence of its use of its trademark and trade name since 1945 in the form of corporate Annual Reports (Complaint, Exhibit C). Complainant maintains a website at "www.ahp.com" at which it promotes the sale of pharmaceutical products using the name and mark "American Home Products Corporation" (id., para. 12, and Panel visit of August 3, 2000, to "http://www.ahp.com"). Complainant has not registered "American Home Products Corporation" as a trademark. Complainant claims common law rights in the mark "American Home Products Corporation".

According to the response of the registrar to WIPOís request for verification, the registrant of the disputed domain name "AMERICANHOMEPRODUCTSCORPORATION.COM" is "Healthy Futures", with Administrative Contact at "MacKenzie, Diana". The date of registration is December 26, 1999.

There is no evidence on the record of this proceeding of any use of the disputed domain name.

The Registration Agreement in effect between Respondent and Registrars.com subjects Respondent to Registrars.comís dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)). Respondent has not contested that it is properly before this Administrative Panel.

 

5. Partiesí Contentions

A. Complainant

Complainant states on its own behalf:

"12. This Complaint is based on the following grounds:

The trademark on which the Complaint is based, with a description of the goods or services in connection with which the mark is used, follows:

American Home Products Corporation, a corporation of the State of Delaware, USA, is a multi-national corporation which, through its wholly owned subsidiaries and divisions, manufactures and offers for sale a wide variety of ethical pharmaceutical and consumer health care products, and was incorporated in 1926. American Home Products Corporation is a market leader in many categories of products and engages in millions of dollars in research projects, advertising and promotion of its products. The Corporation is listed on the New York Stock Exchange (Symbol: AHP) and maintains its own legitimate, commercial web site at www.ahp.com. As part of its corporate activities, American Home Products Corporation issues annual reports, financial statements, and press releases to stockholders, financial institutions, the media and any other person who desires such publications. The Corporation also sponsors various charitable activities. Copies of cover pages from various annual reports and other referenced materials are provided as Exhibit C to this Complaint.

As discussed in Section IX, Other Legal Proceedings, supra, a certificate of registration for the trademark "America Home Products Corporation" is not mandated.

In accordance with Rules para. 3(b)(ix), the factual and legal grounds on which the Complaint is made are as follows:

- the domain name is identical or confusingly similar to a trademark or trade name in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the domain name that is the subject of the Complaint; and
- the domain name should be considered as having been registered and used in bad faith.

a) The domain names were registered or acquired primarily for the

purpose of selling, renting, or otherwise preventing the Complainant from registering the domain name.

b) Upon information and belief, the domain name was registered in

order to prevent the Complainant from reflecting the mark in a corresponding domain name, or, to attempt in bad faith to redirect users of the Internet from Complainantís legitimate, commercial web site at www.ahp.com to other web sites.

c) Before any notice to the domain name registrant of the dispute, there is absolutely no evidence of the registrant's use of, or demonstrable preparations to use, the domain names [sic] or a name corresponding to the domain names [sic] in connection with a bona fide offering of goods or services.

d) The domain name registrant (as an individual, business, or other organization) has not been commonly known by the domain names [sic].

e) The domain name registrant is not making a legitimate noncommercial or fair use of the domain names." (Complaint)

Complainant requests that the Panel ask the registrar to transfer the domain name "americanhomeproductscorporation.com" from Respondent to it (id., para. 13).

B. Respondent

Respondent did not reply to the Complainantís contentions.

 

6. Discussion and Findings

The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond

(see, e.g., para. 2(a), Rules).

In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by WIPO (see Procedural History, supra).

Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) Respondentís domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

Because the Respondent has defaulted in providing a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the complaint (Rules, para. 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of Complainantís undisputed representations (id., para. 15(a)).

Complainant has provided substantial evidence of its use of the trademark and trade name "American Home Products Corporation" in connection with the promotion and sale of products in commerce. The words "American", "home", "products" and "corporation" are each generic or commonly descriptive. In order for the words "American Home Products Corporation" to receive legal protection as a trademark, either through registration or by common law, these words in combination must have acquired distinctiveness or secondary meaning. Based on the evidence of long usage by Complainant of the "American Home Products Corporation" trademark in connection with the promotion and sale of products, including active use of the mark in connection with the promotion of products on its website, and in the absence of any objection by Respondent, the Panel determines that Complainant has common law trademark rights in "American Home Products Corporation". In light of Complainantís use of this mark for more than 50 years, the Panel also determines that Complainantís rights arose prior to Respondentís registration of the disputed domain name on December 26, 1999.

