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Immunex Corporation and Amgen Inc. v. Quentin Weber [2005] GENDND 1604 (26 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Immunex Corporation and Amgen Inc. v. Quentin Weber

Case No. D2005-0883

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 Quentin Weber of Phoenix, Arizona, United States of America.

2. The Domain Name and Registrar

The disputed domain name <bioimmunex.com> (the “Domain Name”) is registered with Go Daddy Software, Inc. (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, confirming that it had received a copy of the Complaint, 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 copies sent by email and courier 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 (now a subsidiary of the Second Complainant) has developed and supplied pharmaceutical preparations under the name “IMMUNEX” for more than twenty years. The First Complainant has registered “IMMUNEX” as a trademark in the USA and other countries.

The Respondent registered the Domain Name on January 26, 2004. The Complainant’s attorneys sent the Respondent letters objecting to the registration dated April 6, April 19, June 2 and September 13, 2004, but did not receive any reply. The Domain Name resolves to a standard holding page of the Registrar.

5. Parties’ Contentions

A. Complainants

The Complainants contend that the Domain Name is confusingly similar to their mark “IMMUNEX”; 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.

With regard to the last requirement, the Complainants rely on the fact that the Domain Name was registered long after the First Complainant became well-known under the name “IMMUNEX”, the absence of any practical use of the Domain Name by the Respondent and his failure to respond to the Complainants’ attorneys’ letters. The Complainants submit that similar matters were held to justify a finding of bad faith in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

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 “IMMUNEX”.

The Panel further considers that the Domain Name is confusingly similar to this mark, since it differs from it only in the generic “.com” suffix and the prefix “bio”, which is widely used as a prefix referring to the Complainants’ primary activity, namely biotechnology. The Panel considers that a significant number of Internet users would assume that the Domain Name indicates a website of the Complainants relating to biotechnology or biotechnological products.

B. No Rights or Legitimate Interests

The Panel considers that the Respondent has no rights or legitimate interests in respect of the Domain Name. The unchallenged evidence is that the Respondent has not made any bona fide use of, and is not commonly known under, the Domain Name or any corresponding name.

C. Registered and Used in Bad Faith

In the absence of any credible explanation on the part of the Respondent or any evidence of use for any legitimate purpose, the Panel is satisfied that the Respondent chose the Domain Name on account of its likelihood to be taken to refer to the First Complainant. At the date of the registration of the Domain Name, the First Complainant was well known under the name “IMMUNEX” as a leading company involved in biotechnology. It is improbable that a person would choose the combination “bioimmunex” without knowing and contemplating the First Complainant’s business.

The Panel further considers that the Respondent’s holding of the Domain Name, with the threat that it might at any time be used to damage the Complainants’ goodwill and divert their customers, in conjunction with the absence of any response to the Complainants’ attorneys’ letters, constitutes a form of use in bad faith in line with the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

In all the circumstances, the Panel is satisfied that the Domain Name was registered and is being used in 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 <bioimmunex.com> be transferred to the First Complainant, Immunex Corporation.

Jonathan Turner
Sole Panelist

Dated: September 26, 2005