WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Immunex Corporation and Amgen Inc. v. Harold Adkins and Infotek, Inc.
Case No. D2005-0033
1. The Parties
The Complainants are Immunex Corporation and Amgen Inc., Thousand Oaks, United States of America. The Complainants are represented by Christina L. Martini, Esq. of DLA Piper Rudnick Gray Cary US LLP in Chicago, Illinois, United States of America.
The Respondents are Harold Adkins and Infotek, Inc. Patchogue, New York, United States of America. The Respondents are represented by Harold Adkins on his own behalf and apparently on behalf of Infotek, Inc.
2. The Domain Name and Registrar
The domain names at issue in this proceeding are <imunx.com> and <imunx.info> (the “Domain Names”). The Registrar with which <imunx.com> is registered is eNom, Inc. The Registrar with which <imunx.info> is registered is Sipence, Inc.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2005, and amended on February 2, 2005, to correct a formal deficiency in the Complaint.
(b) On January 13, 2005, the Center transmitted by e-mail to eNom, which also controls Sipence, a request for registrar verification in connection with the Domain Names at issue. On January 13, 2005, eNom, Inc. transmitted by e-mail to the Center its verification responses.
(c) The Center verified that the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
(d) In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on February 13, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 5, 2005.
(e) The Respondents submitted a response on February 15, 2005.
(f) The Center appointed Timothy D. Casey as the sole panelist in this matter on March 9, 2005, and set a decision date of March 23, 2005. In accordance with paragraph 10(c) of the Rules, the Panel extended the decision due date up to and including April 1, 2005. The Panel finds that it was properly constituted.
(g) The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. The Panel has not received any requests from Complainants or Respondents regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.
4. Factual Background
(a) Complainant Immunex is a biopharmaceutical company that was acquired by Complainant Amgen in 2002. Amgen is a biotechnology company. The Complainants distribute various pharmaceutical preparations throughout the world.
(b) Complainants own a number of trademark registrations for the mark IMMUNEX in the United States and several other countries.
(c) Accordingly to the registrations, Complainants have been using the IMMUNEX name and mark continuously since January 4, 1988.
(d) Prior to being acquired by Amgen, Immunex was a publicly traded company on the NASDAQ stock exchange and traded under the ticker symbol IMNX.
(e) The IMMUNEX marks appeared in the press in 2000, in connection with Complainant’s business prior to the merger in relations to its public offering and the U.S. Food and Drug Administration’s approval of Immunex pharmaceutical products. Complainants registered the domain name <immunex.com> on August 7, 1992, and provided information about its products and services through the Internet under this domain name.
(f) The <immunex.com> domain name currently resolves to Amgen’s website where information regarding Complainants’ products and services is offered.
(g) Respondents registered <imunx.com> on November 26, 2000, and <imunx.info> on September 28, 2004.
(h) Respondents currently offer nutritional supplement products through the same website associated with the Domain Names, but at least the <imunx.com> domain name was associated with a generic website prior to December 1, 2004, that provided links to anime, toys and games, health products and pornography, among other subjects.
5. Parties’ Contentions
Complainants allege that they have rights in the IMMUNEX marks as evidenced by registrations at the USPTO and other countries and based on long and extensive use in commerce.
Complainants assert that at least prior to the Amgen merger in 2002, the IMMUNEX mark was relatively well known in connection with Immunex’s business at that time.
Complainants argue that the Domain Names are confusingly similar to its marks since both Domain Names incorporate a formative, imunx, which is phonetically identical to the registered IMMUNEX marks, the IMMUNEX mark is a unique, coined term, and the Domain Names are being used in connection with the promotion of some “health” products that incorporate the pharmaceutical symbol “Rx” in their name, thereby creating a similar commercial impression as Complainants for their pharmaceutical products.
