WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fujisawa Pharmaceuticals Co. Ltd. v. Acaramba Inc.
Case No. D2000-0593
1. The Parties
1.1 The Complainant in this administrative proceeding is Fujisawa Pharmaceuticals Co. Ltd., a corporation of Japan, with its principal place of business at 4-7, Doshomachi 3-chome, Chuo-ku, Osaka 541-8514, Japan.
1.2 The Respondent is Acaramba Inc., an entity having its address at 1 Soldiers Field, # 404, Boston, MA 02163 USA.
2. The Domain Name and Registrar
The domain name in dispute is "suprax.com", which domain name is registered with Network Solutions Inc. based in Herndon, Virginia, United States of America.
3. Procedural History
3.1 A Complaint was submitted to the WIPO Arbitration and Mediation Center in hard copy on June 13, 2000. Thereafter, pursuant to a request by the Center to submit such complaint in electronic form, a submission in electronic form was made on June 22, 2000. An acknowledgement of receipt was sent by the WIPO Center to the Complainant, dated June 19, 2000.
3.2 On June 19, 2000, a request for Registrar verification was transmitted to the Registrar, Network Solutions, Inc. ("NSI") requesting it to : (1) confirm that the domain name in issue is registered with NSI; (3) provide the full contact details [i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)] available in the Registrarís Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact, (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect, and (5) indicate the current status of the domain name.
3.3 On June 25, 2000, NSI confirmed by reply e-mail that the domain name "suprax.com" is registered with NSI, is currently in active status, and that the Respondent, Acaramba Inc., is the current registrant of the name. The Registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
3.4 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center in this regard. The Complainant paid on time and in the required amount the fees for a sole Panelist.
3.5 No formal deficiencies having been recorded, on June 27, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of July 17, 2000, by which time the Respondent could file a response to the Complainant. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in NSIís confirmation. In addition, the Complaint was sent by express courier to the postal address given. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
3.6 On July 20, 2000, not having received any response, the WIPO Center sent the parties a formal Notification of Respondent Default.
3.7 On August 23, 2000, in view of the Complainantís designation of a single Panelist, the WIPO Center appointed the undersigned to serve as the sole Panelist.
3.8 On August 29, 2000, the Center forwarded to the Panelist, an e-mail from the Complainant which contained certain additional facts. The Panelist has decided to take these facts on record.
4. Factual Background
4.1 The Complainant is the successor in interest and owner of the trademark "SUPRAX" registered in the United States of America for antibiotic pharmaceutical preparations in International Class 5. Such registration is valid and subsisting. The Complainantís licensee for the said trademark is American Home Products Corporation, a corporation incorporated in the State of Delaware, with its principal place of business at 5, Giralda Farms, Madison, NJ 07940, USA.
4.2 In February 1999, the Complainant, via its licencee contacted the Respondent by certified mail to demand that the domain name be transferred to the Complainantís licencee. The Respondent subsequently contacted the Complainantís licensee by telephone and offered to transfer or assign the domain name "for expenses" in excess of any out-of-pocket costs. Although the Respondent agreed to submit an itemization of such "expenses" to the Complainantís licencee, he did not do so. A follow-up letter by the Complainantís licensee was never replied to.
4.3 The Complainantís licensee had instituted arbitration proceedings before the WIPO Center against the Respondent in respect of the domain names "ativan.com" "lo-ovral.com" and "ovral.com". This case which had been assigned the number D2000-0457 was decided in favor of the Complainant on July 31, 2000. Pursuant to such decision, the domain names were transferred to the Complainantís licensee.
5. Partiesí Contentions
The Complainantís contentions are as follows:
5.1 The domain name in issue is identical or confusingly similar to the trademark "SUPRAX" in which the Complainant has rights.
5.2 The domain name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or its licensee for valuable consideration in excess of the domain name registrantís out-of-pocket costs directly related to the domain name. In support of such assertion, the Complainant seeks to rely on the fact that in February 1999 the Respondent offered to transfer or assign the domain name for expenses in excess of any out-of-pocket costs.
