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Schering AG v. SmartBuy Corporation [2005] GENDND 162 (21 February 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Schering AG v. SmartBuy Corporation

Case No. D2004-1037

1. The Parties

The Complainant is Schering AG, Corporate Trademark Center, Berlin, Germany, represented by Schering AG, Germany.

The Respondent is SmartBuy Corporation, Orange, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <menostar.com> is registered with 123 Easy Domain Names, Inc dba Signature Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2004. On December 8, 2004, the Center transmitted by email to 123 Easy Domain Names, Inc dba Signature Domains, Inc. a request for registrar verification in connection with the domain name at issue. On December 10, 2004, 123 Easy Domain Names, Inc dba Signature Domains, Inc. transmitted by email 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 contact. 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 December 20, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2005.

The Center appointed Peter G. Nitter as the Sole Panelist in this matter on February 10, 2005. 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.

4. Factual Background

The Complainant is a research-oriented pharmaceutical company based in Germany with more than 150 subsidiaries and associated companies worldwide, and a turnover of 4,828 billion euros in 2003.

MENOSTAR is the name of a hormone product produced by Complainant, and Complainant is the holder of trademark registrations for MENOSTAR in a large number of countries worldwide. Complainant is also the holder of a number of domain names consisting of “menostar” with the addition of generic top level domains.

Respondent has registered and is the passive holder of the domain name at issue.

5. Parties’ Contentions

A. Complainant

The domain name at issue is essentially identical to Complainant’s trademarks MENOSTAR, the only difference being the suffix “.com”.

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

The Respondent is not using the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. There is no website corresponding to the disputed domain name.

The Respondent (as an individual, business, or other organization) has never been commonly known by the name “MENOSTAR” or by any name remotely similar to “MENOSTAR”. The Respondent is not, and has never been, representative or licensee of the Complainant, nor is the Respondent otherwise authorized to use the Complainant’s trademarks.

The Respondent has registered and is using the domain name in bad faith.

The domain name at issue does not resolve to a website or other on-line presence. There is no evidence that a website or other on-line presence is in the process of being established which will use the domain name. There is no evidence of advertising, promotion or display to the public of the domain name. Finally, there is no evidence that the Respondent has offered to sell, rent or otherwise transfer the domain name to the Complainant, a competitor of the Complainant, or any other person. In short, there is no positive action being undertaken by the Respondent in relation to the domain name.

The criteria listed in the Policy paragraph 4 (b) are however not exhaustive, and other circumstances may be and have been considered in determining bad faith registration and use. Passive holding of domain names corresponding to another’s mark may support a finding of bad faith use. See Reliant Energy v. Robert Wiggins, WIPO Case No. D2001-0769 citing Lake Las Vegas Joint Venture v. M. Bridges and Third Party Protection, Investigations and Consultants, WIPO Case No. D2001-0226, and Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name “being used in bad faith” is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.

The question that then arises is what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith. This question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case. That is to say, in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), it must give close attention to all the circumstances of the Respondent’s behavior.

The particular circumstances of this case which lead to this conclusion are the following:

The Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in the USA and is planned use in other countries.

The Respondent had first registered the disputed domain name on May 8, 2004, well after the first registration of the Complainant’s trademark MENOSTAR on April 17, 1996, and the following trademark registration of MENOSTAR in other countries. In the absence of contrary evidence, this is sufficient to conclude that the Respondent knew or should have known of the Complainant’s MENOSTAR trademarks at the time he registered the disputed domain name. The Respondent could have recognized that the domain name <menostar.com> is identical to the Complainant’s trademark MENOSTAR if he had looked at a search engine and typed in MENOSTAR. In this case he had found out that every hit links to the Complainant’s trademark.

The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name.

In the absence of use of the domain name, it appears to be no explanation of the facts other than that the Respondent registered the Complainant’s domain name with an intent to use the domain name to demand unwarranted profit in bad faith and/or that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor.

The Respondent has furthermore actively provided, and failed to correct, false contact details, in breach of its registration agreement.

The Respondent failed to respond to Complainant’s efforts to make contact because of the false Respondent’s contact information in the whois-database of the registrar. This fact has long been recognized as an indication of bad faith.

Taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the domain name at issue is identical to Complainant’s registered trademarks MENOSTAR.

B. Rights or Legitimate Interests

Respondent is in default in the present case, and has therefore not asserted any rights or legitimate interests in the contested domain name.

As a result of the fact that it is generally difficult for complainant to prove the negative that respondent does not have any rights or legitimate interests, and that it would be correspondingly easy for respondent to provide evidence of any such rights, it has been established through previous panel decisions under the Policy that it is sufficient for complainant to make a prima facie showing that respondent lacks rights or legitimate interests in the domain name, in the event that Respondent does not give a Response under the proceedings.

The Panel finds that there is no evidence that Respondent has been using the domain name at issue in connection with a bona fide offering of goods or services prior to the dispute. Furthermore, there is no, and has never been a web page or other on-line location corresponding to the disputed domain name, and the Panel has not been presented with any other fact indicating that Respondent is commonly known by the name “Menostar” or any name near such name.

Respondent has never been a representative or licensee of the Complainant, nor is the Respondent otherwise authorized by the Complainant to use its MENOSTAR trademarks.

In light of the above, the Panel concludes that Respondent has made a prima facie showing that Respondent does not have any rights or legitimate interests in the disputed domain name, and that he therefore has satisfied the condition set out in the Policy, paragraph 4(c).

C. Registered and Used in Bad Faith

Inaction should not in itself be deemed as evidence of registration and use in bad faith. As set out in numerous previous Panel decisions, such as Telstra Corporation Limited v. Nuclear Marshmallow, WIPO Case No. D2000-0003, inactivity may however be seen as evidence of bad faith where there is no obvious justification for the selection of the domain name at issue, where the Respondent has not sought to put before the Panel any credible justification for selection of the domain name at issue, and where it is difficult to conceive of any use of the domain name, which will not be likely to cause confusion of some kind.

Complainant has documented that it has registered its MENOSTAR trademark in a large number of countries worldwide, and that said trademark has been used extensively in relation to the marketing and sale of Complainant’s hormone-products in the US, which according to the contact information provided by Respondent, is Respondent’s country of residence. The Panel thus finds it likely that Respondent has been aware of the MENOSTAR trademark at the time of the registration of the domain name at issue.

As a result of Respondent’s default, it has not proffered any justification for its selection of the domain name. As Respondent has been providing false contact information, it has not been possible for Complainant to communicate with Respondent, and consequently, Respondent has nor presented Complainant with any explanation or justification of its selection of the domain name. Providing false contact information is in itself seen as an indication of bad faith, according to previous Panel decisions.

Given Complainant’s numerous registrations of the trademark MENOSTAR in countries around the world, and its use of the trademark in Respondent’s country of residence, it seems likely to the Panel that Respondent’s use of the domain name at issue would cause confusion with Complainant’s rights.

As a result of the above, the Panel finds that Complainant has satisfied the requirement of proving bad faith set out in the Policy Section 4(b).

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, <menostar.com> be transferred to the Complainant.

Peter G. Nitter
Sole Panelist

Dated: February 21, 2005