Solvay Pharmaceuticals, Inc. v. Philippine, Inc.; Taeho Kim

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Solvay Pharmaceuticals Inc. v. Taeho Kim and Philippine Inc.

Case No. D2002-0162

1. The Parties

The Complainant is Solvay Pharmaceuticals Inc. ("Solvay"). It is a pharmaceutical company incorporated in Georgia, United States of America (United States), having a principal place of business at 901 Sawyer Road, Marietta, Georgia, 30062, United States.

It is represented in the proceedings by Messrs Thomas F. Zych and David T. Movius, Attorneys of the firm Thompson Hine LLP of 3900 Key Center, 127 Public Square, Cleveland, Ohio 44114, United States.

The Respondents are identified in the Complaint as Taeho Kim, of 101-1213 Doklimjeilpark, 284 Wolsan 3 Dong, Namku Kwangju, Chonnam 503-233, Republic of Korea as first respondent ("Taeho Kim"), and Philippine Inc., of 303-1304 Gumhobestvill, 808 Gumhodong, Gwangju, Kwangju, 502-154, Republic of Korea, as second respondent ("Philippine Inc.").

The Respondents are self-represented in the proceeding.

2. The Domain Name and Registrar

The domain name the subject of the dispute is <estratest.com>.

The Registrar with which the domain name is registered is Iholdings.com Inc. d/b/a Dot registrar.com of 13205 SW 137th Avenue, Ste 133, Miami, Florida 33186, United States.

The date on which the disputed domain name was registered is June 10, 2001. It was then registered in the name of the first respondent Taeho Kim, but subsequently transferred to the second respondent, Philippine Inc. on February 25, 2002.

3. Procedural History

On February 19, 2002, the Complaint was received in hard copy.

On February 26, 2002, the Complaint was received by email.

On February 26, 2002, Registrar verification was requested.

On February 27, 2002, the Registrar responded to the request.

On March 1, 2002, a formal Notification of Complaint and Commencement of Administrative Proceeding was notified.

On March 21, 2002, the Respondents filed a Response by email.

On April 2, 2002, the Respondents filed a Response in hard copy.

On April 9, 2002, a Notification of Appointment of Administrative Panel and Projected Decision Date was notified.

The Panel having accepted the appointment and having considered the papers delivers the following Administrative Panel decision.

4. Factual Background

A. Complaint

Solvay is a pharmaceutical company incorporated in the United States. The precise range of products manufactured and marketed by Solvay is not stated. However, the range of products includes a hormone replacement therapy for women produced and marketed under the trademark ESTRATEST ®.

ESTRATEST is protected by US Federal Trademark No 0899086.

The trademark has been registered since September 1970.

B. Respondents

The First Respondent is presumed to be an individual. The Second Respondent, by its style, would appear to be an incorporated company. The Response suggests that it is filed on behalf of both the First Respondent and the Second Respondent. The contact on behalf of the Second Respondent is stated to be "Steve".

Email correspondence between the Respondents and the Center is in evidence and show email contact with the First Respondent. The Response document itself dated March 21, 2002, is signed "Steve" on behalf of the Respondent Philippine Inc.

No detail is given either in the Complaint or in the Response as to the identity of either of the Respondents or their precise business.

5. The Parties’ Contentions

A. Complainant

The Complaint is an insubstantial document. Regrettably it provides little real factual background as to the nature of the business of Solvay. How large the business of Solvay is cannot be discerned from the Complaint. Nor is there any evidence of the extent to which it has marketed its product ESTRATEST throughout the United States or elsewhere.

It appears as best can be established from a consideration of all the documents that Solvay is a pharmaceutical company in the United States marketing a range of products including ESTRATEST, a hormone replacement therapy product.

It is stated that Solvay has expended millions of dollars to promote the ESTRATEST trademark and goods marketed under and by reference to that trademark. In recent years the product has been promoted extensively. It is claimed that the product has attained widespread recognition as a result of which the public has come to associate the word ESTRATEST with goods and services originating from Solvay. As a result it is claimed that substantial goodwill in the trademark belongs to Solvay.

