Solstice Neurosciences, Inc. v. Tatra Ltd.
Claim Number: FA0510000584839
Complainant is Solstice Neurosciences, Inc. (“Complainant”), represented by Alyson N. Dinsmore, of Wilson Sonsini Goodrich & Rosati, 650 Page Mill Road, Palo Alto, CA 94304-1050. Respondent is Tatra Ltd. (“Respondent”), DesignBureau, P.O. Box 100, St. Petersburg, 197136, Russia.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <neurobloc.com>, registered with Nicco Ltd.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 24, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 9, 2005. The Complaint was submitted in both Russian and English.
On December 12, 2005, Nicco Ltd. confirmed by e-mail to the National Arbitration Forum that the <neurobloc.com> domain name is registered with Nicco Ltd. and that Respondent is the current registrant of the name. Nicco Ltd. has verified that Respondent is bound by the Nicco Ltd. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 12, 2005, a Russian language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 3, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@neurobloc.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 6, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <neurobloc.com> domain name is identical to Complainant’s NEUROBLOC mark.
2. Respondent does not have any rights or legitimate interests in the <neurobloc.com> domain name.
3. Respondent registered and used the <neurobloc.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Solace Neurosciences, Inc., is a specialty biopharmaceutical company with offices in the San Francisco, California and Philadelphia, Pennsylvania metropolitan areas in the United States. Complainant’s business focuses on the development, manufacturing, sales, and marketing of specialty biopharmaceutical products. Complainant’s annual sales are approximately $14 million.
Complainant’s product, Neurobloc, is the only
botulinum toxin type B currently available to physicians and patients worldwide
for the treatment of patients with cervical dystonia to reduce the severity of
abnormal head position and pain associated with cervical dystonia. Neurobloc is currently approved in the
United States, Canada – where it is marketed as Myobloc – and Europe. NEUROBLOC is the trade name under which the
product is marketed in Austria, France, Germany, Ireland, Italy, Portugal,
Spain and United Kingdom.
Neurobloc was originally developed by Elan Corporation, a neuroscience-based biotechnology company that is focused on discovering, developing, manufacturing, and marketing advanced therapies in neurology, autoimmune diseases, and severe pain. Elan first used the NEUROBLOC mark on or about September 18, 1997. Elan continued to develop substantial fame and goodwill in the NEUROBLOC mark from 1997 to 2004.
Complainant acquired the worldwide trademark and
other rights to Neurobloc from Elan Corporation in or about July 2004. The acquisition included the related
intellectual property, the product inventory, and the manufacturing facility.
Complainant has rights in the NEUROBLOC mark in the
United States, Canada,
the European Union, Iceland, Japan, Norway, Switzerland, Taiwan, and Turkey. Complainant’s rights in the NEUROBLOC mark cover the period during which Elan had rights in the mark. Complainant’s predecessor-in-interest registered the NEUROBLOC mark on December 21, 1999 (Reg. No. 2,302,468) with the U.S. Patent and Trademark Office (“USPTO”).
Respondent, Tatra Ltd., registered the <neurobloc.com> domain name on June 6, 2005. The domain resolves to a parking page, provided by the registrar.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has submitted evidence of its USPTO
registration, inter alia, to demonstrate its rights in the NEUROBLOC
mark. The Panel accepts Complainant’s
assertion that it is the successor-in-interest to the NEUROBLOC mark. The Panel, therefore, accepts the USPTO
registration as evidence that Complainant has rights in the NEUROBLOC mark
pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); Vivendi Universal Games v. XBNetVentures Inc., FA 198803
(Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations
establish Complainant's rights in the BLIZZARD mark.”).
The Panel finds that the <neurobloc.com> domain
name is identical to the NEUROBLOC mark because the only difference is the
addition of the “.com” top-level domain, which does not significantly
distinguish the domain name from the mark.
See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb.
Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic
top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i)
analysis.”); Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat.
Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant
when establishing whether or not a mark is identical or confusingly similar,
because top-level domains are a required element of every domain name.”).
The Panel finds that Complainant has established Policy ¶ 4(a)(i).
Respondent has merely parked the <neurobloc.com>
domain name. The Panel finds that
parking a domain name is neither a bona fide offering of a good or
service pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests
where the respondent failed to submit a response to the complaint and had made
no use of the domain name in question); Am.
Online, Inc. v. Kloszewski, FA 204148
(Nat. Arb. Forum Dec. 4, 2003) (“Respondent's passive holding of the
<aolfact.com> domain name for over six months is evidence that Respondent
lacks rights and legitimate interests in the domain name.”).
The Panel finds that there is nothing in the record,
including the WHOIS registration information, which demonstrates that
Respondent is commonly known by the disputed domain name pursuant to Policy ¶
4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not
apply); Gallup, Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark).
The Panel finds that Complainant has established Policy ¶ 4(a)(ii).
There is no evidence that Respondent has used the disputed
domain name. The content at the parking
page associated with the domain name is clearly sponsored by the registrar. In addition, Respondent has not submitted
any evidence that it has used or has plans to use the disputed domain
name. The Panel finds that Respondent’s
non-use of the domain name constitutes passive holding, which is evidence of
bad faith pursuant to Policy ¶ 4(a)(iii).
See Telstra Corp. v.
Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible,
in certain circumstances, for inactivity by the Respondent to amount to the
domain name being used in bad faith.”); Caravan
Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the
respondent made no use of the domain name or website that connects with the
domain name, and that passive holding of a domain name permits an inference of
registration and use in bad faith).
The Panel finds that Complainant has established Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <neurobloc.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: January 17, 2006
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