DECISION

Medimmune, Inc. v. Holding Acailability

Claim Number: FA0112000102739

PARTIES

Complainant is Medimmune, Inc., Gaithersburg, MD (“Complainant”) represented by Jennifer A. Hamilton, of Pennie & Edmonds, LLP.  Respondent is Holding Acailability, Berlin, NJ (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <synagis.com>, registered with Go Daddy Software, Inc.

PANEL

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

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 5, 2001; the Forum received a hard copy of the Complaint on December 10, 2001.

On December 7, 2001, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <synagis.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 11, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 31, 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@synagis.com by e-mail.

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 January 7, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “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 Respondent.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant makes the following assertions:

The disputed domain name <synagis.com> is identical to SYNAGIS, a mark in which Complainant holds rights.  Respondent has no rights or legitimate interests in respect of the disputed domain name.  Respondent registered and used the disputed domain name in bad faith.

B. Respondent did not submit a Response in this proceeding.

FINDINGS

Complainant is a biotechnology company that produces SYNAGIS, an immunizing agent used to prevent infection caused by Respiratory Syncytial Virus.  Complainant applied for a trademark in SYNAGIS on December 19, 1997, and first launched the SYNAGIS product on September 10, 1998.  One day before the official launch of the product, Respondent registered the disputed domain name <synagis.com>.

Complainant’s trademark in SYNAGIS was registered on the Principal Register of the United States Patent and Trademark Office on May 25, 1999, as Registration No. 2,248,349.

Since the disputed domain name was registered, it has been inactive, not resolving to any functioning web server.  On at least one occasion, Respondent offered via e-mail to sell the domain name to Complainant for approximately $2,750.

DISCUSSION

Paragraph 15(a) of 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.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(2) 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 to and/or Confusingly Similar

Complainant has established its rights in the mark SYNAGIS. The disputed domain name is identical to Complainant’s mark. Complainant registered the trademark with the appropriate authorities. The fact that the application was pending at the time the disputed domain name was registered does not defeat Complainant's standing to bring a claim under the Policy.  See MatchNet PLC. V. MAC Trading, D2000-0205 (WIPO May 11, 2000) (citing British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the UDRP “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).  The Policy does not require Complainant to have held a registered mark at the time the disputed domain name was registered, or even that Complainant held exclusive rights in the mark, to succeed in its claim.  See Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require Complainant to demonstrate exclusive rights, but only that complainant has a bona fide basis for making the complaint in the first place). 

The domain name <synagis.com> is identical to Complainant’s SYNAGIS mark.  The addition of “.com” to the mark does not significantly alter the domain name so as to distinguish it from the mark.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights to or Legitimate Interests

Complainant has established that it has rights to and legitimate interests in the SYNAGIS mark. Respondent’s failure to submit a Response in this proceeding permits the Panel to presume that Respondent has no rights or legitimate interests in the disputed domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Further, no evidence in the record suggests that Respondent has used the disputed domain name to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i);there is no suggestion that Respondent is commonly known as “synagis” or “synagis.com” pursuant to Policy ¶ 4(c)(ii) and no suggestion that Respondent has used the domain name for a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  The Panel concludes that Respondent has no such rights to or legitimate interest in the domain name that is identical to Complainant’s mark.  See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names, and no use of the domain names has been established); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any right or interest it may possess).

In addition, by passively holding the disputed domain name for three years, Respondent has demonstrated that it has no intention to use the domain name and that it has created no rights or legitimate interests in it.  See Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest could be found when Respondent failed to use disputed domain names in any way); see also American Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name).

The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied and that Respondent has no rights or legitimate interests with respect to the disputed domain name.

Registration and Use in Bad Faith

Complainant alleges that Respondent acted in bad faith in registering and passively holding the domain name in issue and offering it for sale in an amount in excess of the reasonable costs of registration.  Respondent’s offer to sell the disputed domain name for approximately $2,750 is evidence of bad faith registration and use under Policy ¶ 4(b)(i).  See Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy ¶ 4(b)(i) where Respondent stated in communication with Complainant, “if you are interested in buying this domain name, we would be ready to sell it for $10,000”); see also American Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).

Respondent’s three-year nonuse of the disputed domain name constitutes passive holding, which also indicates bad faith under the Policy.  See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.

Accordingly, it is Ordered that the <synagis.com> domain name be transferred from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

    Dated: January 17, 2002.

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