There is in evidence US registered trademark 0899086 ESTRATEST registered as of September 22, 1970 showing the current registered proprietor as Solvay Pharma Properties Inc., which can be taken to be the same entity as the Complainant. The registration appears to be current.

Solvay Pharmaceuticals relies upon its common law goodwill and its registered trademark as providing proprietorial rights to the word mark ESTRATEST.

B. Respondents

As already indicated, the Respondents give little information regarding

who they are or their background. This will be addressed more particularly

in the following section of this decision.

A relatively detailed Response has been filed. The essence of the Respondents’

contention is to allege that the Complainant is indulging in reverse domain

name highjacking ie, using the ICANN Uniform Domain Name Dispute Resolution

Policy (the Policy) in bad faith to attempt to deprive a registered domain

name holder of a domain name.

It is also contended on behalf of the Respondents that the Complainant

does not fully understand the Policy.

The Respondents claim that they have a legitimate interest in the disputed

domain name, that no bad faith exists and in any event, that there is a

proper explanation for their choice of the name Estratest.

The Respondents contend first that the word Estratest is a corruption of

part of the surname of the thirteenth Philippine President, Joseph Estrada

and the suffix to the name "- test" is the ordinary English use

of that word suggesting an inquiry.

Next it is contended for the Respondents that Estratest is in any event

generic or descriptive being a common combination of two English words used

by a variety of businesses. It is claimed that there are many such uses

of the word mark ESTRATEST throughout the world although no examples of

such have been given.

In essence, the Respondents claim that they established the disputed domain

for the purposes of providing a criticism of former Philippine President

Estrada even though the intentions to set up a website for that purpose

never eventuated. For various reasons the site was not so used and the Respondents

made the decision to allow the site to default to pornographic sites.

Finally, the Respondents contend that the reason the Complaint has been

brought is as a result of the request from the Complainant that the disputed

domain name be transferred for valuable consideration but that this request

was refused by the Respondents.

It is stated that the Complainant has not made out its case under any of

the grounds in paragraph 4(a) of the Policy.

6. Discussion and Findings

The Policy adopted by ICANN is directed towards resolving disputes concerning

allegations of abuse of domain name registrations.

As part of the process the Complainant must provide evidence and submissions

in supports of its Complaint. The expectation is that the Complainant will

provide such supporting evidence as is necessary to make out its case under

all three heads in paragraph 4(a) of the Policy. The Respondent is given

a full opportunity to respond.

In this instance the Respondents have responded. Whilst it is not considered

that conventional common law notions of burden of proof have any particular

relevance under the Policy, it is accepted that a Complainant must make

out its case as also must a Respondent. No particular burden lies either

way.

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

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

of domain name registration and to obtain relief. These elements are that:

(i) The Respondent’s 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 Respondent’s domain name has been registered and is being used in

bad faith.

Each of the three elements must be proved by a Complainant to warrant relief.

The First Ground

As to the first ground, identical or confusing similarity, Solvay contends

that the disputed domain name <estratest.com> is confusingly similar

with its common law trademark and its registered trademark ESTRATEST. It

asserts that the only differences are the addition of the suffix <.com>

to the trademark, which is a difference of no significance.

This ground does not require consideration in this decision as the Respondents

concede (and properly so) that the disputed domain name is (save for the

suffix .com) identical to the Complainant’s registered trademark ESTRATEST.

Accordingly, Ground (1) is made out.

The Second Ground

The second ground requires the Complainant to establish that the Respondents

have no rights or legitimate interest in respect of the disputed domain

name.

Solvay relies essentially on its advertising and promotion of the mark,

its expenditure in that regard in several millions of dollars, and its production

and sale of goods to which the mark has been affixed. The mark has been

registered since 1970.