Respondent has registered the domain name "americanhomeproductscorporation.com". This name is identical to Complainantís trademark, except that (1) the domain name eliminates the space between the words comprising the mark, (2) the domain name uses lower case letters while the mark uses initial capital letters for each word, and (3) the domain name adds the generic top-level domain name (gTLD) ".com".

The elimination of spaces between words and the use of lower case letters are dictated by technical factors and by common practice among domain name registrants. These differences are without legal significance from the standpoint of comparing "americanhomeproductscorporation.com" and "American Home Products Corporation". The addition of the gTLD ".com" is likewise without legal significance since use of a gTLD is required of domain name registrants, ".com" is one of only several such gTLDs, and ".com" does not serve to identify a specific enterprise as a source of goods or services.

For purposes of this proceeding, it is unnecessary to decide whether, in light of these factors, Respondentís domain name is "identical" to Complainantís trademark, since Respondentís domain name "americanhomeproductscorporation.com" is without doubt confusingly similar to Complainantís trademark "American Home Products Corporation".

Complainant has met the burden of proving that Respondent is the registrant of a domain name that is identical or confusingly similar to a trademark in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.

There is no evidence on the record that would indicate that Respondent has any rights or legitimate interests in respect of the domain name "americanhomeproductscorporation.com", other than that it has registered this domain name. If mere registration of the domain name was sufficient to establish rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy, then all registrants would have such rights or interests, and no complainant could succeed on a claim of abusive registration. Construing the Policy so as to avoid an illogical result, the Panel concludes that mere registration does not establish rights or legitimate interests in the disputed domain name so as to avoid the application of paragraph 4(a)(ii) of the Policy.

Respondent has furnished no evidence of any legitimate use or preparation to use the disputed domain name. There is no evidence on the record of this proceeding of any such legitimate use or preparation to use by Respondent. The Panel determines that Respondent has no rights or legitimate interests in the disputed domain name. Thus, the Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration.

The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, para. 4(b)). Among these circumstances are (1) that the domain name has been registered or acquired by a respondent "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 [respondentís] documented out-of-pocket costs directly related to the domain name" (Id., para. 4(b)(i)); (2) that a 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" (id., para. 4(b)(ii)), and (3) that a respondent "by using the domain name, Ö [has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [respondentís] web site or location of a product or service on [its] web site or location" (id., para. 4(b)(iv)).

Complainantís trademark "American Home Products Corporation" is well known in the pharmaceuticals trade. The principal function of this mark is to identify Complainant as the source of products. The mark has a substantial commercial value deriving from this function. It is sufficiently distinctive to render the possibility remote that Respondent inadvertently selected the mark as a domain name. Absent evidence to the contrary, the most likely conclusion is that Respondent chose to register the mark as a domain name precisely because of Complainantís longstanding use of the mark in commerce.

Respondentís registration of "americanhomeproductscorporation.com" has prevented Complainant from using its trademark in a corresponding domain name. Complainant has not presented evidence suggesting that Respondent may have engaged in a pattern of conduct in regard to similar preclusive registrations. Respondentís actions therefore do not fall within the express terms of paragraph 4(b)(ii) of the Policy. The Panel recalls, however, that the list of "bad faith" circumstances of registration and use in paragraph 4(b) of the Policy is illustrative, not exclusive.

In the context of this case, the Panel determines that Respondentís registration of the domain name "americanhomeproductscorporation.com", corresponding to the trademark "American Home Products Corporation", is an act of bad faith in respect to Complainantís interests in that such registration has prevented Complainant from using its mark in a corresponding domain name. By preventing Complainant from registering its mark as a domain name, Respondent has deprived Complainant of its right to use its mark in connection with the sale of its products, and thereby adversely affected its interests in its mark.

Complainant has thus established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration.

The Panel will therefore request the registrar to transfer the domain name "americanhomeproductscorporation.com" to the Complainant.

 

7. Decision

Based on its finding that the Respondent, Healthy Futures, has engaged in abusive registration of the domain name "americanhomeproductscorporation.com" within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name "americanhomeproductscorporation.com" be transferred to the Complainant, American Home Products Corporation.

 


 

Frederick M. Abbott
Sole Panelist

Dated: August 3, 2000