DECISION

Orphan Medical, Inc. v. Alan Holton

Claim Number: FA0207000117326

PARTIES

Complainant is Orphan Medical, Inc., Minnetonka, MN, USA (“Complainant”) represented by Marsha Stolt, of Fish & Richardson P.C., P.A.  Respondent is Alan Holton, Sedgefield, ZA, SOUTH AFRICA (“Respondent”) represented by Ryk Meiring.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <xyrem.org> and <xyrem.net>, registered with Register.com.

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.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 30, 2002; the Forum received a hard copy of the Complaint on July 30, 2002.

On July 31, 2002, Register.com confirmed by e-mail to the Forum that the domain names <xyrem.org> and <xyrem.net> are registered with Register.com and that the Respondent is the current registrant of the names.  Register.com has verified that Respondent is bound by the Register.com 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 July 31, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 20, 2002 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@xyrem.org and postmaster@xyrem.net by e-mail.

A timely Response was received and determined to be complete on September 9, 2002.

An untimely Additional Written Statement by Complainant was received on September 17, 2002.  Even though this submission was not timely filed, it was read and considered by this Panelist.

An untimely Respondent’s Request to Deny Complainant’s Additional Written Statement and Respondent’s Additional Written Statement was filed on September 30, 2002.  Even though this submission was not timely filed, it was read and considered by this Panelist.

On September 20, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.)  as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that the domain names at issue are identical or confusingly similar to a mark in which Complainant has rights; that Respondent has no rights or legitimate interests in the domain names at issue; and Respondent registered, has used and is using the domain names at issue in bad faith.

B. Respondent

Respondent contends that it does not deny that the domain names at issue are not identical to the trade or service marks in which Complainant has rights; that Respondent should be considered as having rights or legitimate interest in the domain names at issue, and that the domain names at issue should not be considered as having been registered and used in bad faith.

C. Additional Submissions

Complainant’s Additional Written Statement was filed in response to Respondent’s Response, and re-affirms Complainant’s contentions.

Respondent’s Request to Deny Complainant’s Additional Written Statement requests that the Statement be disallowed for non-compliance with the Policy.  Respondent’s Additional Written Statement appears to be a rebuttal of Complainant’s Additional Written Statement, and re-affirms Respondent’s contentions.

FINDINGS

Complainant is a pharmaceutical company that places emphasis on acquiring, developing and marketing products for uncommon and inadequately treated diseases.   Currently, Complainant’s efforts are directed toward three specific market segments, same being antidotes, oncology support and sleep disorders. 

XYREM® is the mark coined by Complainant as a brand name for a product in its sleep disorder category, and is used to treat narcolepsy.  The generic name for this product is Sodium Oxybate, or Gamma-Hydroxybutyrate ("GBH"), which was the subject of the Hillory J. Farias and Samantha Reid Date-Rape Drug Prohibition Act of 2000. Complainant’s XYREM® pharmaceutical product is the only authorized medical use of Sodium Oxybate, and Complainant is the sole provider of this compound for medical purposes.  

Complainant is the exclusive owner of five trademark registrations for its coined XYREM® mark, three in the U.S., one in the European Community and one in Japan. Complainant also owns 9 pending applications for registration of the mark in various countries.

Respondent states that it is representative of a group of various individuals (referred to as "the Collaborators").  Respondent declines to identify the Collaborators, other than that they are individually able to demonstrate substantial knowledge of, experience in, and alternatively investigative research into the history of Complainant’s product. 

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.

Identical and/or Confusingly Similar

Respondent does not deny that the domain names at issue are identical to the Complainant’s registered trademark.  Therefore, there is no dispute as to Complainant’s  allegation.

Rights or Legitimate Interests

Respondent registered the domain names at issue in August, 2000.  Complainant’s Exhibit 8 to its Complaint shows that the domain names at issue both resolved to the same website as of June 14, 2002.  The content of the websites refer to "The White Rabbit Action Group" and the introductory paragraph on page two states that it is the site owner’s intended purpose to use the site "... as a forum for the discussion of the demonization of GHB - or Xyrem as it will now be known..." There was no indication in the evidence presented that Respondent has ever made or is making a bona fide offering of goods and services on any websites associated with the domain names at issue.  See Chi-Chi’s Inc. v. Restaurant Commentary, D2000-0321 (WIPO July 13, 2000) (finding that Respondent had no rights or legitimate interest in the domain name even though Respondent stated that it intended to use the domain name for “public comment” on the Internet).

In addition, Respondent has not provided any evidence that they are known by the name XYREM or by the domain names at issue, or that they own any trademark or service mark registrations for Xyrem.  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark). 

Registration and Use in Bad Faith

The publicity surrounding Complainant’s product, coupled with the content of Respondent’s website provides every indication that Respondent had prior knowledge of Complainant’s mark prior to the registration of the domain name.  See Deutsche Bank AG v. Diego-Arturo Bruckner, D2000-0277 (WIPO May 30, 2000) (holding that Respondent should have known of Complainant’s marks at the time of registration given the widespread use and fame of Complainant’s “Deutsche Bank” mark).

Further, given the negative nature of the information contained in Respondent’s website, it would appear that Respondent registered the domain names at issue with the intent of creating confusion as the source and/or sponsorship of the Complainant’s website. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000)( finding bad faith where Respondent attracted users to a website sponsored by Respondent and created confusion with Complainant’s mark as to the source, sponsorship, or affiliation of that website).

DECISION

As all three elements required by the ICANN Policy Rule 4(a) have been satisfied, it is the decision of this Panelist that the requested relief be GRANTED.  

Accordingly, for all of the foregoing reasons, it is ordered that the domain names <xyrem.net> and <xyrem.org> be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.), Panelist
Dated:  October 7, 2002

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