WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

American Home Products Corporation v. Privateer Ltd.

Case No. D2000-0455

 

1. The Parties

Complainant is American Home Products Corporation, a Delaware corporation, with its principal place of business at 5 Giralda Farms, Madison, NJ 07940, U.S.A. ("AHP").

Respondent is Privateer Ltd., 1287 Ballantrae Farm Drive, McLean, VA 22101, USA ("Privateer").

 

2. Domain Names and Registrar

The domain name at issue, the registrant, and status of the domain name according to Network Solutions, Inc. ("Network Solutions") are:

"ADDVIL.COM",

PRIVATEER LTD. (ADDVIL-DOM),

"Active".

Network Solutions is the registrar for the domain name at issue.

 

3. Procedural History

The WIPO Arbitration and Mediation Center ("the Center") received AHPís prior Complaint on or about May 16, 2000. Complainant subsequently discovered its prior Complaint incorrectly identified the domain name at issue within the body of the Complaint and immediately notified WIPO of such minor substantive typographical error. Complainant was then notified by WIPO on June 19, 2000, that Respondent considered the prior Complaint "defective". Complainant on June 20, 2000, withdrew its previous Complaint and filed the instant complaint.

The Center received AHPís instant Complaint via e-mail on June 21, 2000, and in hard copy on June 23, 2000. A copy of the instant Complaint, together with the cover sheet as prescribed by the Supplemental Rules, was sent or transmitted to the Respondent and to the concerned registrar on June 21, 2000, by United States Postal Service, certified mail.

The Center has verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). AHP has made the required payment to the Center. The formal date of the commencement of this administrative proceeding is June 28, 2000.

On June 28, 2000, the Center transmitted Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint, to the registrant via e-mail at the addresses identified in the Network Solutions verification response, via e-mail to postmaster for each website, and also via post/courier to the postal addresses identified in the Network Solutions Verification Response. The Center advised that (1) the response was due by July 17, 2000, (2) in the event of default, the Center would appoint a Panel to review the facts and to decide the case, (3) the Panel may draw such inferences from Respondentís default as it considers appropriate, (4) AHP had elected for the matter to be decided by a single panelist who would be appointed within five days of the date the response is due, (5) the fees for the administrative proceeding will be paid in their entirety by AHP, (6) the Panel will decide the case within 14 days of its appointment, and (7) the Center can be contacted at stated postal and e-mail addresses, a stated telephone number and a stated fax number.

The Center received Respondentís Response on July 17, 2000, and on July 19, 2000, sent Acknowledgment of Response. Complainant sent on July 19, 2000, a Rebuttal Argument in reply to Respondentís Response which, inter alia, called to Respondentís attention the fact that the Response failed to include the mandatory certification required by Rule 5(b)(viii).

On August 1, 2000, the Center transmitted to the Complainant via e-mail and to Respondent via e-mail Notification of Appointment of Administrative Panel and Projected Decision Date. The notification advised that Mr. Gaynell C. Methvin had been appointed as the single panelist, and the decision was due August 16, 2000. On August 1, 2000, the Center transmitted the file in the case via courier to Mr. Methvin. Due to exceptional circumstances causing delay in Mr. Methvinís receipt of the file in this case, the due date for the decision was extended to August 23, 2000.

 

4. Factual Background; Partiesí Contentions

a. The Trademarks

The Complaint (Paragraph 12) is based on trademarks AHP registered in the U.S. Patent and Trademark Office pursuant to three registrations, copies of which appear as Exhibit C to the Complaint, viz.:

Advil - Reg. No. 1,298,347
Advil - Reg. No. 1,635,943
Advil - Reg. No. 1,942,746

The foregoing trademark registrations relate inter alia to an analgesic preparation; anti-pyretic and anti-inflammatory preparations and preparations for the treatment of juvenile arthritis, rheumatoid arthritis and osteoarthritis; and cold and sinus relief medicines.

b. The Complaint

AHP in support of its position asserts the following:

a) The domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise preventing the Complainant from registering the domain name. In pre-complaint dealings, Complainant in October 1999 contacted Respondent by certified mail to demand that the domain name be transferred to Complainant. Respondent via Mr. Fuisz thereafter contacted Complainant by telephone alleging that it owned trademark registrations in Hungary and other European countries. Complainant advised Respondent by return letter that no such registrations were located, and reiterated its earlier demand. Respondent to date failed to reply to such demand. However, Respondent, on June 19, 2000, contacted Complainant by letter and offered to sell to Complainant the disputed domain name for the sum of Five Thousand Dollars ($5,000.00). A copy of this letter is provided as Exhibit D to this Complaint.

