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Valigene Corporation v. MIC [2000] GENDND 802 (1 August 2000)

National Arbitration Forum

DECISION

Valigene Corporation v. MIC

Claim Number: FA0005000094860

PARTIES

The Complainant is Valigene Corporation, Newtown, PA, USA ("Complainant"). The Respondent is MIC, Closter, NJ, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s)

The domain name at issue is "VALIGEN.ORG", registered with Alabanza, Inc. (BulkRegister.com).

PANELIST

Hon. James A. Carmody, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on May 18, 2000; The Forum received a hard copy of the Complaint on June 30, 2000.

On July 5, 2000, Alabanza, Inc. confirmed by e-mail to The Forum that the domain name "VALIGEN.ORG" is registered with Alabanza, Inc. and that the Respondent is the current registrant of the name.

On July 6, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 26, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by email.

On July 26, 2000, 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 28, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed the Hon. James A. Carmody as Panelist.

Having reviewed the communications records in the case file, the Administrative Panel (the "Panel") finds that The Forum has discharged its responsibility under Paragraph 2(a) of the Uniform 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 the Respondent.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The Complainant contends that the Respondent has registered a domain name that is identical to and confusingly similar to its service mark registered for and in use by the Complainant. Further, the Complainant contends that the Respondent has no rights or legitimate interests to the domain name, and that the respondent has registered and is using the domain name in bad faith.

The Complainant asserts that the Respondent is a cybersquatter.

1. Respondent

The Respondent submitted no response in this matter. As a result, all reasonable inferences of fact in the allegations of the Complainant will be deemed true.

FINDINGS

The Complainant is the owner of the U.S. service mark registration for the mark "VALGENE" (registered April 4, 2000; No. 2,339,146) for use in computerized genome database management for drug discovery and for development of products associated with gene and disease identification.

The Complainant also owns the pending U.S. service mark application for the mark VALIGEN (filed March 13, 2000; No. 75/942,509) for use in computerized genome database management for drug discovery and for development of products associated with gene and disease identification.

On February 14, 2000, BioWorld Today, published an article reporting the merger between the Complainant’s parent company, ValiGene S.A. and Kimeragen, Inc. ValiGen, N.V., a European-American integrated genomics company was formed. On February 16, 2000, at the BIOCEO Conference, ValiGene’s Chair and CEO announced the merger. On February 18, 2000, CPIC NET (a pseudo-name of the Respondent) registered <valigen.com>. On February 22, 2000, ValiGene and Kimeragen issued a formal press release announcing the merger.

The Respondent registered the domain name in question on February 23, 2000. The website that corresponds with this domain name is not active. Attempts to access this website result in a "HTTP Error" message.

During a May 19, 2000 telephone conversation, the Respondent’s administrative contact agreed to transfer the domain name in question without any compensation. However, the Respondent later withdrew this offer. During a June 12, 2000 telephone conversation, the Respondent’s administrative contact stated that he was interested in selling the domain name in question for "no less that five figures."

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") directs that the complainant must prove each of the following three elements to support a claim 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.

The Complainant has rights in the marks VALIGENE and VALIGEN. The domain name in question is identical to the Complainant’s VALIGEN mark, of which the Complainant recently filed for trademark application. See Microsoft Corp. v. Amit Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to the Complainant’s mark).

The domain name is also confusingly similar to the Complainant’s registered mark VALIGENE. The elimination of the letter "e" does not diminish the Complainant’s rights in the mark. See State Farm v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the Complainant’s mark "State Farm").

The Complainant asserts that the Respondent has no rights or legitimate interests in the domain names in question. The Respondent has not denied that assertion.

The domain name in question is not a mark by which the Respondent is commonly known. Policy ¶ 4(c)(ii). Rather, the Respondent is known by at least twenty "NIC handles" with at least four different phone numbers, three fax numbers, and eleven e-mail addresses. These "handles" identify the Respondent, CPIC NET, CPIC Inc., Closter Textiles Group Corp., Madadgaar International Corp., and E-Islamic Bank. All of these "handles" list the same address and administrative contact. Under these multiple pseudo-names, the Respondent has registered many domain names which include the famous trademarks of other companies.

The Respondent has made no claim that it is using the domain name in connection with a bona fide offering of goods and services or is making a legitimate noncommercial or fair use of the site. Policy ¶ 4(c)(i), (iii). The Respondent has made no use of the domain name, as revealed by the "HTTP Error" page that users are transported to upon entering the domain name in question.

For these reasons, the panel concludes that the Respondent has no rights or legitimate interest in the domain name in question.

The Complainant asserts that the Respondent acted and is acting in bad faith. The Respondent has not denied that assertion.

The Respondent registered the domain name in question in order to profit from the Complainant’s merger. The Respondent acquired the domain name in question for the purpose of selling it to the Complainant for valuable consideration in excess of out of pocket costs. Policy ¶ 4(b)(i). This is evidence of bad faith. See Cree, Inc. v. The Domain Name You Have Entered is For Sale, FA 94790 (Nat. Arb. Forum May 24, 2000) (finding bad faith where the Respondent purchased the domain names on the date of the Complainant’s press release regarding a merger and business expansion).

The Respondent has also made no use of the domain name in question. Passive holding of a domain name is evidence of bad faith. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that passive holding of a domain name is use of the domain name in bad faith).

Based on the preceding, the panelist determines that the Respondent registered and used the domain name in bad faith.

DECISION

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name, "VALIGEN.ORG" be transferred from the Respondent to the Complainant.

James A. Carmody, Judge (Ret.), Arbitrator
Dated: August 1, 2000

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