Shire Biochem, Inc.; Shire International Licensing B.V.; Shire Pharmaceuticals Group plc v. Syed Hussain

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Shire Biochem Inc.,

Shire Pharmaceuticals Group plc and Shire International Licensing B.V. v.

Syed Hussain

Case No. D2002-0453

1. The Parties

The Complainants in this administrative proceeding are: Shire Biochem Inc.,

a corporation incorporated under the laws of Canada with a principal place

of business in Laval, Québec, Canada; Shire Pharmaceuticals Group

plc, a corporation incorporated under the laws of the United Kingdom with

a principal place of business in Chineham, Basingstoke, Hampshire, United

Kingdom; and Shire International Licensing B.V., a corporation incorporated

under the laws of the Netherlands with a principal place of business in

Amsterdam, the Netherlands. The Complainants have a sufficient common interest

in the domain name in dispute for a joinder to be permissible. Each Complainant

has rights in trade marks that are partially or entirely comprised in the

domain name in dispute.

The Respondent is Syed Hussain, doing business as MIC and CPIC NET, of

Closter, New Jersey, United States of America.

2. The Domain Name and Registrar

The domain name in dispute is <shirebiochem.com>. The domain name

was registered with Bulkregister.com, Inc., of Suite 1600, 10 E. Baltimore Street,

Baltimore, Maryland, 21202, United States of America on December 11, 2000.

3. Procedural History

The complaint that is the basis of this proceeding was received by the

WIPO Arbitration and Mediation Center ("Center") by electronic

mail on May 8, 2002, and in hardcopy on May 13, 2002.

The Complainant requested a resolution of the dispute on the basis of the

Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation

for Assigned Names and Numbers ("ICANN") on August 26, 1999

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

Policy, approved by ICANN on October 24, 1999 ("Rules"),

and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution

Policy ("Supplemental Rules").

The complaint was filed in compliance with the requirement of the Rules

and the Supplemental Rules and payment was properly made. The Center notified

the Respondent of the complaint on May 17, 2002, when this administrative

proceeding was commenced. No response having been made, the Center issued

a Notification of Respondent Default on June 10, 2002. The administrative

panel was properly constituted to determine the dispute on June 17, 2002,

and the Panelist submitted a Statement of Acceptance and Declaration of

Impartiality and Independence.

4. Factual Background

Shire Biochem Inc. and Shire International Licensing B.V. are subsidiaries

of Shire Pharmaceuticals Group plc which is an international specialty pharmaceutical

company founded in 1986. Shire Biochem Inc. was formerly known as Biochem

Pharma Inc., and had been operating under that name since it was founded

in 1986. It took on its current name when it became a subsidiary of the

Shire Pharmaceuticals Group plc on May 11, 2001. This merger of

Biochem Pharma Inc. and the Shire Pharmaceuticals Group plc had

been announced on December 11, 2000, an announcement that had

received substantial publicity.

Shire Biochem Inc. is the owner of twelve Canadian and one U.S. trade mark

registrations involving the word "Biochem", acquired when the

company was known as Biochem Pharma Inc. Since the merger with Shire Pharmaceuticals

Group plc, the company has applied for the following Canadian registrations:

(i) "Shire Biochem" (application 1104505, filed on May 28, 2001,

and used in Canada since May 11, 2001); (ii) "Shire Biologics"

(application 1106771, filed on June 15, 2001); (iii) and, "Shire Life

is our Business (& design)" (application 1115657, filed on September 14, 2001).

Shire International Licensing B.V. is the owner of two U.S. trade mark registrations

involving the word "Shire" acquired before the merger with Biochem

Pharma Inc. The company is the applicant for the following Canadian trade

mark registrations: (i) "Shire" (application 1030156, filed on

September 24, 1999), (ii) and "Shire" (application 1127296,

filed on January 11, 2002, and used in Canada since January 15, 2000).

Finally, it is also the owner of registered trade marks involving the word

"Shire", or has similar applications pending, in fifteen other

jurisdictions around the world.

On February 8, 2001, Shire Biochem Inc. successfully registered

the domain name <shire-biochem.com> with Verisign, Inc., of 21355 Ridgetop Circle,

Dulles, Virginia, 20166, United States of America. However, it was unable

to register the domain name <shirebiochem.com> on the basis that it

had been registered by the Respondent with BulkRegister.com, Inc. on

December 11, 2000.

