WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pharmacia & Upjohn AB v Dario H. Romero
Case No. D 2000-1273
1. The Parties
Pharmacia & Upjohn AB, S 112 87 Stochholm,
Represented by Roberta Jakobs-Meadway, Jordan A. LaVine
AKIN, GUMP, STRAUSS, HAUER & FELD, L.L.P.
One Commerce Square, 2005 Market Street, Suite 2200
Philadelphia, PA 19103-7086, USA
Dario H. Romero, CCS-4097 . 4440 NW 73 Avenue; Miami Fl 33166, USA,
2. The Domain Name and Registrar:
The Domain Name at issue is "pharmaciae.com". The Registrar is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, VA. 20170 USA
3. Procedural History:
The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) by e-mail on September 26, 2000, and a hardcopy was received by the Center on September 28. 2000, on which date the Center acknowledged the receipt of the Complaint. Register.com was indicated in the Complaint as Registrar of the domain name.
The Center sent to Register.com a request for verification of registration data. On October 2, 2000, Register.com replied not to be the registrar for the domain name. At the same day the Center notified the Complainant of this deficiency. On October 3, 2000, Complainant submitted an amended Complaint, indicating Network Solutions as Registrar and the Center sent to Network Solutions a request for verification. Network solutions confirmed to be the Registrar and Dario H. Romero to be the registrant of the domain name "pharmaciae.com". Furthermore, NSI confirmed the details as listed in the Complaint (Administrative and billing contact: Dario H. Romero; technical contact "domain-registrar@REGISTER.COM", Network Solutions's Service Agreement in effect) and that the domain name registration "pharmaciae.com" is in "Active Status".
WIPO verified that the Complaint satisfies the Rules and the Supplemental Rules and that payment was properly made. The Panel is satisfied this is the case.
On October 6, 2000, the Complaint was properly notified in accordance with the Rules, paragraph 2(a), and the administrative proceedings commenced. Since no communication was received from the Respondent within the time limit set, on October 27, 2000, the Center sent a default notification to the Complainant.
On November 1, 2000, the Center notified the Parties that an Administrative Panel, composed of a single member, Dr. Gerd F. Kunze, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
No further submissions were received by the Center or the Panel, the date scheduled for issuance of the Panel’s decision was therefore November 15, 2000.
4. Factual Background
The Complainant is an internationally active pharmaceutical company which has affiliates and has used the name and trade- and service mark (in the following: mark) PHARMACIA in many countries, including the United States, and for many years. The US-affiliate of the Complainant, Pharmacia & Upjohn Corporation has, on April 3 2000, merged with Monsanto Company and is now doing business as Pharmacia Corporation.
The complainant is the owner of the following marks in the United States:
US Registrations Nos. 1277927, 1025528 and 1025527 of the word PHARMACIA for different goods and services in the pharmaceutical field, issued May 15, 1984, November 25, 1975, and November 25, 1975, respectively. These registrations are valid and incontestable under US trademark law. Proof of ownership is furnished in Annex C of the Complaint.
The Complainant furthermore submits to be the owner of the trademark PHARMACIA throughout the world. Whilst the Complainant has not submitted any proof by documents, the Respondent has not contested this submission. To the Panelist's knowledge, PHARMACIA is indeed an internationally known trade name and trademark of the Complainant. However, for the merits of the case, in view of the fact that the Respondent is residing in the United States, it is sufficient to rely on the trademark registrations of the Complainant in the United States.
Complainant owns also the "pharmacia.com" domain name and the corresponding website is used by the US affiliate of the Complainant to convey information to the public in the United States about its drugs and programs (Annex E of the Complaint). This corresponds to the habits of many international companies with headquarters outside the United States, to have the gTLD domain "com" used by their US-affiliate for information addressed to US customers and to use the ccTLDs for information about their activities in their home country and in other countries where they are active.
On April 17, 2000, counsel for the Complainant sent Respondent a communication vial email informing Respondent of Complainant's rights in the "PHARMACIA" trademark and stating that Respondent's use and registration of the "pharmaciae.com" domain name violated Complainant's rights in its mark under US law.
Having received no response, Counsel for the Complainant sent on April 28, 2000, a second communication to the effect that it would take further action to protect its client's rights if it received no further response from Respondent by May 4, 2000.
As of October 2, 2000, Respondent had not replied to the communication.
Whilst these are allegations of the Complainant, they have not been contested by the Respondent.
The Respondent registered on April 13, 1998, the domain name "pharmaciae.com". Whilst the domain name was registered with Network Solutions, the user of the domain name "pharmaciae.com" arrives at a website of "register.com" where under the heading "Coming soon" the misleading information is given that the Respondent registered his domain name with Register.com, New York (see Annex F of the Complaint). Without any further reference to the Respondent, the rest of the website only gives information about Register.com and its services (including the possibility to register a domain name by using the Spanish language).
5. Parties’ Contentions
Complainant submits that in the United States it has for over 25 years used the mark PHARMACIA in commerce in connection with its well known pharmaceutical and business products.
Complainant submits that (1) the domain name "pharmaciae.com" is confusingly similar to a trademark or service mark, in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; (3) the domain name was registered and is being used in bad faith.
