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Gerd Petrik v. Johnny Carpela [2005] GENDND 266 (4 March 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Gerd Petrik v. Johnny Carpela

Case No. D2004-1043

1. The Parties

1.1 The Complainant is Gerd Petrik, Abbott Laboratories of Abbott Park, Illinois, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, of Chicago, Illinois, United States of America.

1.2 The Respondent is Johnny Carpela of Sumas, Washington, United States of America.

2. The Domain Name and Registrar

2.1 The disputed domain name <rythmol.com> is registered with Go Daddy Software.

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2004. On December 10, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On December 10, 2004, Go Daddy Software 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”).

3.2 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 16, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 5, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 20, 2005.

3.3 The Center appointed Jay Simon as the sole panelist in this matter on February 21, 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.

3.4 The case file was transmitted electronically to the Panel on February 21, 2005, and a hard copy was forwarded to the Panel that same day.

4. Factual Background

4.1 RYTHMOL is a heart medication for use in controlling arrhythmias and has been used at least since 1987.

4.2 The mark RYTHMOL is registered in the United States Patent and Trademark Office, Registration No. 1,480,413, issued March 15, 1988, and is now incontestable. Registration of the mark constitutes constructive notice of rights in the mark by its owner. The mark is also registered in Canada, Registration No. TMA 326561, issued April 16, 1987, and according to the assignment record in the Canadian Intellectual Property Office, Complainant owns the Canadian registration.

4.3 The owner of the U.S. mark is Gerd Petrik, Inc., a corporation wholly owned and controlled by Complainant. Abbott Laboratories is Complainant’s exclusive licensee for use of the registered mark.

4.4 Respondent registered the disputed domain name, <rythmol.com>, on February 26, 2002. The Complaint in this proceeding is dated December 9, 2004.

4.5 The disputed domain name resolves to a website “www.canadapharmacy.com” which sells a variety of pharmacy products, presumably including RYTHMOL. The website has an affiliate program and is apparently used by Respondent for commercial gain.

4.6 Respondent has failed to respond to the Complaint.

5. The Parties Contentions

A. Complainant

5.1 Complainant contends that it is the beneficial owner of the U.S. registration for RYTHMOL because the listed owner, Gerd Petrik, Inc., is wholly owned and controlled by Complainant; and therefore, Complainant has sufficient rights in the mark to initiate this proceeding.

5.2 Complainant contends that the mark is not an English word, has no meaning or significance other than as a trademark identifying Complainant’s products, and that the mark is, therefore, arbitrary and distinctive.

5.3 Complainant further contends that the disputed domain name is legally identical and confusingly similar to Complainant’s mark because the disputed domain name incorporates the entirety of the mark.

5.4 Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name, that Respondent is not commonly known by that name, has not acquired any trademark or service mark rights in the RYTHMOL mark, and Complainant has neither licensed nor otherwise permitted Respondent to use the RYTHMOL mark, or to apply for any domain name incorporating that mark.

5.5 Complainant further contends that Respondent’s use of the disputed domain name does not satisfy the test for bona fide use established in earlier WIPO cases; see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

5.6 Complainant further contends that Respondent is not making a legitimate non-commercial or fair use of the disputed domain name since the domain name redirects the Internet user to a website selling pharmaceutical products; the website having no disclaimer regarding the absence of a relationship with the RYTHMOL mark.

5.7 Complainant contends that Respondent’s use of the disputed domain name to attract customers to a website is for commercial gain, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website.

B. Respondent

5.8 Respondent has failed to respond to the Complaint and has not otherwise actively participated in this proceeding.

6. Discussion and Findings

6.1 The Policy as affected by the Rules and the Supplemental Rules provides specified remedies to trademark owners against registrants of domain names where the owner of the mark (Complainant) proves each of the following elements:

(a) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(b) the registrant (Respondent) has no rights or legitimate interests in respect of the domain name; and

(c) the domain name has been registered and is being used in bad faith.

6.2 Complainant has the burden of proof, by a preponderance of the evidence, respecting each element noted above in Paragraph 6.1.

6.3 Respondent, having failed to respond in these proceedings, is in default, and in accordance with Paragraph 14(b) of the Rules, “the panel shall draw such inferences…as it considers appropriate”.

6.4 Before discussing the above-mentioned elements, a threshold question exists regarding the rights of Complainant in the trademarked name RYTHMOL. The Policy does not require that Complainant own the trademark. The Policy requires only that Complainant has rights in a trademark or service mark with respect to which the disputed domain name is identical or confusingly similar.

6.5 Complainant has certified, by submitting the Complaint, that he is the sole owner of the corporation, and controls the corporation that is listed as the owner of the U.S. trademark, and Complainant owns the Canadian registration. The rights of the corporation substantially inure to the benefit of Complainant, and this Panelist agrees that Complainant has sufficient rights in the trademark RYTHMOL to initiate this proceeding. See, for example, Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington, WIPO Case No. D2003-0796.

A. Identical or Confusingly Similar (Paragraph 4(a)(i) of the Policy)

6.6 The mark in which Complainant has rights appears to be an arbitrary mark devoid of significance and, therefore, distinctive. (This Panel notes that the mark is for a drug that treats arrhythmias of the heart and that a properly beating heart is in “sinus rhythm”.) The mark has been in use at least since 1987 and is now incontestable.

