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Immunex Corporation and Amgen Inc. v. Domain Active Pty. Ltd. [2005] GENDND 1601 (26 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Immunex Corporation and Amgen Inc. v. Domain Active Pty. Ltd.

Case No. D2005-0882

1. The Parties

The Complainants are Immunex Corporation and Amgen Inc. of Thousand Oaks, California, United States of America, represented by DLA Piper Rudnick Gray Cary US LLP of Chicago, Illinois, United States of America.

The Respondent is Domain Active Pty. Ltd. of Clayfield, Queensland, Australia.

2. The Domain Name and Registrar

The disputed domain name <psoriasisenbrel.com> (the “Domain Name”) is registered with Fabulous.com Pty. Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on August 18, 2005, and in hard copy on August 19, 2005. The Center transmitted its request for registrar verification to the Registrar by email on August 19, 2005. The Registrar responded by email on August 22, 2005, stating that it had received a copy of the Complaint, confirming that it was the Registrar and the Respondent was the registrant of the Domain Name; that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to the registration; that the Domain Name would remain locked during this proceeding; and that the registration agreement was in English and contained a submission by the Respondent to the jurisdiction at the principal office of the Registrar for court adjudication of disputes concerning use of the Domain Name, and providing the contact details for the Respondent recorded on its database.

The Center verified that the Complaint satisfied the formal requirements of 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”) on August 23, 2005.

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 August 23, 2005. The notification was sent by email, courier and fax to the addresses and number for the Respondent on the Registrar’s Whois database and also by email to postmaster@ the Domain Name. The email and courier to the addresses on the Registrar’s Whois database appear to have been delivered successfully.

In accordance with the Rules, paragraph 5(a), the due date for Response was September 12, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2005.

The Center appointed Jonathan Turner as the sole panelist in this matter on September 19, 2005. 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.

The Panel notes that the Complaint is made by two companies in the same group of companies against the same Respondent. The Rules, paragraph 3(a), provide that “any person or entity may initiate a complaint”. The Panel considers that members of the same group of companies may constitute an “entity” for the purposes of this provision, in line with the decisions in Société Générale and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri, WIPO Cases No. D2002-0760 and Compagnie Générale des Etablissements Michelin CGEM – Michelin & Cie, Michelin Recherche et Technique S.A. v. Horoshiy Inc., WIPO Case No. D2004-0752.

Having reviewed the file, the Panel is satisfied that the Complaint complied with formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.

4. Factual Background

The First Complainant (a subsidiary of the Second Complainant) develops and supplies pharmaceutical preparations for treatment of psoriasis and other human immune diseases and conditions under the mark “ENBREL”. The First Complainant has registered “ENBREL” as a trademark in the USA.

The Respondent registered the Domain Name on October 28, 2004, and is offering it for sale for US $400. The Domain Name is directed to a website containing links to websites of suppliers of competing pharmaceutical preparations. Findings of bad faith registration and use of domain names identical or similar to well-known marks have been made against the Respondent in a number of other proceedings by other complainants under the Policy.

5. Parties’ Contentions

A. Complainants

The Complainants contend that the Domain Name is confusingly similar to their mark “ENBREL”; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that it was registered and is being used by the Respondent in bad faith.

In particular, the Complainants allege that the Domain Name is being used by the Respondent to divert Internet users to websites promoting competing products via sponsored links on the Respondent’s web page, and that the Respondent is thereby profiting from confusion by receiving “click-through” commissions. The Complainants further allege that the Respondent has engaged in a pattern of registering domain names in bad faith, as evidenced by a number of successful complaints by other parties against the Respondent under the Policy. The Complainants also rely on the fact that the Respondent has offered to sell the Domain Name for US $400, pointing out that this is substantially in excess of the normal cost of registration.

The Complainants request that the Domain Name be transferred to them.

B. Respondent

As noted above, the Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In accordance with the Policy, paragraph 4(a), to succeed in this proceeding, the Complainants must prove (a) that the Domain Name is identical or confusingly similar to a mark in which they have rights, (b) that the Respondent has no rights or legitimate interests in respect of the Domain Name, and (c) that the Domain Name was registered and is being used in bad faith. These requirements will be considered in turn.

A. Identical or Confusingly Similar to Mark in which Complainants have Rights

The Panel is satisfied on the evidence that the First Complainant has registered rights in the mark “ENBREL”.

The Panel further considers that the Domain Name is confusingly similar to this mark, since it differs from the mark only in the generic “.com” suffix and the prefix “psoriasis”, which identifies one of the principal conditions to which products supplied by the Complainants under the mark are directed. The Panel considers that a significant number of Internet users would assume that the Domain Name indicates a website of the Complainants relating to psoriasis.

B. No Rights or Legitimate Interests

The Panel considers that the Respondent has no rights or legitimate interests in respect of the Domain Name. As further discussed below, such use as the Respondent has made of the Domain Name has not been bona fide, legitimate or fair so as to give rise to rights or legitimate interests in relation to them.

C. Registered and Used in Bad Faith

The Panel is satisfied by the Complainants’ unchallenged evidence that the Domain Name is being used to attract Internet users to the Respondent’s web page by creating a likelihood of confusion with the Complainants’ marks for the purpose of commercial gain in the form of click-through commissions on the sponsored links to websites promoting products which compete with the Complainants’ preparations. Even if internet users realize when they view the Respondent’s web page that it is not connected with the Complainants, the Respondent is still liable to profit from their initial confusion since users may still be tempted to click on the sponsored links.

The Panel is also satisfied by the evidence that the Respondent is offering to sell the Domain Name for a price significantly in excess of the Respondent’s documented out-of-pocket costs.

Both of these uses are in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. The Panel further infers that the Domain Name was registered in bad faith for one or both of these purposes.

The Panel accordingly concludes that the Domain Name was registered and is being used in bad faith. This conclusion is corroborated by the findings of bad faith registration and use of domain names by the Respondent in other cases.

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 <psoriasisenbrel.com> be transferred to the First Complainant, Immunex Corporation.

Jonathan Turner
Sole Panelist

Dated: September 26, 2005