Biogen, Inc. (Massachusetts Corporation) v. Namesecure.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Biogen, Inc. v. Namesecure.com, Inc.

Case No. D2002-0270

1. The Parties

The Complainant is Biogen, Inc., a Massachusetts (USA) corporation with its

principal place of business in Cambridge, Massachusetts (USA). Biogen, Inc.

is represented by Roberta Jacobs-Meadway and Richard E. Peirce

of Ballard Spahr Andrews & Ingersoll, LLP of Philadelphia,

Pennsylvania (USA).

The Respondent is Namesecure.com, Inc. of Concord, California (USA).

2. Domain Names and Registrar

The domain name at issue is:

<amevive.org>

It is referred to as the Domain Name. The Registrar is the Respondent, NameSecure.com.

3. Procedural History and Jurisdiction

The WIPO Arbitration and Mediation Center (the Center) received the Complaint

on March 20, 2002, (electronic copy), and March 25, 2002,

(hard copy). The Center verified that the Complaint satisfies the formal requirement

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

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

Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental

Rules). Complainant made the required payment to the Center. The formal date

of the commencement of this administrative proceeding is April 5, 2002.

On March 28, 2002, the Center transmitted via email to the Registrar,

NameSecure.com, a request for registrar verification in connection with this

case. On March 28, 2002, NameSecure.com transmitted via email to the

Center, NameSecure.com's Verification Response, confirming that it, Namesecure.com,

Inc., is the registrant and administrative, technical, zone, and billing contact.

Having verified that the Complaint satisfied the formal requirements of the

Policy and the Rules, on April 5, 2002, the Center transmitted to

the Respondent Notification of Complaint and Commencement of the Administrative

Proceeding via post/courier and e-mail.

Respondent failed to respond to the Notification of Complaint and Commencement

of the Administrative Proceeding and the Center notified it of its default on

April 26, 2002, via email.

In view of the Complainant's designation of a single Panelist and Respondent's

default the Center invited Mr. Richard G. Lyon to serve as a Panelist.

Having received Mr. Lyon's Statement of Acceptance and Declaration of Impartiality

and Independence, the Center transmitted to the parties a Notification of Appointment

of Administrative Panel on May 6, 2002. The Projected Decision Date

was May 20, 2002. The Sole Panelist finds that the Administrative

Panel was properly constituted and appointed in accordance with the Rules and

Supplemental Rules, and that the Panel has jurisdiction over this dispute. Given

that Respondent, in its capacity as Registrar, replied to the Center's verification

inquiry, there is no doubt that Respondent received notification of this proceeding.

The Administrative Panel shall issue its Decision based on the Complaint, the

evidence presented, the Policy, the Rules, and Supplemental Rules.

4. Factual Background

The Complainant is the legal owner of the trademark AMEVIVE. The mark was registered

in July 2001, based upon an intent to use application filed in July 1998,

and Complainant’s subsequent statement of use that claimed a date of first use

of the mark in commerce as August 29, 2000. Complainant also has registrations

in 59 countries for its AMEVIVE mark, and pending applications in thirty other

countries, including Canada. The AMEVIVE mark is used in connection with pharmaceutical

preparations for use in the treatment of dermatological disorders, autoimmune

disorders, inflammatory disorders, and psoriasis.

Respondent registered the Domain Name on June 4, 2001. As of the

date of the filing of the Complaint the <amevive.org> site remains inactive,

with only the <amevive.org> name appearing in the middle of the screen,

and a link to the Respondent/Registrar's homepage. The Respondent owns and operates

the Registrar and the Registrar's website for domain name registration.

On January 5, 2002, counsel for Complainant allegedly[1]

contacted Respondent regarding its ownership of the Domain Name. On January 28, 2002,

counsel for Complainant once again contacted Respondent. Respondent replied

to neither contact. At the time of the filing of the Complaint counsel for Complainant

had yet to receive any Response from Respondent.

5. Parties' Contentions

The Complainant's contentions may be summarized as follows:

The domain in question is identical to its AMEVIVE mark, and consumers searching

for information on the Complainant and its trademarked product would be confused

by the Respondent's website.

Respondent has no rights or legitimate interests in respect to the Domain Name

because it is not engaging in any business that used or uses the term AMEVIVE,

as evidence Complainant notes that Respondent registered for the Domain Name

after the Complainant made its mark publicly known, the Respondent is not only

the Registrant of the Domain Name but also the Registrar of the Domain Name

and normally registers domain names to third parties, and because the website

using the Domain Name is inactive with only a link to the Respondent's website.