The Respondent has failed to submit any statement. He has therefore not contested the allegations of the Complaint.
6. Discussion and findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant or be cancelled:
1) The domain name is identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights; and
2) the Respondent has no rights or legitimate interests in respect of the domain name; and
3) the domain name has been registered and is being used in bad faith.
Before dealing with these three elements, I will briefly discuss the question of applicable law (Sec 15a of the Rules). In cases, where both parties to the proceedings are residents of the same State, Panels often apply the law of the respective State. This is in particular true for the many cases, where both parties are residents of the United States. However, the Panelist of this case has also applied principles of German Law in a case where both the Complainant and the Respondent were residents of Germany (Case No. D2000-0953 "telekom.com").
In the present case, the Respondent is a resident of the United States, however the Complainant is having its group's headquarters in Sweden. Nevertheless it seems justified to apply certain principles of US-law, since the claim is based on US-trademark registrations of the Complainant and the Complainant himself in his Complaint repeatedly refers to US-law.
1) Confusing similarity with a mark in which the Complainant has rights
The domain name "pharmaciae.com" is not identical with the mark "PHARMACIA", but comprises it in its entirety. The only difference between the two signs it the letter "e" which in the domain name of the Respondent is added to the mark of the Complainant. The mark of the Complainant consists of a coined word (in English, but also in French and Spanish, the two other languages which according to Art. 1703 of the NAFTA Agreement are to be taken into account when prohibiting registrations of words that generically designate goods or services to which the trademark applies). The "e" at the end of the domain name does not create any generic or descriptive term (in any of the above mentioned languages), which because of its meaning could more easily be distinguished from Complainant's mark. Actually, both signs are nearly indistinguishable, both in writing and in pronunciation. The Respondent's domain name therefore not only incorporates the mark of the Complainant but is also a close variant of it. As the Complainant rightly points out persons, attempting to find the Complainant on the Internet and inadvertently misspelling the mark of the Complainant by adding an "e" at the end, may become discouraged upon reaching Respondent's website and search no further for Complainant's website.
The Panel therefore is of the opinion that the domain name of the Respondent is confusingly similar with the Complainant's mark PHARMACIA. This finding follows the opinion of the Panel in the Case No. D2000-0273 Yahoo! Inc. v. Eitan Zviely, et. al,,, where -amongst others- similar variations of the Complainant's mark were used by the Respondent. Other decisions found confusing similarity to exist e.g. between "POLLY ESTHER" and "pollyester.com" (case D2000-0624), "Metabolife" and "metabolive.com" (case No. D2000-0630) and between "Letsbuyit.com" and "lessbuyit.com" respectively "lestbuyit.com" (case No. D2000-0680). In all these cases misspelling is likely, as in the present case.
2. Legitimate rights or interests in respect of the domain name
As said before, the Respondent's domain name PHARMACIAE is not a descriptive word, in which the Respondent might have an interest. The Complainant has not consented to the Respondent's use of the domain name. The "use" made by the Respondent, as documented by Annex F of the Complaint does not create any right or legitimate interest in the domain name.
Furthermore, none of the circumstances listed under 4c of the Policy, possibly demonstrating rights or legitimate interests, are given. According to the Complainant's submissions, the Respondent does not use (commercially or non-commercially) the domain name and has not demonstrated any preparations to use it, and he has not been commonly known by the domain name. The Respondent has not challenged any of these submissions. In case No. D2000-0004 (Mondich v. Brown) the Panel decision held that "It is a general principle of United States law that the failure of a party to submit evidence on facts in its control may permit the court to draw an adverse inference regarding those facts". This statement has been confirmed, amongst others, in the decisions Alcoholics Anonymous World Services Inc. v. Lauren Raymond (case No. D2000-0007) and Metabolife International v. Robert Williams (case No. D2000-0630). Indeed, Respondent's silence allows the interference that any evidence of the Respondent would not have been in his favor.
Therefore the Panel concludes that the Respondent has no rights or legitimate interests vis-a-vis the Complainant in the domain name "pharmaciae.com".
3) Registration and use in bad faith
The Respondent does not actively use his domain name and he has never offered it to the Complainant for sale. It has therefore to be considered whether the simple registration and use of the domain name in the manner as shown in Annex F of the Complaint may, taking into account all circumstances of the case, be considered to be registration and use in bad faith. Even if the Respondent has not responded to the Complaint, the Complainant has to prove under the Policy that the Respondent has registered and is using the domain name in bad faith.
The Complainant puts forward, in particular, the following arguments:
Respondent had constructive notice under 15 U.S.C. § 1072 that the PHAMRMACIA mark was registered in the name of the Complainant.
