N.V. Organon v. Karznik, David

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

N.V. Organon

v. Karznik, David

Case No.

D2002-0374

1. Parties

The Complainant is N.V.

Organon, Kloosterstraat 6, 5349 AB Oss, The Netherlands.

The Respondent is Karznik,

David, Pretrova, Wroclaw 5548, Poland.

2. Domain Name and Registrar

The Domain Name that is

the subject of this Complaint is <decadurabolin.net> ("the Domain

Name").

The Registrar of this Domain

Name is Tucows Inc., ("the Registrar").

3. Procedural History

This dispute is to be resolved

in accordance with the Uniform Domain Name Dispute Resolution Policy ("the

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

Rules") approved by the Internet Corporation for Assigned Names and Numbers

(ICANN) on October 24,1999, and the WIPO Supplemental Rules for Uniform Domain

Name Dispute Resolution Policy (" the Supplemental Rules").

The WIPO Arbitration and

Mediation Center ("the Center") received the Complaint of Complainant

by e-mail on April 22, 2002 and in hard copy on April 25, 2002 (original) and

April 30, 2002 (four copies), in which the Complainant, for the reasons described

in the Complaint, in accordance with Paragraph 4(i) of the Policy, requests

the Administrative Panel issue a decision that the Domain Name be transferred

to the Complainant.

The Center, after acknowledgment

of receipt of Complaint on April 24, 2002, transmitted to Registrar a Request

for Registrar Verification on April 24, 2002 and obtained verification on April 25,

2002 that this Domain Name is registered with Tucows Inc., that the Respondent

is the current Registrant of the Domain Name, that the Registrant of this domain

name is Karznik, Pretrova, Wroclaw 5548, Poland, the administrative, technical

and billing contact is Karznik, David, Pretrova, Wroclaw, 5548, Poland. The

Registrar further confirmed that the Policy applies to the Domain Name, that

the Domain Name will remain locked during the pending administrative proceeding,

that the Registration Agreement is in English and that the Domain Name Registrant

submitted in his Registration Agreement to the jurisdiction at the location

of the principal office of the Registrar.

Having checked the Complaint,

the Center issued on April 26, 2002 a Complaint Deficiency Notification and

drew the Complainant’s attention to the obligation that any submission by Complainant

to the Center, that was required as a result of this notification, must be copied

to the Respondent in accordance with Rules, Paragraph 2(b) and 2(h), as well

as to the concerned Registrar. After receipt of the Amended Complaint the Center

verified that Complaint satisfied the formal requirements of the Policy, Rules

and Supplemental Rules, that payment by the Complainant in the required amount

to the Center had been made. The Center issued a Notification of Complaint and

Commencement of Administrative Proceeding on May 1, 2002, marking the formal

date of the commencement of the administrative proceeding as May 1, 2002. Deadline

for sending of the Respondent’s Response to the Complainant and Center was May 21, 2002.

Having received no Response

from the Respondent within the time set in this Notification of Complaint and

Commencement of Administrative Proceeding, the Center issued a Notification

of Respondent Default on May 24, 2002.

In accordance with Paragraph

6(f) of the Rules, the Center on June 21, 2002 transmitted to the parties a

Notification of Appointment of Administrative Panel and Project Decision Date

in which the parties were notified that an Administrative Panel has been appointed

in above referenced case, consisting of a single member: Dr. Aleš Vokálek

and that in accordance with Paragraph 7 of the Rules the above Panelist has

submitted a Statement of Acceptance and Declaration of Impartiality and Independence

to the Center.

Absent exceptional circumstances,

the Administrative Panel has been required to forward its decision to the Center

by July 5, 2002, in accordance with Rules, Paragraph 15.

4. Factual Background

The Complainant asserted

and provided evidence in support of, and the Administrative Panel finds established,

particularly the following facts.

Complainant’s Activities

Since 1960 he Complainant

is the owner of word trademark registration DECA-DURABOLIN and word trademark

registration DECADURABOLIN in nearly 50 countries all over the world, including

Poland. These trademarks are applied mostly for medicine and pharmaceutical

preparations for human use.

Respondent’s Activities

The Respondent is the current

Registrant of the Domain Name <decadurabolin.net> with Tucows Inc. The

Policy applies to this Domain Name.

Without permission or authorization

from Complainant, Respondent has developed a Web site associated with the Domain

Name to advertise and make offers to sell Complainant’s products and has used

in it the trademarks DECADURABOLIN and DECA-DURABOLIN.

5. Parties’ Contentions

Complainant

Complainant contends that

Domain Name <decadurabolin.net> of the Respondent is identical or confusingly

similar to Complainant’s registered Trademarks DEKADURABOLIN and DEKA- DURABOLIN,

that Respondent has no right or legitimate interests in respect of this Domain

Name and that such Domain Name was registered and is being used in bad faith.

