Biogen, Inc. v. SRI Tech Consulting

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Biogen,

Inc. v. SRI Tech Consulting, Inc.

Case

No. D2001-0444

1. The Parties

The Complainant: Biogen,

Inc., 14 Cambridge Center, Cambridge, MA 20142, United States of America.

The Respondent: SRI Tech

Consulting, 1208-320 Tweedsmuir Ave., Toronto, M5P 2Y3 Canada (previously

of 2275 Huntington Drive #207, San Marino, CA 91108, United States of America).

2. The Domain Name and

Registrar

The domain name in issue

<amevive.com> (hereafter "the domain name").

The domain name was registered

with NameSecure.com, 2190 Meridian Blvd, Concord, CA 94520, United States of

America.

The domain name was registered

on January 16, 2001.

3. Procedural History

(1) The Complaint in

Case No. D2001-0444 was filed in email form on March 27, 2001, and

in hardcopy on March 29, 2001.

(2) The WIPO Arbitration

and Mediation Center has found that:

- The Complaint was

filed in accordance with the requirements of the Rules and Supplemental Rules

for the Uniform Domain Name Dispute Resolution Policy;

- Payment for filing

was properly made;

- The Complaint complies

with the formal requirements;

- The Complaint was

properly notified in accordance with the Rules, paragraph 2(a);

- A Response to the

Complaint was filed with the Center on May 15, 2001;

- The Complainant filed

an additional statement, as a "Reply" to the Response;

- The Administrative

Panel was properly constituted.

As Panelist, I accept these

findings.

(3) As Panelist, I submitted

a Statement of Acceptance and Declaration of Impartiality and Independence.

(4) There have been

neither further submissions nor communications from the Complainants and Respondent,

or their representatives, after the appointment of the Panel.

(5) No extensions have

been granted or orders issued in advance of this decision to the parties.

(6) The language of

the proceedings is English.

4. Factual Background

A. The Complainant and

its Marks

The Complainant is a pharmaceutical

manufacturer, and markets a pharmaceutical product under the name "AMEVIVE".

On July 6, 1998, the Complainant filed an intent-to-use trademark application

with the United States Patent and Trademark Office for the mark "AMEVIVE",

U.S. Application Serial No. 75/514,383, in international class 5, this application

was in connection with pharmaceutical preparations for use in the treatment

of dermatological disorders, autoimmune disorders, inflammatory disorders, and

psoriasis. The mark was published for opposition on June 29, 1999. On February

22, 2001, the Trademark Office accepted the Complainant’s Statement of Use which

claimed a date of first use of the mark in commerce as August 29, 2000. The

Complainant also has a trademark application pending in Canada for AMEVIVE (in

the same class for a similar claim) which was filed July 10, 1998. In addition

to the United States and Canada, Complainant has pending applications in numerous

countries for the AMEVIVE mark.

B. The Respondent

The Respondent is SRI TECH

CONSULTING, INC., of 1208-320 Tweedsmuir Ave., Toronto, M5P 2Y3 Canada. Its

previous address was, according to the Whois database of its registrar, 2275

Huntington Drive #207, San Marino, CA 91108, United States of America.

According to the Response, it is an information technology consulting company

incorporated in Ontario, Canada since 1999. On February 12, 2001, the Respondent

applied for the mark, "AMEVIVE.COM" in Canada for "Computer software",

in International Class 9, and "Computer consultation services", in

International Class 42.

C. The Domain Name

The domain name resolves

to a placeholder site, which contains the following text: "amevive.com.

Coming Soon...For all your sourcing needs in information technology ERP, Wireless

services, Java, EJB. SRI-Tech@usa.net"

5. Parties’ Contentions

A. The Complainants’

assertions

The Complainant submits

that the Respondent's domain name is identical or confusingly similar to the

Complainant’s mark for the following reasons:

· The "AMEVIVE.COM"

domain name owned by the Respondent is identical and confusingly similar to

the Complainant’s trademark for "AMEVIVE" in which the Complainant

has rights. The Complainant uses the "AMEVIVE" trademark in connection

with various pharmaceutical preparations and believes that consumers searching

for information related to the Complainant or its "AMEVIVE" product

would become confused as to source or affiliation if such consumers encounter

the website owned by the Respondent and/or assume the Complainant has no website

or product by the AMEVIVE name.

The Complainant submits

that the Respondent has no legitimate interest or rights in the domain names

for the following reasons:

· Complainant had owned

the domain name <amevive.com> and inadvertently allowed it to lapse and

expire.

