WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

BIOFARMA S.A. v. Manav Kendra Enterprises, Inc.

Case No. DBIZ2002-00259

 

1. The Parties

Complainant is BIOFARMA S.A., with offices at 22 Rue Garnier, 92200 Neuilly sur Seine, France, represented by Claire Combot.

Respondent is Manav Kendra Enterprises Inc., P.O. Box 77000, Tempe, AZ 85281-77000, United States of America, represented by Cass Foster.

 

2. The Domain Name and Registrar

The domain name at issue is <menopause.biz> (the Domain Name), registered on March 27, 2002, with R&K Global Business Services, Inc., United States of America.

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received Complainant's complaint on May 21, 2002 (electronic version), and May 29, 2002 (hard copy). The Center verified that the complaint satisfies the formal requirements of the Start-up Trademark Opposition Policy for .biz (the "STOP"), the Rules for the Start-up Trademark Opposition Policy (the "STOP Rules"), and the Supplemental Rules for Start-up Trademark Opposition Policy for .biz (the "WIPO Supplemental STOP Rules"). The formal date of the commencement of this administrative proceeding is May 30, 2002.

Having verified that the complaint satisfied the formal requirements of the STOP Policy and the Rules, the Center transmitted on May 30, 2002, to Respondent and to R&K Global Business Services Inc., Notification of Complaint and Commencement of the Administrative Proceeding, by post and e-mail, in accordance with the following contact details:

Manav Kendra Enterprises, Inc.
P.O. Box 77000
Tempe
AZ
85281 77000
United States
E-mail: fosterian@att.net

The Center advised that the response was due by June 19, 2002.

On June 5, 2002 (electronic version), and June 12, 2002 (hard copy), the Center received Respondent's response.

On July 5, 2002, the Center invited Mr. Geert Glas to serve as a panelist. Having received Mr. Geert Glas' Statement of Acceptance and Declaration of Impartiality and Independence on July 5, 2002, the Center transmitted to the parties a Notification of Appointment of Administrative panel and Projected Decision Date, in which Mr. Geert Glas was formally appointed as the Sole Panelist on July 8, 2002. The sole panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the STOP Rules and WIPO Supplemental STOP Rules.

The Administrative Panel shall issue its Decision based on the complaint, the response, the evidence presented, the STOP, the STOP Rules and the WIPO Supplemental STOP Rules.

 

4. Factual Background

Complainant is a company which develops, produces and commercializes pharmaceutical products.

Complainant is the owner of the French trademark MENOPAUSE, filed on February 19, 1999, under number 99 776 357, for goods of classes 16, 35, 41 and 42.

Complainant has registered the domain name <menopause.fr>. This domain name is used for a website which provides information about the period in a woman's life, typically between the age of 45 and 50, when menstruation ceases.

Respondent and/or its owner/representative, Mr. Cass Foster, is the owner of a single US trademark (.biz) and of more than one hundred .biz and .info domain names relative to a wide variety of products and issues, such as <gifts.info>, <pets.info>, <school.biz>, and <pornography.biz>.

The registration of .info domain names by Mr. Cass Foster has given rise to a large number of Sunrise Challenges brought by third parties, resulting in 25 .info domain names being transferred to third parties. One of these Sunrise Challenges concerned the domain name <menopause.info> and was initiated by Complainant. As Respondent failed to submit a response, the Center determined that the Respondent was deemed to have defaulted and decided that <menopause.info> had to be transferred to Complainant (WIPO Case No. DINFO2001-00811-0001, (March 25, 2002).

The Domain Name does not resolve to any web page.

 

5. Parties Contentions

A.Complainant

According to Complainant, the Domain Name registered by Respondent is identical to Complainant's trademark.

Moreover, Complainant claims that Respondent does not have any rights or legitimate interests in the Domain Name, because Respondent does not own any MENOPAUSE trademarks, and because Respondent knew of the MENOPAUSE trademark of Complainant, prior to registering the Domain Name.

Finally, Complainant contends that Respondent registered the Domain Name in bad faith, because of the following reasons:

Firstly, Respondent provided false registration information. Secondly, Respondent registered the Domain Name in order to prevent Complainant from reflecting its trademark in a corresponding domain name, because Respondent knew of the MENOPAUSE trademark. Thirdly, Respondent primarily registered the Domain Name for the purpose of selling, renting or otherwise transferring the Domain Name for valuable consideration, because it appears from the facts that Respondent is interested in the domain name business.

B.Respondent

Respondent does not contest that the Domain Name registered by Respondent is identical to Complainant's trademark.

However Respondent does contest that it would not have a legitimate interest in the Domain Name. Respondent claims that it works together with health institutes and doctors, and that it has a right to provide products and services in health-related fields.

Respondent also contests that it has registered the Domain Name in bad faith, because of the following reasons:

Firstly, Respondent claims that it provided false registration information in order to protect its owner's/representative's family and its employees against hate mail in relation to its other activities. Secondly, it claims that it is irrelevant that it knew of the MENOPAUSE trademark when registering the Domain Name. Thirdly, although Respondent does not dispute that it is engaged in the business of registering and selling domain names, it does dispute that such is the case for the Domain Name, which it intends to use to provide medical information.

 

6. Discussion and Findings

Paragraph 15 (a) of the STOP Rules instructs the Administrative Panel as to the principles the Administrative Panel is to use in determining the dispute:

"A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Paragraph 4 (a) of the STOP directs that Complainant must prove each of the following:

1. that the Domain Name registered by Respondent is identical to the trademark or service mark in which Complainant has rights; and,

2. that Respondent has no rights or legitimate interests in respect of the Domain Name; and,

3. that the Domain Name has been registered or is being used in bad faith.

