Biogen Idec MA Inc. v. Seong Choi

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL

DECISION

Biogen Idec MA Inc. v. Seong Choi

Case No. D2003-0961

1. The Parties

The Complainant is Biogen Idec MA Inc., c/o Timothy Linkkila, Esquire, Cambridge MA, United States of America, represented by Ballard Spahr Andrews & Ingersoll, LLP, United States of America.

The Respondent is Seong Choi, Philadelphia PA, United States of America.

2. The Domain Name and Registrar

The disputed domain name <biogenusa.com> (the "Domain Name") is registered with YesNIC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 4, 2003. On December 5, 2003, the Center transmitted by email to YesNIC a request for registrar verification in connection with the Domain Name. On December 9, 2003, YesNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 21, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 10, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 11, 2004.

The Center appointed Thomas P. Pinansky as the sole panelist in this matter on February 18, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

(a) The Complainant, through its predecessors-in-interest and title, is the world’s oldest independent biotechnology company.

(b) Since 1978, the Complainant has used and continues to use BIOGEN as a service mark and trade name in connection with the research and development of services in the field of biotechnology. The Complainant has also used and continues to use BIOGEN as a trademark in connection with pharmaceutical preparations.

(c) The BIOGEN name and mark have been used continuously in commerce for the goods and services of the Complainant for nearly twenty-five years.

(d) In November 2003, the Complainant became known as Biogen Idec MA Inc. as a result of a merger between Biogen, Inc. and Idec Pharmaceuticals Corporation.

(e) The Complainant has used and still intends to use the BIOGEN name and mark in connection with goods and services in the field of biotechnology.

(f) The Complainant has taken steps to protect the BIOGEN mark in the United States. The Complainant has secured nine (9) U.S. Registrations, including U.S. Registration Nos. 1,314,274, 1,961,898, and 2,084,446, inter alia, on the Principal Register for the BIOGEN mark.

(g) The Complainant has also taken steps to protect the BIOGEN mark outside of the United States.

(h) The Complainant is the owner of several domain names that contain the BIOGEN name and mark including, inter alia, <biogen.com>, <biogen.org>, <usbiogen.com>, <biogencanada.com>, and <biogen.ca>.

(i) By virtue of sales in commerce and substantial advertising and public relations activities, the relevant trade and public have come to associate goods and services in the field of biotechnology offered under the BIOGEN name and mark with the Complainant, thereby creating a valuable reputation for such goods and services.

(j) The Complainant has not consented directly or indirectly to the use of the BIOGEN name and mark by the Respondent.

(g) The Respondent has failed to reply to the Complainant’s attempts to resolve this matter in an amicable manner.

(h) The Respondent has refused to discontinue such use of the Complainant’s name and mark.

5. Parties’ Contentions

A. Complainant

The Complainant asserts, inter alia, as follows:

(i) The Domain Name owned by the Respondent is essentially and nearly identical and confusingly similar to the Complainant’s name and mark for BIOGEN in which the Complainant has rights.

(ii) The Complainant is the legal owner of nine (9) U.S. Registrations, including U.S. Registration Nos. 1,314,274, 1,961,898, and 2,084,446, inter alia, on the Principal Register for the BIOGEN mark.

(iii) Since 1978, the Complainant has used and continues to use the BIOGEN name and mark in connection with research and development of goods and services in the field of biotechnology.

(iv) The Complainant’s BIOGEN name and mark and the Respondent’s use of BIOGEN in the Domain Name are substantially identical in overall commercial impressions.

(v) The Complainant believes that consumers searching for information related to the Complainant would become confused as to source, sponsorship, or affiliation if they encounter the Domain Name website owned by the Respondent.

(vi) The Respondent has no rights or legitimate interests in and to the Domain Name.

(vii) The Respondent has not made any legitimate use of the Domain Name.

(viii) The Respondent’s motivation and intention are to benefit unfairly from the goodwill in the Complainant’s name and mark and to have the Complainant or a third-party purchase the Domain Name from the Respondent for a profit in excess of the registration cost.

(ix) There is no evidence to suggest that the Respondent has been commonly known by the <biogenusa.com> domain name.

(x) There is no evidence to suggest that the Respondent is making legitimate non-commercial or fair use of the Domain Name.

(xi) The Respondent registered the Domain Name in bad faith and continues to use the Domain Name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Language

The Complaint, although submitted in Korean language, was originally prepared

in the English language. Yet, there was no response in either language. Although

Korean language was apparently the language of the registration agreement for

the Domain Name, the Complainant asserts that English should be the language

of the proceeding. The vast majority of the annexes are in English.

According to Paragraph 11 of the Rules, the language of the administrative

proceeding shall be the language of the registration agreement unless the Panel

decides otherwise. The spirit of Paragraph 11 is to ensure fairness in the selection

of language by giving full consideration to the parties’ level of comfort with

each language, the expenses to be incurred and the possibility of delay in the

proceeding in the event translations are required and other relevant factors.

In the present case, even if the registration agreement for the Domain Name

was made in the Korean language, it is apparent that as both the Respondent

and the Complainant are located in the United States, it is very likely that

the Respondent would have little difficulty in communicating in the English

language.

