WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bavarian Nordic A/S v. Henrik Olsen, The Vamune Family
Case No. D2004-0855
1. The Parties
The Complainant is Bavarian Nordic A/S, Kvistgård, Denmark, represented by Henrik Christensen & Partnere, Denmark.
The Respondents are Henrik Olsen, Strandby, Denmark and The Vamune Family, City, NA 1, United States of America.
2. The Domain Name and Registrar
The disputed domain name <imvamune.com> is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2004. On October 19, 2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On the same date, Tucows transmitted by email to the Center its verification response confirming that The Vamune Family is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 22, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November 11, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 12, 2004.
The Center appointed Knud Wallberg as the Sole Panelist in this matter on November 22, 2004. 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.
The Panel notes that Henrik Olsen, as the original Registrant, in e-mails to the Center denies having anything to do with the case, since he has transferred the domain name to The Vamune Family. For the reasons explained in the Complaint as reflected below, the Panel finds that both respondents shall be considered as respondents in this case.
4. Factual Background
The Complainant - Bavarian Nordic A/S - was founded in 1994 and has been listed on the Copenhagen Stock Exchange since 1998. Bavarian Nordic is a world leader in the development and manufacturing of vaccines against infectious diseases. The Complainant’s lead vaccine vector MVA-BN is based on an attenuated pox virus.
After very extensive and expensive examinations and interviews IMVAMUNE was chosen among a number of alternatives as the name Bavarian Nordic A/S’ smallpox vaccine product (MVA-BN). The word IMVAMUNE is a combination of “MVA” and “Immunity”.
Trademark filing and use
On January 9, 2004, Bavarian Nordic A/S filed a US trademark application for IMVAMUNE. The Complainant then filed an EU trademark application on April 24, 2004, with priority from the US filing (January 9, 2004).
On March 30, 2004, Bavarian Nordic A/S announced by a massively distributed press release, that it had selected IMVAMUNE as the brand name for its third-generation MVA-BN smallpox vaccine, and that all future communications regarding the vaccine’s development and commercial activities would refer to the new brand name IMVAMUNE. Respondent registered the disputed domain name on the same day.
5. Parties’ Contentions
As part of the commercialization of IMVAMUNE, Bavarian Nordic A/S wanted to register the domain name <imvamune.com>. However, it turned out that it had already been registered, and that the registration had taken place the same day as Bavarian Nordic A/S published the choice of IMVAMUNE as the name of the MVA-BN vaccine (March 30, 2004). The Registrant was “Restore”, and administrative and technical contact was Henrik Olsen. Registrar was (and is) Tucows Inc. A search for the owner of “www.restore.dk” shows that this is Henrik Olsen.
Complainant contacted Henrik Olsen by telephone on August 16, 2004, inquiring him for his interest in the domain name and whether he would renounce it. Henrik Olsen could not give any reason for the registration, but was willing to renounce the domain name for 1,500 Euro. However, Bavarian Nordic A/S would not enter into any agreements with Henrik Olsen because of his business practices.
The next day the registrant was altered from Restore to The Vamune Family. However, it was observed that the contact’s mail server was still under the Danish ccTLD <restore.dk>, and that domain servers were still under the Danish ccTLD <gratisdns.dk>.
Subsequently it was established that Henrik Olsen seeks to hide his identity. Thus physical persons – but not legal persons – can claim anonymity if they so wish.
On September 9, 2004, Complainant wrote to Henrik Olsen, trying to make him transfer the domain name, but also with a view to being able to off-load any of the Complainant’s costs incurred on him, if he would not transfer the domain name voluntarily. In the letter, among other things, “the transferral” to the Vamune Family was questioned, including the congruity in as well the transferor’s (Henrik Olsen) as the transferee’s (The Vamune Family) e-mail addresses (both @restore.dk). Subsequently it was established that the e-mail address was changed to email@example.com. However it can be established that domain servers are still those of the Danish ccTLD <gratisdns.dk>.
