WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hoffmann-La Roche Inc. v. Domain for Sale, Domain for Sale HeatherWhite
Case No. D2001-0650
1. The Parties
The Complainant is Hoffmann-La Roche Inc., a New Jersey corporation with its principal place of business at 340 Kingsland St., Nutley, New Jersey 07110, U.S.A. The Complainant is represented by Bert A. Collison, Esq., Nims, Howes, Collison, Hansen & Atkins, 605 Third Avenue Suite 3500, New York, New York 10158, U.S.A.
The Respondent is Domain For Sale, Domain For Sale HeatherWhite, an entity or person whose address is 2470 Vineyard Drive, Falling Waters, West Virginia 25419, U.S.A.
2. The Domain Name and Registrar
The disputed domain name is <klonopin.com>.
The registrar for the disputed domain name is register.com, 575 Eighth Avenue-11th Floor, New York, New York 10018, U.S.A.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Meditation Center's Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).
The Complaint was filed on May 14, 2001, in hard copy and on May 29, 2001, by e-mail. On May 30, 2001, the Center requested that the registrar, register.com, inform the Center about the registrant for the domain name <klonopin.com>. On May 30, 2001, register.com reported to the Center that the registrant was the Respondent in this proceeding and that the Policy governed the registration.
On June 5, 2001, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding and a copy of the Complaint to Respondent by registered mail (but not by e-mail) stating that the proceeding had officially begun. Respondent did not file a response within 20 days as required by Rule 5 and, on June 29, 2001, Respondent was declared in default.
The Administrative Panel submitted a Declaration of Impartiality and Independence on July 13, 2001, and the Center proceeded to appoint the Panel on July 17, 2001.
On July 17, 2001, the Center discovered it had not forwarded an electronic copy of the Complaint to the Respondent, as is the Center's general practice under the Rules. Therefore, on July 18, 2001, the Panel issued Procedural Order No. 1 requesting the Center to forward the Response to the Respondent by e-mail and giving the Respondent a further 20 days, until August 7, 2001, in which to respond. The Respondent again did not file a response after the further 20 days.
The Panel notes that Rule 5e provides: "If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint." The Panel is unaware of any exceptional circumstances.
The Panel finds the Center has respected the Policy and the Rules in administering this proceeding.
This Decision originally was due by July 30, 2001. However, as a result of the 20 day extension given to Respondent, the due date was changed to August 21, 2001.
4. Factual Background
The Complainant is a large multinational company specializing in pharmaceutical manufacture. The Respondent's business activity is unknown, but part of its name, "Domain for Sale", suggests it sells domain names. On May 2, 2000, the Respondent registered the disputed domain name <klonopin.com>. On January 5, 2001, Complainant's counsel wrote to the Respondent alleging trademark infringement, and demanding the Respondent transfer the domain name to the Complainant (Response Exhibit D-1). The Respondent never replied, and the Complainant now seeks transfer of the domain name in this proceeding.
5. The Parties' Contentions
- Complainant is one of the largest manufacturers of a wide variety of pharmaceutical preparations in the United States and has been in business in the United States for over 75 years. Complainant's pharmaceutical preparations are advertised and sold under numerous trademarks, which have been registered in the U.S. Patent and Trademark Office.
- The domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
- Complainant is the owner of U.S. trademark registration No. 1,415,564 for the mark Klonopin, for use as an anticonvulsant preparation.
- Complainant also is the owner of a mark registration for Klonopin for treatment of a panic disorder.
- Long after Complainant's federal registrations for Klonopin issued, the Respondent registered the domain name <klonopin.com> with full knowledge that it had no legitimate right to the use of the domain name.
- The disputed domain name is identical to the Complainant's two registered marks. As such, the domain name is likely to be confused with Complainant's Klonopin trademarks.
- The Respondent does not conduct any business under "Domain for Sale, Domain for Sale HeatherWhite" except the sale of domain names. There is no evidence that a web site or other online presence that would use the domain name is being established.
- Respondent has no legitimate interest in using the disputed domain name.
- The circumstances of this case show the Respondent acquired the domain name primarily for the purpose of selling it to Complainant or to a competitor for profit.
- Even inactive use of a domain name can amount to bad faith.
The Respondent did not file any contentions in this proceeding and is in default.
6. Discussion and Findings
In order for Complainant to prevail and have the disputed domain name <klonopin.com> transferred to it, Complainant must prove the following (the Policy, para 4(a)(i-iii):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith
Identical or Confusingly Similar
The Complainant has provided copies of its Klonopin trademark registered on the principal register of the United States Patent and Trademark Office: no. 1,415,564 dated November 4, 1986, for an anticonvulsant preparation (Complaint Exhibit C); and no. 2,186,702 dated September 1, 1998 for pharmaceutical preparations for the treatment of panic disorder (Complaint Exhibit C-1).
On May 2, 2000, the Respondent registered the domain name <klonopin.com>, the arbitrary, invented mark of the Complainant. The Panel finds the disputed domain name is identical to the Complainant's trademark.
Legitimate Rights or Interests
The Complainant asserts it has no relation whatever with the Respondent. The Respondent, being in default, has not attempted to show any legitimate rights or interests in the disputed domain name, nor are any apparent to the Panel from the record.
Registered and Used in Bad Faith
The Complainant is a large and famous pharmaceutical multinational with many famous trademarked products. As such, it is alas not surprising that opportunists, such as the Respondent in this Case, would attempt to register one of the Complainant's well-known trademarked products as a domain name before the Complainant and then attempt to sell it back to the Complainant or a competitor. The Respondent's very operating name, Domain for Sale, Domain for Sale HeatherWhite, is to the Panel sufficiently indicative of the Respondent's intentions. The Panel finds the Respondent has violated the bad faith provisions of the Policy at 4b(i).
The Panel also agrees with the Complainant that the Respondent's warehousing, without using, a valuable trademark domain name for over a year is in bad faith under the Policy. The bad faith grounds enumerated in the Policy are nonexhaustive, and many ICANN Panels have found bad faith in this circumstance (see e.g. Telstra Corp. Ltd. v. Nuclear Marshmallows, ICANN/WIPO Case No. D2000-0003, February 18, 2000).
The Panel has found the Respondent registered a domain name identical to the Complainant's trademark; that the Respondent has no rights or legitimate interests in the domain name; and that the Respondent registered and is using the domain name in bad faith.
Therefore, as provided by the Policy para 4(i) and Rule 15, the Panel orders that the disputed domain name, <klonopin.com>, be transferred from the Respondent, Domain for Sale, Domain for Sale HeatherWhite, to the Complainant, Hoffmann-LaRoche Inc.
Dennis A. Foster
Dated: August 10, 2001