WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Biogen, Inc. v. SRI Tech Consulting, Inc.

Case No. D2001-0444

 

1. The Parties

The Complainant: Biogen, Inc., 14 Cambridge Center, Cambridge, MA 20142, United States of America.

The Respondent: SRI Tech Consulting, 1208-320 Tweedsmuir Ave., Toronto, M5P 2Y3 Canada (previously of 2275 Huntington Drive #207, San Marino, CA 91108, United States of America).

 

2. The Domain Name and Registrar

The domain name in issue <amevive.com> (hereafter "the domain name").

The domain name was registered with NameSecure.com, 2190 Meridian Blvd, Concord, CA 94520, United States of America.

The domain name was registered on January 16, 2001.

 

3. Procedural History

(1) The Complaint in Case No. D2001-0444 was filed in email form on March 27, 2001, and in hardcopy on March 29, 2001.

(2) The WIPO Arbitration and Mediation Center has found that:

- The Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy;

- Payment for filing was properly made;

- The Complaint complies with the formal requirements;

- The Complaint was properly notified in accordance with the Rules, paragraph 2(a);

- A Response to the Complaint was filed with the Center on May 15, 2001;

- The Complainant filed an additional statement, as a "Reply" to the Response;

- The Administrative Panel was properly constituted.

As Panelist, I accept these findings.

(3) As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

(4) There have been neither further submissions nor communications from the Complainants and Respondent, or their representatives, after the appointment of the Panel.

(5) No extensions have been granted or orders issued in advance of this decision to the parties.

(6) The language of the proceedings is English.

 

4. Factual Background

A. The Complainant and its Marks

The Complainant is a pharmaceutical manufacturer, and markets a pharmaceutical product under the name "AMEVIVE". On July 6, 1998, the Complainant filed an intent-to-use trademark application with the United States Patent and Trademark Office for the mark "AMEVIVE", U.S. Application Serial No. 75/514,383, in international class 5, this application was in connection with pharmaceutical preparations for use in the treatment of dermatological disorders, autoimmune disorders, inflammatory disorders, and psoriasis. The mark was published for opposition on June 29, 1999. On February 22, 2001, the Trademark Office accepted the Complainantís Statement of Use which claimed a date of first use of the mark in commerce as August 29, 2000. The Complainant also has a trademark application pending in Canada for AMEVIVE (in the same class for a similar claim) which was filed July 10, 1998. In addition to the United States and Canada, Complainant has pending applications in numerous countries for the AMEVIVE mark.

B. The Respondent

The Respondent is SRI TECH CONSULTING, INC., of 1208-320 Tweedsmuir Ave., Toronto, M5P 2Y3 Canada. Its previous address was, according to the Whois database of its registrar, 2275 Huntington Drive #207, San Marino, CA 91108, United States of America. According to the Response, it is an information technology consulting company incorporated in Ontario, Canada since 1999. On February 12, 2001, the Respondent applied for the mark, "AMEVIVE.COM" in Canada for "Computer software", in International Class 9, and "Computer consultation services", in International Class 42.

C. The Domain Name

The domain name resolves to a placeholder site, which contains the following text: "amevive.com. Coming Soon...For all your sourcing needs in information technology ERP, Wireless services, Java, EJB. SRI-Tech@usa.net"

 

5. Partiesí Contentions

A. The Complainantsí assertions

The Complainant submits that the Respondent's domain name is identical or confusingly similar to the Complainantís mark for the following reasons:

∑ The "AMEVIVE.COM" domain name owned by the Respondent is identical and confusingly similar to the Complainantís trademark for "AMEVIVE" in which the Complainant has rights. The Complainant uses the "AMEVIVE" trademark in connection with various pharmaceutical preparations and believes that consumers searching for information related to the Complainant or its "AMEVIVE" product would become confused as to source or affiliation if such consumers encounter the website owned by the Respondent and/or assume the Complainant has no website or product by the AMEVIVE name.

The Complainant submits that the Respondent has no legitimate interest or rights in the domain names for the following reasons:

∑ Complainant had owned the domain name <amevive.com> and inadvertently allowed it to lapse and expire.