As written to Henrik Olsen it is the Complainant’s understanding that the transferral to the Vamune Family is pro forma, and has only taken place in order to prevent Bavarian Nordic A/S from achieving the legitimate ownership of “www.imvamune.com”. This point of view is also supported by the fact that a searching on “www.google.com”, “www.lycos.com” and “www.yahoo.com” for “vamune”, results in only two hits. The Vamune Family presumably does not exist, and the more natural domain name for this family – “www.vamune.com” is vacant.
In further support of the information of Henrik Olsen’s activities as cyber-squatter, five cases from the Danish Klagenævn for Domænenavne (the Danish Appeals Board for Domain Names) were enclosed as exhibits, in all of which included actions brought against Henrik Olsen. In all the cases Henrik Olsen has registered trademarks/names of other companies as domain names and afterwards tried to sell these to the company in question. The Appeals Board for Domain Names has in its decisions taken into account that Henrik Olsen engages in trade in domain names, and has in all cases decided that Henrik Olsen should transfer the domain name in question to the Complainant.
In support of the claim filed the following allegations are raised:
The domain name <imvamune.com> is identical to a trademark in which the Complainant has rights, since the Complainant has registered trademark rights to the word IMVAMUNE, the word IMVAMUNE is a designed fantasy word, formed by the abbreviation MVA and the word “Immunity”, and thus generally impossible to use in other connections, and since the Complainant has spent considerable costs on developing and commercializing the word,
The domain name registrant (both Respondents) has no rights or legitimate interests in respect of the domain name in question, especially because, the Vamune Family/the person Irving M. Vamune presumably does not exist, and is merely a name invented for the occasion, the Vamune Family would presumably choose <vamune.com> as family domain rather than <imvamune.com>, and since Irving M. Vamune uses the same mail server as the respondent Henrik Olsen - @restore.dk, and the same DNS server, <gratisdns.dk>. It is submitted that The Vamune Family is merely a pseudonym for the experienced cybersquatter Henrik Olsen.
The domain name has been registered and is being used in bad faith, since the Respondent Henrik Olsen in Denmark is a cybersquatter, the Respondent Henrik Olsen tried to sell the domain name in question to the Complainant, the domain name was registered by the Respondent Henrik Olsen the same day as the Complainant published the name IMVAMUNE, the Respondents has made no use of the domain name in question, the Respondent Henrik Olsen has taken active steps to hide his identity, it seems not possible to imagine any plausible future active use of the domain name, without infringing the complainants trademark rights, and since the Respondent’s detention of the registration of the domain name prevents the Complainant from exercising his rights to the trademark IMVAMUNE.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with Paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements are satisfied:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences there from, as it considers appropriate.
A. Identical or Confusingly Similar
The evidence presented by the Complainant of its trademark application and subsequent use of the IMVAMUNE name demonstrates without doubt that the Complainant has acquired trademark rights in the name IMVAMUNE in the US and in the European Union including Denmark.
The domain name <imvamune.com> is identical to the Complainant’s mark, and consequently the requirement of Paragraph 4(a)(i) is met.
B. Rights or Legitimate Interests
The Complainant alleges that the Respondent has no rights or legitimate interests in the domain name. The Respondent has not rebutted this allegation and based on the records of this case, it is unlikely that any such rights or interests may exist. The Panel notes that the transfer from the original registrant to the present registrant, the Vamune Family, must be considered to be done solely for the purpose of trying to legitimize the interest in the domain name, and apparently there are no persons bearing the name.
Therefore, the requirement of Paragraph 4(a)(ii) is also met.
C. Registered and Used in Bad Faith
Due to the reputation of the Complainant and Complainant’s marks in the country where the registrant (Respondent) was located at the time of registration, the Panel finds that the registration of the contested domain name was done in bad faith.
The Panel further finds that it has been established that Henrik Olsen (the original Registrant) is engaged in a pattern of registering domain names containing trademarks of other companies.
The domain name has apparently not been used actively. As it has been stated in several other decisions under the UDRP, inactivity or passive holding can in specific cases be regarded as “use” within the meaning of Paragraph 4(a)(iii), which the Panel finds to be the case here.
The Panel therefore finds that the requirements of Paragraph 4(a)(iii) are met.
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 name <imvamune.com> be transferred to the Complainant.
Dated: December 1, 2004