WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Biogen, Inc. v. Kel Ellis, KELCO
Case No. D2002-0679
1. The Parties
The Complainant is Biogen, Inc., a Massachusetts corporation, with its principal place of business at 14 Cambridge Center, Cambridge, Massachusetts 02142, United States of America.
The Respondent is Kel Ellis, KELCO, 985 W. Commercial, Fort Lauderdale, Florida, 33309, United States of America.
2. The Domain Name and Registrar
The disputed domain name is <avonex.net>.
The Registrar is Go Daddy Software, 14455 North Hayden Road, Suite 226, Scottsdale, Arizona, 85260, United States of America.
3. Procedural History
The Complaint was filed electronically on July 19, 2002; a hard copy was received on July 25, 2002. On July 26, 2002, the WIPO Arbitration and Mediation Center (the "Center") completed the formal requirements compliance checklist, and issued a Notification of Complaint and Commencement of Administrative Proceeding. This Panel concurs that the Complaint meets the formal requirements, and that Respondent was properly notified of the Complaint. However, Respondent did not file a Response. On August 16, 2002, the Center issued a Notification of Respondent Default. This Panelist was asked to serve and submitted a Statement of Acceptance and Declaration of Impartiality and Independence. On August 28, 2002, the Center issued its Notification of Appointment of Administrative Panel and Projected Decision Date, which notified the parties that this Panelist was appointed, and projected the date for decision as September 11, 2002. There have been no other submissions. The language of this proceeding is English.
4. Factual Background
The Complainant is the legal owner of the trademark AVONEX. Complainant owns three registered marks that use and incorporate the AVONEX component. According to the Complainant, the most pertinent registration is AVONEX for pharmaceutical preparation for use in the treatment of neurological disorders. The constructive date of first use (based on the filing of an intent-to-use application) was February 15, 1995; the date of first use in commerce was May 18, 1996; the mark was registered on the US Principal Register on March 18, 1997. Section 8 and 15 affidavits were filed on March 28, 2002, and accepted on May 22, 2002.
Complainant also is the owner of <avonex.com>, <avonex.org>, <avonex.biz>, <avonex.info>, and <avonex.us> domain names.
On March 12, 2002, Respondent registered the disputed domain name. The domain name is inactive.
Complainantís counsel sent a cease and desist letter to Respondent on April 18, 2002. Respondent has not responded.
5. Partiesí Contentions
The Complainant contends that the disputed domain name is confusingly similar to its trademark AVONEX. Complainant also contends that the Respondent has no legitimate interest in or business purpose for the disputed domain name, and that Respondent has not engaged in any business in which it uses the AVONEX mark. Respondent also allegedly has registered and is using the disputed domain name in bad faith, because it is precluding Complainant from using a domain name that corresponds to Complainantís trademarks, and Respondent appears to have no bona fide business purpose.
Respondent has not responded to the Complaint and the allegations contained therein.
6. Discussion and Findings
Under Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Complainant has the burden of proving each of the following: (1) that the domain name is identical or confusingly similar to the complainantís mark; (2) that the Respondent has no rights or legitimate interests in the domain name; and (3) that the Respondent registered and is using the domain name in bad faith.
A. The Disputed Domain Name is Identical or Confusingly Similar to the Complainantís Mark
The evidence shows that the Complainant clearly has rights in the registered trademark AVONEX. Additionally, Complainant owns other domain names containing AVONEX.
The disputed domain name is identical to and clearly contains Complainantís registered trademark, AVONEX. I find that the disputed domain name is identical or confusingly similar to Complainantís mark.
B. Respondent Does Not Have any Rights or Legitimate Interests in the Domain Name
The domain name, which was registered on March 12, 2002, is inactive.
The record shows that Complainant first used the AVONEX mark several years before Respondent registered the domain name. Moreover, under 15 USC ß1072, Respondent had constructive notice of Complainantís AVONEX mark. There is no evidence that Respondent has a license to use the AVONEX mark. Consequently, it appears that Respondent has no rights in the mark, and that Complainantís use of AVONEX preceded Respondentís registration of the domain name.
Furthermore, Respondent defaulted and chose not to submit any evidence of its legitimate rights in the domain name. Under Rule 14(b), this Panel therefore draws an adverse inference that Respondent has no evidence of legitimate rights in the domain name.
Accordingly, this Panel finds that Respondent has no legitimate rights in the disputed domain name, based on Complainantís prior use and registration, constructive notice of Complainantís registration, and Respondentís lack of rights.
C. Respondent has Registered and has Used the Domain Name in Bad Faith
Under 15 USC ß1072, registration of the mark AVONEX constitutes constructive notice of the mark. Respondent therefore had legal, if not actual, notice of Complainantís mark prior to registering the disputed domain name. I find that the domain name was registered in bad faith.
From the beginning of the Policy, many previous decisions have held that Respondentís inactivity with respect to the domain name weighs in favor of finding bad faith, particularly where Respondent has no bona fide use for the domain name and simply is precluding Complainant from using a domain name that corresponds to Complainantís mark. See Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and cases citing same. This case follows that line. I find that the disputed domain name is being used in bad faith.
Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules for Uniform Domain Name Dispute Resolution Policy, I find that Complainant has satisfied all of the required elements. I hereby grant Complainantís request for a transfer of the domain name <avonex.net> to the Complainant. Registrar Go Daddy Software is directed to transfer the domain name.
Sandra A. Sellers
Dated: September 10, 2002