WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Biogen MA Inc v. Daniel Ackell
Case No. D2017-0033
1. The Parties
The Complainant is Biogen MA Inc of Cambridge, Massachusetts, United States of America (“United States” or “U.S.”), represented by Eckert Seamans Cherin & Mellott LLC, United States.
The Respondent is Daniel Ackell of Miami Beach, Florida, United States.
2. The Domain Names and Registrar
The disputed domain names <cannabisbiogen.com>, <leafbiogen.com> and <marijuanabiogen.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2017. On January 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 11, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 25, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 14, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2017.
The Center appointed Martin Schwimmer as the sole panelist in this matter on March 1, 2017. 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.
4. Factual Background
The Complainant Biogen has provided pharmaceutical research services and distributed pharmaceutical preparations since 1978. The Complainant owns several U.S. trademark registrations for the BIOGEN mark (the “Trademark”), among which, no. 2099,409 was registered on September 23, 1997. The Respondent registered <cannabisbiogen.com>, <leafbiogen.com> and <marijuanabiogen.com> in August 2016. The disputed domain name <cannabisbiogen.com> resolves to a registrar page depicting keyword advertisements, while <leafbiogen.com> and <marijuanabiogen.com> both resolve to a page stating “Website coming soon!”
5. Parties’ Contentions
The Complainant argues that the disputed domain names are confusingly similar to the BIOGEN trademark. Through widespread, extensive use in connection with its services and products, the BIOGEN trademark has become uniquely associated with the Complainant and its services and products, and is well known and famous throughout the U.S. The Complainant’s registrations for the BIOGEN trademark establish that it has rights in these trademarks under paragraph 4(a)(i) of the Policy.
The Complainant alleges that the disputed domain names reflect the Complainant’s mark in its entirety. The terms “cannabis”, “leaf” and “marijuana” are all generic, and thus do not distinguish the domain names from the Trademark. Furthermore, all three terms refer in some way to marijuana. As Complainant distributes pharmaceuticals that treat multiple sclerosis (“MS”), and there is some public discussion that medical marijuana may be advanced as a treatment for MS, use of those terms in connection with the Trademark exacerbates the possibility of confusion. Further, previous UDRP panels have found that the addition of a generic Top‑Level Domain (“gTLD”) such as “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark (UNIVERSAL CITY STUDIOS, INC. V. G.A.B. ENTERPRISES, WIPO Case No. D2000-0416).
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent has no connection or affiliation with the Complainant, its affiliates, or any of the services and products provided by the Complainant under the BIOGEN trademark. The Respondent has never been known by any name or trade name that incorporates the word “Biogen”. The Respondent has never sought or obtained any trademark registrations for “Biogen” or any variation thereof and indeed could never do so given the Complainant’s pre-existing and exclusive rights to this mark. The Respondent has not received any license, authorization, or consent — express or implied — to use the BIOGEN trademark in the disputed domain names or in any other manner, either at the time when the Respondent registered and began using the disputed domain name, or at any other time since. The Respondent does not utilize the BIOGEN trademark in connection with the disputed domain names and thus cannot put forward any fair use argument.
With regard to bad faith, the Complainant notes that the Respondent’s misappropriation of the BIOGEN mark by its inclusion in the disputed domain names is intentional in view of the Trademark’s fame. The Respondent chose to use the Trademark to capitalize on the association of the BIOGEN trademark with the Complainant’s pharmaceutical products.
The Complainant argues that misappropriation of the Trademark does not give rise to a right or legitimate interest but, rather, portends the Respondent’s bad faith (Fluor Corporation v. Above.com Domain Privacy / Huanglitech, Domain Admin, WIPO Case No. D2010-0583). Use of the Complainant’s trademark for the purpose of misleading or diverting consumers would not be bona fide and could not confer any rights or legitimate interests upon a respondent (CIMB Group Sdn. Bhd., CIMB-Principal Asset Management Berhad v. PrivacyProtect.org / Cyber Domain Services Pvt.Ltd., WIPO Case No. D2010-1680; Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134).
The Complainant further argues that the Respondent has registered the disputed domain names in bad faith with full knowledge of the Complainant’s rights in the famous BIOGEN trademark. Even a simple Internet search would have revealed the Complainant’s extensive use of the BIOGEN trademark as a source identifier for its pharmaceutical products.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain names incorporate the Complainant’s famous BIOGEN trademark in its entirety with the addition of the generic terms “cannabis”, “leaf” and “marijuana”. Because, as Complainant notes, it provides products to treat multiple sclerosis, and medical marijuana has been suggested as a possible pain relief medication for MS. Accordingly, the addition of these three terms exacerbates, rather than alleviate, possible confusion with the Complainant as a source. The Panel also notes that the gTLD suffix may be disregarded. Thus, the Panel finds that the Complainant has established that the disputed domain names are confusingly similar to the Complainant’s mark pursuant to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant alleges that the Respondent has no form of association with the Complainant that would allow it to utilize the Complainant’s trademark. Furthermore, the Respondent’s name is not reflected in the disputed domain names. The Complainant has made a prima facie showing that none of the three circumstances establishing rights or legitimate interests apply, thus shifting the burden of production on to the Respondent (Philip Morris USA Inc. v. Mary Shelly, WIPO Case No. D2006-1367).
The Respondent has not responded to the Complainant’s contentions. Two of the disputed domain names direct to two sites indicating solely that a website is coming soon, and the third directs to a registrar parking page featuring keyword ads. The disputed domain names immediately connote for this Panel websites from or authorized by the source of BIOGEN-brand services or products. Thus, it is hard to envision any fair use by an unauthorized third-party. In light of the Complainant’s unrebutted prima facie case, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
The Complainant has previously established to UDRP panel that its BIOGEN mark is famous (Biogen Idec MA Inc. v. Seong Choi, WIPO Case No. D2003-0961). As the UDRP panel found in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, when a complainant’s trademark is distinctive, it is “not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant,” and thus an illegitimate “trader” could have no legitimate interest in the trademark.
The Respondent has failed to establish rights or legitimate interests in the disputed domain names. As indicated above, the websites resolves to pages with no original content. The passive holding of a domain name reflecting a famous trademark has frequently been found to be bad faith registration (Telstra Corporation Limited v. Nuclear Marshmallows, supra).
Accordingly, the Panel finds that the disputed domain names were registered and are being used in bad faith, and that the Complainant has met the requirements of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <cannabisbiogen.com>, <leafbiogen.com> and <marijuanabiogen.com> be transferred to the Complainant.
Date: March 8, 2017