On the other hand, the Complainant is not able to communicate in Korean and

therefore, if the Complainant were required to submit all documents in Korean,

the UDRP proceeding will be unduly delayed and the Complainant would have to

incur substantial expenses for translation. Therefore, in consideration of the

above circumstances and in the interest of fairness to both parties, the Panel

hereby decides, under Paragraph 11 of the Rules, that English shall be the language

of administrative proceeding in this case. However, based on the Panel’s discretion,

Korean language documents submitted, have been reviewed by the Panel.

B. Substantive Elements of the Policy

Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on

the grounds of the statements and documents submitted and in accordance with

the Policy, the Rules and any rules and principles of law that it deems applicable.

Moreover, under Paragraph 14(b) of the Rules, it is established that: "If

a Party, in the absence of exceptional circumstances, does not comply with any

provision of, or requirement under, these Rules or any request from the Panel,

the Panel shall draw such inferences therefrom as it considers appropriate".

In light of the above, the Panel may draw such inferences from the Respondent’s

failure to comply with the Rules as considered appropriate (see Paragraph 14(b)

of the Policy; see Talk City, Inc. v. Michael Robertson, WIPO

Case No. D2000-0009).

Under Paragraph 4(a) of the Policy, the Complainant must prove each of the

following:

(i) the Domain Name is identical or confusingly similar to the Complainant’s

trademark or service mark;

(ii) the Respondent has no rights or legitimate interests in respect of the

Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

C. Identical or Confusingly Similar

The Domain Name differs from the Complainant’s BIOGEN marks and domain names

only in the addition of a geographical term, "USA". This difference

is legally inconsequential and does not prevent a finding of confusing similarity.

Wal-Mart Stores, Inc. v. Walmarket Canada., WIPO

Case No. D2000-0150 (May 2, 2000) (<walmartcanada.com>

transferred to Complainant) ("Persons dealing with, or even perusing the

website of <walmartcanada.com> could easily conclude that the registrant

of the domain name was associated with the Wal-Mart operation in Canada.");

Inter-IKEA v. Polanski, WIPO Case No.

D2000-1614 (January 22, 2001) (<ikeausa.com> transferred

to Complainant) ("The domain name <ikeausa.com> is not identical

to the trademarks of Complainant, but integrates in its entirety the wordmark

IKEA followed by the letters USA, which is generally being understood as an

abbreviation for the United States of America.") ("The combination

of a trademark with a geographical name is common place for many domain names

and does not exclude confusing similarity.").

Therefore, the Panel finds that the Domain Name is confusingly similar to the

Complainant’s trademark pursuant to the Policy Paragraph 4(a)(i).

D. Rights or Legitimate Interests

According to Paragraph 4(a)(ii) of the Policy, the Complainant must prove that

the Respondent has no rights or legitimate interests in the Domain Name. In

connection with the burden of proof, several WIPO decisions have held that "once

a Complainant establishes a prima facie evidence showing that none of the three

circumstances establishing legitimate interests or rights applies, the burden

of production on this factor shifts to the Respondent to rebut the showing"

(see Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com,

WIPO Case No. D2001-0784; see also International

Hospitality Management-IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO

Case No. D2002-0683).

The Complainant asserted that the Respondent has no relationship with or authorization

from the Complainant for using the Complainant’s marks; that the Respondent

had no prior rights or legitimate interests in the Domain Name; and that the

Respondent has not been commonly known by the Domain Name. The Panel’s view

is that facts must be taken as proven provided that they have not been denied

by the Respondent.

The Respondent has not submitted a proper response. Therefore, the Respondent

has failed to invoke any circumstance that could have demonstrated any rights

or legitimate interests in the Domain Name under Paragraph 4(c) of the Policy.

Accordingly, the Panel holds that the Respondent has no legitimate interests

or rights in the Domain Name pursuant to Paragraph 4(b) of the Policy.

E. Registered and Used in Bad Faith

Under past UDRP decisions (see for instance Nike, Inc. v. B.B. de Boer,

WIPO Case No. D2000-1397; and Carolina

Herrera, Ltd. v. Alberto Rincon Garcia, WIPO

Case No. D2002-0806) and under the Policy (see Section 2), a well-established

principle is that when someone registers a domain name, he represents and warrants

to the Registrar that, to his knowledge, the registration of the domain name

will not infringe the rights of any third party. In the case at issue, the Panel

reasonably finds that since the Complainant’s marks are very well known, it

is very unlikely that the Respondent, at the time of registration of the Domain

Name or thereafter, was not aware that he was infringing the Complainant’s mark.

The Respondent has attempted to auction the <biogenusa.com> domain name

for an amount well in excess of the registration costs (Annex 12 of the Complaint).

The law is clear that registering a domain name for the primary purpose of

offering to sell, rent, or otherwise transfer the domain name for an amount

in excess of the registration cost is evidence that a domain name was registered

and/or being used in bad faith. Adidas-Saloman AG v. Vincent Stipo, WIPO

Case No. D2001-0372 (May 14, 2001).

The conduct described above falls squarely within paragraph 4(b)(i) of the

Policy and accordingly the Panel concludes that the Respondent registered the

Domain Name in bad faith.

In light of the above, the Panel concludes that the Complainant has proven

bad faith in registration and use on the part of the Respondent.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy

and 15 of the Rules, the Panel orders that the Domain Name, <biogenusa.com

>, be transferred to the Complainant.

Thomas P. Pinansky

Sole Panelist

Date: March 8, 2004