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N. V. Organon v. inforassist.com [2005] GENDND 302 (20 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

N. V. Organon v. inforassist.com

Case No. D2005-0181

1. The Parties

The Complainant is N.V. Organon, the Netherlands (the “Complainant”), represented by Akzo Nobel NV, Intellectual Property Department, the Netherlands.

The Respondent is inforassist.com, Castelo Branco, Portugal (the “Respondent”).

2. The Domain Name and Registrar

The disputed domain name <organonlabs.com> is registered with Tucows Inc.

3. Procedural History

The Complaint was submitted by e-mail to the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2005. On February 17, 2005, the Center sent an Acknowledgement of Receipt of Complaint to the Parties. The communication was made to the Respondent by e-mail.

At the Center’s request for registrar verification of February 17, 2005, concerning the disputed domain name, Tucows Inc. transmitted its verification response to the Center by e-mail on February 17, 2005, confirming that the Respondent is listed as the Registrant of the disputed domain name and providing the contact details for the Registrant and the technical, administrative and billing contact.

On February 21, 2005, the Complaint was received in hard copy.

In response to a notification by the Center that the Complaint was administratively deficient on February 22, 2005, the Complainant filed an amendment to the Complaint on February 22, 2005. The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, 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 sent the Complaint and a formal Notification of Complaint and Commencement of Administrative Proceeding to the Respondent on March 1, 2005, by courier and e-mail, using the contact details listed in the Registrar’s WHOIS database. The courier package was undeliverable due to the fact that the address provided by the Respondent was incorrect. In accordance with the Rules, Paragraph 5(a), the due date for response was March 21, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2005, by e-mail.

Although the Center’s courier package with the Complaint was not deliverable at the Respondent’s address, the Panel finds that the Center has discharged its responsibilities to make reasonable efforts to try to notify the Complaint to the Respondent pursuant to the Rules, Paragraph 2(a), and that the Notification of Respondent Default was also properly notified.

The Center appointed Ms. Foteini Papiri as the Sole Panelist in this matter on April 6, 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. Thus, the Panel finds that it was properly constituted.

The Panel finds that the Complaint was filed in accordance with the requirements of the Policy, the Rules and the Supplemental Rules, and that payment of the fees was properly made.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondent’s default in responding to the Complaint).

4. Factual Background

Because the Complaint is formally in compliance with the Policy, the Rules and the Supplemental Rules, and because Complainant’s allegations and documents enclosed with the Complaint have not been contested, the Panel finds the following facts as having been sufficiently established:

Complainant owns multiple trademark registrations for the ORGANON mark and the ORGANON logo, sometimes referred to as “ORGANON IN OVAL”, in connection with pharmaceutical and related productsin e.g., Portugal and USA.

Complainant has provided the Panel with a more comprehensive list of trademark registrations for the ORGANON mark and the ORGANON logo, held in numerous countries (Complaint, Exhibit D).

Complainant is the owner of numerous domain name registrations, including <organon.com> registered on December 9, 1997 (Complaint, Exhibit F), <organonlaboratories.com> registered on November 8, 2002 (Complaint, Exhibit F) and <organonlaboratories.co.uk> registered on November 9, 2002 (Complaint, Exhibit F). Complainant has also online presence at <organon.com>, where Complainant’s background is set out and Complainant’s available goods, services and activities are presented.

Over the years, consumers have come to recognize the ORGANON mark as indicating a product or service originating with the Complainant and the ORGANON mark enjoys widespread recognition and reputation.

According to WHOIS database records furnished by the Complainant, the record for the disputed domain name <organonlabs.com> was created on December 22, 2004, (Complaint, Exhibit A).

5. Parties’ Contentions

A. Complainant

The Complainant contends that: (1) the domain name <organonlabs.com> is identical or confusingly similar to the marks in which the Complainant has rights; and (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name was registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and has not made submissions whatsoever. Under Paragraph 5(e) of the Rules, it is provided that if a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the Complaint. Under Paragraph 14(b) of the Rules, when a party defaults in complying with any of the requirements of the Rules, in the absence of exceptional circumstances, the Panel is entitled to “draw such inferences therefrom as it considers appropriate”. No exceptional circumstances have been brought to the Panel’s attention. Accordingly, the Panel makes the findings below on the basis of the material contained in the Complaint.

6. Discussion and Findings

This dispute is properly within the scope of the Policy, and the Panel has jurisdiction to decide the dispute. The registration agreement, pursuant to which the domain name that is the subject of this Complaint was registered, incorporates the Policy.