A number of arguments are

developed by Complainant, as summarized in section 4 above, and several evidences

have been filed in support of these arguments.

Consequently, the Complainant

requests the Administrative Panel appointed in this administrative proceeding

issue a decision that this Domain Name be transferred to the Complainant.

Respondent

Respondent did not submit

a response within the specified time period.

6. Discussion and Findings

Paragraph 4(a) of the Policy

sets out three elements which must be present for a proceeding to be brought

against the Respondent, and which the Complainant must prove to obtain a remedy.

The Complainant must prove

that each of the following three elements are present:

i) that Respondent’s

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

has been registered and is being used in bad faith.

Identity or Confusingly

Similarity of Domain Name and Trademark

Complainant has filed copies

registration certificates proving the registration of trademarks DECA-DURABOLIN

and DECADURABOLIN in numerous countries. Identicality between the Domain Name

and trademarks is decisive. Particularly in reference to international registration

No. 231.160 of word trademark DECADURABOLIN, in 17 countries, since April 29,

1960, for medicine and pharmaceutical preparations for human use. Likewise the

Domain Name is confusingly similar to the registered trademark DECA-DURABOLIN

in Canada, Germany, the Benelux, the United Kingdom and the United States of

America.

As these trademarks are

word trademarks, from the point of view of identicality or confusingly similarity,

it is not relevant that some letters of the word "decadurabolin" are

in lower case or upper case.

Therefore, Panel finds

that requirement of the Policy Paragraph 4(a)(i) is satisfied.

Rights or Legitimate Interests

in Respect of the Domain Name

Paragraph 4(c) of the Policy

identifies circumstances which, in particular but without limitation, if found

by the Panel to be proved, based on its evaluation of all the evidence presented,

shall demonstrate the Respondent’s rights or legitimate interests in the Domain

Name for purpose of Paragraph 4(a)(ii).

Having received no response

from the Respondent within the time set in the Notification of Complaint and

Commencement of Administrative Proceeding, the Panel is of the opinion that

the Respondent has not provided evidence of circumstances of the type specified

in Paragraph 4(c) of the Policy, or of any other circumstances giving rise to

a right or legitimate interests in the Domain Name.

According to Paragraph

5(e) of the Rules, if the Respondent does not submit a response, in the absence

of exceptional circumstances, the Panel shall decide the dispute based upon

the Complaint.

For these reasons the Panel

is of the opinion that the Respondent has no rights to or legitimate interests

in respect of the Domain Name <decadurabolin.net>.

Domain Name Registered

and Used in Bad Faith

Paragraph 4(c) of the Policy

specifies that for the purposes of Paragraph 4(a)(iii), the following circumstances,

in particular but without limitation, if found by the Panel to be present, shall

be evidence of the registration and use of domain name in bad faith:

(i) circumstances indicating

that domain name has been registered or acquired by Respondent primarily for

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

to the Complainant who is the owner of the trademark or service mark or to a

competitor of the Complainant, for valuable consideration in excess of Respondent’s

document out-of-pocket costs directly related to the domain name; or

(ii) Respondent has

registered the domain name in order to prevent the owner of the trademark or

service mark from reflecting the mark in a corresponding domain name, provided

that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has

registered the domain name primarily for the purpose of disrupting the business

of a competitor; or

(iv) Respondent by using

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

Internet users to its web site or other on- line location, by creating a likelihood

of confusion with the Complainant’s mark as the source, sponsorship, affiliation,

or endorsement of Respondent’s web site or location of a product or service

on its web site or location.

Respondent registered the

disputed Domain Name and developed a Web site associated with this Domain Name

to advertise and make offers to sell Complainant’s products. Complainant has

proved this through copies of Respondent’s Web site displayed at <www.decadurabolin.net>.

In this way Complainant has proved that Respondent has intentionally attempted

to attract, for commercial gain, Internet users to its Web site.

Therefore the Panel determines

that this fact constitutes bad faith within the meaning of Paragraph 4(b)(iv)

of the Policy.

7. Decision

The Panel decides that

the Complainant has proved each of the three elements in Paragraph 4(a) of the

Policy and finds that the Domain Name is identical and /or confusingly similar

to Complainant’s Trademarks, that the Respondent has no rights and no legitimate

interests in respect of the Domain Name and that the Domain Name has been registered

and used by Respondent in bad faith.

Accordingly, the Panel

requires that the registration of the Domain Name <decadurabolin.net>

be transferred to the Complainant, N.V. Organon.

Aleš Vokálek

Sole Panelist

Dated: July

3, 2002

More cases by this complainant

• N.V. Organon v. Johnatan Johnston — D2001-1077 · decadurabolin.org · Transfer · 16 Oct 2001
• N.V. Organon v. Miha Rozic; n/a — D2001-1076 · deca-durabolin.org · Transfer · 16 Oct 2001