Schering AG v. megalonamia

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Schering AG v. Megalonamia (this domain is for sale)

Case No. D2002-0229

1. The Parties

Complainant is Schering AG, Berlin, Germany.

Respondent is Megalonamia (this domain is for sale), San Francisco, USA.

2. The Domain Name and Registrar

The domain name at issue is <advantan.com>

The Registrar is IHOLDINGS.COM, INC., Miami, USA.

3. Procedural History

A Complaint was submitted to the World Intellectual Property Organization Arbitration

and Mediation Center (the "WIPO Center") on March 8, 2002. The

WIPO Center sent an Acknowledgement of Receipt of Complaint to the Complainant

on March 15, 2002.

On March 15, 2002, a Request for Registrar Verification was transmitted

to the Registrar, and on March 21, 2002, the Registrar confirmed that

it was in receipt of the Complaint. The Registrar forwarded at the same time

the requested WHOIS details.

A Formal Requirements Compliance Checklist was completed by the WIPO Center

and the Panel has independently determined and agrees with the assessment of

the WIPO Center that the Complaint is in compliance with the requirements of

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

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

as approved by ICANN on October 24, 1999, and the WIPO Supplemental

Rules for Uniform Domain Dispute Resolution Policy (the "WIPO Supplemental

Rules"), in effect as of December 1, 1999. The Complainant paid

on time and in the required amount the fees for a single member Panel.

On March 22, 2002, a Notification of Complaint and Commencement of

Administrative Proceeding (the "Commencement Notification") was transmitted

to the Respondent by the required means, setting a deadline of April 11, 2002,

by which the Respondent could file a Response to the Complaint.

On April 5, 2002, the WIPO Center received the Response and sent

an Acknowledgement to that effect to the Respondent.

The WIPO Center then invited Mr. Knud Wallberg to serve as Panelist in the

case, and transmitted to him a Statement of Acceptance and Request for Declaration

of Impartiality and Independence.

Having received the Statement of Acceptance and Declaration of Impartiality

and Independence from Mr. Knud Wallberg, the WIPO Center transmitted on April 12, 2002,

to the parties a Notification of Appointment of Administrative Panel and the

Projected Decision Date.

The Panel finds that the Administrative Panel was properly constituted and

appointed in accordance with the Rules and WIPO Supplemental Rules.

Both parties have after the appointment of the Panel sent further submissions

to the Panel, the other party and the WIPO Center without being required to

do so by the Panel. The Panel has decided to disregard those submissions.

The Administrative Panel has thus issued its Decision based on the Complaint,

the Response, the Policy, the Rules, and the WIPO Supplemental Rules.

4. Factual Background

The following facts are taken from the Complaint:

The Complainant is a research-oriented pharmaceutical company based in Germany

with more than 150 subsidiaries and associated companies worldwide. With 23,700 employees,

Schering AG achieved a turnover of EUR 4,4 billion in the year 2000, 89 %

of this outside Germany. Its shares are listed in New York, London, Zurich,

Geneva, Basel, as well as in Frankfurt, Berlin, Dusseldorf, Hamburg and Munich.

A copy of the Complainant's annual report for the year 2000, was provided

as Annex C.

ADVANTAN the name of a dermatology product which is manufactured by the Complainant

and sold (in many countries) world-wide. In fact, ADVANTAN is one of the Complainant's

best-selling dermatology products with global sales of EUR 26 million in 2000.

The Complainant registered ADVANTAN as a trademark with the German Patent and

Trademark Office on January 22, 1988 (registration no. DT 1 116 927).

The trademark is registered for "pharmaceutical preparations, namely preparations

for the treatment of skin inflammations and/or allergic skin diseases"

(class 05). A copy of the relevant trademark certificate was provided as Annex

D.

Based on this German trademark, an International Registration of the ADVANTAN

trademark has been certified by the World Intellectual Property Organization

on November 17, 1988. This trademark is registered for a large number

of countries. A copy of the original registration certificate and the relevant

printout of the "Romarin" trademark database were provided as Annexes E1

and E2.

Furthermore, the Complainant has registered ADVANTAN as a trademark with the

United States Patent and Trademark Office for "pharmaceutical preparations

for the treatment of inflammatory and/or allergic skin diseases" (class

05, US classes 06, 18, 44, 46, 51, 52). This trademark was registered

on August 19, 1997, with registration no. 2.880.959. A copy of this

trademark certificate was provided as Annex F.