Complainants assert that Respondents have no rights or legitimate interests in the Domain Names. Complainants argue that Respondents must have been aware of its pre-existing marks at the time it undertook its registrations of the Domain Names. Complainants further assert that Respondents’ only use of the Domain Names is to divert customers to Respondents’ website, which sells health supplements, and prior to notice from Complainants, merely provided links to pornography and other information, but not Respondents’ current health supplement products. Complainants further note that the term “imunx” is not currently utilized in any form on the Respondents’ website.
Complainants allege that Respondents registered and have used the Domain Names in bad faith. Complainants argue that Respondents are using the Domain Names to intentionally attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainants’ marks as to the source, sponsorship, affiliation or endorsement of its website or location of a service on its website or location. Complainants further note that Respondent Infotek, Inc. has engaged in a pattern of bad faith registrations that prevent legitimate trademark holders from reflecting their marks in corresponding domain names. A previous UDRP proceeding resulted in a finding that Respondent Infotek had registered thousands of domain names, including at least one domain name that wholly incorporated the trademark of the complainant in that case. See Advantor Corporation v. Infotek Inc., NAF Case No. FA 0101000096443.
Complainants request the Panel to direct the registrars to transfer the disputed Domain Names to them.
Respondents argue that the Domain Names are neither identical nor confusingly similar because: (1) the IMMUNEX mark includes 7 letters instead of 5 letters as do the imunx domain names; (2) the IMMUNEX mark does not include either the .com or .info suffixes; (3) the imunx domain names do not include the letter “e;” (4) the IMMUNEX mark is pronounced “im-mun-ex,” while the imunx domain name prefix is pronounced as “one word,” with the “x” pronounced as a “z” as in “Xerox” and “Xeron.”
Respondents claim that the Domain Names were registered and are now being used for a legitimate website product that has been in development for over 6 years.
Respondents also claim that they were unaware of the existence of the Complainants marks when the Domain Names were registered. The Domain Names were registered for the purpose of establishing a web site to sell the health care supplement products developed by Dr. Beasely that are currently sold on the “www.addictionend.com” website, which was registered, written and hosted by Respondents. Respondents claim that the Domain Names were selected because it was a “short (5 letter) name,” and that there is no likelihood that a small dietary supplement could be confused with a giant pharmaceutical company or that Respondents’ products would divert Complainants’ customers or tarnish Complainants’ trademark.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(I) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(II) Respondent has no rights or legitimate interests in respect of the domain name; and
(III) Respondent’s domain name has been registered and is being used in bad faith.
Each of the aforementioned three elements must be proved by a complainant to warrant relief.
In view of the Amended Complaint and the Response, the Panel makes the following specific findings:
I. The Domain Names are confusingly similar
Respondents’ Domain Names are confusingly similar to Complainants’ marks. As an initial matter, the existence or non-existence of the .com and .info suffixes is irrelevant to a determination as to whether the prefixes of the Domain Names are confusingly similar to the Complainants’ marks. While Respondents attempt to explain how the Domain Names and the Complainants’ marks are differently pronounced, other than Respondents’ Response, there is no evidence that supports this contention. Respondents do not appear to use the imunx name in association with the website in question, other than in the Domain Names.
The Respondents’ products do not use the imunx name. Further, Respondents’ explanation of how the imunx name is to be pronounced does not make any sense. Although Respondents attempt to distinguish the IMMUNIX marks by stating that they are pronounced “im-mun-ix,” and imunx is pronounced as “one word,” the reality is that both names appear to be one word with multiple syllables. The Panel fails to see how imunx can be pronounced in less than two syllables at least. While Respondents argue that the “x” in imunx should be pronounced as a “z” as in “Xerox” and “Xeron,” neither example actually appears to prove Respondents’ point, as both words only pronounce the “x” as a “z” when it appears that the beginning of the word, not the end, and in fact, the second “x” in “Xerox” is pronounced as an “x.” Furthermore, the Respondents’ website does not provide any form of pronunciation guide for the word “imunx,” so visitors to that site would be left attempting to figure out how to pronounce the word on their own. As a result, it appears highly likely that the average person viewing the imunx name would be inclined to pronounce the name as “i-mun-x,” which is virtually indistinguishable from “im-mun-ix.” In addition, the products offered on the Respondents’ website, while not likely to be the type of products offered by Complainants, do appear to be targeted to similar markets, people with some form of health problem. Accordingly, Complainants have satisfied the first element of the Policy in that Respondents’ Domain Names are confusingly similar to Complainants’ marks.
