WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

N.V. Organon v. Sustanon

Case No. DAS2001-0001

 

1. The Parties

Complainant is N.V. Organon, Oss a corporation organized and existing under the laws of Holland, represented by Kenyon & Kenyon, New York, NY, USA.

Respondent is according to the ASNIC Whois database Sustanon, Ljubljana, Slovenia.

 

2. The Domain Name and Registrar

The domain name at issue is <sustanon.as>. The registrar is Register.com, New York, NY, United States of America.

 

3. Procedural History

A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on July 2, 2001, and the signed original together with four copies was received by the WIPO Center on the same day. The WIPO Center sent an Acknowledgment of Receipt to the Complainant on July 3, 2001. A copy of the Complaint was at the same time sent to the Respondent and the Registrar.

On July 4, 2001, a Request for Registrar Verification was transmitted to the Registrar, Register.com. On the same date Register.com confirmed, that the domain name <sustanon.as> was registered with them and that the Respondent was the current registrant of the name. The Registrar also forwarded the requested WHOIS details, confirmed that the AS-NIC Uniform Domain Name Dispute Resolution Policy was in effect and stated that the domain name was registered in the ".as" root zone file. At the said date the Registrar could not confirm that they had received the Complaint, but a confirmation of the receipt was sent to the WIPO Center on July 5, 2001. Since some parts of the verification appeared unclear the WIPO Center and the Registrar had some e-mail correspondence in the following weeks until the ambiguities were sorted out. This correspondence also revealed some minor discrepancies between some of the factual information contained in the Complaint and the actual information held by the Registrar. The Complaint was amended by Complainant on August 9, 2001, and sent to the WIPO Center, the Respondent and the Registrar.

The assigned WIPO Center Case Administrator completed a Formal Requirements Compliance Checklist. 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 AS-NIC UDRP, which is identical to the Policy and the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Uniform Rules"). Also, the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "WIPO Supplemental Rules") applies to the ".as" TLD and thus to this case.

The Complainant paid on time and in the required amount the required fees for a single-member Panel.

No formal deficiencies having been recorded, on August 10, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent, setting a deadline of August 30, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail address indicated in the Complaint and specified in the Registrarís WHOIS confirmation, as well as to <postmaster@sustanon.as>.

On August 31, 2001, having received no Response from the designated Respondent, the WIPO Center transmitted to the parties a Notification of Respondent Default.

On September 19, 2001, in view of the Complainantís designation of a single panelist (but without prejudice to any election to be made by the Respondent) the WIPO Center invited Mr. Knud Wallberg to serve as a panelist in WIPO Case No. DAS2001-0001, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.

Having received on September 20, 2001, Mr. Knud Wallbergís Statement of Acceptance and Declaration of Impartiality and Independence, on September 24, 2001, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Knud Wallberg was formally appointed as the Sole Panelist. The Projected Decision Date was October 8, 2001.

The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules.

The Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Uniform Rules, the WIPO Supplemental Rules, but without the benefit of a response from the Respondent.

 

4. Factual Background

A. Complainant

Complainant has put forward the following information in the Complaint.

Complainants rights

Complainant has rights to the trademark "Sustanon" in connection with pharmaceuticals and related products dating back to at least as early as 1957, the date of first use. Complainantís rights to its marks are a matter of public record, as it is the owner of trademark registrations in numerous countries. Proof of this was enclosed as Exhibits D-F.

The domain name <sustanon.as> (hereinafter the "Domain Nameí) is identical to the trademark owned by Complainant N.V. Organon (hereinafter "Organon).

Respondentīs rights or legitimate interests

Respondent has registered the Domain Name with Register.com without any permission or authorization whatsoever from Complainant. Respondent has developed a Website associated with the Domain Name to advertise and make offers to sell Complainantís products. Copies of Respondentís Website, displayed at "www.sustanon.as" was attached as Exhibit G. In so doing, Respondent makes prominent use of the "Sustanon" trademark on the Website. For example, the mark "Sustanon" is displayed in large, bold letters with the ".as" in capital letters surrounded by the term "Anabolic Steroids"; in this way, Respondent has purposely registered and used the country-code ".as" not to designate that the Website derives from America Samoa but to refer to the term "Anabolic Steroids". Respondent also uses the "Sustanon" mark in many other places throughout the Website.

In this unauthorized operation, Respondent seeks to sell Complainantís Sustanon product and several other of Complainantís products, including Andriol, Deca-Durabolin and HCG. Respondentís Website also displays in a prominent manner pictures or photographs of what appear to be the products and packaging of Complainant. In addition to use of the "Sustanon" trademark, Respondentís uses of the terms "Andriol," "Deca-Durabolin," "HCG" and "Organon" (including Organonís trademarked design) on the offending Website also constitute infringement of Organonís trademark rights in those marks, as Complainant is the owner of registrations for these marks in several countries, including the United States, Canada, Germany, the United Kingdom, Benelux, Denmark and many others; see Exhibit H.

In addition, Complainant has been notified that Respondent has accepted payment for products but did not send the actual products in return, thereby engaging in what can be labeled mail fraud and other criminal activities. Examples of notifications were enclosed as exhibits to the Complaint.

Complainant also notes that Respondent is concealing information about its identity Ė there is no information provided anywhere on the Website corresponding to the Domain Name about where the business of Respondent is located except very vague instructions on where to send payment for orders. A search on the publicly available ASNIC Whois database provides no contact information about Respondent, only IP addresses and identities of the Respondentís name servers, which belong to the registrar Register.com. Customers are asked to send their payments to a post office address in Bleiberg, Austria.

