Pharmacia & Upjohn Company v. Moreonline

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pharmacia & Upjohn Company v. Moreonline

Case No. D2000-0134

1. The Parties

The Complainant is Pharmacia & Upjohn Company, a corporation organized

in the State of Delaware, United States of America (USA), with place of business

in North Peapack, New Jersey, USA.

The Respondent is Moreonline, with address in Northridge, California, USA.

2. The Domain Name(s) and Registrar(s)

The disputed domain name "rogaine.net".

The registrar of the disputed domain names is Network Solutions, Inc., with

business address in Herndon, Virginia, USA.

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

a. The Complainant initiated the proceeding by the filing of a complaint via

e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO")

on March 6, 2000, and by courier mail received by WIPO on March 9, 2000.

Payment by Complainant of the requisite filing fees accompanied the courier

mailing.

b. On March 9, 2000, WIPO transmitted notification of the complaint to

ICANN and Network Solutions by e-mail.

c. On March 10, 2000, WIPO transmitted notification of the complaint

and commencement of the proceeding to the Respondent via e-mail and courier

mail, and by e-mail and telefax to Complainant’s authorized representative.

d. On April 4, 2000, WIPO transmitted notification to Respondent

of its default in responding to the complaint by e-mail and courier mail.

e. On March 29, 2000, WIPO invited the undersigned to serve as sole

panelist in this administrative proceeding, subject to receipt of an executed

Statement of Acceptance and Declaration of Impartiality and Independence ("Statement

and Declaration"). On March 29, 2000, the undersigned transmitted

by fax the executed Statement and Declaration to WIPO.

f. On April 5, 2000, the Complainant and Respondent were notified by WIPO

of the appointment of the undersigned sole panelist as the Administrative Panel

(the "Panel") in this matter. WIPO notified the Panel that, absent

exceptional circumstances, it would be required to forward its decision to WIPO

by April 19, 2000. On April 5, 2000, the Panel received an electronic

file in this matter by e-mail from WIPO. The Panel subsequently received a hard

copy of the file in this matter via courier mail from WIPO.

The Panel has not received any requests from Complainant or Respondent regarding

further submissions, waivers or extensions of deadlines, and the Panel has not

found it necessary to request any further information from the parties (taking

note of Respondent’s default in responding to the complaint). The proceedings

have been conducted in English.

4. Factual Background

Complainant has provided a copy (Complaint, Annex C) of its U.S. Patent and

Trademark Office trademark registration dated December 16, 1986 for

"ROGAINE", number 1,420,785 on the Principal Register. Complainant

states that this trademark registration remains valid and subsisting. The validity

of Complainant’s trademark registration for "ROGAINE" has not been

contested by Respondent, and the Panel accepts as an undisputed fact that Complainant

is the holder of a valid trademark registration for "ROGAINE" in the

United States.

The trademark "ROGAINE" is an arbitrary mark. Other than as a means

to identify Complainant’s product, the term does not have a meaning in any language.

(See Complaint, para. 12)

Complainant has used the "ROGAINE" trademark in commerce in respect

to a topical dermatological product for the treatment of hair loss. Respondent

has not contested Complainant’s use of the trademark in commerce.

Network Solutions’ WHOIS database query response (Complaint, Annex A) indicates

that "moreonline", with Administrative Contact at "Ali, Al",

is the registrant of the domain name "ROGAINE.NET". The record of

this registration was created on January 25, 1999 and was last updated

on January 25, 1999.

There is no record in this proceeding of any actual use or preparation for

use of the domain name "rogaine.net" by Respondent.

The Service Agreement in effect between Respondent and Network Solutions subjects

Respondent to Network Solutions’ dispute settlement policy, the Uniform Domain

Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and

with implementing documents approved by ICANN on October 24, 1999. The Uniform

Domain Name Dispute Resolution Policy (the "Policy") requires that

domain name registrants submit to a mandatory administrative proceeding conducted

by an approved dispute resolution service provider, of which WIPO is one, regarding

allegations of abusive domain name registration (Policy, para. 4(a)). Respondent

has not contested that it is properly before this Administrative Panel.

5. Parties’ Contentions

A. Complainant

Complainant states that it is the owner of the registered trademark "ROGAINE",

and that it has used this mark in commerce. The Complainant states that: "the

trademark ROGAINE … is a coined term having no meaning in any language for its

brand of minoxidil topical solution". (Complaint, para. 12) (See

Factual Background, supra).

Complainant’s legal argumentation is as follows:

"The ROGAINE.NET domain name of Moreonline, complained of herein, is identical

and/or confusingly similar to the ROGAINE trademark in which Pharmacia &

Upjohn has rights; and (2) Moreonline has no rights or legitimate interests

in respect of the ROGAINE.NET domain name that is the subject of the Complaint

because Pharmacia & Upjohn has not agreed or consented to Moreonline’s use

or registration of a domain name comprising its unique well-known and federally

registered ROGAINE trademark, and (3) the domain name(s) should be considered

as having been registered and used in bad faith because the ROGAINE mark is

known to be a mark of Pharmacia & Upjohn Company and Moreonline registered

the mark for no other purpose than to sell, rent or otherwise transfer the domain

name registration to Pharmacia & Upjohn or a competitor of Pharmacia &

Upjohn and Moreonline has refused to cooperate with Pharmacia & Upjohn to

resolve the instant domain name dispute".

