Pharmacia & Upjohn Company v. Moreonline

[Indexed as: Pharmacia & Upjohn v. Moreonline]
[Indexed as: rogaine.net]

WIPO Arbitration and Mediation Center
Administrative Panel Decision

Case No.: D2000-0134
Commenced: March  6,  2000
Judgment: April 19, 2000

Presiding Panelist: Frederick M. Abbott

Domain name - Domain name dispute resolution policy - U.S. Trademark - Identical - Confusingly similar - Bad faith registration - Bad faith use - Procedural fairness - Arbitrary mark.

Complainant was registrant of United States States trademark, ROGAINE. Registrant registered the domain name, ROGAIN.NET. Complainant alleged that its registered marks and the registered domain name were identical and that Respondent registered the domain name at issue in bad faith.

Held, Name Transferred to Complainant

Complainant must establish both bad faith registration and bad faith use.

According to the rules of procedure of the Uniform Domain Name Dispute Resolution Policy the Panel was satisfied that all other procedural rules were adhered to and that Respondent, despite its absence from the hearing, did not suffer any prejudice with respect to procedural fairness.

It is clear that the domain name ROGAINE.NET is identical or confusingly similar to the service mark and trademark registered and used by Complainant, ROGAINE. ROGAINE is an arbitrary mark with out any common meaning or definition save for the promotion and identification of Complainant's product.  Although it is not clear when Complainant first made use of its mark, Complainant's registration of the trademark on the Principal Register at the PTO establishes a presumption of validity of the mark in U.S. law. It is also clear that Respondent has no rights or legitimate interest in respect of the domain name. This is bad faith registration.

Complainant contends that Respondent would seek payment for the domain name, and did not make use of the domain name. Respondent did not reply to Complainant's contentions and it was not the role of the Panel to speculate as to the Respondent's legitimate or intended use of the domain name.  Respondent's rights however, were not affected as it was given ample notice of the proceedings. The potential uses of the domain name by Respondent precludes Complainant from making bona fide use of the domain name that corresponds to its trademark. Based on the Uniform Domain Name Dispute Resolution Policy this inaction can amount to bad faith use of a domain name. It was therefore found that Respondent's passive holding in relation to the domain name registration amounts to bad faith use of said domain name.

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Cases referred to

Avery Dennison v. Sumpton, (9th Cir. 1999), 1999 U.S. App. LEXIS 19954.
Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.

Panel Decision referred to
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Abbott, Panelist: -

1. The Parties
The Complainant is Pharmacia & Upjohn Company, a corporation organized in the State of Delaware, United States of America (USA), with place of business in North Peapack, New Jersey, USA.

The Respondent is Moreonline, with address in Northridge, California, USA. 

2. The Domain Name(s) and Registrar(s)
The disputed domain name "rogaine.net".

The registrar of the disputed domain names is Network Solutions, Inc., with business address in Herndon, Virginia, USA.

3. Procedural History
The essential procedural history of the administrative proceeding is as follows:

a. The Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on March  6,  2000, and by courier mail received by WIPO on March 9, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. 

b. On March 9,  2000, WIPO transmitted notification of the complaint to ICANN and Network Solutions by e-mail. 

c. On March 10, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to the Respondent via e-mail and courier mail, and by e-mail and telefax to Complainant's authorized representative. 

d. On April 4, 2000, WIPO transmitted notification to Respondent of its default in responding to the complaint by e-mail and courier mail. 

e. On March 29,  2000, WIPO invited the undersigned to serve as sole panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On March 29, 2000, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.

f. On April 5,  2000, the Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by April 19,  2000. On April 5,  2000, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter via courier mail from WIPO.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondent's default in responding to the complaint). The proceedings have been conducted in English.

4. Factual Background
Complainant has provided a copy (Complaint, Annex C) of its U.S. Patent and Trademark Office trademark registration dated December 16,  1986 for "ROGAINE", number 1,420,785 on the Principal Register. Complainant states that this trademark registration remains valid and subsisting. The validity of Complainant's trademark registration for "ROGAINE" has not been contested by Respondent, and the Panel accepts as an undisputed fact that Complainant is the holder of a valid trademark registration for "ROGAINE" in the United States. 

The trademark "ROGAINE" is an arbitrary mark. Other than as a means to identify Complainant's product, the term does not have a meaning in any language. 

(See Complaint, para. 12)

Complainant has used the "ROGAINE" trademark in commerce in respect to a topical dermatological product for the treatment of hair loss. Respondent has not contested Complainant's use of the trademark in commerce.

