WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

American Home Products Corporation v. Eagle Spirit Adventures

Case No. D2000-1239

 

1. The Parties

a) 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.

b) The Respondent is "Eagle Spirit Adventures", with business address in Grand Rapids, Michigan, USA.

 

2. The Disputed Domain Name and the Registrar

a) The disputed domain name is "americanhomeproducts.com".

b) The registrar of the disputed domain name is "Network Solutions, Inc." ("NSI"), with business address in Herndon, Virginia, USA.

 

3. Procedural History

a) On September 20, 2000, the Complaint was received by the WIPO Secretariat.

b) On September 22, 2000, WIPO transmitted to NSI a Request for Registrar Verification.

c) On September 29, 2000, NSI verified to WIPO the status of the disputed domain name.

d) On October 5 and 6, 2000, WIPO dispatched to Respondent a Notification of Complaint and Commencement of Administrative Proceeding by post/courier, facsimile, and e-mail. The record of the proceedings shows that only the facsimile copy of the Notification of Complaint and Commencement of Administrative Proceeding addressed to the Respondentís Billing Contact was successfully transmitted to the fax number listed in the domain name registration at the address of Eagle Spirit Adventures in Grand Rapids, Michigan, USA.

e) On October 27, 2000, WIPO dispatched a Notification of Respondentís Default to all concerned parties via e-mail. In respect to the Respondent, there is no indication in the record that this notification was actually received by Respondent.

f) On November 14, 2000, WIPO dispatched a Notification of Appointment of Administrative Panel and Projected Decision Date to all concerned parties via e-mail. In respect to the Respondent, there is no indication in the record that this notification was actually received by Respondent.

 

4. Factual Background

Complainant describes itself as one of the worldís largest research-based pharmaceutical and health care product companies. The combination of words "American Home Products" is not a registered trademark of Complainant. However, Complainant asserts common law trademark rights in the term "American Home Products", which it uses at times as a shortened version of its corporate name and in connection with the promotion and sale of the products of its subsidiary companies. Complainant maintains a website at "www.ahp.com", where it provides general and investor information about the corporation as well as direct connections to the websites of its subsidiary companies (Complaint, paragraph 12, and Panel visit of November 27, 2000, to "http://www.ahp.com").

There is no evidence on the record of this proceeding of any active use of the disputed domain name by Respondent (other than its registration), nor of any pre-complaint dealings between the Complainant and Respondent in respect thereto.

 

5. The Partiesí Contentions

A. Complainant

Complainant asserts that:

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.

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, including, but not limited to, "www.drdirect.com". Respondent is the registrant of the domain name "drdirect.com" and maintains an active web site at such. Upon information and belief, Respondent is also the registrant of at least five (5) other domain names, including "americandental products.com" and "homedentalproducts.com". Complainant has no objection to the registration of such other domain names.

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 name or a name corresponding to the domain name at issue 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 at issue. A pre-filing investigation of Respondent and its principals revealed that John Elwell (billing contact for the domain name at issue) is the brother of Dr. David Elwell. Dr. Elwell is identified on the "www.drdirect.com" web site as a physician and operator of such site. As stated herein, Respondent is the registrant of the domain name "drdirect.com". Such web site and associated links therein present various health-related topics and offers health-related products for sale. However, such web site is identified as "Dr. Direct", not "American Home Products". Copies of relevant material from the "www.drdirect.com" web site as downloaded on September 18, 2000, are provided as Exhibit D to this Complaint. Further pre-filing investigation revealed that Diana Green (administrative contact of record for the domain name in dispute) is no longer associated with Respondent.

e) The domain name registrant is not making a legitimate noncommercial or fair use of the domain name at issue." (Complaint, paragraph 12)

The Complainant requests that the domain name "americanhomeproducts.com" be transferred to the Complainant (Complaint, paragraph 13).

B. Respondent

Respondent did not reply to the Complaint or otherwise participate in the proceedings.

C. No Other Submissions

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 the Respondentís default in responding to the complaint).

 

6. Discussion and Findings

A. The Complaint was submitted on the basis of the provisions of the Registration Agreement in effect between the Respondent and NSI which incorporates by reference the Uniform Domain Name Dispute Resolution Policy (the "Policy") 1 by way of NSIís domain name dispute policy in effect at the time of the dispute. The Policy requires that domain name registrants such as Respondent submit to a mandatory administrative proceeding regarding third-party allegations of abusive domain name registration (Policy, paragraph 4(a)). Such administrative proceedings are conducted by ICANN-approved dispute resolution service providers such as WIPO. The Policy provides an administrative means for resolving disputes concerning allegations of abusive domain name registration, subject to referral of the dispute to a court of competent jurisdiction for independent resolution (Policy, paragraph 4(k)).

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., paragraph 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 or participate in any other fashion is not due to any omission by WIPO (see Procedural History, supra).

B. In order to obtain the relief requested under the Policy, Complainant must prove in the administrative proceeding that each of three elements are present:

1) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,

2) that Respondent has no legitimate interests in respect of the domain name; and,

3) that the domain name has been registered and is being used in bad faith.

A review of the materials submitted in the record of these proceedings clearly shows that Complainant has failed to provide sufficient proof of all elements needed in order to qualify for the relief requested under the Policy. Accordingly, the requested transfer of the disputed domain name from Respondent to Complainant must be denied.

The Panel first of all notes that the evidence on the record does not show that Respondent has any particular rights in respect of "americanhomeproducts.com" other than that it holds the registration for this domain name.