"Pharmacia & Upjohn’s counsel sent Moreonline a letter on December

27, 1999 informing Moreonline that its registration of the ROGAINE.NET violated

Pharmacia & Upjohn’s rights in its ROGAINE mark under United States law

in that persons attempted [sic] to access Pharmacia & Upjohn’s ROGAINE.COM

website may become discouraged upon reaching Moreonline’s inactive ROGAINE.NET

website and search no further for Pharmacia & Upjohn’s website, to Pharmacia

& Upjohn’s detriment. Pharmacia & Upjohn demanded that Moreonline promptly

transfer the ROGAINE.NET domain name registration to Pharmacia & Upjohn.

Moreonline has not responded to Pharmacia & Upjohn or its counsel. A copy

of the December 27, 1999 letter is attached …." (Complaint, para. 12)

Complainant requests that the Panel ask the Registrar to transfer the domain

names "rogaine.net" from Respondent to it. (Id., para. 13)

B. Respondent

Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Uniform Domain Name Dispute Resolution Policy (the "Policy")

adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on

August 26, 1999 (with implementing documents approved on October 24, 1999),

is addressed to resolving disputes concerning allegations of abusive domain

name registration. This sole panelist has in an earlier decision discussed the

background of the administrative panel procedure, and the legal characteristics

of domain names, and refers to this earlier decision for such discussion. 1

The Panel will confine itself to making determinations necessary to resolve

this administrative proceeding.

It is essential to dispute resolution proceedings that fundamental due process

requirements be met. Such requirements include that a respondent have notice

of proceedings that may substantially affect its rights. The Policy, and the

Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"),

establish procedures intended to assure that respondents are given adequate

notice of proceedings commenced against them, and a reasonable opportunity to

respond (see, e.g., para. 2(a), Rules).

In this case, the Panel is satisfied that WIPO took all steps reasonably necessary

to notify the Respondent of the filing of the Complaint and initiation of these

proceedings, and that the failure of the Respondent to furnish a reply is not

due to any omission by WIPO. There is ample evidence in the form of air courier

receipts, and confirmations of the sending of e-mail, that the party designated

as the Administrative Contact for the Respondent was notified of the Complaint

and commencement of the proceedings (see Procedural History, supra).

Paragraph 4(a) of the Policy establishes three elements that must be established

by a Complainant to merit a finding that a Respondent has engaged in abusive

domain name registration, 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 aforesaid three elements must be proved by a complainant to warrant

relief.

Because the Respondent has defaulted in providing a response to the allegations

of Complainant, the Panel is directed to decide this administrative proceeding

on the basis of the complaint (Rules, para. 14(a)), and certain factual conclusions

may be drawn by the Panel on the basis of Complainant’s undisputed representations

(id., para. 14(b)).

Complainant is the holder of a registered trademark for "ROGAINE"

in the United States and is using that mark in commerce (see Factual

Background, supra). Complainant’s registration of the trademark on the

Principal Register at the PTO establishes a presumption of validity of the mark

in U.S. law 2, and Respondent has not challenged

this presumption. The Panel determines that Complainant has rights in the trademark

"ROGAINE". Based on the December 16, 1986, date of Complainant’s

registration of the trademark "ROGAINE", the Panel determines that

Complainant’s rights in the trademark arose prior to Respondent’s registration,

on January 25, 1999, of the disputed domain name "rogaine.net"

3 .

Respondent has registered the domain name "rogaine.net". This name

is identical to Complainant’s trademark "ROGAINE", except that (1)

the domain name adds the generic top-level domain name ".net", and

(2) the domain name employs lower case letters, while the trademark is generally

used with an initial capital letter (see http://www.rogaine.com). For

purposes of this proceeding, it is unnecessary to decide whether, in light of

these factors, Respondent’s domain name is "identical" to Complainant’s

trademark, since Respondent’s domain name "rogaine.net" is without

doubt confusingly similar to Complainant’s trademark "ROGAINE".

Complainant has met the burden of proving that Respondent is the registrant

of a domain name that is identical or confusingly similar to a trademark in

which the Complainant has rights, and it has thus established the first of the

three elements necessary to a finding that Respondent has engaged in abusive

domain name registration.

There is no evidence on the record that would indicate that Respondent has

any rights or legitimate interests in respect of the domain name "rogaine.net",

other than that it has registered this domain name. If mere registration of

the domain name was sufficient to establish rights or legitimate interests for

the purposes of paragraph 4(a)(ii) of the Policy, then all registrants would

have such rights or interests, and no complainant could succeed on a claim of

abusive registration. Construing the Policy so as to avoid an illogical result,

the Panel concludes that mere registration does not establish rights or legitimate

interests in the disputed domain name so as to avoid the application of paragraph

4(a)(ii) of the Policy.