Network Solutions' WHOIS database query response (Complaint, Annex A) indicates that "moreonline", with Administrative Contact at "Ali, Al", is the registrant of the domain name "ROGAINE.NET". The record of this registration was created on January 25, 1999 and was last updated on January 25, 1999. 

There is no record in this proceeding of any actual use or preparation for use of the domain name "rogaine.net" by Respondent.

The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutions' dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)). Respondent has not contested that it is properly before this Administrative Panel.

5. Parties' Contentions
A. Complainant
Complainant states that it is the owner of the registered trademark "ROGAINE", and that it has used this mark in commerce. The Complainant states that: "the trademark ROGAINE … is a coined term having no meaning in any language for its brand of minoxidil topical solution". (Complaint, para. 12) (See Factual Background, supra). 

Complainant's legal argumentation is as follows: 

"The ROGAINE.NET domain name of Moreonline, complained of herein, is identical and/or confusingly similar to the ROGAINE trademark in which Pharmacia & Upjohn has rights; and (2) Moreonline has no rights or legitimate interests in respect of the ROGAINE.NET domain name that is the subject of the Complaint because Pharmacia & Upjohn has not agreed or consented to Moreonline's use or registration of a domain name comprising its unique well-known and federally registered ROGAINE trademark, and (3) the domain name(s) should be considered as having been registered and used in bad faith because the ROGAINE mark is known to be a mark of Pharmacia & Upjohn Company and Moreonline registered the mark for no other purpose than to sell, rent or otherwise transfer the domain name registration to Pharmacia & Upjohn or a competitor of Pharmacia & Upjohn and Moreonline has refused to cooperate with Pharmacia & Upjohn to resolve the instant domain name dispute". 

"Pharmacia & Upjohn's counsel sent Moreonline a letter on December 27, 1999 informing Moreonline that its registration of the ROGAINE.NET violated Pharmacia & Upjohn's rights in its ROGAINE mark under United States law in that persons attempted [sic] to access Pharmacia & Upjohn's ROGAINE.COM website may become discouraged upon reaching Moreonline's inactive ROGAINE.NET website and search no further for Pharmacia & Upjohn's website, to Pharmacia & Upjohn's detriment. Pharmacia & Upjohn demanded that Moreonline promptly transfer the ROGAINE.NET domain name registration to Pharmacia & Upjohn. Moreonline has not responded to Pharmacia & Upjohn or its counsel. A copy of the December 27, 1999 letter is attached …." (Complaint, para. 12) 
Complainant requests that the Panel ask the Registrar to transfer the domain names "rogaine.net" from Respondent to it. (Id., para. 13)

B. Respondent
Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion.1 The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules). 

In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by WIPO. There is ample evidence in the form of air courier receipts, and confirmations of the sending of e-mail, that the party designated as the Administrative Contact for the Respondent was notified of the Complaint and commencement of the proceedings (see Procedural History, supra). 

Paragraph 4(a) of the Policy establishes three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(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.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Because the Respondent has defaulted in providing a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the complaint (Rules, para. 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of Complainant's undisputed representations (id., para. 14(b)).

Complainant is the holder of a registered trademark for "ROGAINE" in the United States and is using that mark in commerce (see Factual Background, supra). Complainant's registration of the trademark on the Principal Register at the PTO establishes a presumption of validity of the mark in U.S. law 2, and Respondent has not challenged this presumption. The Panel determines that Complainant has rights in the trademark "ROGAINE". Based on the December 16, 1986, date of Complainant's registration of the trademark "ROGAINE", the Panel determines that Complainant's rights in the trademark arose prior to Respondent's registration, on January 25, 1999, of the disputed domain name "rogaine.net" 3.

Respondent has registered the domain name "rogaine.net". This name is identical to Complainant's trademark "ROGAINE", except that (1) the domain name adds the generic top-level domain name ".net", and (2) the domain name employs lower case letters, while the trademark is generally used with an initial capital letter (see http://www.rogaine.com). For purposes of this proceeding, it is unnecessary to decide whether, in light of these factors, Respondent's domain name is "identical" to Complainant's trademark, since Respondent's domain name "rogaine.net" is without doubt confusingly similar to Complainant's trademark "ROGAINE".

Complainant has met the burden of proving that Respondent is the registrant of a domain name that is identical or confusingly similar to a trademark in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.