· Upon the Complainant’s

information and belief, prior to the Complainant’s <amevive.com> domain

name expiring, the Respondent had no business in which it used or incorporated

the term "AMEVIVE."

· Once the domain name

became available for registration, the Respondent quickly rushed to register

it as soon as possible.

· The Respondent registered

the domain name <amevive.com> on January 16, 2001.

· As of March 19, 2001,

the site still remains inactive with only a message that reads as provided above

in section 4.C. The e-mail link listed on the website does not properly function,

thereby denying an individual the opportunity to ascertain any further information

regarding the website.

· Therefore, based on

the foregoing, the Complainant believes that the Respondent has no rights or

legitimate interests in respect of the domain name and has registered such for

the reasons alleged in the complaint.

The Complainant submits

that the Respondent registered the domain name and is using it in bad faith

for the following reasons:

· The Respondent registered

the domain name with the intent of selling, renting or otherwise transferring

the domain name registration to the Complainant. The Complainant filed an intent-to-use

trademark application for "AMEVIVE" on July 6, 1998, thereby placing

third parties on constructive notice of the Complainant’s intent-to-use the

"AMEVIVE" mark in commerce. The Complainant’s AMEVIVE mark began to

achieve publicity as early as October 5, 1998, and the Complainant

was the preceding owner of the AMEVIVE.COM domain name before inadvertently

letting such expire. The Complainant filed a Statement of Use which was accepted

by the Trademark Office on February 22, 2001, which asserted August 29, 2000,

as the date of first use in commerce. The Respondent registered the domain name

on January 16, 2001. By this date, Complainant’s AMEVIVE mark had

been the subject numerous press pieces. The Complainant’s filing date and date

of first use in commerce of the mark "AMEVIVE" predates the Respondent’s

domain name registration date. Although initially approached by the Complainant

concerning transfer of the domain name, the Respondent was aggressive in seeking

a purchase offer from the Complainant. The Respondent is not currently using

the mark in a commercial sense as the site remains under construction. On February 5,

2001, a search of the domain name on Register.com’s Whois database revealed

that the Respondent’s business address was at: 2275 Huntington Drive, #207,

San Marino, CA, U.S.A., 91108. A recent investigation of the California Secretary

of State records revealed no indication that Respondent had registered with

that Office. On March 21, 2001, a search of the domain name on Register.com’s

Whois database revealed that Respondent’s listed business address had changed

to: 1208-320 Tweedsmuir Ave., Toronto, Toronto, CA, M5P 2Y3. The Complainant

contends that the Respondent is attempting to complicate and confuse the Complainant’s

attempt to regain the domain name for the Respondent’s own financial gain as

specified above by changing its business address to outside the United States.

On February 6, 2001, counsel for the Complainant first contacted the Respondent

regarding its ownership of the domain name. Six days later, the Respondent filed

an intent-to-use trademark application for "AMEVIVE.COM" in Canada.

On March 20, 2001, the Respondent contacted the Complainant’s counsel

and stated that it was close to making a decision as to whether to pursue the

"AMEVIVE.COM" domain name and recent trademark applications and that

it thought that counsel for the Complainant was going to make an offer for the

purchase of the domain name. When the Complainant’s counsel inquired as to what

figure the Respondent might be seeking by offering some examples, the Respondent

responded that a deal could be made for $20,000. Based on the foregoing, it

is the Complainant’s belief that the Respondent had knowledge of the Complainant’s

trademark rights in "AMEVIVE" and acquired the domain name "AMEVIVE.COM"

with the expectation that the Complainant would approach the Respondent offering

to purchase such domain name.

· The Complainant asserts

that the Respondent has registered the domain name in order to prevent the Complainant

from reflecting its trademark, "AMEVIVE" in a corresponding domain

name. The Complainant’s AMEVIVE mark is unique, arbitrary, and not such a common

word that others would innocently adopt for use.

· The Complainant asserts

that the Respondent has registered the domain name primarily for the purpose

of disrupting the Complainant’s business by not allowing the Complainant to

use its "AMEVIVE" trademark in a ".com" domain name.

· The Complainant asserts

that the Respondent, by registering the AMEVIVE.COM domain name, has intentionally

attempted to attract, for commercial gain, Internet users to its website by

creating a likelihood of confusion with Complainant’s mark for "AMEVIVE"

as to source, sponsorship, affiliation or endorsement.

Accordingly the Complainant

requests that the Panel order that the domain name be transferred to the Complainant.

B. The Respondent’s

Assertions

The Respondent asserts

that the domain name is not identical nor confusingly similar to the trademark

or service mark owned by the Complainant.