b) The domain name was registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name, or to attempt to steer prospective users of the Internet from Complainantís own legitimate website located at www.advil.com to Respondentís website located at www.rxdrugstore.com. Upon information and belief, the domain name registrant has engaged in a pattern of such conduct. Searches of the "whois" database of NSI reveals that Respondent has registered over 50 domain names, including other pharmaceutical-based product names such as TILENOL.COM, as well as a wide variety of "city" names prefixed by the string [R-], such as R-DENVER.COM. A copy of such searches, conducted on October 4, 1999 and May 15, 2000, is provided as Exhibit E to this Complaint.

c) Before any notice to the domain name registrant of the dispute, there is absolutely no evidence of the registrantís 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.

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

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

c. Remedies Requested

As for relief, AHP requests at Paragraph 13:

In accordance with Paragraph 4(b)(i) of the Policy, for the reasons described in Section V above, Complainant, requests the Administrative Panel appointed in this administrative proceeding to issue a decision that the contested domain name be transferred to the Complainant.

 

d. Respondentsí Answer

Respondent, in its answer asserts the following as its grounds for defense:

1. AHP has brought its complaint in bad faith. Moreover the AHP complaint fails to assert a basis for relief.

2. AHP is required to demonstrate as follows: (i) the domain name is identical or confusingly similar to a trademark in which Complainant has rights, (ii) Respondent has no rights or legitimate interests in respect of the domain name that is the subject of the Complaint and (iii) the domain name should be considered as having been registered and used in bad faith.

(i) the domain name is identical or confusingly similar to a trademark in which Complainant has rights

A review of the trademark materials attached as Exhibit C to the Complaint confirms that AHP has no trademark to ADDVIL.COM. Moreover and more importantly, a review of the entire complaint DOES NOT REVEAL A SINGLE INSTANCE OF CONFUSION BY ANY PARTY between addvil.com and advil. Indeed, if AHP felt the two were similar, it would presumably have registered Addvil.com (which it did not do so as recently as 26 August 1999 when that name was still available.

Still more importantly, AHP gives no consideration to the context of the purported infringement, a hallmark of hornbook trademark law. The national pizza chain Pappajohnís would have an excellent claim against AHP were AHP to open a pizza store in Whitehall named Pappajohns; Pappajohnís Pizza has a very poor case against a PappaJohnís hardware store. Where the line of business differs, a case for infringement is less likely to lie.

Indeed, Respondent has no intention to use the ADDVIL.COM as a pharmaceutical site (see Exhibit D to AHP complaint confirming that ADDVIL.COM has been listed for sale for non-pharmaceutical use).

AHP attempts to harass Respondent through absurd and baseless charge that Respondent attempts "to steer prospective users of the Internet from Complainantís own legitimate website located at www.advil.com to respondentís website located at www.rxdrugstore.com."

This charge is specious and fantastic. A search on 10 July 2000 indicates that there is NO SITE AT WWW.RXDRUGSTORE.COM. Moreover, Respondent affirmatively states that it has NEVER LINKED ADDVIL.COM to ANY SITE.

On or about 10 July 2000, counsel for respondent contacted counsel for AHP, asking AHP to amend the Complaint to correct these baseless and harassing accusations. Acting for AHP, Steve Baron, Esq. Refused because he had no way of confirming Respondentís statements to the effect that no site even existed at www.RxDrugstore.com. Fantastically, it appears that AHP either (a) lacks internet access or (b) PREFERS TO USE THIS ARBITRATION FORUM AS A TOOL OF HARASSMENT.

AHP attempts to further impugn the position of Respondent stating that "there is absolutely no evidence of the registrantís use of Öthe domain name." In fact, a review of Exhibit 5 to the Complaint confirms that Respondent has attempted to make use by OFFERING ADDVIL.COM FOR SALE FOR NON-PHARMACEUTICAL USE. Respondent believes ADDVIL.Com has significant value for a number of commercial uses. A review in the Oxford English Dictionary reveals a plethora of meanings for ADD and VIL.

(ii) Respondent has no rights or legitimate interests in respect of the domain name that is the subject of the Complaint.

Respondent has a right to the name by virtue of registering it and a legitimate interest in offering it for sale to others. AHPís implied theory that registering a name for sale to others (again, for non-pharmaceutical use) is somehow not a legitimate interest has no basis in law or equity.

(iii) The domain name should be considered s having been registered and used in bad faith.

