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Xenova Limited v. Epinox Technology Solutions Private Limited [2004] GENDND 1359 (14 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Xenova Limited v. Epinox Technology Solutions Private Limited

Case No. D2004-0678

1. The Parties

The Complainant is Xenova Limited, of Slough, Berkshire, United Kingdom of Great Britain and Northern Ireland, represented by Ryan Jones, Xenova Limited, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Epinox Technology Solutions Private Limited, of Pune, Maharashtr, India, represented by Shreekant Kulkarni, of Pune, India.

2. The Domain Name and Registrar

The disputed domain name <xenova.com> (the “Domain Name”) is registered with BulkRegister.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2004. On August 26, 2004, the Center transmitted by e-mail to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On August 27, 2004, BulkRegister.com transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contacts. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 1, 2004. In accordance with the Rules, paragraph 5(a), the due date for the Response was September 21, 2004. The Response was filed with the Center on September 20, 2004.

The Center appointed Zbyněk Loebl as the Sole Panelist in this matter on September 30, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

With the Response, the WIPO Center received a copy of a civil suit by the Respondent stating that, in the first week of July 2004, the Respondent filed a regular civil suit (Number 957 of 2004) in the Civil Court of Judge Pube at Pune, India. The Panel has not received any further information about the proceedings, except receiving an e-mail and telefax copy of the above-mentioned civil suit on October 12, 2004, from the Center and a hardcopy on October 13, 2004.

The Panel has decided that this administrative proceeding should proceed to a decision, in accordance with the Rules in 18(a), and based, among other things, on the following reasons. The Policy was designed to provide an efficient dispute resolution alternative to standard court proceedings. The Respondent accepted the application of such a mechanism. In addition, there are several issues related to the civil suit in question which implications cannot be fully assessed by the Panel. For example, according to the Complainant, neither the Respondent nor the Court has delivered to him the notification of the civil suit mentioned above, and the Respondent has not supplied proof that the notification was delivered to the Complainant. The hardcopy contains a substantial amount of text in a language not understandable to the Panel.

4. Factual Background

The Complainant is a pharmaceutical company which was founded in 1987 with the mission to bring new drug discovery capabilities to bear on key diseases such as cancer and HIV. The Complainant underwent an IPO on the Nasdaq stock exchange in 1994 and obtained a full listing on the London Stock Exchange in 1996.

The Complainant provided evidence about its ownership of the trademark XENOVA. The trademark is the subject of a number of trademark registrations, especially in Benelux, the European Union, and Japan. The Complainant also referred, although only in a general way, to partnerships with other pharmaceutical companies worldwide, including Ranbaxy Laboratories Limited in India.

The Domain Name was registered on January 13, 2000, with BulkRegister.com. According to the Complainant, the Respondent was only incorporated on February 20, 2004; this fact has not been challenged by the Respondent. When the disputed domain name was due to expire in January 2004, attempts were made by the Complainant to secure renewal via automated domain purchasing system SnapNames. However, the Respondent renewed the domain name for an additional year.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its trademark XENOVA (as the Complainant’s whole trademark is included in the Domain Name), that the Respondent has no rights or legitimate interests in the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith.

As evidence that the Respondent has no rights or legitimate interests in the Domain Name, the Complainant draws the Panel’s attention to the lack of evidence of any bona fide offer of goods or services (i.e., holding a domain name for four years without intent to offer goods or services, creating a website only after being contacted by the Complainant, and not using the Domain Name for e-mail communications) and the fact that the Respondent has not been commonly known by the Domain Name. In addition, although Xenova Candles are manufactured by Epinox Technology Solutions Private Limited, the Complainant was unable to find any indexed website with a link to the Domain Name, which the Complainant deems to be highly unlikely for a successfully operating business—not having any links from any other site.

The Domain Name is considered to be registered and used in bad faith by the Respondent, because it was registered and acquired primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant for a valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the Domain Name. Moreover, the Complainant draws the Panel’s attention to the Respondent’s e-mail communications from March and April 2000, the “For Sale” sign on the website of the Domain Name, and the fact that the Respondent requested contact telephone numbers and refused to communicate via e-mail.

B. Respondent

The Respondent takes the following view:

• The Domain Name was registered on January 13, 2000, and a simple website on Xenova Decorative Candles was published within two weeks.

• This simple website was updated and expanded many times by the Respondent.

• The Respondent registered the Domain Name in good faith and has used it to sell a legitimate product.

