WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
American Home Products Corporation v. Acaramba, Inc.
Case No. D2000-0457
1. The Parties
The Complainant in this administrative proceeding is American Home Products Corporation, a corporation of the State of Delaware, U.S.A., with its principal place of business at 5 Giralda Farms, Madison, New Jersey 07940, U.S.A. The Respondent is Acaramba Inc., of Boston, Massachusetts, U.S.A.
2. The Domain Name and Registrar
The domain names in dispute are as follows: ativan.com; lo-ovral.com; and ovral.com The domain names were registered by Respondent with Network Solutions, Inc. on November 29, 1998.
3. Procedural Background
On May 18, 2000, the WIPO Arbitration and Mediation Center received from Complainant a complaint (in hard copy) for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation of Assigned Names and Numbers (ICANN) on August 26, 1999 ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules).
The complaint was filed in compliance with the requirements of the Rules and the Supplemental Rules, payment was properly made, the administrative panel was properly constituted, and the panelist submitted the required Statement of Acceptance and Declaration of Impartiality and Independence.
The instant Administrative Proceeding was commenced on May 31, 2000.
Respondent did not file a response, and a "Notification of Respondent Default", dated June 26, 2000, was forwarded by WIPO to Respondent.
The decision of the Panel was due to WIPO on or before August 1, 2000.
4. Factual Background
As set forth in the Complaint, Complainant owns the following U.S. Trademark Registrations:
No. 875,020 for the mark ATIVAN, for medicinal preparation in the nature of a psychotropic agent (date of first use, September 1967);
No. 1,005,211 for the mark LO/OVRAL, for steroidal gynecological preparation (date of first use, June 1974); and
No. 1,194,195 for the mark OVRAL, for oral contraceptives (date of first use August 1965). See Complaint, Exhibit C.
5. Parties' Contentions
Complainant contends that the domain names in issue were registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain names to Complainant for valuable consideration in excess of Respondent's out-of-pocket costs directly related to the domain names. In support of such assertion, Complainant indicates that it contacted Respondent, in February 1999, to demand that the domain names be transferred to Complainant. Respondent later contacted Complainant and offered to transfer or assign the domain names "for expenses" in excess of any out-of-pocket costs. Respondent agreed to submit an itemization of such "expenses" to Complainant, but, to date, has failed to do so.
Complainant further contends that the domain names were registered in order to prevent the Complainant from reflecting the marks in corresponding domain names and, upon information and belief, that Respondent has engaged in a pattern of such conduct.
Finally, Complainant argues that the domain names are identical or confusingly similar to marks in which Complainant has rights and that Respondent has no rights or legitimate interests in respect of the domain names in dispute.
6. Discussion and Findings
The Panel determines that Complainant has established all of the elements required under ¶4.a. of the Policy.
Respondent's domain names are legally identical to various trademarks in which Complainant, through its prior use and registration of the marks ATIVAN,
LO-OVRAL, and OVRAL, has rights.
The unrebutted evidence also indicates that Respondent has no rights or legitimate interests in respect of the domain name.
With respect to the issue of bad faith registration and use, the unrebutted evidence supports a determination that Respondent registered the domain names for the purpose of transferring the names to Complainant "for valuable consideration in excess of *** out-of-pocket" costs directly related to the domain name[s]," within the meaning of ¶4.b(i) of the Policy.
In view of the above, the Panel GRANTS Complainant's request for transfer to it of the domain names ativan.com; lo-ovral.com, and ovral.com.
Jeffrey M. Samuels
Dated: July 31, 2000