The precise quantity of product sold is not stated but is presumed to be

significant. The markets in which the goods have been sold or advertised

for sale is not stated, but it is assumed to be beyond the borders of the

United States.

It also appears, although it is difficult to discern precisely the detail,

that Solvay has produced and continues to produce written material in relation

to its product Estratest and that such material is available to consumers

and potential consumers who wish to inquire about the product and learn

more detail about it and its suitability.

Solvay expresses a particular concern that as the disputed domain name

and associated website resolve to a pornographic site, that inquiries from

women may be directed to the Respondents’ website, only for those inquirers

to access the Respondents’ pornographic sites. Solvay claims that this is

objectionable and tarnishing of the reputation of Solvay and the goodwill

which it owns in the trademark ESTRATEST.

There can be no doubt that such tactics, if established, can have potentially

a seriously damaging effect on a trademark.

The Respondents assert that Ground 2 is not made out. The Respondents say

that they have been engaged in trade business in the Philippines and Korea

for 10 years on the worldwide web. The details of that business are not

stated in the Response.

The disputed domain name was registered on June 10, 2001. As

at that date Solvay’s trademark had been registered for over 30 years and

claimed use for some 35 years.

The Respondents’ principal defence on this ground is to submit that the

domain name comprises a generic or descriptive word or combination of words.

The submission is made that numerous companies have used the word mark ESTRATEST

for a variety of goods and services pursuant to registered US trademarks

which have expired. No detail whatever of this is given beyond the bald

assertion.

This submission contains an inherent contradiction and misunderstands fundamental

trademark law. A trademark may be registered for goods or services so as

to indicate a connection in the course and trade between the goods and services

and the person claiming to be the proprietor of the mark used in connection

with those goods or services. There is a requirement that the mark be distinctive.

Generic or purely descriptive words will not qualify for registration absent

considerable evidence from the applicant proprietor that the otherwise generic

or descriptive mark has come to be associated exclusively with the one entity

or source being the applicant proprietor.

If there have been previous registered US trademarks which have expired,

it necessarily follows that what the Respondents claim in such instances

to be generic or descriptive marks have in fact acceded to registration

as trademarks in the United States.

In the present case the US Trademarks offices allowed Solvay’s mark to

proceed to registration. In most jurisdictions that accords a measure of

protection failing a credible challenge to the validity of that registration.

It is beyond the scope of the Policy to rule on issues such as validity

of registered trademarks. It must be taken for the purposes of the Policy

that a registered trademark has been validly registered and is enforceable.

If there are challenges to be made to the registration of the trademark

that must be done in accordance with the provisions of the domestic law

of the jurisdiction where the mark is registered.

That however is not necessarily dispositive. To the extent that the mark

is not clearly an invented word or a device it may be easier for a Respondent

to establish a legitimate interest if it can show that it is in some way

a business that makes a proper or genuine use of the same or similar mark.

Solvay’s mark is presumably a corruption or portmanteau word, the prefix

of which is probably an abbreviation of oestrogen. Yet the prefix is estra

not oestro. It may be that this is because it contains the hormone Estradiol.

The suffix however is "-test" which may be a corruption of progestogen

or testosterone as the trademark registration document (see Complaint Annex

3) states that the goods in respect of which the registration has been obtained

are a male and female hormone tablet.

It would have been helpful if the Complainant in its Complaint had given

more detail as much of what has to be relied upon in the Panel’s decision

has to be based on inference from the established facts and access to otherwise

publicly available documents.

The Respondents claim that its choice of the domain name stem "estratest"

is due to its desire to set up a web site designed to contain relevant information

about former Philippine President Joseph Estrada. The suffix "test"

was intended to convey the message that the site would contain information

that was critical of the former President.

If that is so the question must be asked why the domain name is not "estradatest".

Nor is it registered with a host in Korea or the Philippines in which case

it would secure that country’s specific designator after the domain name.

