Elan Pharmaceuticals, Inc. v. Randy Haag

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Elan Pharmaceuticals, Inc. v. Randy Haag

Case No. D2001-0755

1. The Parties

Complainant is Elan Pharmaceuticals, Inc., a Delaware corporation with a principal

place of business at 800 Gateway Boulevard South, San Francisco, CA 94080, USA,

represented by Pattishall, McAuliffe, Newbury, Hillard & Geraldson.

The Respondent is Randy Haag, 2200 Leavenworth St. #505, San Francisco, CA

94133, USA.

2. The Domain Names and Registrar

The domain names at issue are: <myoblock.com>, <myoblock.net>,

and <myoblock.org> (the "Domain Names").

The Registrar is NameSecure.com (the "Registrar").

3. Procedural History

The World Intellectual Property Organization Arbitration and Mediation Center

(the "Center") received Elan Pharmaceuticals, Inc.’s complaint (the

"Complaint") by email on June 6, 2001, and in hard copy on June 8,

2001. On June 12, 2001, the Center sent a Request for Verification to the Registrar

requesting verification of registration data; on June 13, 2001, the Registrar

confirmed that it is the registrar of the Domain Names and that the Domain Names

are registered in the Respondent’s name. The Center verified (and the Panel

has now confirmed) that the Complaint satisfies the formal requirements of the

ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"),

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

and the Center’s Supplemental Rules for Uniform Domain Name Dispute Resolution

Policy (the "Supplemental Rules"). The Center formally commenced this

proceeding on June 14, 2001.

Notice was sent to Respondent by email and Federal Express that its Response

would be due by July 3, 2001. Though the email successfully transferred and

the Federal Express package was successfully delivered to Respondent’s address

(as filed with the Registrar), Respondent did not submit any response by the

July 3, 2001, deadline. Accordingly, on July 4, 2001, the Center notified Respondent

that it was in default. On July 11, 2001, the Center notified the parties that

it had appointed David H. Bernstein as the sole panelist in this manner, and

set July 24, 2001, as the expected date for decision. The parties have not filed

any additional submissions.

4. Factual Background

Because Respondent has not answered the Complaint, the following facts are

undisputed:

On June 9, 2000, Complainant filed an intent-to-use application to register

the trademark MYOBLOC with the United States Patent and Trademark Office ("USPTO").

According to the USPTO web site, a Notice of Allowance was issued on June 19,

2000. (Footnote 1) Complainant registered

the domain name <myobloc.com> on June 16, 2000. On December 27, 2000,

Complainant commenced sales of its MYBLOC pharmaceutical product throughout

the United States, and it has spent millions of dollars advertising and promoting

its pharmaceutical goods and services under the MYOBLOC mark.

On July 26, 2000, Respondent registered the Domain names <myoblock.com>,

<myoblock.net>, and <myoblock.org> with Registrar NameSecure.com.

On January 9, 2001, Complainant received an unsolicited email from Respondent

stating: "I am the registered owner of the domain name myoblock. It appears

that you might have an interest in acquiring this domain name for a reasonable

price. [L]et me know if you have an interest." Following an inquiry on

January 15, 2001, by Complainant ("What are you offering?"), Respondent

sent an email to Complainant on January 16 2001, offering to sell the Myoblock

Domain Names for $1,000.

5. Parties’ Contentions

Complainant asserts that the MYOBLOC mark has no meaning or significance other

than as a trademark identifying its products and distinguishing them from those

of its competitors. Complainant further claims that, by virtue of its extensive

use, advertising, and promotion, the MYOBLOC mark has become well known and

possesses a strong secondary meaning signifying Complainant and the pharmaceutical

products it offers, thereby representing valuable goodwill.

Complainant contends that Respondent registered the Domain Names at issue with

the Registrar on or around July 26, 2000, after both the filing of its application

to register MYOBLOC as a trademark and its registration of the domain name myobloc.com.

Complainant further states that Respondent’s Myoblock Domain Names are virtually

identical and confusingly similar to Complainant’s MYOBLOC mark.

Complainant alleges that the Respondent’s lack of rights or a legitimate interest

in the domain names and his bad faith in registering and using it are demonstrated

by numerous facts, including that Respondent targeted Complainant for its email

offer to sell the Domain Names; that Respondent offered to sell the Domain Names

to Complainant for consideration in excess of Respondent’s out-of-pocket costs;

that Complainant’s MYOBLOC mark has a strong reputation and is widely known

throughout the world; that Respondent obtained the Domain Names primarily for

the purpose of selling, renting, or otherwise transferring the domain name registrations

to Complainant or a competitor of Complainant; and that it is not possible to

conceive of any plausible or contemplated active use of the Domain Names by

Respondent that would not be illegitimate or unlawful.