The Complainant has registered, among others, the domain names <advantan.de>,

<advantan.net>, <advantan.info> & <advantan.biz> and is

currently preparing a website to present information about its product ADVANTAN

under these Internet addresses.

Respondent

Megalonamia was formed in January 2001, as a Sole Proprietorship by Gavin Atwood Coombs,

in the city of San Francisco, California, USA. Megalonamia is a brand identity

and naming firm. Namepharm and Alphabet Branding are subsidiary entities that

have not yet been registered as business entities.

The contested domain name was registered by Respondent on December 5, 2000.

5. Parties’ Contentions

A. Complainant

The following is taken from the Complaint:

The Domain Name is Identical or Confusingly Similar to Complainant’s Mark

The various "ADVANTAN" trademarks registered to the Complainant as

described above are essentially identical to the disputed domain name, as required

by para. 4(a)(i) UDRP.

The only difference between the <advantan.com> domain name and the "ADVANTAN"

trademark is the suffix ".com", an irrelevant distinction which does

not change the likelihood of confusion. The term ".com" means "commercial

institution" and is meant to distinguish commercial sites. It is merely

the classification of the purpose for which the domain name is being used. Therefore,

the domain name <advantan.com> is essentially identical to the Complainant's

registered trademarks for the purposes of this proceeding.

Respondent has no Legitimate Interest in the Domain Name

The Respondent has no rights or legitimate interests to the domain name.

The Respondent is not using, and has conceded that he is currently not planning

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 website currently displayed

at "http://www.advantan.com" is a standard website provided by the

Respondent's Registrar. In his various letters to the Complainant Mr. Coombs

has repeatedly confirmed that he has no projects for which he intends to use

the Domain <advantan.com>, and that he does not see any such projects

for the immediate future.

The Respondent (as an individual, business, or other organization) has never

been commonly known by the name "ADVANTAN" or by any name remotely

similar to "ADVANTAN". The Respondent is not, and never has been,

representative or licensee of the Complainant, nor is the Respondent otherwise

authorized to use the Complainant's trademarks.

Furthermore, the Respondent is not making a legitimate non-commercial or fair

use of the domain name. The Respondent has conceded that the Domain <advantan.com>

was registered for commercial purposes. According to Mr. Coombs various

letters and the Respondent's websites at "http://www.namepharm.com"

and "http://www.namepharm.com", the Respondent has registered several

thousand .com URL’s held specifically for pharmaceuticals, to be used for the

"clients" of Mr. Coombs' brand agency.

In a previous administrative Panel decision, it has been held that the mere

speculative idea for a bona fide business application of a generic domain

name does not fall within any of the circumstances listed under para. 4 (a)

UDRP as evidence of rights or legitimate interests. The mere speculation in

generic domain names without showing any demonstrable evidence of plans

for a bona fide use is not sufficient to prove legitimate interests in a domain

name. Speculation itself is not recognized under the UDRP as a legitimate interest

and the UDRP should not be interpreted to hold that mere speculation in domain

names is a legitimate interest. See Libro AG v. Na Global Link Ltd.,

WIPO case No. D2000-0186.

This disapproval of speculative domain registrations not only holds for generic

domain names, but is particularly true for domain names identical to registered

and - within the pharmaceutical sector - world-famous trademarks. In fact, the

entire UDRP would rendered useless if any potential future use by the Respondent

could be seen as a right or legitimate interest in the domain name. For this

reason, para. 4(c)(i) asks for demonstrable preparations (and not just vague

speculations) to use the domain name in order to assume a right or legitimate

interest.

Respondent Registered and is Using the Domain Name in Bad Faith

The Respondent has registered and is using the domain name in bad faith.

According to para. 4(b)(i) UDRP, the following shall be evidence of the registration

and use of a domain name in bad faith:

"Circumstances indicating that the Respondent has registered (...) the

domain name primarily for the purpose of selling (...) the domain name registration

to the Complainant who is the owner of a trade mark (...), for valuable consideration

in excess of the Respondent's documented out-of-pocket costs directly related

to the domain name."

The requested price of US$ 12,000 is clearly in excess of the Respondents'

out-of-pocket costs directly related to the Domain <advantan.com>.