• The Domain Name is not only used to run a website, but it is also employed in newspaper advertising by the Respondent. To the Response, the Respondent attached one clipping from a newspaper advertisement in a local Indian newspaper.

• The Complainant tried to purchase the Domain Name from the Respondent many times, only to be rebuffed. All the purchase attempts were initiated by the Complainant.

• The Complainant is being sued in a civil court in India for trying to hijack the Domain Name.

• The Respondent has never offered to sell the Domain Name. Over the years, the Respondent has received three to four e-mails from different parties wanting to purchase the Domain Name. The Respondent maintains that in each case he clearly replied that the Domain Name was not for sale.

6. Discussion and Findings

According to Paragraph 4(a) of the Policy, the Complainant must prove each of the following points:

(i) that 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

(ii) that the Respondent has no legitimate interests in respect to the Domain Name; and

(iii) that the Domain Name has been registered and used in bad faith.

I. Identical or Confusingly Similar Domain Name

The Panel finds that the relevant part of the Domain Name is identical to the trademark registration of the word “Xenova” held by the Complainant and the registered company name of the Complainant. The Complainant has provided evidence of ownership of a number of trademark registrations and applications. The suffix “com” is to be considered immaterial in the evaluation of the confusing similarity between the Complainant’s trademark and the Domain Name, since it is instrumental and basic in the use of the Internet.

In view of the above, the Panel finds that the Complainant has proven that the Domain Name is confusingly similar to the trademark of the Complainant, according to paragraph 4(a)(i) of the Policy.

II. Respondent’s Rights or Legitimate Interests in the Domain Name

The Complainant contends that the Respondent has no rights of any legal nature in the Domain Name. On the other hand, the Respondent suggests that, since there is a preponderance of domain names based on “nova,” the word “xenova” is a natural etymological derivative of the base word. If the domain name <nova.com> had been available, the Respondent would have preferred to have used that. Therefore, according to the Respondent, the Complainant cannot claim an exclusive right to the use of the word “xenova.”

In this case, the Domain Name is identical to both the Complainant’s trademark and its company name. It does not describe any generic type of goods sold by the Respondent or the name of the Respondent’s business.

Furthermore, as decided in Zee Telefilms Ltd. and Wimpole Holdings Ltd (presently known as Zee Multimedia Worldwide Ltd.) v. Rahul Dholakia and Oznic.com, WIPO Case No. D2001-0624, “… the majority of Panel decisions on this point have taken the position that while the complainant has the burden of proof on this issue, once the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue”. Concrete evidence “constitutes more than mere personal assertions. Just as a Panel should require a complainant to establish by means other than mere bald assertions that it is the owner of registered marks, so should the panel require that a respondent come forward with concrete evidence that the assertions made in the response are true”. Furthermore, “where a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion. This information is uniquely within the knowledge and control of the respondent. Failure of a respondent to come forward with such evidence is tantamount to admitting the truth of complainant’s assertions in this regard”.

Xenova is a made-up word, one that was merely invented and not found in dictionaries. By itself, it is not of a descriptive nature. The Respondent undertakes its business under a different name, and there is no evidence of any long-term use of the word “xenova” in connection with its business or with the production of Xenova Candles.

Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect to the Domain Name, according to paragraph 4(a)(ii) of the Policy.

III. Domain Name Registered and Used in Bad Faith

The Complainant provided a copy of an e-mail which it received from the Respondent, dated April 2, 2000, in which the Respondent requests an amount of US$10,000 (ten thousand US dollars) for selling the Domain Name without any evidence that such email was sent in response to an initial offer by the Complainant. This amount is clearly in excess of the Respondent’s out-of-pocket costs directly related to the Domain Name. Nonetheless, the Respondent alleges that over the years he has received three to four e-mails from different parties wanting to purchase the Domain Name, and in each case, the Respondent clearly replied that the Domain Name was not for sale. However, the Respondent did not reply in the same manner when communicating by e-mail with the Complainant; instead, he always asked the Complainant for telephone numbers to discuss the issue over the phone. The Complainant has provided evidence that there was a “For Sale” sign posted on the website of the Domain Name, at “www.xenova.com”.

In addition, the Complainant produced evidence that the person controlling the Respondent, Mr. Vinayak Kulkarni, has been Respondent in several other WIPO proceedings, including e.g. WIPO Case No. D2003-0940 or WIPO Case No. D2000-1769. The Panel considers this fact as a supporting evidence of the Respondent’s bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <xenova.com> be transferred to the Complainant.

Zbyněk Loebl
Sole Panelist

Dated: October 14, 2004