By registering "pharmaciae.com" Respondent has precluded the Complainant from using its mark in a corresponding domain name
Respondent has refused to cooperate with the Complainant to resolve the dispute
Neither has Respondent communicated to Complainant any plan for a bona fide use of his domain name
The Panel doubts that constructive notice under 15 U.S.C. § 1072 that the PHAMRMACIA mark was registered in the name of the Complainant as such is an essential element for proving bad faith (see the dissenting opinion of Panelist G. Gervaise Davis III in J. Crew International Inc v. crew.com, case No. D2000-0054, cited by the Complainant in his Complaint, which in that aspect seems convincing). Also precluding the Complainant from using his mark in a domain name "pharmaciae.com" does not seem to establish bad faith. Actually, without Respondents registration of that domain name, it is unlikely that Complainant would have had an interest in registering for itself a domain name "pharmaciae.com", which apparently does not correspond to any registration or use of any of its trademarks.
However, the Complainant has in his Complaint used arguments, which speak in favor of assuming bad faith.
Respondent has registered a domain name, which is nearly identical with the trademark PHARMACIA, which is not only registered but also has been used, according to the uncontested allegations of the Complainant, in the United States for more than 20 years to an extent, which cannot have escaped Respondent's attention. Actually, Complainant belongs to relative small number of pharmaceutical companies which are generally known to the public, both internationally and in the United States. Even if one may not reasonably expect from the Respondent to have made a search in the USPTO trademark register on identical or similar marks before registering his domain name (in the Panel's view it can hardly be considered bad faith not to have made such search), the Panel has good reasons to believe that the Respondent was aware of Complainants mark. Furthermore, the Respondent has not contested such allegation.
Departing from this assumption it is difficult to conceive that the Respondent had any good faith intention to use the domain name "pharmaciae.com", when registering it. Actually, the assumption that the domain name was registered in bad faith is supported by the fact that the only use the Respondent is making of that domain name refers to its registration with Register.com, which is anyhow a false statement, since the domain name was registered with Network Solutions. Therefore the Respondent is not making any good faith commercial or non-commercial use of the domain name and has not submitted any plan for such use. Actually, it would be difficult to assume any use of the domain name of the Respondent which would not amount to infringement of Complainant's rights in the mark PHARMACIA. Since Respondent failed to submit any argument in favor of good faith registration the Panel therefore concludes that the allegation of the Complainant that the Respondent registered the domain name in bad faith is sufficiently sustained.
As concerns the second criterion of use in bad faith, it has been convincingly argued in Telstra Corporation Limited v. Nuclear Marshmallows (case No. D2000-0003), that inaction of the Respondent is within the concept of 4a(iii) of the Policy. Here again it must be taken into account that the Respondent failed to respond to several communications of the Complainant, informing him of the rights of the Complainant in his mark PHARMACIA and stating that Respondents use and registration of the "pharmaciae.com" domain name violated his rights in that mark. Furthermore the Respondent failed to respond to the Complaint in this proceeding. However, the Respondent shows a clear intention to make use of this domain name as documented by the use of the domain name for a website of Register.com, informing the user that this web site is under construction. Therefore the Respondent has not contented himself in simply registering (stocking) the domain name "pharmaciae.com".
As documented by Annex G to the Complaint, the Complainant, in his above cited communication, hinted to the Respondent that persons who attempt to access a website using the "phyrmaciae.com" domain name may be likely to be confused with respect to the affiliation between the parties, and also that customers seeking the Complainant in the Internet may become discouraged and search no further, to the Complainant's detriment. The Respondent has chosen not to respond to these convincing allegations, either before this Complaint was made or after notification of the Complaint. As mentioned before, under general Principles of United States law that the failure of a party to submit evidence on facts in its control may permit the court to draw an adverse inference regarding those facts.
A simple passive holding of the domain name by the Respondent should not, in absence of any particular circumstances of the case, such as those listed under 4b(i-iii) of the Policy, amount to a finding of use in bad faith. However, the Panel believes that the findings discussed above justify the conclusion that the Respondent is using the domain name "pharmaciae.com" in bad faith.
The circumstances of the case leading to such conclusion are summarized as follows:
The Complainant's mark has been used in the United States for over 25 years for the well-known products of the Complainant;
The Respondent has provided no evidence of any good faith use or preparations for good faith use of his domain name;
The Respondent actively provides, on the website run under his domain name, false information about the Registrar of the domain name;
The Respondent is aware that inattentive use of his domain name by customers of the Complainant may cause detraction from the Complainant;
It is difficult to imagine any plausible future active use of the domain name by the Respondent that would not be illegitimate, such as being trademark infringement or an infringement of consumer protection legislation.
Taking into account these particular circumstances the Panel concludes that the Respondent's passive holding of the domain name satisfies the requirements of paragraph 4(a)(iii) of the Policy that the domain name has been registered an is being used in bad faith.
Comparable cases, where in absence of any response of the Respondent the Panel, based on the circumstances of the case, has concluded that the (not identical but) confusingly similar domain name was registered and used in bad faith are e.g. "Deutsche Bank AG v. E-business International (case No. D2000-0504), "Wright & Lato, Inc. v. Michael L. Epstein (case No. D2000-0621), Metabolife International v. Robert Williams (case No. D2000-0630) and Letsbuyit.com v. Stephen Ward (case No. D2000-0680).
The Panel decides that the Complainant has proven each of the three elements of paragraph 4a of the Policy.
The Panel requires that the registration of the domain name "pharmaciae.com" be transferred to the Complainant.
Dr. Gerd F. Kunze
Date: November 13, 2000