WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pharmacia & Upjohn Company v. Peoples Revolutionary Suicide Jazz Band
Case No. D2000-0816
1. The Parties
The Complainant is Pharmacia & Upjohn Company, a corporation organized in the State of Delaware, United States of America (USA), with place of business in North Peapack, New Jersey, USA.
The Respondent is Peoples Revolutionary Suicide Jazz Band, with address in San Francisco, California, USA.
2. The Domain Name(s) and Registrar(s)
The disputed domain name is "xanax.org".
The registrar of the disputed domain names is Network Solutions, Inc., with business address in Herndon, Virginia, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) The Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on July 18, 2000, and by courier mail received by WIPO on July 20, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On July 26, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions, Inc. On July 31, 2000, WIPO received a Verification Response from the registrar. On August 2, 2000, WIPO completed its formal filing compliance requirements checklist.
(b) On August 2, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail and courier mail. The courier was unable to make delivery of the notification to the contact address provided by Respondent in its registration of the dispute domain name. On August 2, 2000, WIPO also transmitted notification of the complaint and commencement of the proceeding to Respondentís Administrative Contact, Jason Storm, via e-mail and courier mail. The courier successfully completed delivery of the notification to the address provided by Respondent for its Administrative Contact.
(c) On July 22, 2000 WIPO received via e-mail a query regarding the Administrative Procedure from a party ("Lars Xanax") not listed either as Respondent or a contact in Respondentíís domain name registration. On July 26, 2000, WIPO responded to said party, requesting clarification of its relationship to the disputed domain name. On August 3, 2000, WIPO received via e-mail from Respondentís Administrative Contact a statement to the effect that he had been requested by the party that sent the query of July 22, 2000 to "plead his case", asserting that said party speaks very poor English, that "Xanax" is his last name, and asking whether there were any specific requirements for filing a response in this proceeding. On August 4, 2000, WIPO advised Respondentís Administrative Contact that his e-mail of August 3, 3000, "does not satisfy the requirements for a response set out in Rules, Para. 5 (available at http://www.icann.org/udrp/udrp-rules-24oct99.htm ) and request the deficiencies to be remedied by August 21, 2000. Upon expiry of this date, regardless of whether we receive any further communication from you remedying the deficiencies, we shall proceed to appoint the Administrative Panel in accordance with the Rules." On August 23, 2000, WIPO sent a further e-mail to Respondentís Administrative Contact noting that no response to its August 4, 2000 notification of deficiencies had yet been received, and that WIPO would proceed to appoint the Administrative Panel. No further communications were received by WIPO from Respondent or its Administrative Contact.
(d) On August 23, 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 August 23, 2000, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.
(e) On August 25, 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 September 7, 2000. On August 25, 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. The proceedings have been conducted in English.
4. Factual Background
Complainant has provided evidence (Complaint, Exhibit D) of its U.S. Patent and Trademark Office ("USPTO") trademark registration dated July 8, 1980 for "XANAX", number 1,137,561 on the Principal Register. Complainant states that this trademark registration remains valid and subsisting. The validity of Complainantís trademark registration for "XANAX" has not been contested by Respondent, and the Panel accepts as an undisputed fact that Complainant is the holder of a valid trademark registration for "XANAX" in the United States.
The trademark "XANAX" is an arbitrary mark (see Complaint, para. 11(a)).
Complainant has used the "XANAX" trademark in commerce in respect to a pharmaceutical used as a tranquilizer and antidepressant. Respondent has not contested Complainantís use of the trademark in commerce.
Network Solutionsí verification response of July 31, 2000, to WIPO indicates that the domain name "XANAX.ORG" is registered to Respondent, "Peoples Revolutionary Suicide Jazz Band", and is in active status. Respondentís address is listed as "23 Bammer Lane, SF, CA 94123". Network Solutionsí verification response indicates that Respondentís Administrative Contact is "Storm, Jason", with address at "Peoples Revolutionary Suicide Jazz Band, 5841 Geary Blvd, SF, CA 94121". Network Solutionsí WHOIS database indicates that Respondentís record of registration for the disputed domain name was created on December 20, 1999, and was last updated on March 19, 2000 (Complaint, Exhibit A).