The registration in the name of "megalonamia (this domain is for sale)"

alone is sufficient to prove that the Respondent registered the Domain <advantan.com>

only for the purpose of selling it.

Given the Complainant's U.S. trademark ADVANTAN described above, the Respondent

had constructive notice of this trademark registration as a matter of the United

States trademark law pursuant to 17 U.S.C. 1072.

See WIPO Administrative Panel Decisions, J. Crew International, Inc v. crew.com,

case No. D2000-0054.

The Respondent had first registered the domain name <advantan.com> on

December 5, 2000, well after the registration of the Complainant's

trademark ADVANTAN on August 19, 1997. The Respondent (that is Mr. Coombs)

operates a pharmaceutical brand agency specialized on "trademark screening"

and the registration and sale of Internet domain names. This is sufficient evidence

to conclude that the Respondent knew (or should have known) of the Complainant's

ADVANTAN trademark at the time he registered the domain name <advantan.com>.

In previous administrative Panel decisions it has been held that Respondent's

knowledge of Complainant's trademark at the time of registration of the domain

name is sufficient to suggest bad faith.

See WIPO Administrative Panel Decisions, Expedia Inc. v. European Travel

Network, case No. D2000-0137; E.

& J. Gallo Vinery v. Oak & Westmint Group, case

No. D2000-1213; National Arbitration Forum Decision, Pepsi Co, Inc. v.

Datasphere Ltd., case No. FA0102000096695.

Furthermore, in his letter of May 23, 2001, enclosed as Annex L,

the Respondent has explicitly confirmed that he had positive knowledge of the

Complainant's US trademark ADVANTAN. In spite of this knowledge, the Respondent

wrote in his letter of August 16, 2001 (Annex M), that he "will

be reserving <advantan.com> again soon". This, and the repeated offers

to sell the Domain to the Complainant sufficiently prove that the Domain was

registered (and renewed) primarily for the purpose of selling it to the Complainant

pursuant to para. 4(b)(i) UDRP.

Furthermore, the Respondent is intentionally attempting to attract, for commercial

gain, Internet users to the website currently operated at "http://www.advantan.com"

by creating a likelihood of confusion with the Complainant's mark as to the

source, sponsorship, affiliation, or endorsement of this website. This is additional

evidence of bad faith registration and use pursuant to para. 4(b)(iv) UDRP.

In fact, the Respondent is currently diverting Internet users searching for

online information on the Complainant’s ADVANTAN product to the online casinos

and gambling websites, which are currently advertised at "http://www.advantan.com".

It has already been held by an administrative Panel decision that such diversion

to virtual casino gambling sites must be considered to be for commercial purposes

pursuant to para. 4(b)(iv) UDRP.

See Administrative Panel Decisions, Inter-IKEA. v. Polanski, WIPO

case No. D2000-1614, provided as Annex [W], page 4.

B. Respondent

The following is taken from the Response:

Your domain name is identical or confusingly similar to a trademark or service

mark in which the Complainant has rights

This is the reason for Schering’s Complaint. We understand Schering’s frustration

that we created and registered the domain <advantan.com> on December 5, 2000,

before Schering thought or acted to register the domain. We have made reasonable

efforts to offer the domain to Schering resulting from our discovery on April 18, 2001,

several months after Megalonamia’s registration of <advantan.com>, that

Schering had registered <advantan.org> Our first communication to Schering

was via email on April 18, 2001, the same day we discovered Schering

had reserved <advantan.org>. On May 23, 2001, while researching

the background of the name Advantan as used by Schering, we discovered Schering’s

trademark interest in class 5. On this same date we contacted Schering’s trademark

attorney in New York City, referencing our discovery of Schering’s trademark

for an "Advantan" pharmaceutical product.

The registration of <advantan.org> and our discovery of Schering’s trademark

for Advantan in class 5 indicated to us that perhaps Schering would be interested

in using the <advantan.com> domain, a name and domain that we created

independent of any knowledge of the Schering product Advantan and through a

creative means that will be described in detail later in this document.

You have no rights or legitimate interests in respect of the domain name

Megalonamia does have a legitimate right, as we are a naming company. We created

the name Advantan on December 5, 2000, and registered <advantan.com>

the same day, among other names that we created that day, to use for future

client naming jobs and for our own purposes. Please see attachment B. I also

have a personal interest in the name "Advantan" and the <advantan.com>

domain, as I plan to form Advantan Real Estate Brokerage in California this

summer.