6.7 The disputed domain name does not merely incorporate the mark; the disputed domain name is the mark, save for the use of lower case letters and the addition of the gTLD suffix. The use of the gTLD suffix plays no part in the determination of whether a domain name is identical or confusingly similar to a trademark, and many earlier cases have made this point. The disputed domain name differs only in that the letters are all lower case where the registered trademark shows all upper case letters. This difference is of no significance, and this Panel finds that the disputed domain name is virtually identical and certainly confusingly similar to the mark in which Complainant has rights. See, for example, Interstellar Starship Servs. Ltd. v. Epix, Inc., 983 F.Supp. 1331, 1335 (D.Or. 1997) where <epix.com> was the same as the mark EPIX.

B. Lack of Rights or Legitimate Interests (Paragraph 4(a)(ii) of the Policy)

6.8 Paragraph 4(c) of the Policy lists three non-exclusive methods for demonstrating rights and legitimate interests in a disputed domain name.

6.9 Complainant has made the necessary assertions regarding any rights or legitimate interests of the Respondent in the disputed domain name. While not shifting the ultimate burden of proof, these assertions make it incumbent on Respondent to come forward with evidence refuting Complainant’s assertions and establishing Respondent’s rights or interests in the disputed domain name, Respondent being in the best position to present such evidence. See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624. Respondent has failed to present any evidence, and Complainant’s assertions and evidence must, therefore, be awarded substantial weight.

6.10 Thus, there is no evidence that Respondent was commonly known by the disputed domain name, and because the name redirects the Internet user to another on-line site selling pharmaceuticals, there can be no issue of non-commercial fair use. The only issue that can be raised is under Paragraph 4(c)(i) of the Policy regarding whether Respondent, prior to notice of this dispute, was using the disputed domain name in connection with a bona fide offering of goods or services.

6.11 Complainant contends the factors listed in the Oki Data Americas case, supra, control the issue in this proceeding regarding whether the offerings of Respondent are bona fide. Those factors are:

(a) Respondent must be actually offering the goods at issue;

(b) Respondent must be using the site to sell only the trademarked goods;

(c) Respondent’s website must accurately disclose the registrant’s relationship with the trademark owner; and

(d) Respondent must not try to corner the market in all domain names, thereby depriving the trademark owner of reflecting its mark in a domain name.

In the Oki Data Americas case the Respondent was an authorized Oki Data repair facility and had been offering goods and services prior to the commencement of proceedings under the Policy. The issue was the same as the issue in these proceedings: was the offering of goods a bona fide offering.

6.12 The issue of whether Respondent is making a bona fide offering of goods sufficient to establish legitimate interests in a disputed domain name has been discussed in a number of WIPO cases, the Oki Data Americas case being only one such case. From a reading of a number of these cases, this Panel is not convinced that the criteria listed in Oki Data Americas are necessarily applicable to a situation, as in this proceeding, where Respondent has no relationship whatsoever with the trademark owner. Nevertheless, it is also clear that the factors in Oki Data Americas are among those to be considered in determining whether Respondent’s offering of goods is bona fide.

6.13 To this Panel, several overlapping and other factors must be considered in determining whether an offering of goods is bona fide where no relationship exists, e.g., Respondent is not a dealer or distributor of Complainant’s trademarked goods. These are not necessarily exclusive:

(a) has Complainant acquiesced in the use of its trademark, Draw-Tite, Inc. v. Plattsburgh Spring Inc., WIPO Case No. D2000-0017; and has Complainant tacitly acquiesced through the passage of time; see DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No. D2001-0160;

(b) are the goods offered by Respondent after-market goods, e.g., DaimlerChrysler, supra; see Dr. Ing. h.c.F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481.

(c) is the disputed domain name the only name that Respondent can use to describe its business; see the Porsche case;

(d) is there a prominent disclaimer permitting Internet users to know the precise relationship, if any, between the registrant and the trademark owner; see Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946;

(e) are only the goods of the trademark owner being offered at the website; see Oki Data Americas.

Also see Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774 for a valuable discussion of this issue.

6.14 The aforementioned factors, with one exception, do not favor Respondent, and Respondent has not presented any evidence refuting Complainant’s assertions and evidence. Thus, Complainant’s trademarked goods are not the only goods sold at the website, Complainant has not acquiesced in the use of its mark, there is no disclaimer regarding the relationship or lack of relationship with Complainant, the goods are not after-market goods, and Respondent could have used any number of other domain names to describe its business. The exception is that Complainant filed this proceeding two and one-half years after registration of the disputed domain name. However, in view of the overwhelming weight of the uncontested evidence, the hiatus between the registration and initiation of this proceeding is insufficient to give rise to any acquiescence on the part of Complainant. This Panel finds that the goods offered at the website to which the disputed domain name is redirected are not a bona fide offering of goods. Indeed, Respondent appears to be intentionally trading on the goodwill of the mark in which Complainant has rights and such trading cannot constitute a bona fide offering of goods or services; see Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847.

C. Registration and Use in Bad Faith (Paragraph 4(a)(iii) of the Policy)

6.15 Based on the discussion about legitimacy, this Panelist is satisfied that Respondent registered and is using the disputed domain name intentionally to attempt to attract, for commercial gain, Internet users to a website or other on-line location by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or other on-line location. Pursuant to Paragraph 4(b)(iv) of the Policy, Respondent’s actions constitute evidence of both bad faith registration and use. See Nokia Corporation v. Nokia Ringtones & Logos Hotline, WIPO Case No. D2001-1101.

7. Decision

7.1 For all of the foregoing reasons, in accordance with paragraphs 4(a) of the Policy and 15 of the Rules, this Panel orders that the domain name <rythmol.com> be transferred to the Complainant.

Jay Simon
Sole Panelist

Dated: March 4, 2005