Nor is it explained by the Respondents why in June 2001, they chose

to set up a website in relation to the thirteenth Philippine President who

lost office in January 2001. The former President was popularly known

as "Erap" not "Estra". Any person wishing to inquire

into the former President’s activities, even the corruption charges brought

against him, would likely use a search engine or web crawler by typing in

the word "Estrada" or "Erap" rather than "Estra"

or even less likely "Estratest".

The Respondents’ explanation is reminiscent of that discussed by Justice

Casey in a not dissimilar case involving the common law tort of passing

off, Esanda Limited v. Esanda Limited (1983) 2 IPR 182 (High Court,

New Zealand).

It is also relevant under this ground to consider the Respondents’ history

with domain names, particularly that of the First Respondent. There is no evidence

in this case of domain name warehousing by either of the Respondents. The Complaint

includes (refer Annex 8) to the earlier decision in Mucos Emulsions GmbH

and Another v Esex.org and Kim Taeho, WIPO

Case No D2000-1513 decided on April 12, 2001. In that case the

Second Respondent was Kim Taeho. The decision itself shows that the Respondents’

details as extracted from the Whois database were 101-1213 Doklimjeilpark, 284

Wolsan 3 Dong, Namku, <esex.org>, kwangju, Chonnam 503-233, Republic of

Korea.

It is noted that these details bear a remarkable similarity to the contact

details for the present First Respondent. Save for the inversion of the order

of the names the present First Respondent’s name is the same as that of the

Second Respondent in WIPO Case No. D2000-1513.

A brief digression into the facts in WIPO

Case No. D2000-1513 is necessary. In that case the disputed domain name

was <wobenzym.com>. The Complainants were a German company and an Arizona

corporation. The First Complainant distributed worldwide certain enzymatic products

under and by reference to the trademark WOBENZYM. It also dealt in other related

pharmaceutical, nutritional and dietary products. WOBENZYM was registered as

a trademark in various jurisdictions including the United States.

It will immediately be seen that this, too, is a portmanteau word the suffix

of which is the descriptive word "enzyme" without the capital

letter E. Yet it had acceded to trademark registration just as has ESTRATEST

in the instant case.

In WIPO Case No. D2000-1513 the Respondent

Kim Taeho was administrative contact for the first respondent, the registrant

<esex.org>. The disputed domain was transferred, just after notification

of the Complaint, from the First Respondent to another registrant <esex.org>

but still with Kim Taeho as the administrative contact.

In WIPO Case No. D2000-1513 the Panelist

found no legitimate interest and registration and use in bad faith. Given the

striking similarity and addresses, the proper inference that Kim Taeho and Taeho

Kim are one and the same person, the fact that WIPO

Case No. D2000-1513 involved the domain name claimed by a Complainant in

the broad pharmaceutical industry and that the Complainant in the instant case

is a pharmaceutical company, it is only reasonable to assume that the interest

that the present Respondents have in the disputed domain name is other than

legitimate.

That would of itself be sufficient to dispose of Ground 2. However, the

evidence goes yet further. The Respondents’ explanation is that the set

up of the disputed domain name and associated website by them was for the

purposes of posting information critical of former President Estrada. Yet

no such material ever eventuated. The Respondents say that due to the well-known

failure of the Internet and IT markets and the Respondents’ own lack of

time, this information service was never developed.

To profit from the website the Respondents therefore elected to have it

resolve to pornographic sites. That being so, the question arises why the

Respondents did not change the name of the site from <estratest.com>,

to something that would more logically be accessed by someone seeking to

link to a porn site.

Whilst the matters referred to above are considerably more extensive than

as are articulated in the documents filed, especially the Complaint, the

consideration of all the material and that available to the Panelist from

publicly accessible databases and using common general knowledge and established

legal principles, demonstrates that the Respondents do not have any rights

to or legitimate interests in the disputed domain.

Finally, under this Ground, two remaining matters relied upon by the Respondents

must be referred to.

