WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pharmacia & Upjohn Company v. Brainbow, Inc.
Case No. D2000-1763
1. The Parties
1.1 The Complainant is Pharmacia & Upjohn Company, a corporation organized and existing under the laws of the State of Delaware, United States of America, having its principal place of business at 100 Route 206, North Peapack, New Jersey, United States of America.
1.2 The Respondent is Brainbow, Inc., a corporation having an address at 222 Mamaroneck Avenue, White Plains, New York, United States of America.
2. The Domain Name and Registrar
The domain name at issue is "cleocin.com", which domain name is registered with Network Solutions, Inc., based in Herndon, Virginia.
3. Procedural History
3.1 A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on December 19, 2000, consisting of the signed original together with four copies forwarded by express courier. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated December 21, 2000.
3.2 On December 21, 2000, a Request for Registrar Verification was transmitted to the registrar, Network Solutions, Inc. ("NSI") requesting it to: (1) confirm that the domain name at in issue is registered with NSI; (2) confirm that the person identified as the Respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar’s 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; (5) indicate the current status of the domain name.
3.3 On December 27, 2000, NSI confirmed by reply e-mail that the domain name at issue is registered with NSI, is currently in active status, and that the Respondent 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 that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
3.5 No formal deficiencies having been recorded, on January 3, 2001, 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 January 22, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by courier and by e-mail to the e-mail addresses indicated in the Complaint. In any event, evidence of proper notice is provided by the evidence in the record of the Respondent’s participation in these proceedings.
3.6 A Response was received on January 22, 2001. An Acknowledgment of Receipt (Response) was sent by the WIPO Center on January 24, 2001.
3.7 On January 29, 2001, the WIPO Center received by email a communication from the Complainant as to whether Complainant could file further arguments. On the same date, the WIPO Center responded that it is in the Panel's discretion whether to accept additional submissions. Complainant was advised that any requests for such filings should be made through the Center. No requests were thereafter received.
3.8 On February 6, 2001, having received M. Scott Donahey’s Statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which M. Scott Donahey was formally appointed as the Sole Panelist. The Projected Decision Date was February 20, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the WIPO Supplemental Rules.
4. Factual Background
4.1 Complainant registered the trademark CLEOCIN in connection with an antibiotic preparation with the United States Patent and Trademark Office (USPTO) in 1961, showing a first use in commerce in 1958. Complaint, Annex C. A search of the USPTO database shows that the registration was first renewed on February 21, 1981, for a period of twenty years. Complainant furnished evidence that the trademark has been registered in several other jurisdictions as well. Complaint, Annex C.
4.2 Complainant has used the trademark continuously and exclusively since 1958, and claims that the trademark has become famous, especially among healthcare professionals.
4.3 Respondent registered the domain name at issue on December 11, 1997. Complaint, Annex A.
4.4 Respondent denies any actual knowledge of the existence of the trademark at the time it registered the domain name at issue. Respondent claims that the term "cleocin" is commonly used for the molecule clindamycin in the same way that the term "kleenex" is used to refer to tissues. "Cleocin" is frequently specified even if the formulary at the hospital does not include Cleocin, but rather generic clindamycin.
4.5 Respondent's express purpose in registering the domain name at issue was to create a web site that disseminates "objective information about [the] very important drug, cleocin, in an unbiased manner. The domain name does not currently resolve to a web site. (Footnote 1)
4.6 Respondent states that it has created similar web sites at "provera.com", "vaginitis.com", and "iud.com". "These sites do not derive any income and merely serve the purposes to disseminate fair objective information."
4.7 A visit to the referenced web sites reveals that the web sites include sales of products and that they identify Respondent as a partner of PushMe PullMe, Inc. This entity identifies its "vision" on the web sites as "through the use of our symbiotic relationships, economies of scale necessary for a competitive stance in a rapidly changing market will be developed and create a foundation which is paramount for success in the new economy."
4.8 Respondent states that Complainant has registered "cleocin.net" and "cleocin.org" and that Complainant could use these domain names to resolve to a web site furnishing information concerning its trademarked product. A Whois lookup reveals that Complainant registered these domain names on March 8, 2000. (Footnote 2)
4.9 On November 29, 2000, Complainant sent Respondent an email, requesting that the domain name at issue be transferred to Respondent. In a telephone conversation of December 11, 2000, Respondent refused.