Your domain name has been registered and is being used in bad faith

Megalonamia created the name Advantan independent of any knowledge of Schering’s

Advantan pharmaceutical product, and we will provide material evidence to support

this fact later in this document. <advantan.com> and all other domain

names owned by Megalonamia have never been registered in bad faith. Both the

English and German languages are teutonic languages, so it is quite logical

to expect that the same name could be created by separate individuals or entities

independently of the other. Further, there is a popular saying that reminds

us that "there is nothing new under the sun." "Advance"

and "Advantage" are the English words/word stems that we used to create

names such as "Advancian" and "Advantan". This is how we

came to create the name "Advantan" and how we created all of the other

names that we have registered. English words/word stems + "branded"

endings.

6. Discussion and Findings

According to Paragraph 15(a) of the Rules, the Panel shall decide a Complaint

in accordance with the Policy, the Rules and any rules and principles of law

that it deems applicable.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of

the following:

1) 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

2) that the Respondent has no rights or legitimate interests in respect of

the domain name; and

3) that the domain name has been registered and is being used in bad faith.

Identical or Confusingly Similar

The Complainant’s mark ADVANTAN is registered and has been used in many countries

around the world including in the home country of Respondent USA.

The domain name <advantan.com> contains the mark in its entirety with

the addition of the gTLD denomination .com.

The domain name is thus identical to the trademark in which the Complainant

has rights.

The requirements set out in the Policy, Paragraph 4(a)(i) are therefore fulfilled.

Legitimate Interest

The Complainant has not licensed or otherwise permitted the Respondent to use

its trademark or to apply for any domain name incorporating the mark.

Further, the Respondent has not demonstrated that he has any prior rights in

the domain name. No evidence has been put before the Panel that shows that Respondent

has made any demonstrable preparations to use the domain name before the filing

of the Complaint, or that he was commonly known by the domain name before that

time.

Respondent now claims that he intends to use the domain name for a real estate

brokerage that he intends to establish this summer. No concrete evidence on

these business activities has been provided, and this claim can thus not constitute

a defense for the purpose of these proceedings.

In addition, the Panel wants to note that this allegation or the fact that

Respondent has registered a series of other domain names, some of which may

not conflict with others trademark rights does not in itself constitute a legitimate

interest for the purpose of this case.

The requirements of the Policy, Paragraphs 4(a)(ii) are also considered fulfilled.

Bad Faith

Paragraph 4(a)(iii) of the Policy further provides that the Complainant must

prove registration and use of the domain name in bad faith. Paragraph

4(b) sets out, by way of example, the kind of evidence that may be put forward.

Respondent claims that he had no knowledge of Complainant’s mark when he registered

the domain name. The name was allegedly created and registered by Respondent

at the same time as a series of other coined names. However, it is undisputed

that Respondent approached Complainant and offered to sell the domain name and

that Respondent actually referred to Complainant’s trademark rights in the said

letter. No exact and credible information has been put forward by Respondent

that explains how this knowledge of Complainant’s rights came about, but since

Complainant’s mark was registered in the US at the time of the registration

of the contested domain name, the existence of the mark was public knowledge.

The Panel also notes that Respondent describes his business as a brand identity

and naming firm. In describing his business Respondent also says that he registers

domain names "to use for future client naming jobs or for our own purposes".

Respondent thus clearly indicates that he must have knowledge of how to "clear"

possible new names against existing rights including existing trademark rights.

Weighing the evidence before it the Panel therefore concludes that the Complainant

has proved that the Respondent was acting in bad faith pursuant to Paragraph

4(a)(iii) of the Policy. Reference is made to WIPO

Case D2000-0028 and WIPO Case D2001-1384.

7. Decision

In view of the above circumstances and facts the Panel finds that the domain

name registered by the Respondent is identical to the trademark in which the

Complainant has rights, that the Respondent does not have any rights or legitimate

interests in respect of the domain name, and that the domain name has been registered

and is being used in bad faith.

Consequently, the Panel decides that the domain name <advantan.com> be

transferred to the Complainant.

Knud Wallberg

Sole Panelist

Dated: April 26, 2002

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