6. Discussion and Findings

The burden for Complainant under Paragraph 4(a) of the ICANN Policy is to prove:

(i) That the domain name registered by the Respondent is identical or confusingly

similar to a trademark or service mark in which the Complainant has rights;

and

(ii) That the Respondent has no rights or legitimate interests in respect of

the domain name; and

(iii) That the domain name has been registered and used in bad faith.

A. The Domain Names are Confusingly Similar to Complainant’s Mark

Complainant has established rights in the mark MYOBLOC by virtue of its use

of the mark in commerce since December 2000. See Audiopoint, Inc. v. Folkening,

WIPO Case No. D2001-0509 (June 14, 2001). The

Domain Names, which consist of the close misspelling "myoblock," are

confusingly similar to the MYOBLOC mark. See, e.g., Alta Vista Co. v. Yomtobian,

WIPO Case No. D2000-0937 (October 13,

2000) (the domain names <altabista.com> and <altaista.com> are confusingly

similar to trademark ALTA VISTA); Oxygen Media, LLC v. Primary Source,

WIPO Case No. D2000-0362 (June 19, 2000)

(the domain name <0xygen.com>, spelled with a zero rather than an "o",

is confusingly similar to trademark OXYGEN). Accordingly, Complainant has met

its burden under the first factor.

B. Respondent Does Not Have a Legitimate Interest in the Domain Name

In the absence of a Response, it is appropriate to accept as true all allegations

of the Complaint. Talk City, Inc. v. Michael Robertson, WIPO

Case No. D2000-0009 (February 29, 2000). Accepting those allegations, it

appears that Respondent has no rights or legitimate interests in respect of

the Domain Names.

Respondent does not appear to be known as "Myoblock" and, based on

the lack of any content at the web site, does not appear to be making any fair

use of those names. Policy ¶ 4(c)(ii)-(iii). Nor does Respondent appear to be

using the domain names "in connection with a bona fide offering of goods

or services." Policy ¶ 4(c)(i). At the minimum, Complainant has made in

its Complaint a prima facie showing that Respondent has no rights to

or legitimate interest in the Domain Names, and Respondent has not rebutted

that showing. Document Technologies, Inc. v. International Electronic Communications

Inc., WIPO Case No. D2000-0270 (June

6, 2000) (once complainant makes prima facie showing of no legitimate

interest, burden of production shifts to respondent to rebut that showing, though

the burden of proof always remains on complainant). Accordingly, Complainant

has satisfied its burden of proof on the second factor.

C. Respondent Registered and Used the Domain Names in Bad Faith

Paragraph 4(b)(i) of the Policy provides non-exclusive examples of circumstances

that shall be evidence of the registration and use of a domain name in bad faith.

One of the examples specifically cited by the Policy is evidence indicating

that Respondent registered or acquired "the domain name primarily for the

purpose of selling, renting, or otherwise transferring the domain name registration"

to the Complainant or its competitor for consideration in excess of documented

out-of-pocket costs related to the domain name. Policy ¶ 4(b)(i). Respondent’s

offer to sell the domain name to the Complainant for $1,000 falls squarely within

this example and provides compelling evidence that Respondent registered and

used the domain name in bad faith, with the intent specifically to target Complainant.

See Stanford Microdevices, Inc. v. Sheryl Morace, WIPO

Case No. D2001-0382, May 13, 2001) (respondent’s offer of sale of domain

name justifies an inference that she registered and used the domain name in

bad faith).

7. Decision

Complainant has met its burden of proof under Paragraph 4 of the Policy. The

domain names <myoblock.com>, <myoblock.net>, and <myoblock.org>

are confusingly similar to Complainant’s MYOBLOC trademark, Respondent lacks

a legitimate interest in those domain names, and Respondent has registered and

used the domain names in bad faith. Accordingly, this Panel concludes that the

domain names at issue should be transferred to the Complainant.

David H. Bernstein

Sole Panelist

Dated: July 24, 2001

Footnotes:

1. It is appropriate for Panels to take judicial notice of publicly available

facts such as this. Bass Hotels & Resorts, Inc. v. Rodgerall, WIPO

Case No. D2000-0568 (August 7, 2000), n.1. (back to text)