Complainant draws attention to the content of the website and the fact that it purports to dispense "medical" information such as "How to Inject" certain anabolic steroids and whether people should use steroids. However the information is questionable or outright false. Potential consumers accessing the Website could rely on the misinformation provided and suffer possibly disastrous physical consequences. The facts are that Sustanon is meant to treat testosterone deficiency in men, and its distribution is strictly controlled in the United States under U.S. laws. It is not intended to be used for bodybuilding. Indeed, Organonís home page on the official Sustanon Website (at "www.sustanon.com") carries the following warning notice:

Misuse of Sustanon in sports, for instance in bodybuilding, must be strongly rejected. Such practice is not only illicit as doping but also goes far beyond the product's investigated and officially acknowledged therapeutic use. It may, therefore, bear serious health risks. Furthermore, it must be strongly advised not to accept any offers of Sustanon from the so-called black market and/or dubious sellers on the Internet. These usually include illegal and poor-quality imitations of questionable origin, the use of which carries even greater health risks.

By creating and using the disputed domain name in this way, Respondent is intentionally attempting to attract current and prospective Organon customers to order products from this Website to the potential detriment of consumers.

Respondent has and can continue to confuse consumers by connecting his Website to the Domain Name. This creates the false impression that there is an affiliation or other relationship between Organon and Respondentís unauthorized operation, and/or that Organon in some way sponsors or approves of Respondentís company. Respondent is wrongfully trading off of the substantial goodwill associated with the mark "Sustanon" (and other Organon registered trademarks) to attract customers to Respondentís competing but completely unauthorized and illegitimate business.

Respondentís use and registration of the disputed domain name constitute

bad faith as provided by the Uniform Domain Name Dispute Resolution Policy since that registration was done: (1) "primarily for the purpose of disrupting the business of a competitor"; and (2) by using the domain name, the Respondent "intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation." Policy, para. 4(b)(iii-iv). See also American Institute of Floral Designers v. Palm Coast Floral, Inc., WIPO Case No. D2000-0335; America Online, Inc. and AOL International, WIPO Case No. D2000-0654 (intent to trade on goodwill of complainant considered bad faith); Encyclopaedia Britannica Inc. v Shedon.com, WIPO Case No. D2000-0753.

This bad faith is especially pronounced given that Respondent has concealed its identity, and that on information and belief, Respondent is taking consumerís money but providing no products.

Under the standards of Paragraph 4(a) of the Policy, the Domain Name is identical or confusingly similar to the service marks owned by Complainant, Respondent has no legitimate interests in and to the Domain Name and the Domain Name has been registered and is being used in bad faith.

B. Respondent

As mentioned above under 3, the Respondent has not filed a response in accordance with the Rules, Paragraph 5 and regrettably no other information on or by the Respondent has been presented to the Panel.

 

6. Discussion and Findings

According to Paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

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 respects of the domain name; and

3) the domain name has been registered and used in bad faith.

1. Sustanon is registered and used as trademark by Complainant in a number of countries around the world.

The domain name <sustanon.as> is identical to the trademark Sustanon except for the addition ".as".

The prerequisites in the Policy, Paragraph 4(a)(i) are therefore fulfilled.

2. The Complainant has neither explicitly nor tacitly licensed nor otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating the mark.

It is unclear to the Panel whether the products that are offered for sale by Respondent via his website are genuine products i.e. products originating from the Complainant. However, even if this was the case that fact would not in itself permit the Respondent to register and use a domain name incorporating the mark, and to use the said domain name as a "trade name" for the website, on which also other products are put for sale. Based on the presented information the Panel is of the opinion that the use of the domain name does thus not fall under the "fair use" clause as stated in the Policy, Paragraph 4(c)(iii).

Further, the Respondent has not demonstrated that he has any prior rights or other independent, legitimate interests in the domain name.

The prerequisites in the Policy, Paragraph 4(a)(ii), cf. 4(c) are therefore fulfilled.

3. Paragraph 4(a)(iii) of the Policy further provides registration and use in bad faith.

Paragraph 4(b) regulates, by way of example, the kind of evidence that is required.

It is apparent from the presented facts that Respondent sells products bearing the trademark Sustanon via the website "www.sustanon.as". Respondent has thus without any doubt knowledge of the trademark rights of the Respondent. Given the nature of the trademark being an invented word, and the fact that the mark has been registered and used for many years, it is unlikely that Respondent did not have this knowledge when he registered the domain name.

The said website is active, and the domain name is thus being used. The Panel notes that the ccTLD prefix ".as" is used an integrated part of the promotion of the site as an acronym for anabolic steroids, and also notes that the content of the website, which has been presented to the Panel, leaves no doubt that the domain name is used in a way that is detrimental to the interests and is disrupting the business of the Complainant. Also the mere use of the domain name is likely to attract, for commercial gain Internet users to the website of the Respondent, in a way that is likely to create confusion as to the affiliation or endorsement of the website by the Complainant.

Paragraph 4(a)(iii) cf. Paragraph 4(b) is thus fulfilled.

Consequently, all the prerequisites for cancellation or transfer of the domain name according to Paragraph 4(a) of the Policy are fulfilled.

The Complainant has requested transfer of the domain name.

 

7. Decision

In view of the above circumstances and facts the Panel decides, that the domain name registered by Respondent is identical to the trademark in which the Complainant has rights, and that the Respondent has not shown to have any rights or legitimate interests in respect of the domain name, and that the Respondentís 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 <sustanon.as> be transferred to the Complainant.

 


 

Knud Wallberg
Sole Panelist

Dated: October 1, 2001