5. Parties’ Contentions

The Complainants submit that the domain name in dispute is confusingly

similar to the "Shire" and "Biochem" trade marks in

which they have rights in different countries around the world. They also

submit that the domain is confusingly similar to the combined trade mark

"Shire Biochem" in which they collectively have rights. They submit

that the Respondent has no legitimate interests in respect of the trade

name in that he is not using the name, has never been commonly known by

the name, and has not been granted any rights in respect of the Complainants’

trade marks. They claim that the registration was made in bad faith and

that this is evinced by: (i) the fact that the domain name was registered

on the day that the merger of Biochem Pharma Inc. and the Shire Pharmaceuticals

Group plc had been announced; (ii) a pattern of cybersquatting established

in twelve previous cases brought against the Respondent; (iii) and, the

fact that during a telephone conversation with a representative of the Complainants

on March 29, 2001, the Respondent offered to sell the domain name

to the Complainants for a sum clearly in excess of the Respondent’s out-of-pocket

costs directly related to the domain name.

6. Discussion and Findings

The Panel determines that the Complainants have established all of the

elements required under Paragraph 4(a) of the Policy.

A domain name which is identical or confusingly similar to a name in which

the Complainant has rights

At the date of the registration of the domain name, Shire Pharmaceuticals

Group plc had a valid registration for the word "Shire". Shire

Biochem Inc. did not have registration of the word "Biochem" per

se, but it did have registration of at least twelve Canadian marks,

and one U.S. mark, involving the word "Biochem". The domain name

may be confusingly similar to any of these registrations.

Further, it is likely that at the date of the registration of the domain

name, the Complainants could have established common law rights in the trade

mark "Shire Biochem", which is virtually identical with the domain

name (see Glaxo plc v. Glaxowellcome Ltd [1996] FSR 388).

Finally, since the date of the registration of the domain name, rights have

been established in the trade mark "Shire Biochem" which is virtually

identical with the domain name. In at least one WIPO decision, rights have been

established in marks resulting from mergers where, as here, an application to

register the name of the company resulting from the merger was made promptly

after the merger and there has been trading using the mark from the date of

the merger (CGNU plc v Tess Caffrey/WIPPYWOW, WIPO

Case No. D2000-0769).

The Respondent has no rights or legitimate interests in the domain name

The Respondent is not using the domain name, has not ever been commonly

known by the domain name and has not ever been authorized to use any of

the Complainants’ marks. He has no right or legitimate interest in the domain

name.

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

The Complainants have successfully established bad faith on two of the

grounds outlined in Paragraph 4(b) of the Policy.

First, there is evidence that the Respondent acquired the domain name primarily

for the purpose of selling the name to the Complainants as envisaged under Paragraph

4(b)(i). Evidence of such an intention might be found in the fact that the domain

name was registered on the same day that the merger of Biochem Pharma Inc. and

the Shire Pharmaceuticals Group plc was publicly announced (see CGNU plc

v Tess Caffrey/WIPPYWOW, WIPO Case No.

D2000-0769 and The Chase Manhattan Corporation and Robert FlemingHoldings

Limited v. Paul Jones, WIPO Case No. D2000-0731).

It might also be found in the telephone conversation between the Complainants’

representative and the Respondent of March 29, 2001. Indeed, the facts

that are the subject of this proceeding evince a pattern of cyber-squatting

on the back of announced mergers that has consistently been held to show bad

faith under Paragraph 4 of the Policy in WIPO arbitrations (see, for example,

Astro-Med, Inc. v Merry Christmas Everyone! And B. Evans, WIPO

Case No. D2000-0072; CGNU plc v Tess Caffrey/WIPPYWOW, WIPO

Case No. D2000-0769; The Chase Manhattan Corporation and Robert FlemingHoldings

Limited v. Paul Jones, WIPO Case No. D2000-0731;

Pharmacia & Upjohn v. Sol Meyer, WIPO

Case No. D2000-0785; and Clifford Chance LLP and Pünder GmbH v.

CPIC Inc. , WIPO Case No. D2000-1603).

Second, there is evidence that the Respondent acquired the domain name

in order to prevent the Complainants from reflecting their trade marks in

a corresponding domain name in a way that reflects a pattern of conduct

on the part of the Respondent, as envisaged by Paragraph 4(b)(iii) of the

Policy. This evidence might be found in the pattern of cyber-squatting activities

undertaken by the Respondent and reflected in a history of domain name arbitrations

against him.

7. Decision

Pursuant to Paragraphs 4 of the Policy and 15 of the Rules, the Panel requires

the Registrar to transfer the domain name <shirebiochem.com> to the

Complainant Shire Biochem Inc.

Michael J Spence

Sole Panelist

Dated: June 19, 2002