5.3 The domain name was registered in order to prevent the Complainant or its licencee from reflecting the mark in a corresponding domain name. Further, since the Respondent has registered other domain names belonging to the Licensee of the Complainant, it is evident that the Respondent has engaged in a pattern of such conduct.
5.4 Before any notice to the Respondent of the dispute, there has been absolutely no evidence of the Respondentís 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.
5.5 The Respondent (as an individual, business, or other organization) has not been commonly known by the domain name.
5.6 The Respondent is not making a legitimate, noncommercial or fair use of the domain name.
6. Discussions and Findings
6.1 Paragraph 4(a) of the Policy requires the Complainant to prove the following:
a) that the domain name registered by the Respondent is identical and confusingly similar to a trademark of service mark in which the Complainant has rights; and
b) that the Respondent has no legitimate interests in respect of the domain name; and
c) the domain name has been registered and is being used in bad faith.
Each of these requirements will be dealt with separately.
Identical or confusing similarity
6.2 The Complainant has contended that it is the successor in interest and owner of the trademark "SUPRAX", by virtue of a registration in the United States. The said trademark registration certificate, as filed, is in the name of American Cyanamid Company. However, in the absence of a denial by the Respondent, the Panel finds in favor of the Complainant in this regard i.e. the Complainant is the successor in interest of American Cynamid Company.
6.3 Having found in favor of the Complainantís trademark rights, the only other requirement to be addressed in this regard is whether the domain name "suprax.com" is identical or confusingly similar to the Complainantís trademark. It is but evident that the impugned domain name is identical to the trademark of the Complainant.
6.4 The Complainant has alleged and the Respondent has failed to deny, that the Respondent has no legitimate interests in respect of the domain name at issue. In accordance with the doctrine of "adverse inference", which is a well established legal doctrine in most jurisdictions, the Panel holds in favor of the Complainant. To buttress the above-mentioned finding, the Panel also relies on the fact that, to this date, the website has not been activated.
6.5 The third element that must be proved by the Complainant is that the Respondent has registered and is using the disputed domain name in bad faith. The policy indicates that certain circumstance may "in particular, but without limitation" be evidence of bad faith.
In the present proceedings, two such circumstances as above mentioned have been fulfilled:
i) The Complainantís contention that in February 1999 the Respondent offered to transfer or assign the domain name for expenses in excess for any out-of-pocket costs has not been denied by the Respondent. Thus the Panel finds that the conditions of paragraph 4(b)(i) of the policy have been met i.e "the Respondent has registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name".
ii) Similarly, the Complainantís contention that the Respondent has registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name and that he has been engaged in the pattern of such conduct has also not been contested.
In fact, pursuant to the Complainantís letter to the Center dated August 28, 2000, stating that the Complainantís licensee had prevailed over the Respondent in a proceeding (Case No. D2000-0457) instituted before the WIPO Center in respect of the domain names "ativan.com" "lo-ovral.com" and "ovral.com", the Panelist accessed the website of the Center and independently verified the same.
Thus, since both the requirements of paragraph 4(b)(ii) have been met, i.e. "the Respondent has registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name" and "he has engaged in a pattern of such conduct as well", the Panel finds in favor of the Complainant.
6.6 For the reasons as above mentioned, the Panel concludes that the domain name "suprax.com" has been registered and is being used in bad faith.
For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is identical to the trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name at issue, and that the Respondentís domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name "suprax.com" be transferred to the Complainant.
Dated: September 5, 2000
1. See Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No.D2000-007; Bronson Plc vs. Unimetal Sanayai ve Tic. A.S., WIPO Case No.D2000-0011 and CBS Broadcasting Inc. vs. Edward Enterprises, Case No.D2000-0242.
2. See paragraph 4 (b) of ICANNís domain name dispute resolution policy.