The Respondent asserts

that the Complainant has failed to show that the Respondent has no rights or

legitimate interests in the domain name for the following reasons:

· The Respondent registered

the arbitrary word "AMEVIVE.COM" in good faith with the intention

of developing an information technology sourcing website. With that intention,

the Respondent applied for the "AMEVIVE.COM" trademark as detailed

above.

· The Respondent planned

to develop the website "AMEVIVE.COM" for Information Technology Professionals

and Companies. The Respondent allocated resources and time for developing the

website. The Respondent applied for the "AMEVIVE.COM" trademark in

Canada and developed a one-page mini-site describing the Respondent’s intentions

at <amevive.com> within one month from registering the domain name.

The Respondent asserts

that the domain name has not been registered by the Respondent in bad faith,

nor is it being used in bad faith. The Respondent specifically asserts:

· The Respondent registered

the arbitrary word "AMEVIVE.COM" and developed the website in good

faith with all the intention of developing information technology sourcing website.

· Further, the Respondent

asserts that the negotiations for the transfer of the domain name were initiated

by the Complainant, and that any amount suggested as compensation for the transfer

was presented by the Complainant’s representatives.

The Respondent further

asserts that the Complainant has failed to establish requisite elements under

the common law theories of "Misappropriation", "Passing Off"

and "Tarnishment." Since these claims are not relevant to a UDRP proceeding,

and are not pleaded by the Complainant, it is not necessary to deal with any

of the Respondent’s arguments in relation to these claims.

Accordingly the Respondent

requests that the Panel order that the domain name not be transferred to the

Complainant.

6. Discussion and Findings

Procedural issue

The Complainant has, in

addition to its Complaint, filed a "Reply" to the Response. Under

Rule 10.a. of the Rules a Panel is free to conduct the proceeding in such manner

as it sees fit, subject to the requirement in Rule 10.b. of the Rules that the

Parties are treated with equality and that each Party is given a fair opportunity

to present its case. The Parties’ initial filings are sufficient to give both

parties the fair opportunity to present their cases. I have therefore exercised

my discretion not to consider the Complainant’s Reply.

Substantive issues

Paragraph 4.a. of the UDRP

requires the Complainant to make out three elements:

a) The Complainant has

rights in a trade or service mark, with which Respondent’s domain name is identical

or confusingly similar (paragraph 4.a.(i)); and

b) The Respondent has

no rights or legitimate interests in respect of the domain name (paragraph 4.a.(ii));

and

c) The Respondent registered

and is using the domain name in bad faith (paragraph 4.a.(iii)).

A. The Complainant has

rights in a trade or service mark, with which Respondent’s domain name is identical

or confusingly similar.

There are two requirements

that a Complainant must establish under this paragraph; that it has rights in

a trade or service mark, and that the domain name is identical or confusingly

similar to the marks.

The Complainant submits

that the Respondent's domain name is identical or confusingly similar to the

Complainant’s mark. The basis of its claim is, essentially, that the Complainant

uses the "AMEVIVE" trademark in connection with various pharmaceutical

preparations, and believes that consumers searching for information related

to the Complainant or its "AMEVIVE" product would become confused

as to source or affiliation if such consumers encounter the website owned by

the Respondent. The Respondent denies the claim but provides no reasons for

so asserting.

The Complainant has provided

the registration documents for its AMEVIVE mark, within the US and internationally.

I conclude that the Complainant – as registered proprietor of the "AMEVIVE"

mark – has established the first requirement of this paragraph; that is, that

it has rights in a trademark.

The second requirement

is that the domain name be identical or confusingly similar to the marks. There

is no need to adopt the Complainant’s assertion of consumer confusion, since

the domain name is identical to the invented word mark, "AMEVIVE".

No further analysis is necessary.

The Complainant has shown

that it has rights in a trademark, and that the domain name is identical to

this mark. I conclude therefore that the Complainant has satisfied the requirements

of paragraph 4.a.(i) of the UDRP.

B. The Respondent has

no rights or legitimate interest in respect of the domain name.

The Complainant asserts

that the Respondent has no rights or legitimate interest in the domain name,

as required under paragraph 4.a(ii) of the UDRP. It makes a number of specific

arguments on this point, as provided above in section 5. Against this, the Respondent

argues that it has a legitimate interest in the domain name, based on its stated

intention of developing an information technology sourcing website, and its

registration of a trademark for "AMEVIVE.COM" in Canada.