Respondent registered and continues to use the Domain Name in bad faith because

it registered the Domain Name with the intent of luring Internet users through

its own link on the website and ultimately selling, renting, or transferring

the Domain Name to the Complainant at an above-normal price[2].

This is evidenced by the Respondent's registration of the Domain Name

after the Complainant made its mark publicly known and after the date of its

first use in commerce, the lack of use of the Domain Name in a commercial manner,

and the only feature of the website being a link to the Respondent's website.

Respondent has failed to reply to the Complaint.

6. Discussion and Findings

The Complainant must prove the elements set out in paragraph 4(a) of the Policy.

These elements are as follows:

(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.

Complainant bears the burden of proof on each of these elements. Respondent's

default does not automatically result in judgment for the Complainant, however

the Panel may draw any inferences from the default that it deems appropriate.

Identity and Confusion

The Domain Name incorporates verbatim the Complainant's AMEVIVE mark. The Domain

Name is therefore identical to the Complainant's mark and is likely to cause

confusion among Complainant's customers.

Legitimate Interest

Complainant has alleged that Respondent has no rights or legitimate interests

in the Domain Name and evidence shows that Respondent's only use of the term

AMEVIVE is in the Domain Name. Since Respondent did not respond to the Complaint,

Respondent has failed to offer any evidence that it has ever used or will use

the term AMEVIVE in connection with a business or in a commercial manner, why

it needs to use the Complainant's mark, or that it has any legitimate interest

in the Domain Name. This is evidenced further by the fact that the word AMEVIVE

appears to be an invented word and not one people would legitimately choose

unless seeking to create an impression of an association with the Complainant.

Telstra Corporation Limited v. Nuclear Marshmallows, WIPO

Case No. D2000-0003. Complainant has met its burden of proof on this issue.

Bad Faith

Paragraph 4(b) of the Policy sets out nonexclusive examples of conduct that

will constitute evidence of the registration and use of a domain name in bad

faith. Sections 4(b)(iv) of the Policy provide that the following will be evidence

of bad faith:

[B]y using the domain name, you [Respondent] have intentionally attempted to

attract, for commercial gain, Internet users to your 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 your web site

or of a product or service on your web site or location.

In this case, the use of the Complainant's mark in the Domain Name lures Complainant's

customers and prospective customers to the Respondent's website. From there

the only link is to Respondent's main on-line location. Respondent is presumably

looking to gain from this increased activity on its website through increased

registrations or advertising revenues. Respondent has provided no evidence of

a good faith use of the Domain Name.

Moreover, Respondent is a domain name registrar that (in this instance at least)

used another's registered mark as a domain name for a website linked only to

its own business. If any party could be presumed to know and honor the Policy,

it is this one. Respondent's conduct in this case is more blameworthy than that

of the Respondent in Caixa d'Estalvis y Pensions de Barcelona v. Namezero.com,

WIPO Case No. D2001-0360, in which the

Panel reached a similar conclusion ("an ICANN accredited Registrar . .

. must be the first to honor the Uniform Domain Name Dispute Resolution Policy

when registering domain names under their name"). In Caixa, Respondent

Namezero, an accredited ICANN registrar, registered and held for its "members"

(a euphemism for customers) any available domain name that the "member"

requested, as part of a service by which Namezero acted as the "member's"

agent for registering and maintaining the selected domain name. Namezero's services

were openly described on its website, including a warning on its website against

the "member's" infringing another's marks. In the WIPO proceeding

it sided with the Complainant, describing to the Panel the services it offered

and professing adherence to the Policy. While there was some question regarding

the propriety of an accredited registrar's operating a service that resulted

in occasional breaches of the policy, there was at least an otherwise legitimate

business and full candor before the Panel.

In the present case, Respondent has ignored the Complaint and the proceeding,

and has engaged in a classic violation of the Policy. In these circumstances

"it is not possible to conceive of any plausible actual or contemplated

active use of the domain name by the Respondent that would not be illegitimate."

Telstra Corporation Limited v. Nuclear Marshmallows, WIPO

Case No. D2000-0003. On this record Respondent has registered and is using

the Domain Name in bad faith.

7. Decision

For the foregoing reasons, the Panel orders that the registration of the Domain

Name be transferred to the Complainant.

Richard G. Lyon

Sole Panelist

Dated: May 20, 2002

1. Although the Complaint includes various

materials as annexes, the two "contacts" referred to in the Complaint are not

included. The Panelist notes that there is no apparent reason for this omission,

and therefore gives no weight to the allegation that Complainant twice contacted

Respondent prior to initiating this proceeding.

2. Again, Complainant offers no evidence

to support this charge.