First, under this Ground the Respondents claim that they have never heard

of the Complainant and that the Complainant’s mark is not known worldwide.

As previously indicated in this decision the extent of the Complainant’s

reputation within the United States is not made out let alone its reputation

beyond the United States. Nevertheless, the fact remains that for the reasons

set out above in the discussion under this ground, it cannot be pure happenchance

that these Respondents chose the mark "Estratest". Their explanation

for its choice simply lacks credulity.

On this particular issue the Respondents make a valid point. Were it not

for the Response itself the Complaint would have been dismissed by the Panelist.

The Complaint is singularly lacking in relevant detail as to the following

matters:

(a) The reputation of Solvay or the mark ESTRATEST and the product outside

the United States.

(b) Any overseas trademarks or any websites owned by Solvay.

(c) The extent of Solvay’s business activities beyond the United States.

(d) What marketing and publicity has occurred of the trademark and product

ESTRATEST beyond the United States.

(e) What knowledge of these matters might exist in Korea (or the Philippines)

and therefore the probability that the Respondents were aware of these matters.

These are all matters which are for the Complainant to establish. It cannot

simply rely upon the assertion in its Complaint, without more, that it has

a reputation and that it has expended millions of dollars promoting the

product under and by reference to the trademark. No particularity is given

in relation to the matters just set out in the subparagraphs above.

Whilst it is unusual for a Panelist to make his or her own enquiries the

Panelist in this case has accessed the worldwide web to try and find out

more about Solvay and Estratest. Two web sites were accessed – a US and

Belgian site. It is noted however that the sites state that the product

Estratest is only available in the United States.

However, it is also apparent that Solvay operates worldwide. The web sites

claim that it is one of the top 40 pharmaceutical companies in the world,

headquartered in Brussels, Belgium. It appears to have a substantial turnover

and investment in research. It also has branches and agencies in many countries

with a significant number of employees.

None of this factual information was set out in the Complaint. But, given

the Respondents’ Response and the inherently unlikely explanation for the

choice of the particular domain name, this Panelist considered whether or

not in all the circumstances it would be appropriate to call for further

evidence (see paragraph 12 of the Rules for Uniform Domain Name Dispute

Resolution Policy).

As an alternative it seemed appropriate to access the Solvay web site if

such existed. The statements on the web site, referred to above in this

decision, could not credibly be disputed by the Respondents. In all the

circumstances therefore, and in the rather unusual facts of this particular

case, the Panelist considered it appropriate to refer to this other material.

Accordingly, it seems more likely than not that the Respondents would have

been aware of the Complainant and its product Estratest.

The second point that must be mentioned is the Respondents’ reliance upon

previous Panel decisions where Panelists have refused to order transfers

of disputed domain names where the mark in question is descriptive or generic.

There is no need to over-burden this already long decision by referring

to the previous decision cited by the Respondents. Suffice to say that none

of them are applicable. All are instances where the trademark referred to

was clearly descriptive or generic (eg "coming attractions", "grocery

outlet"). The present case falls far short of falling into that category

of case where the trademark in question can truly be described as adopting

ordinary English words that are purely descriptive of the product or service

with which the mark is associated.

It therefore follows that Ground 2 is made out.

The Third Ground

The third ground requires the Complainant to establish that the domain

name has been registered and is being used by the Respondents in bad faith.

It is well established under a number of previous Panel decisions including

decisions of the present Panelist that both registration and use in bad

faith must be made out.

The Respondents contend that both grounds must be made out and they are

entirely correct in that submission.

The Complainant’s case is brief in the extreme under this ground. Essentially

it asserts (without providing strong supporting evidence) that the Respondents

must have known of Solvay’s reputation and goodwill in the mark ESTRATEST.

However, it also relies upon the transfer between respondents immediately

after a letter before action was sent.