The Respondent’s assertions

go to two issues. First, is the issue specifically provided for in Paragraph

4.c(i) of the UDRP. This Paragraph states that a Respondent may show rights

or a legitimate interest where,

"(i) before any

notice to you of the dispute, your use of, or demonstrable preparations to use,

the domain name or a name corresponding to the domain name in connection with

a bona fide offering of goods or services;"

The Respondent seems to

suggest that it has a bona fide, albeit nascent, business, which will shortly

emerge at the website to which <amevive.com> resolves. It is all too easy

for an abusive registrant to make spurious claims such as this, and, in the

absence of any evidence that connects the domain name to the business, it is

hard to believe that the "business" is anything other than a convenient

front. This is particularly so where the name is unusual and hardly likely to

have been adopted for the particular type of business that the Respondent argues

it is pursuing. The obvious question is why would the Respondent chose the name

"AMEVIVE" for a computer consulting business, especially where the

name of the Respondent is already established as "SRI TECH CONSULTING"?

The second issue raised

by the Respondent’s assertions is whether the trademark application for "AMEVIVE.COM"

raises any right or legitimate interest. In the ordinary course of events, a

trademark application or registration would be very good evidence of a legitimate

interest in the domain name (though of course a registered trademark is neither

necessary to establish a legitimate interest, nor is its existence completely

dispositive in favor of the Respondent). However, as with the "evidence"

of the business, the trademark registration bears the hallmarks of an attempt

to bolster an otherwise flimsy argument. The application registration was extremely

late in the day, when the Respondent must have been aware of the Complainant’s

position. Indeed the application was filed at around the time of the negotiations

and not long prior to the filing of the Complaint in this proceeding. The existence

of the Respondent’s trademark registration is not, in my opinion, sufficient

to establish its rights or legitimate interest in the domain name.

As a result I conclude

that the Respondent has no rights or legitimate interest in the domain name.

I conclude that the Complainant has satisfied the requirements of paragraph

4.a(ii) of the UDRP.

C. The Respondent registered

and is using the domain name in bad faith.

The final issue is that

of bad faith registration and use by the Respondent. For paragraph 4.a(iii)

to apply, the Complainant must demonstrate the conjunctive requirements that

the Respondent registered the domain name in bad faith and continues to use

it in bad faith.

The Complainant runs through

most of the provisions of Paragraph 4.b. of the UDRP; and asserts (1) that the

Respondent registered the domain name with the intent of selling, renting or

otherwise transferring the domain name registration to the Complainant; (2)

that the Respondent has registered the domain name in order to prevent the Complainant

from reflecting its trademark in a corresponding domain name; (3) that the Respondent

has registered the domain name primarily for the purpose of disrupting the Complainant’s

business by not allowing the Complainant to use its "AMEVIVE" trademark

in a ".com" domain name; and (4) that the Respondent, by registering

the domain name, has intentionally attempted to attract, for commercial gain,

Internet users to its website by creating a likelihood of confusion with Complainant’s

mark for "AMEVIVE" as to source, sponsorship, affiliation or endorsement.

It should be said that

this scattergun approach to pleading is not particularly helpful. This notwithstanding,

the Complainant has an extremely strong position on its first assertion. It

is hardly surprising that the Complainant's and Respondent’s accounts of the

negotiations differ. However, given the nature of the invented name of "AMEVIVE",

the lack of explanation of why the Respondent might choose this odd name, and

the accounts that negotiations took place over the sale of the name, it is clear

that the Respondent registered the domain name with the intent of selling, renting

or otherwise transferring the domain name registration to the Complainant. This

case falls squarely within the Paragraph 4.b(i) exemplar of bad faith, and I

have no hesitation in finding bad faith registration and use by Respondent in

this case.

I therefore conclude that

the Complainant has satisfied paragraph 4.a(iii) of the UDRP.

7. Decision

The Complainant has made

out all of the elements of paragraph 4.a. of the Uniform Domain Name Dispute

Resolution Policy.

Pursuant to Paragraph 4.i.

of the Uniform Domain Name Dispute Resolution Policy and Rule 15 of the Rules

for the Uniform Domain Name Dispute Resolution Policy, the requested remedy

is granted.

I hereby order that the

domain name <amevive.com> be transferred to the Complainant.

Dan Hunter

Sole Panelist

Dated: June

27, 2001

More cases by this complainant

• Biogen, Inc. — D2003-0809 · Terminated
• Biogen, Inc. v. ASC — D2003-0037 · amevivegroup.com · Transfer · 15 Mar 2003
• Biogen, Inc. v. Kel Ellis — D2002-0679 · avonex.net · Transfer · 10 Sept 2002