∑ Upon the Complainantís information and belief, prior to the Complainantís <amevive.com> domain name expiring, the Respondent had no business in which it used or incorporated the term "AMEVIVE."

∑ Once the domain name became available for registration, the Respondent quickly rushed to register it as soon as possible.

∑ The Respondent registered the domain name <amevive.com> on January 16, 2001.

∑ As of March 19, 2001, the site still remains inactive with only a message that reads as provided above in section 4.C. The e-mail link listed on the website does not properly function, thereby denying an individual the opportunity to ascertain any further information regarding the website.

∑ Therefore, based on the foregoing, the Complainant believes that the Respondent has no rights or legitimate interests in respect of the domain name and has registered such for the reasons alleged in the complaint.

The Complainant submits that the Respondent registered the domain name and is using it in bad faith for the following reasons:

∑ The Respondent registered the domain name with the intent of selling, renting or otherwise transferring the domain name registration to the Complainant. The Complainant filed an intent-to-use trademark application for "AMEVIVE" on July 6, 1998, thereby placing third parties on constructive notice of the Complainantís intent-to-use the "AMEVIVE" mark in commerce. The Complainantís AMEVIVE mark began to achieve publicity as early as October 5, 1998, and the Complainant was the preceding owner of the AMEVIVE.COM domain name before inadvertently letting such expire. The Complainant filed a Statement of Use which was accepted by the Trademark Office on February 22, 2001, which asserted August 29, 2000, as the date of first use in commerce. The Respondent registered the domain name on January 16, 2001. By this date, Complainantís AMEVIVE mark had been the subject numerous press pieces. The Complainantís filing date and date of first use in commerce of the mark "AMEVIVE" predates the Respondentís domain name registration date. Although initially approached by the Complainant concerning transfer of the domain name, the Respondent was aggressive in seeking a purchase offer from the Complainant. The Respondent is not currently using the mark in a commercial sense as the site remains under construction. On February 5, 2001, a search of the domain name on Register.comís Whois database revealed that the Respondentís business address was at: 2275 Huntington Drive, #207, San Marino, CA, U.S.A., 91108. A recent investigation of the California Secretary of State records revealed no indication that Respondent had registered with that Office. On March 21, 2001, a search of the domain name on Register.comís Whois database revealed that Respondentís listed business address had changed to: 1208-320 Tweedsmuir Ave., Toronto, Toronto, CA, M5P 2Y3. The Complainant contends that the Respondent is attempting to complicate and confuse the Complainantís attempt to regain the domain name for the Respondentís own financial gain as specified above by changing its business address to outside the United States. On February 6, 2001, counsel for the Complainant first contacted the Respondent regarding its ownership of the domain name. Six days later, the Respondent filed an intent-to-use trademark application for "AMEVIVE.COM" in Canada. On March 20, 2001, the Respondent contacted the Complainantís counsel and stated that it was close to making a decision as to whether to pursue the "AMEVIVE.COM" domain name and recent trademark applications and that it thought that counsel for the Complainant was going to make an offer for the purchase of the domain name. When the Complainantís counsel inquired as to what figure the Respondent might be seeking by offering some examples, the Respondent responded that a deal could be made for $20,000. Based on the foregoing, it is the Complainantís belief that the Respondent had knowledge of the Complainantís trademark rights in "AMEVIVE" and acquired the domain name "AMEVIVE.COM" with the expectation that the Complainant would approach the Respondent offering to purchase such domain name.

∑ The Complainant asserts that the Respondent has registered the domain name in order to prevent the Complainant from reflecting its trademark, "AMEVIVE" in a corresponding domain name. The Complainantís AMEVIVE mark is unique, arbitrary, and not such a common word that others would innocently adopt for use.

∑ The Complainant asserts that the Respondent has registered the domain name primarily for the purpose of disrupting the Complainantís business by not allowing the Complainant to use its "AMEVIVE" trademark in a ".com" domain name.

∑ The Complainant asserts that the Respondent, by registering the AMEVIVE.COM domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainantís mark for "AMEVIVE" as to source, sponsorship, affiliation or endorsement.