AHP attempts to argue bad faith through its elaborate and farcical theory that Respondent has linked ADDVIL.com to an non-extant website, rxdrugstore.com, in order to take traffic from Advil.com. As previously stated, this theory which AHP has not bothered to amend following notice from Respondent represents bad faith.

As noted earlier, Respondentís Response to the Complaint failed to include the mandatory certification required by Rule 5(b)(viii). This critical missing certification was called to Respondentís attention by AHPís rebuttal, filed on July 20, 2000, but Respondent has taken no steps to correct the oversight. Nevertheless, the Panel has given full consideration to Respondentís argument.

e. Complainantís Rebuttal Argument

In response to Respondentís Response, AHP filed a paper entitled "Rebuttal Argument" which in summary presents the following:

  1. In reply to Respondentís argument that AHP has shown no actual confusion between the domain name and the trademarks of AHP, AHP correctly points out that the ICANN policy does not require that actual confusion be found.
  2. AHP provides further evidence of the connection between the Respondent and the website RXDRUGSTORE.COM and provides an exhibit showing that the website in question was in operation and points out connections between said website and Respondentís counsel and other companies associated with Respondent and its counsel.
  3. AHP provides evidence of not only Respondentís effort to sell the domain name at issue to AHP, but also evidence of other efforts by Respondent or its counsel to sell the domain name at issue.
  4. AHP again urges that Respondentís answer be ignored for failure to comply certification as required by Rule 5(b)(viii)

 

5. Discussion and Findings

Paragraph 4 of the Policy directs that AHP must prove, with respect to the domain name in issue, each of the following:

(i) The domain name in issue is identical or confusingly similar to the AHP trademark, and

(ii) 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(b) of the Policy sets out four illustrative circumstances, which for purposes of Paragraph 4(a)(iii) above shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances which, if proved by respondent, shall demonstrate respondentís rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii) above.

a. Identity or Confusing Similarity

AHP urges, and has the burden of proving, that the domain name in dispute is either identical to, or confusingly similar to, AHPís trademarks.

In light of the facts and factors averred in the Complaint and evidence provided in support thereof, and after giving due consideration to Respondentís answer, the Panel finds that the domain name in issue is confusingly similar to the AHP mark.

b. Rights or Legitimate Interests

On this record, no challenge has been leveled with respect to (1) the validity of any AHP trademarks, (2) AHPís rights in those marks with respect to AHP goods, or (3) the global fame and goodwill associated with those marks.

No legitimate or meritorious challenge has been leveled with respect to AHPís averments as to registrantís conduct.

This record demonstrates that Respondent has no rights or legitimate interests vis-a-vis the domain name at issue.

c. Registration and Use in Bad Faith

Registration of the domain name in issue in bad faith is a matter of the appropriate inferences to draw from circumstantial evidence. Each is to be proved by AHP.

AHP avers that Respondentís registration was in bad faith (see above).

These averments are supported by the record provided by AHP in its Complaint and exhibits thereto, and in particular, the evidence showing Respondentís offer to sell the domain name to AHP, demonstrates that Respondent has registered the domain in bad faith.

d. Paragraph 4(c) Factors

With respect to the domain name in issue, Respondent has failed to prove any of the three circumstances set out in Paragraph 4(c) of the Policy, viz.:

(i) Before any notice to Respondent of the dispute, Respondentís use of or preparations to use the domain name were in connection with a bona fide offering of goods or services,

(ii) Respondent or a related entity has been commonly known by the domain name, and

(iii) Respondent is making legitimate noncommercial or fair use of the domain name in issue, "without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

As averred by AHP and properly inferred from the undisputed facts as to Respondentís conduct, each of these three factors must be resolved in favor of AHP.

 

6. Decision

The Panel has jurisdiction of this dispute. Respondent has received notice of the commencement of this proceeding, the Policy, the Complaint, and the consequences of Respondentís failure to provide a meritorious defense. Respondent has been afforded due process.

With respect to the request for transfer of the domain name at issue, the Panel decides that AHP has carried its burden of proving: (a) the domain name in issue here is identical to or confusingly similar to the AHP marks, (b) Respondent has no rights and no legitimate interests in respect of the domain name in issue, and (c) the domain name in issue has been registered and used in bad faith by Respondent.

 

Accordingly, the Panel requires that the registration of the domain name "ADDVIL.COM" be transferred to American Home Products.

 


 

Gaynell C. Methvin
Panelist

August 25, 2000


 

Footnotes:

1. Each letter corresponds to the identical letter in paragraph 12 in the Complaint.

2. Even though Respondent has not properly certified its Answer, its responses have, nevertheless, been considered.