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 Haymont Veterinary Clinic, which is located in Fremont, California, U.S.A.

The domain name in dispute is as follows: etogesic.com. The domain name was registered by Respondent with Network Solutions, Inc. on August 3, 1999.

On May 25, 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 2, 2000.

A Response, dated June 20, 2000, was received by WIPO on June 26, 2000.

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. 2,300,586 for the mark ETOGESIC, for non-steroidal anti-inflammatory preparation for use in animals. The mark was registered on December 14, 1999; its claimed date of first use in commerce is August 19, 1998. See Complaint, Exhibit C.

Respondent operates Haymont Veterinary Clinic. In its response, Respondent indicates that it registered the domain name etogesic.com "for the purpose of creating a Website that provides a public service forum for respondents and users recommendations, applications and experiences with Complainant's drug of the same name."

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, or to attempt in bad faith to redirect users of the Internet to Respondent's own website at www.healthypetscom and others. This Website offers for sale the branded product ETOGESIC.

Complainant further 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.

Respondent contends that it had no intention of infringing Complainant's registered mark and that the domain name was registered in good faith and "has not been used at all for any purpose." Thus, "[t]here has been no use to steer anyone to any Website or redirect any user of the Internet to any Website."

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 ETOGESIC, has rights. While Respondent argues that it had no intent to infringe, the Panel notes that the issues of intent and infringement are not relevant to a determination of whether the domain names are identical or confusingly similar to a trademark in which Complainant has rights.

It is also clear that Respondent has no rights or legitimate interests in respect of the domain name. As the Response emphasizes, Respondent has not used the domain name "at all for any purpose."

With respect to the issue of bad faith registration and use, the Panel determines that none of the particular circumstances set forth in ¶4.b. of the Policy apply. It notes, however, that it has been held that inactivity or non-use of a domain name amounts to the domain name being used in "bad faith." See Telstra, Case No D2000-0003; Mondich v. Brown, Case No. D2000-0004 ("possible to infer from this failure to use that the domain name was registered without a bona fide intent to make good faith use").

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

Jeffrey M. Samuels
Panelist

July 31, 2000