Accordingly the Complainant requests that the Panel order that the domain name be transferred to the Complainant.

B. The Respondentís Assertions

The Respondent asserts that the domain name is not identical nor confusingly similar to the trademark or service mark owned by the Complainant.

The Respondent asserts that the Complainant has failed to show that the Respondent has no rights or legitimate interests in the domain name for the following reasons:

∑ The Respondent registered the arbitrary word "AMEVIVE.COM" in good faith with the intention of developing an information technology sourcing website. With that intention, the Respondent applied for the "AMEVIVE.COM" trademark as detailed above.

∑ The Respondent planned to develop the website "AMEVIVE.COM" for Information Technology Professionals and Companies. The Respondent allocated resources and time for developing the website. The Respondent applied for the "AMEVIVE.COM" trademark in Canada and developed a one-page mini-site describing the Respondentís intentions at <amevive.com> within one month from registering the domain name.

The Respondent asserts that the domain name has not been registered by the Respondent in bad faith, nor is it being used in bad faith. The Respondent specifically asserts:

∑ The Respondent registered the arbitrary word "AMEVIVE.COM" and developed the website in good faith with all the intention of developing information technology sourcing website.

∑ Further, the Respondent asserts that the negotiations for the transfer of the domain name were initiated by the Complainant, and that any amount suggested as compensation for the transfer was presented by the Complainantís representatives.

The Respondent further asserts that the Complainant has failed to establish requisite elements under the common law theories of "Misappropriation", "Passing Off" and "Tarnishment." Since these claims are not relevant to a UDRP proceeding, and are not pleaded by the Complainant, it is not necessary to deal with any of the Respondentís arguments in relation to these claims.

Accordingly the Respondent requests that the Panel order that the domain name not be transferred to the Complainant.

 

6. Discussion and Findings

Procedural issue

The Complainant has, in addition to its Complaint, filed a "Reply" to the Response. Under Rule 10.a. of the Rules a Panel is free to conduct the proceeding in such manner as it sees fit, subject to the requirement in Rule 10.b. of the Rules that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. The Partiesí initial filings are sufficient to give both parties the fair opportunity to present their cases. I have therefore exercised my discretion not to consider the Complainantís Reply.

Substantive issues

Paragraph 4.a. of the UDRP requires the Complainant to make out three elements:

a) The Complainant has rights in a trade or service mark, with which Respondentís domain name is identical or confusingly similar (paragraph 4.a.(i)); and

b) The Respondent has no rights or legitimate interests in respect of the domain name (paragraph 4.a.(ii)); and

c) The Respondent registered and is using the domain name in bad faith (paragraph 4.a.(iii)).

A. The Complainant has rights in a trade or service mark, with which Respondentís domain name is identical or confusingly similar.

There are two requirements that a Complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the marks.

The Complainant submits that the Respondent's domain name is identical or confusingly similar to the Complainantís mark. The basis of its claim is, essentially, that the Complainant uses the "AMEVIVE" trademark in connection with various pharmaceutical preparations, and believes that consumers searching for information related to the Complainant or its "AMEVIVE" product would become confused as to source or affiliation if such consumers encounter the website owned by the Respondent. The Respondent denies the claim but provides no reasons for so asserting.

The Complainant has provided the registration documents for its AMEVIVE mark, within the US and internationally. I conclude that the Complainant Ė as registered proprietor of the "AMEVIVE" mark Ė has established the first requirement of this paragraph; that is, that it has rights in a trademark.

The second requirement is that the domain name be identical or confusingly similar to the marks. There is no need to adopt the Complainantís assertion of consumer confusion, since the domain name is identical to the invented word mark, "AMEVIVE". No further analysis is necessary.

The Complainant has shown that it has rights in a trademark, and that the domain name is identical to this mark. I conclude therefore that the Complainant has satisfied the requirements of paragraph 4.a.(i) of the UDRP.