1.Identity

The Domain Name is <menopause.biz>.

Complainant has trademark rights in the word "menopause".

In view of the above, the Administrative Panel finds that the Domain Name is identical to the trademark of Complainant, which is moreover not contested by Respondent.

2.Rights or Legitimate Interests

Complainant claims absence of legitimate interests on the basis that Respondent does not own any trademarks consisting of the word "menopause" and because Respondent had prior knowledge of the MENOPAUSE trademark of Complainant. However, Complainant's argument that Respondent knew of Complainant's MENOPAUSE trademark is irrelevant to the question of legitimate interests.

Respondent claims legitimate interests on the basis of its relationship with Foster Chiropractics and the US Embryo Bank and Registry, institutes, which allegedly deal with menopause related issues. Respondent does not however submit any evidence whatsoever which would support its relationship with the institutes, or the extent to which these institutes deal with menopause related issues. Moreover, Respondent does not show how it intends to use the Domain Name. Respondent's claimed interest in this specific health issue does also seem difficult to reconcile with the numerous other domain names its owner/representative registered (e.g. <cubancigars.biz>, <floridavacations.biz>, <hartmonitors.biz>, <medicalmalpractice.biz>, <legalresearch.biz>) and which seem totally unrelated to this specific claimed interest. Moreover, if Respondent has, as claimed, specific plans with the Domain Name, it cannot be understood why Respondent opted to default in the Sunrise Challenge brought by Complainant, which resulted in the transfer of its <menopause.info> domain name to Complainant.

In view of the difficulty for complainants to prove Respondent's absence of rights or legitimate interests in a domain name, UDRP decisions have often rightly considered this burden of proof to be satisfied when complainant could credibly state, taken into account all the facts of the case, that he was unaware of any element or circumstance which could be indicative of such right or legitimate interest, as is the case here.

In view of the above, Respondent has failed to demonstrate that it does have such rights or legitimate interests.

Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Name.

3.Registration or Use in Bad Faith

Complainant contends that Respondent registered the Domain Name in bad faith because:

- Respondent provided false registration information by listing a false telephone number;

- Respondent registered the Domain Name in order to prevent Complainant to use the Domain Name, because Respondent had prior knowledge of Complainant's MENOPAUSE trademark;

- Respondent registered the Domain Name for the purpose of selling, renting or otherwise transferring the Domain Name for valuable consideration, because it appears from the facts that Respondent is interested in the domain name business, as is shown by the following circumstances:

- Respondent's activities, described in the Arizona Corporation Information as Import/Export, are unrelated to health issues;

- Respondent registered ".biz" as a trademark;

- Respondent and its representative have registered numerous domain names under .info and .biz, some on the basis of false trademarks, without there being any relation between the domain names, and between the domain names and health issues; and

- Respondent's homepage does not relate to health issues, but seems to be set up for the purpose of the sale of domain names.

As to Complainant's first argument, Respondent admits that it has used a false telephone number, but claims this was done as a consequence of its other activities. Respondent submits that it attempts to acquire "hate" domain names which refer to extreme right-wing terms, in order to turn them over to the Southern Poverty Law Center, a non-profit organization which tracks hate sites and organizations, and that as a consequence Respondent receives hate-mail. Respondent would have used a false telephone number in order to protect family and employees.

Respondent does not however prove any of its submissions, although it would have been very easy to do so.

As to Complainant's second argument, Respondent submits that its prior knowledge of the MENOPAUSE trademark is irrelevant to the issue of bad faith.

It is indeed a fact that prior to registering the Domain Name, Respondent had received Complainant's Sunrise Challenge with regard to the <menopause.info> domain name of Respondent's owner / Representative. However, taking into consideration that the domain name is not devoid of any descriptiveness, and that Complainant has not submitted any evidence which shows that its trademark MENOPAUSE is a well known trademark, the panel concludes that Respondent's prior knowledge of Complainant's MENOPAUSE trademark does not in itself constitute evidence of bad faith.

Finally, Respondent claims it did not register the Domain Name in order to sell, rent or otherwise transfer it, its homepage only being set up for the sale of .info domain names.

The Panel agrees with Complainant that the fact that Respondent has registered a large number of domain names, unrelated to each other, and that Respondent's homepage is specifically set up for the sale of domain names (as confirmed by Respondent in relation to .info domain names), are indicative of Respondent's intention to sell the Domain Name. The Panel can indeed not disregard the clear pattern of behavior which emerges from the more than one hundred .info and .biz domain names registered by Respondent and/or its owner/representative, and the fact that Respondent set up a specific website for the sole purpose of selling domain names. This pattern of behavior does shed a different light on the consequences of granting or denying the Domain Name transfer sought by Complainant.

In view of these elements and circumstances, the Panel is of the opinion that Respondent registered the Domain name in bad faith.

 

7. Decision

In view of the above, the Panel decides that the domain name <menopause.biz>, registered by Respondent, is identical to the MENOPAUSE trademark of Complainant, that Respondent has no rights or legitimate interests in respect of the Domain Name, and that Respondent has registered the Domain Name in bad faith.

Accordingly, the Panel requires that the domain name <menopause.biz> be transferred to Complainant.

 


 

Geert Glas
Sole Panelist

Dated: July 22, 2002