WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Schering AG v. BNG HOLDINGS
Case No. D2002-0743
1. The Parties
Complainant is Schering AG, Berlin, Germany ("Complainant").
Respondent is Bng Holdings, Ho Chi Minh City, Vietnam ("Respondent").
2. The Domain Name and Registrar
The domain name at issue is <climara.com>.
The Registrar is Network Solutions, Inc., Virginia, United States of America.
3. Procedural History
A Complaint was submitted by e-mail to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on August 7, 2002, and by hardcopy on August 9, 2002. The Center sent an Acknowledgement of Receipt of Complaint to the Complainant on August 7, 2002.
On the same day a Request for Registrar Verification was transmitted to the Registrar, who was initially not correctly identified, and the Registrar confirmed that it was in receipt of the Complaint and that it was the Registrar of the domain name. The Registrar forwarded the requested WHOIS details.
An Amended Complaint was submitted to the Center by e-mail on August 15, 2002, and by hardcopy on August 20, 2002.
A Formal Requirements Compliance Checklist was completed by the Center and the Panel has independently determined and agrees with the assessment of the Center that the Complaint is in compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), as approved by ICANN on October 24, 1999, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "WIPO Supplemental Rules"), in effect as of December 1, 1999.
On August 21, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent by the required means, setting a deadline of September 10, 2002, by which the Respondent could file a Response to the Complaint.
On September 11, 2002, having received no Response, the Center send out a notification of Respondent Default.
The Center then invited Mr. Knud Wallberg to serve as Panelist in the case, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.
Having received the Statement of Acceptance and Declaration of Impartiality and Independence from Mr. Knud Wallberg, the Center transmitted on September 19, 2002, to the parties a Notification of Appointment of Administrative Panel and the Projected Decision Date.
The Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the WIPO Supplemental Rules. The Administrative Panel has thus issued its Decision based on the Complaint, the Amended Complaint, the Policy, the Rules, and the WIPO Supplemental Rules.
4. Factual Background
The Complainant is a research-oriented pharmaceutical company based in Germany with more than 150 subsidiaries and associated companies worldwide. With 25,056 employees, Schering AG achieved a turnover of EUR 4,842 billion in the year 2001, 89% of this outside Germany. Its shares are listed in New York, London, Zurich, Geneva, Basel, as well as in Frankfurt, Berlin, Dusseldorf, Hamburg and Munich.
CLIMARA is the name of a hormone product which is produced by the Complainant and sold in many countries world-wide. CLIMARA is one of the Complainantīs best-selling hormone products with global sales of EUR 109 million in 2001. CLIMARA was first launched in 1995 and received additional approval for the prevention of osteoporosis in the United States in 1999.
Complainants Trade Marks
The Complainant registered CLIMARA as a trademark with the German Patent and Trademark Office on October 3, 1989 (registration no. 1147150). The trademark is registered for "pharmaceutical products; namely, preparations for the treatment of climacteric diseases" (class 05).
Based on this German trademark, an International Registration of the CLIMARA trademark has been certified by the World Intellectual Property Organization on June 27, 1990. This trademark is registered for a large number of countries, e.g. for Vietnam.
Moreover, the Complainant has registered CLIMARA as a trademark in many other countries throughout the world. Copies of the relevant trademark certificates were provided as Annexes to the Complaint.
Complainants Domain Names
The Complainant has registered, among others, the domain names
and is currently preparing a web site to present information about its product CLIMARA under these internet addresses.
No information has been provided about the nature of Respondentīs activities.
5. Parties Contentions
The Complaint is based on the following grounds:
According to the Whois record, the domain name <climara.com> was registered more than one year ago by the Respondent on November 20, 2000. Since then, the Respondent has made no effort to use the Domain (or a name corresponding to the domain name) in connection with a bona fide offering of goods or services. When entering the Internet address "http://www.climara.com" into a web browser, a standard web site of the Respondents registrar, Network Solutions, appears. A screenshot of this web site displayed at "http://www.climara.com" was provided as an Annex.
In a letter dated January 22, 2001, the Complainant informed the Respondent that his registration and use of the domain name violates the Complainantīs trademark rights, that the unauthorized use of CLIMARA as part of a domain name constitutes, inter alia, a trademark infringement, a dilution of the Complainantīs mark, and that it is likely to cause confusion and lead consumers to believe that this registration is authorized or sponsored by the Complainant. The Respondent was asked to confirm that he would transfer the domain name to the Complainant, and that the Respondent would not offer and/or transfer the domain name to anyone else except the Complainant.
The Respondent did not answer this letter, because the letter could not be served due to the wrong delivery address, which had been taken from the Whois database.
Identical or Confusingly Similar
The various CLIMARA trademarks registered to the Complainant as described above are essentially identical to the disputed domain name, as required by paragraph 4 (a)(i) of the Policy.
The only difference between the <climara.com> domain name and the CLIMARA trademark is the suffix ".com", an irrelevant distinction which does not change the likelihood of confusion. The term ".com" means "commercial institution" and is meant to distinguish commercial sites. It is merely the classification of the purpose for which the domain name is being used. Therefore, the domain name <climara.com> is essentially identical to the Complainantīs registered trademarks for the purposes of this proceeding.
