DECISION

Amerisourcebergen Corporation v. Yongseok Kwon

Claim Number: FA0112000102726

PARTIES

The Complainant is AmerisourceBergen Corporation, Chesterbrook, PA ("Complainant") represented by James J. Johnston, of Dechert.  The Respondent is Yongseok Kwon, Kumchon-gu Seoul, KOREA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <amerisourcebergen.com>, and <amerisource-bergen.com> registered with Hangang Systems, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.

Young Kim as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on December 4, 2001; the Forum received a hard copy of the Complaint on December 6, 2001. The Complaint was submitted in both Korean and English.

On December 5, 2001, Hangang Systems, Inc. confirmed by e-mail to the Forum that the domain names <amerisourcebergen.com> and <amerisource-bergen.com> are registered with Hangang Systems, Inc. and that the Respondent is the current registrant of the name.  Hangang Systems, Inc. has verified that Respondent is bound by the Hangang Systems, Inc. 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 6, 2001, a Korean language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 26, 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@amerisourcebergen.com and postmaster@amerisource-bergen.com by e-mail.

A timely Response was received and determined to be complete on December 26, 2001.

On December 31, 2001, an Additional Submission by Complainant was served upon Respondent by electronic mail and was received by the Forum.   It complies with Supplemental Rule 7(a) of the Forum.

On January 2, 2002, an Additional Submission by Respondent was served upon Complainant by electronic mail and was received by the Forum.   It complies with Supplemental Rule 7(a) of the Forum.

On January 17, 2002, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Young Kim as Panelist.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A. Complainant

Complainant asserts the following in accordance with ICANN Policy 4.

1. Complainant's Trademark Right and Similarity between the Trademark and the Domain Names

Complainant asserts that it is a leading distributor of pharmaceutical and healthcare products and services, with more than $35 billion in annual operating revenue, and started to use AMERISOURCEBERGEN mark ("the Subject Mark") on March 19, 2001, upon announcement of the merger of AmeriSource Health Corporation and Bergen Brunswig Corporation.   Complainant is the applicant of U.S. trademark registrations for AMERISOURCEBERGEN".

Complainant also asserts that Complainant and its operating subsidiaries, Amerisource Corporation and Bergen Brunswig Corporation, have invested substantial time, money and effort in advertising and promoting the marks AMERISOURCE and BERGEN BRUNSWIG DRUG COMPANY, respectively, and have developed considerable recognition and goodwill in the marks.  Complainant asserts that the goodwill is reflected in and extended through the adoption of the AMERISOURCEBERGEN trade name and trademark.

On March 19, 2001, Complainant and Bergen Brunswig Corporation announced a merger plan.  On the same day, Mr. Jongsun Park ("the prior registrant") registered the domain names <amerisourcebergen.com> and <amerisource-bergen.com> ("the subject Domain Names").

Complainant asserts that the subject Domain Names are confusingly similar to the Subject Mark.

           

         2. Rights or Legitimate Interests

In summary, Complainant asserts that Respondent has never been known by the term "AmerisourceBergen," has not used the subject Domain Names in connection with a bona fide offering of goods or services, and is not making a legitimate noncommercial or fair use of the subject Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the Subject Mark.

Complainant's wholly owned subsidiary, AmeriSource Corporation, filed a complaint against the prior registrant on August 27, 2001.  On November 5, 2001, a panel issued a decision holding that the prior registrant has no right or legitimate interests in or to the subject Domain Names, and had registered the Domain Names in bad faith (AmeriSource Corp. v. Jongsun Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001).  Respondent acquired the subject Domain Names from or through the prior registrant shortly after the decision.

As of November 21, 2001, Respondent posted to the subject Domain Names text and hyperlinks that are not related to the Subject Mark.   Sometime between November 21, 2001 and November 26, 2001, Respondent changed the web sites at the subject Domain Names to incorporate the term "AmerisourceBERGEN" and an "under construction" notice in English.  Complainant asserts that the above site included no rationale for the misappropriation of Complainant's distinctive AMERISOURCE mark in connection with the domain name, or the purported offering of information about Bergen, Norway.

Complainant asserts, based on the above, that Respondent cannot show that Respondent used or made demonstrable preparations to use the subject Domain Names or name(s) corresponding to the subject Domain Name(s) in connection with a bona fide offering of goods or services.

Complainant also asserts that Respondent has no interest in or association with Bergen, Norway just like the prior registrant, and Respondent indisputably has no rights or interest in the AMERISOURCE mark, and therefore, Respondent is not making a legitimate non-commercial fair use of the subject Domain Names.

            3. Registration and Use in Bad Faith

The prior registrant registered the subject Domain Names on the same day when AmeriSource Corporation and Bergen Brunswig Corporation announced a proposed merger.   On November 5, 2001, a panel issued a decision holding that the prior registrant has no right or legitimate interests in or to the subject Domain Names, and had registered the Domain Names in bad faith.  Respondent acquired the subject Domain Names from the prior registrant shortly after the decision on the subject Domain Names.

The prior registrant registered <globalsantafe.com> and <globalsantafe.net> on a next day that Global Marine, Inc. and Santa Fe International Corporation announced a merger into a company named GlobalSantaFe.  The administrative contact for the GLOBALSANTAFE domain name registrations uses the same name credited with the copyright on the initial web page posted to the subject Domain Names by Respondent.  Based on the above, Complainant asserted that Respondent acted in league with the prior registrant, who has engaged in a pattern of bad-faith registrations of domain names incorporating third party marks.

