WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Elan Pharmaceuticals, Inc. v. Randy Haag
Case No. D2001-0755
1. The Parties
Complainant is Elan Pharmaceuticals, Inc., a Delaware corporation with a principal place of business at 800 Gateway Boulevard South, San Francisco, CA 94080, USA, represented by Pattishall, McAuliffe, Newbury, Hillard & Geraldson.
The Respondent is Randy Haag, 2200 Leavenworth St. #505, San Francisco, CA 94133, USA.
2. The Domain Names and Registrar
The domain names at issue are: <myoblock.com>, <myoblock.net>, and <myoblock.org> (the "Domain Names").
The Registrar is NameSecure.com (the "Registrar").
3. Procedural History
The World Intellectual Property Organization Arbitration and Mediation Center (the "Center") received Elan Pharmaceuticals, Inc.ís complaint (the "Complaint") by email on June 6, 2001, and in hard copy on June 8, 2001. On June 12, 2001, the Center sent a Request for Verification to the Registrar requesting verification of registration data; on June 13, 2001, the Registrar confirmed that it is the registrar of the Domain Names and that the Domain Names are registered in the Respondentís name. The Center verified (and the Panel has now confirmed) that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Centerís Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Center formally commenced this proceeding on June 14, 2001.
Notice was sent to Respondent by email and Federal Express that its Response would be due by July 3, 2001. Though the email successfully transferred and the Federal Express package was successfully delivered to Respondentís address (as filed with the Registrar), Respondent did not submit any response by the July 3, 2001, deadline. Accordingly, on July 4, 2001, the Center notified Respondent that it was in default. On July 11, 2001, the Center notified the parties that it had appointed David H. Bernstein as the sole panelist in this manner, and set July 24, 2001, as the expected date for decision. The parties have not filed any additional submissions.
4. Factual Background
Because Respondent has not answered the Complaint, the following facts are undisputed:
On June 9, 2000, Complainant filed an intent-to-use application to register the trademark MYOBLOC with the United States Patent and Trademark Office ("USPTO"). According to the USPTO web site, a Notice of Allowance was issued on June 19, 2000. (Footnote 1) Complainant registered the domain name <myobloc.com> on June 16, 2000. On December 27, 2000, Complainant commenced sales of its MYBLOC pharmaceutical product throughout the United States, and it has spent millions of dollars advertising and promoting its pharmaceutical goods and services under the MYOBLOC mark.
On July 26, 2000, Respondent registered the Domain names <myoblock.com>, <myoblock.net>, and <myoblock.org> with Registrar NameSecure.com.
On January 9, 2001, Complainant received an unsolicited email from Respondent stating: "I am the registered owner of the domain name myoblock. It appears that you might have an interest in acquiring this domain name for a reasonable price. [L]et me know if you have an interest." Following an inquiry on January 15, 2001, by Complainant ("What are you offering?"), Respondent sent an email to Complainant on January 16 2001, offering to sell the Myoblock Domain Names for $1,000.
5. Partiesí Contentions
Complainant asserts that the MYOBLOC mark has no meaning or significance other than as a trademark identifying its products and distinguishing them from those of its competitors. Complainant further claims that, by virtue of its extensive use, advertising, and promotion, the MYOBLOC mark has become well known and possesses a strong secondary meaning signifying Complainant and the pharmaceutical products it offers, thereby representing valuable goodwill.
Complainant contends that Respondent registered the Domain Names at issue with the Registrar on or around July 26, 2000, after both the filing of its application to register MYOBLOC as a trademark and its registration of the domain name myobloc.com. Complainant further states that Respondentís Myoblock Domain Names are virtually identical and confusingly similar to Complainantís MYOBLOC mark.
