Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainant in this administrative proceeding is American Home Products Corporation, a corporation of the State of Delaware, U.S.A., with its principal place of business at 5 Giralda Farms, Madison, New Jersey 07940, U.S.A. The Respondent is Moreonline, which is located in Northridge, California, U.S.A.

The domain name in dispute is as follows: robitussin.net. The domain name was registered by Respondent with Network Solutions, Inc. on January 27, 1999.

On June 13, 2000, the WIPO Arbitration and Mediation Center received from Complainant, via e-mail, a complaint for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation of 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 requirements of the Rules and the Supplemental Rules, payment was properly made, the administrative panel was properly constituted, and the panelist submitted the required Statement of Acceptance and Declaration of Impartiality and Independence.

The instant Administrative Proceeding was commenced on June 13, 2000.

Respondent did not file a response, and a "Notification of Respondent Default", dated July 14, 2000, was forwarded by WIPO to Respondent.

The decision of the Panel was due to WIPO on or before August 1, 2000.

As set forth in the Complaint, Complainant owns U.S. Trademark Registration No. 515,197 for the mark ROBITUSSIN, as used for an antitussive preparation preferably dispensed in liquid form, and No. 1,653,444 for the mark ROBITUSSIN, as used for a pharmaceutical preparation, namely a cough suppressant. The mark has been used by Complainant since January 1949. See Complaint, Exhibit C.

Complainant contends that the domain name in issue was registered or acquired primarily for the purpose of selling, renting, or otherwise preventing Complainant from registering the domain name. It further argues that the domain name was registered to prevent Complainant from reflecting the mark in a corresponding domain name. Upon information and belief, Complainant asserts that Respondent has engaged in a pattern of such conduct. Attached as Exhibit D to the Complaint are the results of a search of the "whois" database, which indicates that Respondent has registered over 50 domain names, including other pharmaceutical-based product names, such as TYLENOL3.COM and ZANTAC.NET.

Finally, Complainant argues that the domain name is identical or confusingly similar to a mark in which Complainant has rights and that Respondent has no rights or legitimate interests in respect of the domain name in dispute.

The Panel determines that Complainant has established all of the elements required under ¶4.a. of the Policy.

Respondent's domain name is legally identical to a trademark in which Complainant, through its prior use and registration of the mark ROBITUSSIN, has rights.

The unrebutted evidence also indicates that Respondent has no rights or legitimate interests in respect of the domain name.

With respect to the issue of bad faith registration and use, the Panel determines that the record supports a determination that Respondent registered the domain name in order to prevent Complainant from reflecting the mark in a corresponding domain name and that Respondent has engaged in a pattern of such conduct, within the meaning of ¶4.b(ii) of the Policy.

In view of the above, the Panel GRANTS Complainant's request for transfer to it of the domain name robitussin.net.

Jeffrey M. Samuels
Panelist

Dated: July 31, 2000