In contrast, the identifier portion "americanhomeproducts" of the disputed domain name is nearly identical, and in any event appears confusingly similar, to Complainantís corporate name. The only substantive difference is the absence of the word "Corporation". In this respect, the Complainant included among the grounds for its request that "the term ĎAmerican Home Productsí is a shortened form of the Corporate name and Corporate identity".

The absence of spaces between words, the use of lower case letters only, and the addition of the gTLD suffix ".com" are all dictated by technical factors and/or common practice among domain name registrants and users of the Internet. The absence of the word "Corporation" is likewise a common practice for domain names. For example, the Complainantís web site is registered under the domain name "ahp.com" and not "ahpc.com".

In this respect, the Panel takes note that the registered domain name "americanhomeproductscorporation.com" has been ordered to be transferred to Complainant by means of WIPO Administrative Panel Decision D2000-0454 of August 3, 2000, wherein it was determined that Complainant has common law rights in the term "American Home Products Corporation". A comparison of that Decision with the Complaint filed subsequently in the present proceedings shows that, with only a few variations based on the differing facts, Complainant relies on the same assertions in respect of the dispute over "americanhomeproducts.com" as it did in respect to "americanhomeproductscorporation.com". However, Complainantís submission in the present proceedings is silent in respect to the significant difference between the unique characteristics of the name "American Home Products Corporation", in respect to which it would be difficult for any entity other than Complainant to show a legitimate interest, and the generic characteristics of the term "American Home Products", in respect to which it would not be difficult for quite a number of enterprises in a variety of fields to show a legitimate interest.

At the same time, Complainant provided for the record just two examples of its own use of the phrase "American Home Products" in connection with the commercial promotion and sale of products associated with American Home Products Corporation. Every other element of the proffered evidence, amounting to about 40 pages of material, reflects systematic usage of "American Home Products Corporation" or the registered trademark logo "AHP" appearing in distinctive script within a circle (hereinafter "the AHP registered trademark"). One of the two noted exceptions in the record resembles a promotional flyer or brochure proclaiming "American Home Products Acquires A.H. Robins", superimposed over a photograph of selected A.H. Robinsí branded pharmaceutical products. The other example is a promotional flyer or advertisement for a professional audience, stating immediately below the AHP registered trademark and the name "American Home Products Corporation" that: "American Home Products is one of the worldís largest research-based pharmaceutical and health care product companies." After a short description of each of the four principal subsidiary companies Wyeth Ayerst, Whitehall Robins, Cyanamid, and Fort Dodge, the material ends with the statement "For more information about American Home Products, please visit our web site at "www.ahp.com"". The submitted materials thus demonstrate that the term "American Home Products" functions as an informal identifier for the Complainant when used in conjunction with the full name of Complainant or the AHP registered trademark.

As specifically noted in WIPO Administrative Panel Decision D2000-0454, each of the words "American", "home", and "products", taken individually, are generic or commonly descriptive. In order for the term "American Home Products" itself to enjoy legal protection as a trademark, either through registration or by common law, these words in combination must have acquired distinctiveness or secondary meaning. As noted above, the materials submitted by Complainant are not adequate to show acquired distinctiveness or secondary meaning for the term "American Home Products".

For the purposes of the present administrative proceedings, it is simply not warranted to investigate this aspect of the matter any further than what has already been discussed above. The Panel considers, however, that any subsequent judicial evaluation of Complainantís allegations would carefully consider the standards by which a United States trademark examiner would evaluate, or might already have evaluated in the past, an application for trademark registration of the term "American Home Products", or, to the extent relevant, the similar term "American Home Products Corporation".

As noted at the outset, Complainant must also prove in these administrative proceedings that Respondent has no legitimate interest in respect to the disputed domain name. In respect to the generic characteristics of the term "American Home Products", this represents a difficult task for Complainant in these proceedings. The information on the record shows that Respondent is the registered domain name holder for "drdirect.com", an active web-site operated by a dentist and a physician. The web pages at "www.drdirect.com" provide information on dental and various other health-related topics, as well as offering various health-related products for sale. These products include nutritional supplements, a teeth whitener, and various types of special health-related equipment. The Respondent is also the registered domain name holder of "americandentalproducts.com" and "homedentalproducts.com". However, Complainant does not object to either of these other domain names. Rather than tending to prove that the Respondent has no legitimate interest in the disputed domain name, the information provided tends to show that the commercial activity of Respondentís active web site at "www.drdirect.com" could reflect a legitimate interest in the disputed domain name.

Finally, in order to obtain the requested remedy, Complainant must also prove that the disputed domain name was registered and is being used in bad faith. The Policy indicates that certain circumstances may be taken as evidence of bad faith (Policy, paragraph 4(b)). These circumstances are (i) 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"; (ii) 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"; (iii) that the domain name has been registered "primarily for the purpose of disrupting the business of a competitor", and (iv) that "by using the domain name, Ö [the respondent 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". These circumstances do not constitute an exclusive list of circumstances, which can be taken as evidence of bad faith in terms of the Policy.

However, there is no evidence on the record of this proceeding showing that Respondent registered and is using the disputed domain name for a purpose coming within the scope of the enumerated circumstances which may be taken as evidence of bad faith under the Policy. Nor has any other circumstance amounting to bad faith been shown.

 

7. Decision

Based on the finding that Complainant has failed to prove abusive registration by Respondent of the domain name "americanhomeproducts.com", within the meaning of paragraph 4(a) of the Policy, the request is denied.

 


 

Douglas D. Reichert
Sole Panelist

Dated: December 8, 2000


 

Footnotes:

1. As adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, and with implementing documents approved