Complainant alleges that the Respondentís lack of rights or a legitimate interest in the domain names and his bad faith in registering and using it are demonstrated by numerous facts, including that Respondent targeted Complainant for its email offer to sell the Domain Names; that Respondent offered to sell the Domain Names to Complainant for consideration in excess of Respondentís out-of-pocket costs; that Complainantís MYOBLOC mark has a strong reputation and is widely known throughout the world; that Respondent obtained the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant or a competitor of Complainant; and that it is not possible to conceive of any plausible or contemplated active use of the Domain Names by Respondent that would not be illegitimate or unlawful.
6. Discussion and Findings
The burden for Complainant under Paragraph 4(a) of the ICANN Policy is to prove:
(i) 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
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and used in bad faith.
A. The Domain Names are Confusingly Similar to Complainantís Mark
Complainant has established rights in the mark MYOBLOC by virtue of its use of the mark in commerce since December 2000. See Audiopoint, Inc. v. Folkening, WIPO Case No. D2001-0509 (June 14, 2001). The Domain Names, which consist of the close misspelling "myoblock," are confusingly similar to the MYOBLOC mark. See, e.g., Alta Vista Co. v. Yomtobian, WIPO Case No. D2000-0937 (October 13, 2000) (the domain names <altabista.com> and <altaista.com> are confusingly similar to trademark ALTA VISTA); Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362 (June 19, 2000) (the domain name <0xygen.com>, spelled with a zero rather than an "o", is confusingly similar to trademark OXYGEN). Accordingly, Complainant has met its burden under the first factor.
B. Respondent Does Not Have a Legitimate Interest in the Domain Name
In the absence of a Response, it is appropriate to accept as true all allegations of the Complaint. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (February 29, 2000). Accepting those allegations, it appears that Respondent has no rights or legitimate interests in respect of the Domain Names.
Respondent does not appear to be known as "Myoblock" and, based on the lack of any content at the web site, does not appear to be making any fair use of those names. Policy ∂ 4(c)(ii)-(iii). Nor does Respondent appear to be using the domain names "in connection with a bona fide offering of goods or services." Policy ∂ 4(c)(i). At the minimum, Complainant has made in its Complaint a prima facie showing that Respondent has no rights to or legitimate interest in the Domain Names, and Respondent has not rebutted that showing. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 (June 6, 2000) (once complainant makes prima facie showing of no legitimate interest, burden of production shifts to respondent to rebut that showing, though the burden of proof always remains on complainant). Accordingly, Complainant has satisfied its burden of proof on the second factor.
C. Respondent Registered and Used the Domain Names in Bad Faith
Paragraph 4(b)(i) of the Policy provides non-exclusive examples of circumstances that shall be evidence of the registration and use of a domain name in bad faith. One of the examples specifically cited by the Policy is evidence indicating that Respondent registered or acquired "the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration" to the Complainant or its competitor for consideration in excess of documented out-of-pocket costs related to the domain name. Policy ∂ 4(b)(i). Respondentís offer to sell the domain name to the Complainant for $1,000 falls squarely within this example and provides compelling evidence that Respondent registered and used the domain name in bad faith, with the intent specifically to target Complainant. See Stanford Microdevices, Inc. v. Sheryl Morace, WIPO Case No. D2001-0382, May 13, 2001) (respondentís offer of sale of domain name justifies an inference that she registered and used the domain name in bad faith).
Complainant has met its burden of proof under Paragraph 4 of the Policy. The domain names <myoblock.com>, <myoblock.net>, and <myoblock.org> are confusingly similar to Complainantís MYOBLOC trademark, Respondent lacks a legitimate interest in those domain names, and Respondent has registered and used the domain names in bad faith. Accordingly, this Panel concludes that the domain names at issue should be transferred to the Complainant.
David H. Bernstein
Dated: July 24, 2001
1. It is appropriate for Panels to take judicial notice of publicly available facts such as this. Bass Hotels & Resorts, Inc. v. Rodgerall, WIPO Case No. D2000-0568 (August 7, 2000), n.1. (back to text)