WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
N.V. Organon v. Karznik, David
Case No. D2002-0374
The Complainant is N.V. Organon, Kloosterstraat 6, 5349 AB Oss, The Netherlands.
The Respondent is Karznik, David, Pretrova, Wroclaw 5548, Poland.
2. Domain Name and Registrar
The Domain Name that is the subject of this Complaint is <decadurabolin.net> ("the Domain Name").
The Registrar of this Domain Name is Tucows Inc., ("the Registrar").
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Domain Name Dispute Resolution Policy ("the Policy") and Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24,1999, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (" the Supplemental Rules").
The WIPO Arbitration and Mediation Center ("the Center") received the Complaint of Complainant by e-mail on April 22, 2002 and in hard copy on April 25, 2002 (original) and April 30, 2002 (four copies), in which the Complainant, for the reasons described in the Complaint, in accordance with Paragraph 4(i) of the Policy, requests the Administrative Panel issue a decision that the Domain Name be transferred to the Complainant.
The Center, after acknowledgment of receipt of Complaint on April 24, 2002, transmitted to Registrar a Request for Registrar Verification on April 24, 2002 and obtained verification on April 25, 2002 that this Domain Name is registered with Tucows Inc., that the Respondent is the current Registrant of the Domain Name, that the Registrant of this domain name is Karznik, Pretrova, Wroclaw 5548, Poland, the administrative, technical and billing contact is Karznik, David, Pretrova, Wroclaw, 5548, Poland. The Registrar further confirmed that the Policy applies to the Domain Name, that the Domain Name will remain locked during the pending administrative proceeding, that the Registration Agreement is in English and that the Domain Name Registrant submitted in his Registration Agreement to the jurisdiction at the location of the principal office of the Registrar.
Having checked the Complaint, the Center issued on April 26, 2002 a Complaint Deficiency Notification and drew the Complainantís attention to the obligation that any submission by Complainant to the Center, that was required as a result of this notification, must be copied to the Respondent in accordance with Rules, Paragraph 2(b) and 2(h), as well as to the concerned Registrar. After receipt of the Amended Complaint the Center verified that Complaint satisfied the formal requirements of the Policy, Rules and Supplemental Rules, that payment by the Complainant in the required amount to the Center had been made. The Center issued a Notification of Complaint and Commencement of Administrative Proceeding on May 1, 2002, marking the formal date of the commencement of the administrative proceeding as May 1, 2002. Deadline for sending of the Respondentís Response to the Complainant and Center was May 21, 2002.
Having received no Response from the Respondent within the time set in this Notification of Complaint and Commencement of Administrative Proceeding, the Center issued a Notification of Respondent Default on May 24, 2002.
In accordance with Paragraph 6(f) of the Rules, the Center on June 21, 2002 transmitted to the parties a Notification of Appointment of Administrative Panel and Project Decision Date in which the parties were notified that an Administrative Panel has been appointed in above referenced case, consisting of a single member: Dr. Aleö Vokálek and that in accordance with Paragraph 7 of the Rules the above Panelist has submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
Absent exceptional circumstances, the Administrative Panel has been required to forward its decision to the Center by July 5, 2002, in accordance with Rules, Paragraph 15.
4. Factual Background
The Complainant asserted and provided evidence in support of, and the Administrative Panel finds established, particularly the following facts.
Since 1960 he Complainant is the owner of word trademark registration DECA-DURABOLIN and word trademark registration DECADURABOLIN in nearly 50 countries all over the world, including Poland. These trademarks are applied mostly for medicine and pharmaceutical preparations for human use.
The Respondent is the current Registrant of the Domain Name <decadurabolin.net> with Tucows Inc. The Policy applies to this Domain Name.
Without permission or authorization from Complainant, Respondent has developed a Web site associated with the Domain Name to advertise and make offers to sell Complainantís products and has used in it the trademarks DECADURABOLIN and DECA-DURABOLIN.
5. Partiesí Contentions
Complainant contends that Domain Name <decadurabolin.net> of the Respondent is identical or confusingly similar to Complainantís registered Trademarks DEKADURABOLIN and DEKA- DURABOLIN, that Respondent has no right or legitimate interests in respect of this Domain Name and that such Domain Name was registered and is being used in bad faith.
A number of arguments are developed by Complainant, as summarized in section 4 above, and several evidences have been filed in support of these arguments.
Consequently, the Complainant requests the Administrative Panel appointed in this administrative proceeding issue a decision that this Domain Name be transferred to the Complainant.
Respondent did not submit a response within the specified time period.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets out three elements which must be present for a proceeding to be brought against the Respondent, and which the Complainant must prove to obtain a remedy.
The Complainant must prove that each of the following three elements are present:
i) that Respondentís domain name is identical or confusingly similar to a trademark 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 domain name has been registered and is being used in bad faith.
Identity or Confusingly Similarity of Domain Name and Trademark
Complainant has filed copies registration certificates proving the registration of trademarks DECA-DURABOLIN and DECADURABOLIN in numerous countries. Identicality between the Domain Name and trademarks is decisive. Particularly in reference to international registration No. 231.160 of word trademark DECADURABOLIN, in 17 countries, since April 29, 1960, for medicine and pharmaceutical preparations for human use. Likewise the Domain Name is confusingly similar to the registered trademark DECA-DURABOLIN in Canada, Germany, the Benelux, the United Kingdom and the United States of America.
As these trademarks are word trademarks, from the point of view of identicality or confusingly similarity, it is not relevant that some letters of the word "decadurabolin" are in lower case or upper case.
Therefore, Panel finds that requirement of the Policy Paragraph 4(a)(i) is satisfied.
Rights or Legitimate Interests in Respect of the Domain Name
Paragraph 4(c) of the Policy identifies circumstances which, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all the evidence presented, shall demonstrate the Respondentís rights or legitimate interests in the Domain Name for purpose of Paragraph 4(a)(ii).
Having received no response from the Respondent within the time set in the Notification of Complaint and Commencement of Administrative Proceeding, the Panel is of the opinion that the Respondent has not provided evidence of circumstances of the type specified in Paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right or legitimate interests in the Domain Name.
According to Paragraph 5(e) of the Rules, if the Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
For these reasons the Panel is of the opinion that the Respondent has no rights to or legitimate interests in respect of the Domain Name <decadurabolin.net>.
Domain Name Registered and Used in Bad Faith
Paragraph 4(c) of the Policy specifies that for the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of domain name in bad faith:
(i) circumstances indicating that domain name has been registered or acquired by Respondent primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of Respondentís document out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) Respondent by using the domain name has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on- line location, by creating a likelihood of confusion with the Complainantís mark as the source, sponsorship, affiliation, or endorsement of Respondentís web site or location of a product or service on its web site or location.
Respondent registered the disputed Domain Name and developed a Web site associated with this Domain Name to advertise and make offers to sell Complainantís products. Complainant has proved this through copies of Respondentís Web site displayed at <www.decadurabolin.net>. In this way Complainant has proved that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its Web site.
Therefore the Panel determines that this fact constitutes bad faith within the meaning of Paragraph 4(b)(iv) of the Policy.
The Panel decides that the Complainant has proved each of the three elements in Paragraph 4(a) of the Policy and finds that the Domain Name is identical and /or confusingly similar to Complainantís Trademarks, that the Respondent has no rights and no legitimate interests in respect of the Domain Name and that the Domain Name has been registered and used by Respondent in bad faith.
Accordingly, the Panel requires that the registration of the Domain Name <decadurabolin.net> be transferred to the Complainant, N.V. Organon.
Dated: July 3, 2002