Complainant also contends that the Subject Mark is highly distinctive, and the very use of the Subject Mark in Respondent’s web site indicates that Respondent sought commercial gain by attracting consumers and other Internet users to Respondent’s site.

B. Respondent

Respondent asserts the following in accordance with ICANN Policy 4.

1. Complainant's Trademark Right and Similarity between the Trademark and the Domain Names

Respondent asserts that Complainant does not have right to the Subject Mark because Complainant started to use the mark only recently on March 19, 2001, filed the trademark application on May 24, 2001; substantially used the Subject Mark after August 29, the date the merger was completed; and the Subject Mark was used only as a trade name but not as a trademark or a service mark.

2. Rights or Legitimate Interests

Respondent contends that he is planning to build a site for providing information on the city of Bergen, Norway and also on North Europe and America.   Respondent claims that he was constructing the web site before he received any notice of this dispute and was suspended because of this dispute.

Respondent also asserts that he did not construct any web site that may cause confusion with the trade name of Complainant and is making a legitimate non-commercial or fair use of the subject Domain Names.

3. Registration and Use in Bad Faith

Respondent asserts that the fact that Respondent refused Complainant’s offer of US $5,000 in return for the transfer of the subject Domain Names demonstrates that Respondent did not acquire the subject Domain Names for the purpose of selling, renting or otherwise transferring the Domain Names to Complainant.

Respondent claims that the administrative contact for the GLOBALSANTAFE domain name registration was referred to on the web page posted to the subject Domain Names because Respondent asked through the prior registrant a company specializing in building web sites to build a web site, which does not mean that Respondent acted in concert with the prior registrant.

Respondent also asserts that the prior decision on the case between the prior registrant and Amerisource Corporation has no effect on the subject case because Respondent lawfully acquired the subject Domain Names from the prior registrant.

Respondent contends that the web site providing information on Bergen city does not create any likelihood of confusion with Complainant that is a distributor of pharmaceutical and healthcare products and services.

FINDINGS

The Panel finds that Complainant has trademark right in the name "AmerisourceBergen."  Further, the Panel finds that the subject Domain Names are identical or confusingly similar to the trademark "AmerisourceBergen."

            The Panel finds that Respondent has no rights or legitimate interests in the subject Domain Names.

            The Panel finds that the subject Domain Names have been registered and are being used in bad faith.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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."

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.

Complainant’s Trademark Right and Similarity between Trademark and Domain Names

The Subject Mark has been used by Complainant for only several months.   However, Amerisource Health Corporation and Bergen Brunswig Corporation had invested substantial time, money and effort in advertising and promoting the marks AMERISOURCE and BERGEN BRUNSWIG DRUG COMPANY, respectively, and had developed considerable recognition and goodwill in the marks.  Therefore, it is considered that the goodwill from the above two marks is reflected in and extended though the adoption of the AMERISOURCEBERGEN trade name and trademark.  Complainant also filed an application for the mark "AMERISOURCE-BERGEN" on May 24, 2001 and amended the mark to "AmerisourceBergen."

Based on the above, the Panel finds that Complainant has rights to the Subject Mark.

The Subject Mark is identical or confusingly similar to the subject Domain Names since the only differences are addition of ".com" (and a hyphen in one of the Subject Domain Names).

Rights or Legitimate Interests

Respondent has never been known by the Subject Mark.  The web site at the subject Domain Name URLs was comprised of the term "AmerisourceBERGEN" and an "under construction" notice in English without more detailed information on Bergen or other information that Respondent argued that he is planning to provide.  Therefore, it is considered that Respondent failed to establish that he used or made demonstrable preparations to use the subject Domain Names in connection with a bona fide offering of goods or service.

Respondent claims that he is planning to build a site for providing information on the city of Bergen, Norway and also on North Europe and America.  However, the combination of "Amerisource" and "Bergen" is not ordinary but arbitrary considering the nature of the information Respondent is alleging to provide using the subject Domain Names.  Therefore, Respondent fails to establish that he is making legitimate non-commercial or fair use of the subject Domain Names.

Based on the above, the Panel concludes that Respondent has no rights or legitimate interests in the subject Domain Names.

Registration and Use in Bad Faith

Respondent acquired the subject Domain Names from the prior registrant shortly after the decision holding that the prior registrant has no right or legitimate interests in or to the subject Domain Names and had registered the Domain Names in bad faith (AmeriSource Corp. v. Jongsun Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001).

Although Respondent showed that Bergen is a name of a city that cannot be monopolized, he did not argue that AmerisourceBergen is a generic name that can be used by anybody.  Rather, "AmerisourceBergen" is very unique that it is inconceivable that Respondent (and the prior registrant) selected the subject Domain Names by chance for a site of providing general tour information.

Moreover, "AmerisourceBergen" is recognized as the name of Complainant because the companies "Amerisource Corporation" and "Bergen Brunswig Corporation" accumulated considerable goodwill in each companies’ name, which is extended to the name of Complainant.

Therefore, it is considered that Respondent obtained the subject Domain Names knowing the existence of Complainant for the purpose of prohibiting Complainant to reflect its name in a corresponding Internet domain.  If we held otherwise (i.e., allow the kind of domain name transfer that took place here), the whole objective of the UDRP system would be defeated.

Further, under the above circumstance (where the subject name is very distinctive), it is considered that holding of the subject Domain Names by Complainant constitutes a domain name being used in bad faith. (See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000)

DECISION

For the foregoing reasons, the Panel decides that the subject Domain Names be transferred to Complainant.

Young Kim, Panelist

Dated: January 31, 2001

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/137.html