Complainant is Octogen Pharmacal Company, Inc. of Cumming, Georgia, United States of America.
Respondents are Domains By Proxy, Inc. / Rich Sanders of West Palm Beach, Florida, United States of America and Octogen e-Solutions of Palm Beach, Florida, United States of America.
The disputed domain names <octogen.com> and <octogenpharmacal.com> are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2009. On June 15, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On June 15, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for one of the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 18, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on June 22, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 24, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2009. The Respondent did not submit any response by that date. Accordingly, the Center notified the Respondent's default on July 15, 2009. A Response was filed with the Center on July 15, 2009. On July 20, 2009, Complainant submitted a “Supplemental Filing”.
The Center appointed M. Scott Donahey as the sole panelist in this matter on July 21, 2009. The Panel finds that it was properly constituted. 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.
On July 30, 2009, the Panel issued the following Panel Order No. 1:
“Respondent submitted a Response on July 15, 2009, one day after the deadline set for receipt of a response. The Panel has determined that it will accept the Response. Complainant submitted a document entitled Complainant's Supplemental Filing, dated July 20, 2009. The Panel has determined that it will accept such filing. In a brief email sent on July 21, 2009, Respondent replied to Complainant's Supplemental Filing and requested an opportunity to file a more formal response. Respondent may have to and including August 7, 2009 to file a formal supplemental response to Complainant's Supplemental Filing. In addition to other points that Respondent intends to raise in the formal response, the Panel requests that Respondent provide the following:
1. In his July 21, 2009 email, Respondent stated: 'The Complainant is fully aware of the current court order and time frame set by the court of which I must comply with and are legally bound [stet].' The Panel requests a detailed description of the nature of the referenced litigation, including a copy of the complaint, names of all parties to the litigation, a copy of the court order referenced, and how, if at all, the two domain names at issue, or either of them, are the subject of that litigation.
2. Respondent references American Express statements which demonstrate that Respondent paid for the registration of the domain name <octogen.com> at the time that the domain name was registered. The Panel requests a copy of such American Express statements allegedly evidencing payment by Respondent.
Complainant may have to and including August 14, 2009, to submit a formal Rejoinder to Respondent's reply. Absent an express request by the panel, there shall be no submissions in addition to those permitted by this order. The Panel will issue its decision no later than August 28, 2009, unless circumstances require additional extensions.”
On August 7, 2009, the Panel issued Panel Order No. 2 to the following effect:
“For medical reasons, Respondent has requested an extension of time in which to submit the formal supplemental response described more fully in Panel Order No. 1. The Panel has determined that it will extend the time in which to submit such a response to and including August 10, 2009. The time in which Complainant may submit any reply to the supplemental response is extended to and including August 17, 2009.”
On August 10, 2009, Respondent submitted a formal Supplemental Response. On August 11, 2009, Respondent submitted an email received from Network Solutions, Inc., together with three emails for the registration and renewal of the domain name <octogen.com>. On August 17, 2009, Complainant submitted its Supplemental Reply with annexes.
Complainant is the owner of a formula for and claimed common law trademark rights in respect of a pain relieving ointment which Complainant acquired in 1960 from the estate of the physician/inventor. Developed in the 1920s, the ointment was originally available only by prescription, but in the 1940s it was approved for over the counter distribution.
Complainant is the owner of the trademark OCTOGEN registered with the United States Patent and Trademark Office (the “USPTO”) which issued on June 5, 2007, showing a first use on January 5, 1922 and a first use in commerce on March 10, 1932. The trademark is registered in conjunction with topical analgesics for therapeutic use. Complaint, Annex 10.
Complainant has used the mark continuously since its acquisition in conjunction with the sales and marketing of Octogen ointment. (However Complainant offers no further evidence as to when the common law trademark OCTOGEN first acquired secondary meaning as a source designation.)
Respondent registered the domain name <octogen.com> on August 25, 1999. Complaint, Annex 13. Complainant contends that the registration was done by Respondent at Complainant's direction and for the purpose of establishing a commercial website for the promotion and sale of Complainant's ointment and was done while Respondent, who is the son of Complainant's president, was in the employ of Complainant. Respondent contends that Respondent registered the domain name at issue for himself and Respondent's business entities which have to do with computers and online activities. Each party submits evidence that each claims establishes that each paid for the registration and renewal of the <octogen.com> domain name. Complaint, Annexes 9, 11, 12, and 13; Complainant's Supplemental Filing No. 2, Annexes 1 and 2; Respondent's Response to Panel Order No. 1; Network Solutions Invoices No's 11756648, 41990747, and 42001830. Complainant alleges that until sometime late in 2006 the domain name <octogen.com> was used to resolve to a website at which Complainant's ointment was offered for sale and promoted. Complaint Annex 15. Respondent alleges that Annex 15 is simply a copy of a website on Respondent's personal computer and that such website was never hosted by any website hosting company and was never submitted to search engines and was only infrequently accessible when Respondent's personal computer was turned on. Respondent acknowledges that in 2006, Respondent began using the domain name at issue for the sale of domain names and services, because Respondent thought that the word “octogen” was a perfect word to be used in Internet related business, since it means “explosive” and that Internet business was exploding. Response, Annex 3.