The Complainant has put in evidence a letter sent on January 15, 2002,

(Complaint Annex 6) in which issue was taken with the disputed domain name

and the Respondents were required to cease and desist and transfer the domain

name. An attempt to forward that letter by international courier was apparently

unsuccessful and it appears as if the self same letter was sent electronically

to the First Respondent’s email address on January 28, 2002. There

is an affidavit by Mr. Movius (see Complain Annex 1 para 5) that no notification

was received that the email was undeliverable. Presumably in accordance

with conventional ISP practice, the host did not return the email as undeliverable.

It can therefore be assumed that the letter was received electronically

by the First Respondent. Within a week the disputed domain name was transferred

to the Second Respondent (see Whois database, Complaint Annex 2).

The disputed domain name was registered in June 2001. It is as at

that date that the Complainant must establish that the Respondent has registered

the domain name in bad faith. The evidence referred to in the previous section

may be relied upon here as well. It is also appropriate to refer to subsequent

events as bearing upon or indicative of the state of mind of the original

registrant when the domain was registered for the first time. The transfer

in February 2002, supports the view that the original registration

must have been in bad faith.

The trademark ESTRATEST has been registered as a trademark in the United States

for over 30 years with 35 years of actual use. The WIPO

Case No. D2000-1513 is also informative under this ground. Given that there

the same person is the present First Respondent registered a domain name properly

belonging to a pharmaceutical company leaves one with the impression that in

the instant case the First Respondent has done the same thing again. There is

no business with which the First Respondent’s name is logically associated nor

that of the Second Respondent. A porn site would not logically be registered

under such a style as <estratest.com>. There is no evidence at all of

any attempt whatever to use this site for a purpose critical or informative

of or for the purposes of disseminating information about former Philippine

President Estrada. And again, why would persons in Korea doing or seeking to

do business in the Philippines have any interest in the alleged misdeeds of

a former President who lost office over 12 months ago?

It follows that the registration of the disputed domain name was in bad

faith.

But what of use in bad faith? This too must be established under the Third

Ground. The site now (and presumably since it became live or active) resolves

to a porn site. There is no use being made of it for what was claimed to

be its original purpose.

Previous Panel decisions including decisions of the present Panelist have

stressed that use of web sites for pornographic purposes is not of itself

objectionable under the Policy. However, it does become objectionable where

the site is one which is accessible via a domain name properly belonging

to another entity which would be entitled to use the disputed domain name

and any associated web site for a legitimate purpose.

Whilst the Policy refers to and prohibits transfers of disputed domain

names after commencement of proceedings, the present transfer took place

on February 5, 2002, the present proceedings not being formally

commenced under the Policy until March 1, 2002. Nevertheless,

it seems clear on the evidence that the transfer from the First Respondent

to the Second Respondent took place just days after notification of Solvay’s

rights by its Attorneys.

Any transfer by one registrant to another must be subject to all proper

and prior claims against the transferor. No transferee can acquire any greater

right simply by virtue of the transfer alone. The transfer to the Second

Respondent is therefore ineffective for the purposes of denying Solvay its

remedies.

It therefore follows so far as both the First Respondent and Second Respondent

are concerned that use in bad faith has been made out.

It accordingly follows that both limbs of the Third Ground have been made

out.

7. Decision

For the reason set out above, the Panel finds:

(a) The domain name <estratest.com> registered by the First Respondent

and transferred to the Second Respondent is confusingly similar to a trademark

to which the Complainant has rights; and

(b) Neither the First Respondent nor the Second Respondent has any rights or

legitimate interests in respect of the domain name; and

(c) The First Respondent’s domain name was registered and is being used in

bad faith and the transfer to the Second Respondent is ineffective and amounts

to registration and use in bad faith by the Second Respondent.

Accordingly, pursuant to clause 4(i) of the Policy, the Panel requires

that the registration of the domain name <estratest.com> be transferred

to the Complainant.

John Katz QC

Sole Panelist

Dated: April 22, 2002