5. Parties’ Contentions
5.1 Complainant contends that Respondent has registered as a domain name a mark which is identical to the trademark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
5.2 Respondent contends that Complainant's trademark has become generic, that Respondent has an interest in presenting unbiased information concerning clindamycin, and that Respondent registered the domain name with the intent of establishing a web site for that purpose.
6. Discussion and Findings
6.1 Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
6.2 Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
6.3 Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and used in bad faith.
6.4 It is clear that the domain name at issue "cleocin.com" is identical or confusingly similar to the trademark in which the Complainant has rights.
6.5 However, Respondent contends that the mark has become generic. The example Respondent gives, "kleenex" as generic for tissues, is not a good one, as Kimberly-Clark continues to hold several valid trademarks for KLEENEX.
6.6 For the reasons set forth in the Concurring Opinion in the matter of 402 Shoes, Inc., dba Trashy Lingerie v. Jack Weinstock and Whispers Lingerie, ICANN Case No. D2000-1223, the Panel believes that it must determine whether the trademark held by complainant has become generic.
6.7 Registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is distinctive. Respondent has the burden of refuting this assumption. See, e.g., L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., ICANN Case No. D2000-0047. The Panel believes that Respondent has not met this burden. Mere assertions by Respondent that the mark has become generic are not sufficient to overcome the presumption that the mark is distinctive.
6.8 The Panel finds that Complainant has alleged that Respondent has no right or legitimate interest in respect of the domain name at issue. This shifts the burden to Respondent to show that it has rights or legitimate interests in respect of the domain name at issue. See, e.g., Policy, ¶ 4(c).
6.9 Respondent has failed to produce evidence sufficient to rebut Complainant's allegations. The fact that Respondent may have wanted to use the domain name to resolve to a web site that furnishes information regarding clindamycin does not give it a right or legitimate interest in respect of the domain name "cleocin.com". The Panel concludes that Respondent has no such rights or legitimate interests in respect of the domain name at issue. Ronson plc v. Unimetal Sanayai ve Tic.A.S., Retail Florist's Business, ICANN Case No. D2000-0011; Parfums Christian Dior v. QTR Corporation, ICANN Case No. D2000-0023.
6.10 Respondent represented that it registered the name with the intent of using it to resolve to a web site that would give unbiased information regarding the pharmaceutical clindamycin. Respondent stated that it would derive no income from such a web site, which would be offered in the nature of a public service. Respondent gave as examples various domain names it had registered and used to resolve to web sites that furnished medical information. Respondent has not established such a site in the more than three years that have passed since Respondent registered the name.
6.11 Respondent's conduct does not come within any of the four specific examples of bad faith registration and use set out in paragraph 4(b) of the Policy. However, the list of circumstances constituting bad faith that is set out in that paragraph is not exclusive.
6.12 In the case of Telstra Corporation Limited v. Nuclear Marshmallows, ICANN Case No. D2000-0003, it was established that under certain circumstances inaction could constitute bad faith registration and use.
6.13 In the present case the evidence shows that Respondent registered Complainant's trademark as part of a domain name, that the other marks which Respondent indicated he had registered were entirely descriptive, that the web sites that Respondent had established were commercial in nature, and not merely informational, and that Respondent has made absolutely no use of the domain name at issue in the more than three years that have elapsed since Respondent registered the domain name.
6.14 Under these facts and circumstances and the analysis of the Telstra decision, the Panel finds that the Respondent is engaged in bad faith registration and use.
For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is identical to the mark in which the Complainant has rights, that the Respondent has no rights to or legitimate interests in respect of the domain name at issue, and that the Respondent's 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 "cleocin.com" be transferred to the Complainant.
M. Scott Donahey
Dated: February 15, 2001
1. Visits to web sites have long been an accepted panel practice. Draw-Tite, Inc. v. Plattsburgh Spring Inc., ICANN Case No. Dw000-0117; High-Class Distributions, S.r.l. v. Online Entertainment Services, ICANN Case No. D2000-0100.
2. Whois lookups are a common panel practice. National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, ICANN Case No. D2000-0118; Cortefiel, S.A. v. Miguel Garcia Quintas, ICANN Case No. D2000-0118.