Respondent registered the domain name <octogenpharmacal.com> on May 27, 2005, and Complainant alleges that at no time was Respondent authorized to register that domain name in Respondent's name. Complainant offers evidence that Respondent used the domain name <octogenpharmacal.com> to resolve to a website with links to Complainant's competitors or sites which offered products directly competitive with that of Complainant. Complaint, Annex 17. Respondent admits that he registered the domain name <octogenpharmacal.com> for Complainant. Respondent stated that he registered <octogenpharmacal.com> in 2005 when he learned that the Complainant was being offered for sale and that Complainant required a domain name that could be sold in conjunction with the sale of the business. Response, Annex 1.
All of Respondent's submissions discuss a litigation filed by Respondent's brother against Respondent and his mother in their capacities as trustees of various trusts. Complainant is not a party to the litigation, nor are the domain names at issue apparently involved in the litigation in any way.
Complainant alleges that the domain names at issue are identical or confusingly similar to the trademark OCTOGEN in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain names at issue, and that Respondent has registered and is using the domain names at issue in bad faith.
Respondent does not address the issue of identity or confusing similarity. Respondent contends that he has rights and legitimate interests in respect of the domain name <octogen.com>, since he registered it for himself and his businesses and that the name is being used in the sense of “explosive” and is not attempting to trade on the good will inherent in Complainant's trademark. Respondent concedes that he registered the domain name <octogenpharmacal.com> on behalf of Complainant and is willing to transfer the domain name to Complainant. Respondent argues that he registered the domain name <octogen.com> in good faith and has been using it in good faith, that he registered the domain name <octogen.com> approximately eight years prior to the issuance of Complainant's trademark, and that he is using the domain name in good faith in connection with Respondent's Internet related businesses.
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these 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 names registered by the respondent are identical or confusingly similar to a trademark 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 names; and
(3) that the domain names have been registered and are being used in bad faith.
Respondent concedes that he registered the domain name at issue for the benefit and account of Complainant and expressed a willingness to transfer the domain name at issue to Complainant. Accordingly, the Panel finds that the domain name at issue should be transferred to Complainant. Bharat Sanchar Nigam Limited (BSNL) v. Domain Hostmaster, WIPO Case No. D2007-1800.
The domain name <octogen.com> consists of Complainant's OCTOGEN trademark and the gTLD suffix “.com”. In such cases panels have consistently found the domain name identical to the trademark. Credit Management Solutions, Inc. v. Collex Resource Management, WIPO Case No. D2000-0029.
Whether Respondent can be said to have rights and legitimate interests in respect of the domain name is in this case closely connected to the issue of bad faith. If the Panel finds, that the domain name has been registered and is being used in bad faith, then Respondent could not have rights or legitimate interests in respect of the domain name. Busy Body, Inc. v. Fitness Outlet, Inc., WIPO Case No. D2000-0127.
The domain name at issue was registered some eight years prior to the issuance of Complainant's registered OCTOGEN mark and Complainant made no attempt (beyond its claimed acquisition of relevant rights in 1960) to establish by competent evidence that it had common law rights in the OCTOGEN mark, or to establish when such rights, if they existed, first arose. For the purpose of the present case the Panel proceeds on the basis that the Complainant's registered trademark rights vested no later than 2007.
The generally accepted panel view is that, absent certain limited exceptions not applicable here, the registration of a domain name prior to the establishment of trademark rights precludes the finding that the registration was in bad faith. See, e.g., PC Mall, Inc. v. Pygmy Computer Systems, Inc., WIPO Case No. D2004-0437. However, based on the different considerations which have arisen in panel decisions on the issue of bad faith registration, and based on a close analysis of the landmark decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that under certain facts and circumstances “passive use” of a domain name could constitute bad faith use) and a careful reading of the language of the Policy, the Panel is convinced that both the Telstra approach and the language of the Policy itself provide a basis for panels to broaden their position on this issue.
