DECISION

Orphan Medical, Inc. v. Bobby Charlton

Claim Number: FA0205000112608

PARTIES

Complainant is Orphan Medical, Inc., Minnetonka, MN (“Complainant”) represented by Marsha Stolt, of Fish & Richardson P.C.  Respondent is Bobby Charlton, Chennai, IN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <xyrem.com>, registered with Network Solutions, Inc.

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.

James Alan Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 30, 2002; the Forum received a hard copy of the Complaint on May 1, 2002.

On May 2, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <xyrem.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 May 2, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 22, 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.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 June 3, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James Alan Crary 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

The disputed domain name <xyrem.com> is identical to XYREM, a mark in which Complainant holds rights.

Respondent has no rights or legitimate interests in the disputed domain name.

Respondent registered and used the disputed domain name in bad faith.

B. Respondent

Respondent did not submit a Response in this proceeding.

FINDINGS

Complainant is a pharmaceutical company that developed a drug to treat narcolepsy, which it coined XYREM.  Complainant applied for a trademark with the United States Patent and Trademark Office for the XYREM mark in 1998, which was approved on June 1, 1999 (Reg. No. 2249959).  Complainant also owns registrations in Europe and Japan for its XYREM mark.  Complainant’s XYREM mark is well-known within and outside the pharmaceutical industry, particularly because of the publicity associated with the chemical Sodium Oxybate, a Schedule 1 substance, included in the XYREM drug. 

Respondent registered the domain name <xyrem.com> on November 9, 2000.  Respondent briefly used the disputed domain name to operate a website that provided information and criticism about Complainant’s XYREM drug without authorization from Complainant.  Respondent, however, has not actively used the disputed domain name in connection with a website for over a year. 

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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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

The disputed domain name <xyrem.com> is identical to Complainant’s XYREM mark because the addition of the generic top-level domain “.com” is irrelevant in a Policy ¶ 4(a)(i) analysis.  See Pomellato S.P.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain “.com” after the name POMELLATO is not relevant); see also 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); see also Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to Complainant’s registered ROBOHELP trademark, and that the "addition of ‘.com’ is not a distinguishing difference").

The Panel finds that Policy ¶ 4(a)(i) has been satisfied. 

Rights or Legitimate Interests

Complainant has demonstrated its rights to and interests in the XYREM mark. Because Respondent has not submitted a Response in this proceeding, the Panel may presume it has no such rights or interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondent’s failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant. See Vertical Solutions Mgmt., Inc. v. Webnet-marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent’s brief use of the disputed domain name to divert and confuse Internet traffic for the purpose of inseminating information about Complainant’s product, without authorization, did not constitute a bona fide offering of goods or service pursuant to Policy ¶ 4(c)(i).  See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that “unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).

Respondent’s brief use of the disputed domain name did not constitute a noncommercial or fair use under Policy ¶ 4(c)(iii) because Complainant’s entire XYREM mark is incorporated in the domain name that is associated with a website critiquing Complainant’s XYREM drug.  See Robo Enter., Inc. v. Tobiason, FA 95857 (Nat. Arb. Forum Dec. 24, 2000) (holding that in order to qualify as a protected ‘parody’ which would confer rights or a legitimate interest, the domain name itself must signify critical purposes, as opposed to imitation of the service mark); see also E. & J. Gallo Winery v. Hanna Law Firm, D2000-0615 (WIPO Aug. 3, 2000) (finding that establishing a legitimate free speech/complaint site does not give rights to use a famous mark in its entirety); see also Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) (finding that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to Complainant's DAVID WEEKLEY HOMES mark).

Moreover, Respondent’s current passive holding of the disputed domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and made no use of the domain name in question); see also Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute, the Respondent has not used the domain names in connection with any type of bona fide offering of goods and services).

Respondent is not commonly known by XYREM or <xyrem.com> and is only known to this Panel as Bobby Charlton.  Therefore, Respondent has no rights in the disputed domain name because Policy ¶ 4(c)(ii) has not been satisfied.  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); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

The Panel finds that Respondent has no rights or legitimate interests in respect of <xyrem.com>, and that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent registered the disputed domain name after Complainant had adopted, used, and secured a federal trademark registration.  Also, Complainant’s XYREM mark received considerable publicity concerning efforts to gain FDA approval for sale of the XYREM drug before Respondent registered the disputed domain name.  Hence, Respondent is considered to have had constructive knowledge about Complainant’s rights in the XYREM mark when it registered the disputed domain name; thus, the registration was in bad faith.  Moreover, Respondent not only had constructive knowledge of Complainant’s rights but Respondent had actual knowledge.  Respondent’s registration of the disputed domain name, comprised only of Complainant’s XYREM mark, and subsequent use for a criticism website evidence actual knowledge of Complainant’s rights in XYREM.  Therefore, Respondent’s registration with actual and/or constructive knowledge of Complainant’s rights constitutes bad faith as Respondent’s use infringes upon Complainant’s goodwill.  See Paws, Inc. v. Odie, FA 96206 (Nat. Arb. Forum Jan. 8, 2001) ("Given the uniqueness and the extreme international popularity of the [ODIE] mark, the Respondent knew or should have known that registering the domain name in question would infringe upon the Complainant's goodwill"); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith).

Respondent’s registration and use, despite its current inactive use, of <xyrem.com> constitutes bad faith because Complainant’s XYREM mark is so unique and distinctive so as to preclude any plausible explanation for registration and use.  See Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding registration in bad faith based where there is no reasonable possibility, and no evidence from which to infer that the domain name was selected at random since it entirely incorporated Complainant’s name); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding bad faith when (1) the domain name contains the Complainant’s mark in its entirety, (2) the mark is a coined word, well-known and in use prior to Respondent’s registration of the domain name, and (3) Respondent fails to allege any good faith basis for use of the domain name); see also Northwest Airlines, Inc. v. Koch, FA 95688 (Nat. Arb. Forum Oct. 27, 2000) (“the selection of a domain name <northwest-airlines.com> which entirely incorporates the name of the world’s fourth largest airline could not have been done in good faith”).

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 <xyrem.com> domain name be transferred from Respondent to Complainant.

James Alan Crary, Panelist

Dated: June 7, 2002

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