The Respondent is required to submit to a mandatory administrative proceeding in accordance with Paragraph 4(a) of the Policy, because the Complainant asserts, in compliance with the Rules of Procedure, that:

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

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

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

Under Rules, Paragraph 10(a), the Panel is allowed inter alia to independently visit the Internet in order to obtain additional light in this default proceeding.

On April 13, 2005, the Panel attempted to visit Respondent’s web site at the URL “www.organonlabs.com”, using the Internet Explorer browser. The domain name <organonlabs.com> opened to a web page with the information “Site em manutenção”, stating that the site was undergoing maintenance.

A. Identical or Confusingly Similar

The Complainant has rights in the mark ORGANON registered for numerous goods and services in multiple jurisdictions.

The disputed domain name incorporates the mark ORGANON, which constitutes its most significant meaningful portion. The domain name comprises of the additional descriptive term “labs”, often used as an abbreviation for “laboratories”, added after the mark ORGANON.

The Complainant has used the mark ORGANON in connection with a wide variety of goods and services. As a consequence, the public has come to perceive goods and services that are offered under an ORGANON mark or a variation of the same as emanating from or being endorsed by or affiliated with Complainant. The addition of the descriptive term “labs” to the mark ORGANON is a variation of the Complainant’s mark, which the average consumer would expect the Complainant or its affiliates to use in connection with the mark ORGANON to identify its goods or services, especially since Complainant is primarily using its ORGANON mark in connection with goods and services in the pharmaceutical industry. Furthermore, Organon Laboratories Ltd. is registered and used as a trade name in the United Kingdom of Great Britain and Northern Ireland by Complainant’s affiliate in the United Kingdom of Great Britain and Northern Ireland and Organon Labs is used as the name of a research facility of Organon Laboratories Ltd. in Newhouse, Motherwell, United Kingdom of Great Britain and Northern Ireland (Complaint, Exhibit E).

In that sense, the Respondent creates a likelihood of confusion in the minds of the consumers, who expect the domain name <organonlabs.com> to resolve to a web site owned by, operated by or affiliated with the Complainant.

The Panel finds that the domain name is confusingly similar to the ORGANON mark, in which the Complainant has proven to have rights, pursuant to Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

By its default, Respondent has not contested the allegation of the Complainant that the Respondent lacks any rights or legitimate interests in the domain name.

Complainant has a strong presence in the pharmaceutical industry, and Complainant’s first use of the ORGANON mark predates the domain name registration. In connection with Complainant’s offering of goods and services, the ORGANON mark has acquired widespread recognition and goodwill. Because Complainant’s ORGANON trademark registrations, as set out above, were issued before the registration of the disputed domain name, the Panel finds that the Complainant has prior trademark rights and the Respondent had actual or most likely knowledge of the mark ORGANON.

Complainant never granted, tacitly or otherwise, Respondent any license, rights, permission or authorization to use the ORGANON marks. Initially, on the website linked to the domain name <organonlabs.com> Respondent offered what it held out to be, but may or may not have been, Complainant’s products (Complaint, Exhibit G-I). These products were offered for commercial gain at a domain name that wholly incorporated Complainant’s ORGANON mark.

Currently, the domain name <organonlabs.com> resolves to a web page with the information “Site em manutenção”, stating that the site is undergoing maintenance. Respondent appears to have no corporate, partnership or fictitious business name or business listing registration under the domain name, nor has it claimed any rights with respect to the domain name <organonlabs.com>. By its default, Respondent also failed to demonstrate legitimate interests or bona fide offering of goods or services in respect of the domain name <organonlabs.com>.

In any case, the result of the test independently conducted by the Panel did not show any evidence as to the rights or legitimate interests of the Respondent in the domain name pursuant to Paragraph 4(c) under the Policy, nor could the Panel find any indication of bona fide offering of goods or services. Furthermore, there is no evidentiary support that the Respondent, as an individual, business, or other organization, has been commonly known by the domain name or that it is making a legitimate non-commercial or fair use of the domain name.

Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name at issue, pursuant to Paragraphs 4(a)(ii) and 4(c) of the Policy.

C. Registered and Used in Bad Faith

By its default, Respondent has not contested the allegation of the Complainant concerning domain name registration and use in bad faith.

According to Paragraph 4(a)(iii) of the Policy, the Complainant must prove registration and use in bad faith. Paragraphs 4(b)(i)-(iv) of the Policy contain a non-exhaustive list of circumstances, which shall constitute evidence of registration and use of a domain name in bad faith.

Complainant contends that:

a. pursuant to Paragraph 4(b)(iii), Respondent registered and used the domain name <organonlabs.com> primarily for the purpose of disrupting the business of a competitor, and

b. pursuant to Paragraph 4(b)(iv), by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.