In reviewing panel attempts to reconcile the consensus view with the actions taken by respondents in various cases, this Panel has noted differing considerations taken into account in assessing the requirements for bad faith registration. In generally rejecting the concept of constructive notice of the existence of trademark rights, many panels have held that a domain name registrant has no obligation to conduct a trademark search prior to the registration of a domain name in order for the registration to have been done in good faith. Alberto-Culver Company v. Pritpal Singh Channa, WIPO Case No. D2002-0757. On the other hand, when faced with the bulk registration of domain names using automated software programs, decisions have found that a domain name registrant involved in such bulk registrations cannot be willfully blind to the fact that some of the domain names registered infringe valid trademarks. Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448. It seems to this Panel to be desirable in terms of a registrant's obligation to perform some kind of trademark search in order to establish good faith registration, not to distinguish between cases in which a registrant registering multiple domain names is held to a requirement to perform some kind of trademark search in order to establish good faith registration, while a registrant registering only one or two domain names is not. In this Panel's view, it is desirable for such obligation to be uniformly applied to all registrants.
Moreover, a transfer of a domain name is held to be a new “registration”, such that the good faith of the registration must be evaluated as of the date of the transfer. However a renewal of the registration is not considered a new registration, so that the renewing registrant's good faith is to be evaluated as of the date of the original registration even where, at the time of the renewal, the registrant is well aware of the trademark and is using or intends to use the domain name in the future to trade on the good will inherent in the mark. Weatherall Green & Smith v. Everymedia.com, WIPO Case No. D2000-1528. In this Panel's opinion, it is not desirable to place a transferee in a worse position than the registrant who elects not to sell, but rather to renew a domain name registration, and who at that time is using or intends in the future to use the domain name to trade on the good will established by a mark holder.
In Telstra, supra, the respondent had registered the domain name <telstra.org>, and the second level name “telstra” was identical to the mark held by complainant, which was the largest company listed on the Australian stock exchange and the largest telecommunications provider in Australia. The issue for the panel was that the domain name at issue neither resolved to a website nor had any other online presence. Nor had the respondent made any offer to sell the name to complainant or to anyone else. Could it be said in such situation that the domain name was being used in bad faith?
The Telstra panel looked at the four examples given under the UDRP that by definition constituted evidence of registration and use in bad faith. Those four, non-exclusive examples enumerated in paragraph 4(b) of the UDRP are:
(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.
After a careful examination of the four non-exclusive examples, the Telstra panel ultimately found, that, based on the available facts and circumstances, the registration and use of the domain name could be said to have been made in bad faith.
As far as bad faith use, the panel noted that only factor 4 of paragraph 4(b) of the Policy involved a positive action taken in respect of the domain name in the post registration period. Thus, the panel found that the first three factors seemed to contemplate the concept of passive use and that inaction or passive holding can constitute the use of a domain name in bad faith. The panel found that each case must be evaluated on its facts to determine whether the passive use constituted use in bad faith. In Telstra supra, the panel found that the following facts established that the passive use constituted bad faith use:
1. The trademark was widely known in Australia and other countries.
2. The respondent furnished no evidence of actual or intended good faith use of the domain name.
3. The respondent took active steps to conceal its identity.
4. The respondent breached the registration agreement by providing and failing to correct false contact details.
5. It was impossible to conceive of a use of the domain name at issue which would be legitimate.
Thus the panel determined that the UDRP contemplated passive use and that a panel facing a situation involving passive use must analyze the relevant facts and circumstances to determine whether such passive use was in bad faith.
As discussed above, three of the four non-exclusive UDRP examples of bad faith registration and use do not discuss use at all, but rather focus on the state of mind of the registrant at the time that it registered the domain name at issue. Conversely, the fourth example focuses entirely on use without express regard to the registrant's state of mind as of the date of registration. Under paragraph 4(b)(iv) of the Policy a respondent that uses the domain name to attract Internet users to its website or online location by creating a likelihood of confusion with the complainant's mark and its sponsorship of the website is acting in bad faith, without reference to the respondent's state of mind at the time that the registrant registered the domain name. Clearly, as under the Telstra analysis, in this Panel's view bad faith registration can be deemed to have occurred even without regard to the state of mind of the registrant at the time of registration, if the domain name is subsequently used to trade on the goodwill of the mark holder, just as bad faith use can occur without regard to the fact that the domain name at issue has not been (or has been “passively”) used.
Moreover, panels, including this Panel, should be mindful of the language of the Policy regarding the respondent's representations and warranties. This language negates the temporal distinction suggested by 4(a)(iii) of the Policy (“has been registered . . . in bad faith”) by requiring the registrant to make warranties as to the registrant's future conduct. Section 2 of the Policy, entitled “Your Representations,” provides in pertinent part: “[Y]ou will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name infringes or violates someone else's rights.” (Emphasis added.)