II. The Respondents have no rights or legitimate interests in the Domain Names
Although Respondents registered their Domain Names before Complaints first complained to Respondents of the use of either of the Domain Names, Complainants had established rights in the IMMUNEX marks long before Respondents registered the Domain Names. Moreover, although Respondents appear to be offering some type of legitimate product offering as of the date of this decision, Respondents’ only began to offer such products after being notified by Complainants’ of the potential confusion between the Domain Names and Complainants’ marks. Prior to that date, Respondents did not appear to be making any truly legitimate use of the Domain Names.
If a respondent were permitted to change the use of a domain name after being notified of a conflict and thereby avoid the dispute, many domain name disputes would never be settled. As tempting as it may be to settle this matter on the basis of Respondents’ current use, there is no assurance that Respondents will continue to the use the Domain Names in its current fashion. While Respondents claim that the product offered on the website in question was under development for over six years and attempt to leave the impression that the product was just finished when Respondents received Complainants’ first letter, Respondents have provided no proof to corroborate this statement. Respondents’ reference to the “www.addictionend.com” website did provide evidence that Respondent Infotek does host the website, but this alone does not support the allegation of long-term collaboration with anyone associated with the “www.addictionend.com” website, least of all a Dr. Beasely.
Finally, since Respondents do not appear to make any use of the imunx names apart from the Domain Names, there is no other proof of Respondents’ rights or legitimate interests in the Domain Names. In fact, it is difficult to understand why the imunx names hold any particular significance to Respondents, other than the fact that the names are confusingly similar to the IMMUNEX trademarks. Accordingly, Complainants have satisfied the second element of the Policy in that Respondents’ have no rights or legitimate interests in the Domain Names.
III. The Respondents have registered and used the Domain Names in bad faith
Respondents’ actions evidence bad faith use and registration of the Domain Names under paragraph 4(b)(iv) of the Policy, because the Respondents are using the Domain Names to intentionally attempt to attract, for commercial gain, Internet users to their website or other on-line location, by creating a likelihood of confusion with the Complainants’ marks as to the source, sponsorship, affiliation or endorsement of their website or location of a service on their website or location.
As noted above, the only apparent values the Domain Names hold to Respondents’ are their confusing similarity to Complainants’ marks. Although the Panel tends to agree that it is unlikely that some potential customers of Complainants’ products would be confused into believing that the health supplements promoted by Respondents’ are sponsored or affiliated by Complainants, the test is not whether Respondents’ would be likely to succeed on a regular basis, but rather whether Respondents’ are attempting to attract such customers through the use of the confusing Domain Names. Respondent has failed to provide any proof that it is not doing so, and while Complainants’ proof is hardly overwhelming, it is nevertheless more persuasive.
Furthermore, while Complainants’ only mentioned the prior decision against Respondent Infotek, it is worth noting that the Panel in that decision specifically found that Respondent Infotek was in the business of selling domain names and had registered thousands of them. The Respondents may not have attempted to sell the Domain Names to Complainants in this case, but it does show at least some pattern of questionable behavior on Respondents’ behalf. This fact coupled with the partially unbelievable Response of Respondents leads the Panel to conclude that the balance of the evidence must be tipped in Complainants’ favor.
Accordingly, the Complainants have met the requirements of the Policy by demonstrating not only their own legitimate interest in Complainants’ marks, as evidenced by their use of those marks, but also that Respondents registered and have used the Domain Names in bad faith, and that Respondents’ sole interests in the Domain Names are to unjustly profit from them.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <imunx.com> and <imunx.info> be transferred to the Complainants.
Timothy D. Casey
Dated: April 1, 2005