There is no evidence on the record that would indicate that Respondent has any rights or legitimate interests in respect of the domain name "rogaine.net", other than that it has registered this domain name. If mere registration of the domain name was sufficient to establish rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy, then all registrants would have such rights or interests, and no complainant could succeed on a claim of abusive registration. Construing the Policy so as to avoid an illogical result, the Panel concludes that mere registration does not establish rights or legitimate interests in the disputed domain name so as to avoid the application of paragraph 4(a)(ii) of the Policy. 

Respondent has furnished no evidence of any legitimate use or preparation to use the disputed domain name There is no evidence on the record of this proceeding of any such legitimate use or preparation to use by Respondent. The Panel determines that Respondent has no rights or legitimate interests in the disputed domain name. Thus, the Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration.

The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, para. 4(b)). Among these circumstances are (1) that the domain name has been registered or acquired by a 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 that complainant, for valuable consideration in excess of [respondent's] documented out-of-pocket costs directly related to the domain name" (Id., para. 4(b)(i));

(2) that a 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 [the respondent has] engaged in a pattern of such conduct" (id., para. 4(b)(ii)), and (3) that a 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 to the source, sponsorship, affiliation, or endorsement of [respondent's] web site or location of a product or service on [its] web site or location" (id., para. 4(b)(iv)).

Complainant has alleged that Respondent registered the "rogaine.net" for the purposes of offering or selling it to Complainant or its competitor for consideration in excess of Respondent's out-of-pocket costs of registration. There is no evidence on the record of this proceeding of any offer by Respondent to sell the disputed domain name to Complainant or to any other party.

Complainant has presented no evidence to suggest that Respondent has attempted to use "rogaine.net" to attract customers to its website or another on-line location.

Complainant states that an Internet user entering the domain name "rogaine.net" and finding no website may become discouraged and may cease searching for Complainant's own website, to Complainant's detriment. Complainant has presented no legal argument in connection with this assertion. 

Respondent has failed to reply to Complainant's complaint. It has presented no good faith rationale for the registration of the disputed domain name. A showing of a legitimate use of the disputed domain name might well be possible. For example, Respondent might host a public discussion group regarding Complainant's product, or it might be a reseller of Complainant's product purchased from legitimate sources. It is not, however, the role of the Panel to speculate as to what legitimate uses Respondent might have for the domain name that is substantially similar or identical to Complainant's trademark.

Complainant's trademark "ROGAINE" is an arbitrary mark. The principal function of this arbitrary term is to identify Complainant as the source of a product. The mark has a substantial commercial value deriving from this function. The public interest in keeping a term open for common use is not generally present in respect to arbitrary marks. The principal value of "ROGAINE" lies in its role as a product identifier, not as vehicle for conveying public information. 

Respondent's registration of "rogaine.net" has prevented Complainant from using its trademark in a corresponding domain name. Complainant has presented no evidence suggesting that Respondent may have engaged in a pattern of conduct in regard to similar preclusive registrations. Respondent's actions therefore do not fall within the express terms of paragraph 4(b)(ii) of the Policy. The Panel recalls, however, that the list of "bad faith" circumstances of registration and use in paragraph 4(b) of the Policy is illustrative, not exclusive. In the context of this case, the Panel determines that Respondent's registration of the domain name "rogaine.net", corresponding to the arbitrary trademark, "ROGAINE", is an act of bad faith in respect to Complainant's interests in that such registration has prevented Complainant from using its mark in a corresponding domain name, even though no pattern of preclusive registrations by Respondent has been demonstrated. Complainant's trademark has an exclusive connection to a commercial product, and has limited potential utility as a common conveyer of information. This weighs strongly on the side of Complainant. A high preponderance of Respondent's potential uses of the mark would infringe upon Complainant's rights as a trademark holder, and Respondent has made no showing that it might intend to use the mark for a legitimate purpose. 

Complainant has thus established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration. 

The Panel will therefore request the registrar to transfer the domain name "rogaine.net" to the Complainant.

7. Decision
Based on its finding that the Respondent, Moreonline, has engaged in abusive registration of the domain name "rogaine.net" within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name ""rogaine.net" be transferred to the Complainant, Pharmacia & Upjohn Company.
 

Footnotes
1. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000. 
2. 15 USCS § 1057(b). See, e.g., Avery Dennison v. Sumpton, (9th Cir. 1999), 1999 U.S. App. LEXIS 19954.
3. Complainant has not indicated the date on which it commenced use of its "ROGAINE" trademark in commerce. However, application for registration at the U.S. PTO constitutes constructive use, contingent on registration. (15 USCS § 1057(c))

Domain Name Transferred