Rights or Legitimate Interest
The Respondent has no rights or legitimate interests in the domain name.
The Respondent is not using the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. The web site currently displayed at "http://www.climara.com" is a standard "under construction" web site provided by the Respondentīs registrar, Network Solutions.
The Respondent (as an individual, business, or other organization) has never been commonly known by the name CLIMARA or by any name remotely similar to CLIMARA. The Respondent is not, and never has been, representative or licensee of the Complainant, nor has the Respondent otherwise been authorized to use the Complainantīs trademarks.
The Respondent has registered and is using the domain name in bad faith.
According to paragraph 4 (b) of the Policy, the following shall be evidence of the registration and use of a domain name in bad faith:
"(i) circumstances indicating that you have registered or you have acquired the domain name 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
But the four criteria established by the Policy, paragraph 4 (b), are non-exclusive. In addition to these criteria, other factors, alone or in combination, can support a finding of bad faith.
The Respondentīs conduct is obviously in bad faith. The real respondent-in-interest has apparently registered this domain name using false contact information, implicating an actual person or firm. The Respondent failed to respond to Complainantīs efforts to make contact because of the false Respondentīs contact information in the Whois database of the registrar. This fact has long been recognized as paradigmatic bad faith.
See WIPO Case No. D2000-0111, Home Director, Inc. v. HomeDirector, and WIPO Case No. D2000-0330, Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party.
Moreover, given the Respondents default, there is no evidence in the record to support a showing that the Respondent has a legitimate interest in the domain name <climara.com>.
The Respondent had first registered the domain name <climara.com> on November 20, 2000, well after the registration of the Complainantīs trademark CLIMARA on June 27, 1990. In the absence of contrary evidence, this is sufficient evidence to conclude that the Respondent knew or should have known of the Complainants CLIMARA trademark at the time he registered the domain name <climara.com>. The Respondent could have recognized that the domain name <climara.com> is identical to the Complainantīs trademark CLIMARA if he had looked at a search engine and typed in CLIMARA. In this case he had found out that every hit links to the Complainantīs trademark. Examples of the search results of CLIMARA using the search engines <yahoo.com> and <google.com>, were provided as Annexes [K1] and [K2].
In the absence of the non-use of the domain name, there appears to be no explanation of the facts other than that the Respondent registered the Complainants domain name with an intent to use the domain name to demand unwarranted profit in bad faith and/ or that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor. The Respondent also appears to have sought to keep his contact details secret.
As indicated above, Respondent has not filed a Response.
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 trade mark or service mark in which the Complainant has rights; and
2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
3) that the domain name has been registered and is being used in bad faith.
Identical or Confusingly Similar
The contested domain names contains the registered mark in its entirety with the addition of the .com gTLD denomination.
For the purposes of this proceeding, the domain name is thus identical to the trademark in which the Complainant has rights.
The requirements set out in the Policy, Paragraph 4(a)(i) are therefore fulfilled.
Rights or Legitimate Interest
The Complainant has neither expressly, nor tacitly licensed, nor otherwise, permitted the Respondent to use its trademark, or to apply for any domain name incorporating the mark.
Further, the Respondent has not demonstrated that he has any prior rights in the domain name and no evidence has been put before the Panel that shows that Respondent was commonly known by the domain name before that time.
In addition, the name CLIMARA is a coined word, which means that any bona fide use for non-commercial or other purposes is unlikely to exist.
Paragraph 4(a)(ii) of the Policy is also considered fulfilled.
Paragraph 4(a)(iii) of the Policy further provides that the Complainant must prove registration and use of the domain name in bad faith. Paragraph 4(b) sets out, by way of example, the kind of evidence that may be put forward.
In the view of the Panel, a number of factors point to the fact that the contested domain name was registered and is being used in bad faith.
CLIMARA has no commonly known meaning in English. The trade mark CLIMARA was and is used by Complainant in several countries around the world, which is apparent from inter alia a regular search on the Internet. Further, the mark was protected in the country of residence of the Respondent at the time of registration of the domain name, which could have been noted by Respondent by checking the relevant trademark registries. See Kate Spade LLC v. Darmstadter Designs, WIPO Case D2001-1384.
In addition, the contact details of Respondent seem to be incorrect, which can be seen as a relevant factor for the purpose of these proceedings. See Home Director, Inc. v. HomeDirector, WIPO Case No. D2000-0111 and other subsequent decisions under the UDRP.
Furthermore, the registration of the domain name will have the effect that Complainant is prevented from reflecting its mark in the corresponding .com gTLD.
The domain name is in actual use, although the corresponding web site "www.climara.com" only shows a web site "under construction." This may, however, lead Internet users to believe that Complainant is not present on the World Wide Web, which is incorrect and therefore is likely to disrupt the business of Complainant.
Consequently, the Panel finds that the preconditions set forth in Paragraph 4(a)(iii) of the Policy are also met.
In view of the above circumstances and facts the Panel finds that the domain name <climara.com> registered by the Respondent is identical to the trade mark in which the Complainant has rights, that the Respondent does not have any rights or legitimate interests in respect of the domain name, and that the domain name has been registered and is being used in bad faith.
Consequently, the Panel decides that the domain name be transferred to the Complainant.
Dated: October 1, 2002