B. The Respondent has no rights or legitimate interest in respect of the domain name.

The Complainant asserts that the Respondent has no rights or legitimate interest in the domain name, as required under paragraph 4.a(ii) of the UDRP. It makes a number of specific arguments on this point, as provided above in section 5. Against this, the Respondent argues that it has a legitimate interest in the domain name, based on its stated intention of developing an information technology sourcing website, and its registration of a trademark for "AMEVIVE.COM" in Canada.

The Respondentís assertions go to two issues. First, is the issue specifically provided for in Paragraph 4.c(i) of the UDRP. This Paragraph states that a Respondent may show rights or a legitimate interest where,

"(i) before any notice to you of the dispute, your 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;"

The Respondent seems to suggest that it has a bona fide, albeit nascent, business, which will shortly emerge at the website to which <amevive.com> resolves. It is all too easy for an abusive registrant to make spurious claims such as this, and, in the absence of any evidence that connects the domain name to the business, it is hard to believe that the "business" is anything other than a convenient front. This is particularly so where the name is unusual and hardly likely to have been adopted for the particular type of business that the Respondent argues it is pursuing. The obvious question is why would the Respondent chose the name "AMEVIVE" for a computer consulting business, especially where the name of the Respondent is already established as "SRI TECH CONSULTING"?

The second issue raised by the Respondentís assertions is whether the trademark application for "AMEVIVE.COM" raises any right or legitimate interest. In the ordinary course of events, a trademark application or registration would be very good evidence of a legitimate interest in the domain name (though of course a registered trademark is neither necessary to establish a legitimate interest, nor is its existence completely dispositive in favor of the Respondent). However, as with the "evidence" of the business, the trademark registration bears the hallmarks of an attempt to bolster an otherwise flimsy argument. The application registration was extremely late in the day, when the Respondent must have been aware of the Complainantís position. Indeed the application was filed at around the time of the negotiations and not long prior to the filing of the Complaint in this proceeding. The existence of the Respondentís trademark registration is not, in my opinion, sufficient to establish its rights or legitimate interest in the domain name.

As a result I conclude that the Respondent has no rights or legitimate interest in the domain name. I conclude that the Complainant has satisfied the requirements of paragraph 4.a(ii) of the UDRP.

C. The Respondent registered and is using the domain name in bad faith.

The final issue is that of bad faith registration and use by the Respondent. For paragraph 4.a(iii) to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the domain name in bad faith and continues to use it in bad faith.

The Complainant runs through most of the provisions of Paragraph 4.b. of the UDRP; and asserts (1) that the Respondent registered the domain name with the intent of selling, renting or otherwise transferring the domain name registration to the Complainant; (2) that the Respondent has registered the domain name in order to prevent the Complainant from reflecting its trademark in a corresponding domain name; (3) that the Respondent has registered the domain name primarily for the purpose of disrupting the Complainantís business by not allowing the Complainant to use its "AMEVIVE" trademark in a ".com" domain name; and (4) that the Respondent, by registering the domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainantís mark for "AMEVIVE" as to source, sponsorship, affiliation or endorsement.

It should be said that this scattergun approach to pleading is not particularly helpful. This notwithstanding, the Complainant has an extremely strong position on its first assertion. It is hardly surprising that the Complainant's and Respondentís accounts of the negotiations differ. However, given the nature of the invented name of "AMEVIVE", the lack of explanation of why the Respondent might choose this odd name, and the accounts that negotiations took place over the sale of the name, it is clear that the Respondent registered the domain name with the intent of selling, renting or otherwise transferring the domain name registration to the Complainant. This case falls squarely within the Paragraph 4.b(i) exemplar of bad faith, and I have no hesitation in finding bad faith registration and use by Respondent in this case.

I therefore conclude that the Complainant has satisfied paragraph 4.a(iii) of the UDRP.

 

7. Decision

The Complainant has made out all of the elements of paragraph 4.a. of the Uniform Domain Name Dispute Resolution Policy.

Pursuant to Paragraph 4.i. of the Uniform Domain Name Dispute Resolution Policy and Rule 15 of the Rules for the Uniform Domain Name Dispute Resolution Policy, the requested remedy is granted.

I hereby order that the domain name <amevive.com> be transferred to the Complainant.

 


 

Dan Hunter
Sole Panelist

Dated: June 27, 2001