A printout of a web page identified by the address "http://www.xanax.org", dated June 30, 2000, contains only the heading "negation industries", and the text "negation industries" in block letters (Complaint, Exhibit F). A printout of a web page identified by the address "http://www.negation.net", dated June 30, 2000, is identical to the web page identified by "http://www.xanax.org" (id.). A Network Solutionsí WHOIS database printout dated June 30, 2000, indicates that the domain name "NEGATION.NET" is registered by "Negation Industries", with a Geary Blvd., San Francisco, address identical to that of Respondentís Administrative Contact, Jason Storm. The record of registration for "NEGATION.NET" includes a plainly fictitious address for the Administrative Contact, "Jason Storm", although an apparently accurate address for the Technical Contact, also "Jason Storm". (id.).
Notice of the complaint in this proceeding was transmitted by Complainant to Respondent on July 21, 2000, by e-mail, with hard copy also transmitted by courier mail. A printout of a web page identified by the address "http://www.xanax.org", dated August 2, 2000 (furnished by WIPO), contains the text "Welcome to the homepage of Lars Xanax! I can be reached at firstname.lastname@example.org. This page is under construction! Please return soon!!!!".
The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutionsí 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
Complainant asserts that it is the holder of a valid trademark registration for "XANAX" in the United States, that such mark is "a coined, fanciful term having no denotative meaning", that it uses such mark in commerce in connection with the marketing and sale of a well-known pharmaceutical product, and that the domain name "xanax.org" is "legally identical" to its mark.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant indicates that Respondent has not used the name in connection with the bona fide offering of goods or services, is not making noncommercial or fair use of the name, and that Complainant has not authorized Respondentís use of the name.
Complainant asserts that Respondent registered and is using the disputed domain name in bad faith. Complainant asserts, inter alia, that Respondentís Administrative Contact, Jason Storm, takes part in Internet discussion groups addressing the "precipitation and prevention of security attacks" and it furnishes copies of e-mail messages within such groups alleged to originate with Jason Storm; that Jason Storm is Administrative Contact for "negation.net" as well as "xanax.org", and that both domain names have been used to post identical "negation industries" text; that Respondent is not a business entity registered in California (per records of the Secretary of State); that Repondent provided false contact information (a non-existent address, according to a U.S. Postal Service database search) in its registration of the disputed domain name, and; that Respondentís failure to use the disputed domain name in good faith, combined with the other factors indicated above, constitutes bad faith registration. (Complaint, para. 11)
Complainant requests that the Panel ask the registrar to transfer the domain name "xanax.org" from Respondent to it (id., para. 12).
Respondent has not furnished a response meeting the requirements set forth in paragraph 5 of the Rules.
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 1. 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 has 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).
Respondent was given ample notice of the initiation of these proceedings and of the complaint (See Procedural History, supra). Respondentís Administrative Contact replied to such notice, and was advised by WIPO that to submit a response that met the requirements set forth in the Rules, deficiencies in its initial reply would need to be corrected. Paragraph 5(b)(viii) of the Rules requires that a respondent (or its authorized representative), conclude its response with the following statement:
"Respondent certifies that the information contained in this Response is to the best of Respondent's knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument."
The initial reply sent from Respondentís Administrative Contact to WIPO does not contain such a statement.
Administrative Panels under the Rules have substantial discretion to consider statements by respondents that do not meet formal requirements (see Rules, paras. 10, 14 and 15). In the circumstances of this proceeding, the Panel does not find the waiver of formal requirements to be warranted. The Respondent has failed to provide a response that meets the requirements of the Rules. The Panel determines that Respondant has defaulted in providing a response, and will proceed to a decision on the basis of the complaint in conformity with paragraphs 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy establishes 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.