As this Panel sees it, this provision not only imposes a duty on the part of the registrant to conduct an investigation at the time of registration, but also includes a representation and warranty by the registrant that it will not now or in the future use the domain name in violation of any laws or regulations. This effectively imposes on the registrant a continuing duty to ensure that the domain name is not used in violation of another's rights and clearly covers intellectual property rights and the laws protecting them, including copyright and trademark. This representation and warranty is not limited to the moment at which the registrant registers the domain name; rather, it extends to any use of the domain name in the future. This obligation is an integral part of the Policy, and it cannot be ignored. A party can register or acquire a domain name in good faith, yet use the domain name in the future in such a way that the representations and warranties that the registrant made as of the time of registration are violated. If a party uses the domain name in the future so as to call into question the party's compliance with the party's representations and warranties, this may be deemed to be retroactive bad faith registration.
Just as in the Telstra analysis of passive use, whether the future use of a domain name constitutes retroactive bad faith registration will necessarily depend on an analysis of the facts and circumstances of any given case. In the present case, the Panel finds that the language of the Policy and the Telstra approach require the Panel to examine the facts and circumstances of the case to determine whether the registration of the domain name could be said to be retroactively in bad faith.
While Respondent argues that he is using the domain name in a sense that means “explosive” and that he registered the domain name for his own personal business use and not on behalf of Complainant, a search of the Internet Archive clearly shows otherwise. Panels frequently reference the Internet Archive (commonly and colorfully known as the “Wayback Machine”) in order to attempt to determine how a domain name has been used in the past. Karl's Sales and Service Company, LLC v. LaPorte Holdings, Inc., WIPO Case No. D2004-0929; National Football League v. Thomas Trainer, WIPO Case No. D2006-1440; La Francaise des Jeux v. Domain Drop S.A., WIPO Case No. D2007-1157. More properly known as the Internet Archive, the Wayback Machine is a non-profit organization that constructs a library of web pages that have appeared on the Internet over time. It maintains these historical web pages in an archive which is accessible to the public. To research a particular domain name, one simply goes to “www.archive.org” and enters the domain name that one is researching in the Wayback Machine browser.
An historical look at the website to which <octogen.com> resolved on September 29, 2002, shows a photographic representation of “Octogen” analgesic products with the heading in large, bold, all capital print “OCTOGEN™ PHARMACAL COMPANY” and carries the following copyright notice: “©Octogen™ Pharmacal Company, Inc. 2002.” An historical look at the website to which <octogen.com> resolved on October 4, 2006, shows the same product pictures, bold heading, and carries the following copyright notice: “© 1999-2006 Octogen™ Pharmacal Company, Inc.” The copyright notice is followed by the statement “Hosting and Design CityPlace Network™, all rights reserved.” In his Response, Respondent identified “CITY PLACE COMPUTERS” as a dba for Respondent's personally held company, PJRS Technology. Finally both archived websites contain a link from the home page to “Contact and Order Information.” The linked page contains the following information under “How to Order:” “For more information and location of your nearest distributor please call our toll free number, or contact us at the address below. Octogen Pharmacal Company, Inc., 1800-729-4613, Fax 1-770-888-8810, 2750 Cambridge Hills Road, Cumming, GA 30013-8274.” These are Complainant's address, phone and fax numbers.
While it is impossible to tell from the evidence submitted by the parties who made the payments for the domain name <octogen.com>, it appears that Complainant and Respondent may well have made duplicate payments for the registration and renewal of the domain name and that the registrar may have pocketed both. However the way that the domain name was used shows that for many years the sole use of the name was for the promotion and sale of Complainant's trademarked product. As Respondent admittedly designed the website, he was well aware of Complainant's assertion of trademark rights for the mark OCTOGEN. Respondent's explanation of why he suddenly decided to use the trademark in a business name to which the domain name <octogen.com> later resolved strains credulity.
From the facts and circumstances in the case, it appears that a dispute between Respondent's brother and father on the one hand and Respondent and his mother on the other resulted in Respondent using the domain name for his own personal business and redirecting it away from Complainant's website, to which it had been resolving for many years. The Panel finds that Respondent registered the domain name at issue under his own name in connection with the business of Complainant in full contemplation of Complainant's assertion of rights in the OCTOGEN mark. The subsequent use of the domain name has been principally in connection with Complainant's business. Accordingly, in these circumstances, the Panel finds that Respondent's registration of the domain name <octogen.com> and recent use and conduct in respect of that domain name to be in bad faith.
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 <octogen.com> and <octogenpharmacal.com> be transferred to the Complainant.
M. Scott Donahey
Dated: August 19, 2009