Respondent has furnished no evidence of any legitimate use or preparation to

use the disputed domain name There is no evidence on the record of this proceeding

of any such legitimate use or preparation to use by Respondent. The Panel determines

that Respondent has no rights or legitimate interests in the disputed domain

name. Thus, the Complainant has established the second element necessary to

prevail on its claim that Respondent has engaged in abusive domain name registration.

The Policy indicates that certain circumstances may, "in particular but

without limitation", be evidence of bad faith (Policy, para. 4(b)). Among

these circumstances are (1) that the domain name has been registered or acquired

by a respondent "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 [respondent’s] documented out-of-pocket

costs directly related to the domain name" (Id., para. 4(b)(i));

(2) that a respondent has 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 [the respondent has] engaged in a pattern of such

conduct" (id., para. 4(b)(ii)), and (3) that a respondent "by

using the domain name, … [has] intentionally attempted to attract, for commercial

gain, Internet users to [its] 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 [respondent’s] web site or location of a product

or service on [its] web site or location" (id., para. 4(b)(iv)).

Complainant has alleged that Respondent registered the "rogaine.net"

for the purposes of offering or selling it to Complainant or its competitor

for consideration in excess of Respondent’s out-of-pocket costs of registration.

There is no evidence on the record of this proceeding of any offer by Respondent

to sell the disputed domain name to Complainant or to any other party.

Complainant has presented no evidence to suggest that Respondent has attempted

to use "rogaine.net" to attract customers to its website or another

on-line location.

Complainant states that an Internet user entering the domain name "rogaine.net"

and finding no website may become discouraged and may cease searching for Complainant’s

own website, to Complainant’s detriment. Complainant has presented no legal

argument in connection with this assertion.

Respondent has failed to reply to Complainant’s complaint. It has presented

no good faith rationale for the registration of the disputed domain name. A

showing of a legitimate use of the disputed domain name might well be possible.

For example, Respondent might host a public discussion group regarding Complainant’s

product, or it might be a reseller of Complainant’s product purchased from legitimate

sources. It is not, however, the role of the Panel to speculate as to what legitimate

uses Respondent might have for the domain name that is substantially similar

or identical to Complainant’s trademark.

Complainant’s trademark "ROGAINE" is an arbitrary mark. The principal

function of this arbitrary term is to identify Complainant as the source of

a product. The mark has a substantial commercial value deriving from this function.

The public interest in keeping a term open for common use is not generally present

in respect to arbitrary marks. The principal value of "ROGAINE" lies

in its role as a product identifier, not as vehicle for conveying public information.

Respondent’s registration of "rogaine.net" has prevented Complainant

from using its trademark in a corresponding domain name. Complainant has presented

no evidence suggesting that Respondent may have engaged in a pattern of conduct

in regard to similar preclusive registrations. Respondent’s actions therefore

do not fall within the express terms of paragraph 4(b)(ii) of the Policy. The

Panel recalls, however, that the list of "bad faith" circumstances

of registration and use in paragraph 4(b) of the Policy is illustrative, not

exclusive. In the context of this case, the Panel determines that Respondent’s

registration of the domain name "rogaine.net", corresponding to the

arbitrary trademark, "ROGAINE", is an act of bad faith in respect

to Complainant’s interests in that such registration has prevented Complainant

from using its mark in a corresponding domain name, even though no pattern of

preclusive registrations by Respondent has been demonstrated. Complainant’s

trademark has an exclusive connection to a commercial product, and has limited

potential utility as a common conveyer of information. This weighs strongly

on the side of Complainant. A high preponderance of Respondent’s potential uses

of the mark would infringe upon Complainant’s rights as a trademark holder,

and Respondent has made no showing that it might intend to use the mark for

a legitimate purpose.

Complainant has thus established the third and final element necessary for

a finding that the Respondent has engaged in abusive domain name registration.

The Panel will therefore request the registrar to transfer the domain name

"rogaine.net" to the Complainant.

7. Decision

Based on its finding that the Respondent, Moreonline, has engaged in abusive

registration of the domain name "rogaine.net" within the meaning of

paragraph 4(a) of the Policy, the Panel orders that the domain name ""rogaine.net"

be transferred to the Complainant, Pharmacia & Upjohn Company.

Frederick M. Abbott

Panelist

Dated: April 19, 2000

1. See Educational Testing Service

v. TOEFL, Case No. D2000-0044, decided March 16,

2000.

2. 15 USCS § 1057(b). See, e.g., Avery

Dennison v. Sumpton, (9th Cir. 1999), 1999 U.S. App. LEXIS 19954.

3. Complainant has not indicated the date

on which it commenced use of its "ROGAINE" trademark in commerce.

However, application for registration at the U.S. PTO constitutes constructive

use, contingent on registration. (15 USCS § 1057(c))

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