Complainant is the holder of a registered trademark for "XANAX" in the United States and is using that mark in commerce (see Factual Background, supra). Complainantís registration of the trademark on the Principal Register at the USPTO establishes a presumption of validity of the mark in U.S. law 2 , and Respondent has not challenged this presumption. The Panel determines that Complainant has rights in the trademark "XANAX". Based on the July 8, 1980, date of Complainantís registration of the trademark "XANAX", and without prejudice to whether Complainant may hold earlier-arising rights in the mark, the Panel determines that Complainantís rights in the trademark arose prior to Respondentís registration, on December 20, 1999, of the disputed domain name "xanax.org".
Respondent has registered the domain name "xanax.org". This name is identical to Complainantís trademark "XANAX", except that (1) the domain name adds the generic top-level domain name (gTLD) ".org", and (2) the domain name employs lower case letters, while the trademark is generally used with capital letters (see Complaint, Exhibit C).
The addition of the generic top-level domain name (gTLD) ".org" is without legal significance from the standpoint of comparing "xanax.org" to "XANAX" since use of a gTLD is required of domain name registrants, ".org" is one of only several such gTLDs, and ".org" does not serve to identify a specific enterprise as a source of goods or services 3. Insofar as domain names are not case sensitive, the Panel concludes that use of the lower case letter format in "xanax.org" is without legal significance from the standpoint of comparing that name to "XANAX" 4.
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 "xanax.org" is without doubt confusingly similar to Complainantís trademark "XANAX".
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 "xanax.org", other than that it has registered this domain name and used it to post a web page stating "negation industries" 5. 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.
The evidence on the record of this proceeding does not persuade the Panel that Respondent has used the disputed domain name in connection with a bona fide offering of goods or services (Policy, para. 4(c)(i)), that Respondent has been commonly known by the domain name (id., para. 4(c)(ii)), or that Respondent has been making a legitimate noncommercial or fair use of the domain name (id., para. 4(c)(iii)). The Panel determines that Respondent has no rights or legitimate interests in the disputed domain names. 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)); (3) that a respondent has "registered the domain name primarily for the purpose of disrupting the business of a competitor" (id., para. 4(b)(iii); or (4) 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 "XANAX" is an arbitrary mark. The public interest in keeping a term open for common use is substantially less present in respect to arbitrary marks than in respect, for example, to descriptive marks. The principal value of "XANAX" lies in its role as a product identifier, not as vehicle for conveying public information. The principal functions of Complainantís arbitrary mark are to identify Complainant as the source of a product, and to distinguish this product from other products. Complainantís mark has a substantial commercial value deriving from these functions. Complainantís "XANAX" trademark is well known in the pharmaceuticals trade. 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 "xanax.org" has prevented Complainant from using its trademark in a corresponding domain name. Complainant has not presented evidence 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 "xanax.org", corresponding to the arbitrary trademark, "XANAX", 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. Complainantís trademark has an exclusive connection to a commercial product, and has limited potential utility as a common conveyer of information. Respondent has made no showing that it registered the domain name that incorporates Complainantís mark for a legitimate purpose.
In the interests of administrative efficiency, the Panel will not address other potential bad faith elements in Respondentís actions in respect to the disputed domain name.
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 "xanax.org" to the Complainant.
Based on its finding that the Respondent, Peoples Revolutionary Suicide Jazz Band, has engaged in abusive registration of the domain name "xanax.org" within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name ""xanax.org" be transferred to the Complainant, Pharmacia & Upjohn Company.
Frederick M. Abbott
Dated: September 7, 2000
1. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.
2. 15 USCS ß 1057(b). See, e.g., Avery Dennison v. Sumpton (9th Cir. 1999), 189 F.3d 868.
3. See Sporty's Farm v. Sportsman's Market, 202 F.3d 489, 498 (2d Cir. 2000), citing Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036 (9th Cir. 1999). For purposes of its decision, the Panel need not address whether ".org" may be capable of acquiring secondary meaning in another context.
4. See Brookfield, id.,174 F.3d 1036, 1055 (9th Cir. 1999).
5. The Panel recognizes that following Complainantís notice to Respondent of the filing of a complaint with WIPO, Respondent changed the text of the website to make reference to "Lars Xanax". The Panel does not consider such use relevant to this proceeding since it appears to have been undertaken only as a form of response to the complaint.