Elan
Corporation, P.L.C. & Elan Pharmaceuticals, Inc. v. Kumar Bhatt
Claim Number: FA0106000097376
PARTIES
Complainant is Elan Corporation, P.L.C. & Elan Pharmaceuticals, Inc., South San Francisco, CA, USA (“Complainants”) represented by Raymond I. Geraldson, Jr., of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson. Respondent is Kumar Bhatt, Granger, IN, USA (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAMES
The domain names at issue are <skelaxin.com>, <frovatriptan.com>, and <verelanpm.com> registered with Network Solutions.
PANEL
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.
Judge Ralph Yachnin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 6, 2001; the Forum received a hard copy of the Complaint on June 7, 2001.
On June 7, 2001, Network Solutions confirmed by e-mail to the Forum that the domain names <skelaxin.com>, <frovatriptan.com>, and <verelanpm.com> are registered with Network Solutions and that Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 4.0 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 June 7, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 27, 2001 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@skelaxin.com, postmaster@frovatriptan.com, and postmaster@verelanpm.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On July 5, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainants have spent millions of dollars to advertise and promote its pharmaceutical goods and services under each of the SKELAXIN and VERELAN PM marks throughout the United States.
Respondent’s <skelaxin.com> domain name is legally equivalent and confusingly similar to co-Complainant Elan Pharmaceuticals' SKELAXIN mark.
Complainants have not licensed or otherwise permitted the Respondent to use the SKELAXIN, VERELAN or VERELAN PM marks or the pharmaceutical product name frovatriptan, or to apply for or use any domain name incorporating the SKELAXIN, VERELAN or VERELAN PM marks or the generic pharmaceutical name frovatriptan.
Respondent has previously registered in excess of thirty domain names, some of which Respondent failed to renew, resulting in issuance of the domain names to the public and re-registration by third parties. Among those domain names previously registered by Respondent are widely known and famous trademarks, including, among others: verelan.com, nytimesbestsellerslist.com, newyorktimesbestseller.com, nationalbookaward.com, darvocet.com, estratest.com, micronase.com, and levoxyl.com.
Respondent's ownership of numerous domain names, which are identical or confusingly similar to widely known and famous trademarks, suggests a bad faith intent to profit from the trademarks and activities of others.
B. Respondent
No Response submitted.
FINDINGS
In October, 1998, co-Complainant Elan
Pharmaceuticals entered into an exclusive license agreement with Vanguard
Medicia Group plc, whereby Elan Pharmaceuticals was granted the exclusive right
to sell, distribute, promote and market frovatriptan throughout North
America. In March 1999, Elan
Pharmaceuticals issued a public press release stating that the FDA had accepted
Elan Pharmaceuticals' NDA for frovatriptan.
On May 3, 2000, Elan Pharmaceuticals issued a public press release
stating that the FDA issued a letter to Elan Pharmaceuticals stating that its
NDA for frovatriptan is approvable. Once
approved, Elan Pharmaceuticals will be the only entity approved by the FDA for
marketing frovatriptan in the United States.
Under FDA regulations, Complainant will be required to identify
pharmaceutical products containing frovatriptan by including the term
"frovatriptan" in association with any trademark e.g.,
"TRADEMARK® (frovatriptan) tablets."
On October 28, 1988, co-Complainant Elan Corporation filed an application
to register the mark VERELAN with the United States Patent and Trademark
Office. On August 15, 1989, Elan
Corporation obtained U.S. Registration No. 1,551,582 for VERELAN, thereby
giving constructive notice of co-Complainants' use of that mark. For many years prior to Respondent's
registration of <verelanpm.com>, Elan Corporation, through its licensee, has
sold pharmaceutical products under the VERELAN PM mark. On November 25, 1998, Elan Corporation
received FDA approval to sell, distribute, promote and market its VERELAN PM
products.
Respondent registered <skelaxin.com> with the registrar, Network Solutions, Inc. on April 1, 1999.
Respondent registered <frovatriptan.com> with the registrar, Network Solutions, Inc. on April 18, 1999.
Respondent registered <verelanpm.com> with the registrar, Network Solutions, Inc. on April 30, 1999.
Respondent has not developed a Website for any of the domain names since registering them over two years ago.
DISCUSSION
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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Identical and/or
Confusingly Similar
Respondent’s <skelaxin.com> and <verelanpm.com>
domain names are identical to Complainant’s SKELAXIN and VERELAN PM marks. See
Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001)
(finding that the domain name <termquote.com> is identical to
Complainant’s TERMQUOTE mark); see also
Amherst v. IFC Corp., FA 96768
(Nat. Arb. Forum Apr. 3, 2001) (finding that Respondent’s domain name <customcommerce.com>
is identical to Complainant’s CUSTOM COMMERCE trademark registration).
Additionally, the domain name <frovatriptan.com> is confusingly similar to Complainant’s frovatriptan products. See Boehringer Ingelheim Corp. v. Bhatt, FA 95011 (Nat. Arb. Forum Aug. 11, 2000) (finding that Complainant has rights to the pharmaceutical product names "telmisartan" and "meloxicam," and that the product names were confusingly similar to Respondent’s <meloxicam.com > and <telmisartan.com> domain names, thus satisfying Policy ¶ 4(a)(i)); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that Complainant has a bona fide basis for making the Complaint in the first place).
Therefore, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or
Legitimate Interests
Respondent’s passive holding of the <skelaxin.com>, <frovatriptan.com>, and <verelanpm.com> domain names fails to demonstrate any use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See American Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name).
Complainant has shown that Respondent is not commonly known by the <skelaxin.com>, <frovatriptan.com>, and <verelanpm.com> domain names, pursuant to Policy ¶ 4(c)(ii).
Furthermore, Respondent has not come forward to contradict Complainant’s evidence that it is not making a legitimate noncommercial or fair use of the <skelaxin.com>, <frovatriptan.com>, and <verelanpm.com> domain names pursuant to Policy ¶ 4(c)(iii). See Chanel, Inc. v. Heyward, D2000-1802 (Feb. 23, 2001) (finding no rights or legitimate interests where "Respondent registered the domain name and did nothing with it").
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and
Use in Bad Faith
Respondent’s registration of the <skelaxin.com>, <frovatriptan.com>, and <verelanpm.com> domain names is evidence of bad faith pursuant to Policy ¶ 4(b)(ii) because Respondent’s registration of the disputed domain names prevents Complainant from reflecting its marks in corresponding domain names, and Complainant has established a pattern of such behavior by Respondent. See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names which infringe upon others’ famous and registered trademarks); see also Pep Boys Manny, Moe, and Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that where Respondent registered many domain names, held them hostage, and prevented the owners from using them constituted bad faith).
Respondent’s passive holding of the <skelaxin.com>, <frovatriptan.com>, and <verelanpm.com> domain names further establishes Respondent’s bad faith. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of Policy ¶ 4(a)(iii)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three of the elements under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.
Accordingly, it is Ordered that the <skelaxin.com>, <frovatriptan.com>, and <verelanpm.com> domain names be transferred from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret)
Dated: July 9, 2001
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