According to Mission KwaSizabantu v. Benjamin Rost¹, “[t]he Policy does not define who is a “competitor” for the purpose of the paragraph, i.e. is it a competitor of the domain name owner or a competitor of the Complainant?” Concerning the word “competitor” the Panel found that “[…] this term naturally should be read as relating to the “competitor” of the domain name owner.” In that sense, one needs to examine whether Respondent registered and used the domain name primarily for the purpose of disrupting the business of another.

It is reasonable to believe that the Respondent, prior to its registration and use of the domain name, which wholly incorporates Complainant’s registered ORGANON mark, was aware of the fact that Complainant was the owner of the ORGANON marks because of the widespread and long-standing advertising and marketing of goods and services under the ORGANON marks.

Complainant furnished the Panel with ample evidence that upon registration of the domain name, without any license, permission or authorization from the legitimate owner of the rights in the ORGANON mark, Respondent developed a web site connected with the domain name <organonlabs.com> to advertise and offer to sell what Respondent held out to be, but may or may not have been, Complainant’s products (Complaint, Exhibit G). In doing so, Respondent made unauthorized use of the ORGANON and ORGANON IN OVAL marks on the web site, as well as other trademarks owned by Complainant in relation to Complainant’s products. In its web site, Respondent even blatantly copied text logos and images from the official ORGANON web site (Complaint, Exhibit H).

Complainant’s trademarked products DECA-DURABOLIN and SUSTANON (Complaint, Exhibit J) were offered for sale on Respondent’s web site (Complaint, Exhibit I). In the official web sites of the products, the manufacturer N.V. Organon has posted warning notices informing consumers that the products constitute medicine and are intended for strict medical use and only legally available from pharmacies on demand of a doctor’s prescription. Furthermore, it is clearly stated that misuse “[…] in sports, for instance in bodybuilding, must be strongly rejected. Such practice is not only illicit as doping but also goes far beyond the product’s investigated and officially acknowledged therapeutic use. It may, therefore, bear serious health risks. Furthermore, it must be strongly advised not to accept any offers of Deca-Durabolin from the so-called black market and/or dubious sellers on the Internet. These usually include illegal and poor-quality imitations of questionable origin, the use of which carries even greater health risks” (Complaint, Exhibit K). However, these products were on sale at Respondent’s web site with the purpose of targeting not only legitimate users, but also users who would not or should not otherwise have access to such products. In any case, Respondent sought to trade off on Complainant’s substantial goodwill associated with Complainant’s marks and to intentionally deceive the consuming public. In so doing, Respondent harmed the goodwill associated with the Complainant’s marks.

The domain name <organonlabs.com> was registered and used by Respondent solely with the purpose of intentionally attracting for commercial gain Internet users who were seeking information on Complainant’s activities and products or who believed that the web site linked to the domain name <organonlabs.com> was an additional service offered by the Complainant, due to the similarity of the domain name to the ORGANON mark and the similarity of the services offered by Respondent to those offered by Complainant. It was Respondent’s clear intent to profit at Complainant’s expense by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or of a product or service on its web site.

The Panel is satisfied that Respondent registered and used the domain name <organonlabs.com> primarily for the purpose of diverting potential customers to its web site and, thereby, disrupting the business of Claimant. It follows that a potential customer seeking information on Complainant’s activities and products could be drawn into Respondent’s web site for commercial gain and therefore, Respondent’s activities, as demonstrated by its web site, were disruptive of the activities of the Complainant.

The Panel is also satisfied that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.

Furthermore, on February 9, 2005, a warning letter was sent to inforassist.com by e-mail, stating inter alia that Complainant strongly objected to the incorporation of its trademark and trade name in the domain name <organonlabs.com> and to the use of its trademarks on Respondent’s web site (Complaint, Exhibit L). Inforassist.com responded that they were just a hosting company and domain name registration service, but they would inform their client as to Complainant’s demands, who would contact Complainant. Invoking confidentiality reasons, Respondent refused to disclose the identity of the alleged client, who still remains unknown, and contacted Claimant to offer to sell the domain name on behalf of the alleged client (Complaint, Exhibit L). Although the contents of the web site were removed following Complaint’s warning letter (Complaint, Exhibit L), the domain name now resolves to a web page with the information “Site em manutenção”, stating that the site is merely undergoing maintenance.

The circumstances surrounding Respondent’s conduct so far are indicative of registration and use of the domain name in bad faith. Respondent failed to file a Response, bringing evidence of any legitimate commercial or non-commercial activity to the Panel’s attention.

For all the aforementioned reasons, the Panel finds that the Complainant has proven Paragraphs 4(a)(iii) and 4(a)(iv) under the Policy.

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 <organonlabs.com> be transferred to the Complainant.

Foteini Papiri
Sole Panelist

Dated: April 20, 2005