WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Biogen Idec MA Inc. v. Seong Choi
Case No. D2003-0961
1.
The Parties
The Complainant is Biogen Idec MA Inc., c/o Timothy Linkkila, Esquire, Cambridge
MA, United States of America, represented by Ballard Spahr Andrews & Ingersoll, LLP,
United States of America.
The Respondent is Seong Choi, Philadelphia PA, United States of America.
2.
The Domain Name and Registrar
The disputed domain name <biogenusa.com> (the “Domain Name”) is registered with
YesNIC.
3.
Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the
“Center”) on December 4, 2003. On December 5, 2003, the Center transmitted by
email to YesNIC a request for registrar verification in connection with the Domain
Name. On December 9, 2003, YesNIC 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
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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 January 21, 2004.
In accordance with the Rules, paragraph 5(a), the due date for Response was
February 10, 2004. The Respondent did not submit any response. Accordingly, the
Center notified the Respondent’s default on February 11, 2004.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on
February 18, 2004. 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
(a)
The Complainant, through its predecessors-in-interest and title, is the world’s
oldest independent biotechnology company.
(b) Since 1978, the Complainant has used and continues to use BIOGEN as a service
mark and trade name in connection with the research and development of services
in the field of biotechnology. The Complainant has also used and continues to use
BIOGEN as a trademark in connection with pharmaceutical preparations.
(c)
The BIOGEN name and mark have been used continuously in commerce for the
goods and services of the Complainant for nearly twenty-five years.
(d) In November 2003, the Complainant became known as Biogen Idec MA Inc. as a
result of a merger between Biogen, Inc. and Idec Pharmaceuticals Corporation.
(e)
The Complainant has used and still intends to use the BIOGEN name and mark in
connection with goods and services in the field of biotechnology.
(f)
The Complainant has taken steps to protect the BIOGEN mark in the United
States. The Complainant has secured nine (9) U.S. Registrations, including U.S.
Registration Nos. 1,314,274, 1,961,898, and 2,084,446, inter alia, on the Principal
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Register for the BIOGEN mark.
(g) The Complainant has also taken steps to protect the BIOGEN mark outside of the
United States.
(h) The Complainant is the owner of several domain names that contain the BIOGEN
name and mark including, inter alia, <biogen.com>, <biogen.org>,
<usbiogen.com>, <biogencanada.com>, and <biogen.ca>.
(i)
By virtue of sales in commerce and substantial advertising and public relations
activities, the relevant trade and public have come to associate goods and services
in the field of biotechnology offered under the BIOGEN name and mark with the
Complainant, thereby creating a valuable reputation for such goods and services.
(j)
The Complainant has not consented directly or indirectly to the use of the
BIOGEN name and mark by the Respondent.
(g) The Respondent has failed to reply to the Complainant’s attempts to resolve this
matter in an amicable manner.
(h) The Respondent has refused to discontinue such use of the Complainant’s name
and mark.
5.
Parties’ Contentions
A.
Complainant
The Complainant asserts, inter alia, as follows:
(i)
The Domain Name owned by the Respondent is essentially and nearly identical
and confusingly similar to the Complainant’s name and mark for BIOGEN in
which the Complainant has rights.
(ii) The Complainant is the legal owner of nine (9) U.S. Registrations, including U.S.
Registration Nos. 1,314,274, 1,961,898, and 2,084,446, inter alia, on the Principal
Register for the BIOGEN mark.
(iii) Since 1978, the Complainant has used and continues to use the BIOGEN name
and mark in connection with research and development of goods and services in
the field of biotechnology.
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(iv) The Complainant’s BIOGEN name and mark and the Respondent’s use of
BIOGEN in the Domain Name are substantially identical in overall commercial
impressions.
(v) The Complainant believes that consumers searching for information related to the
Complainant would become confused as to source, sponsorship, or affiliation if
they encounter the Domain Name website owned by the Respondent.
(vi) The Respondent has no rights or legitimate interests in and to the Domain Name.
(vii) The Respondent has not made any legitimate use of the Domain Name.
(viii) The Respondent’s motivation and intention are to benefit unfairly from the
goodwill in the Complainant’s name and mark and to have the Complainant or a
third-party purchase the Domain Name from the Respondent for a profit in excess
of the registration cost.
(ix) There is no evidence to suggest that the Respondent has been commonly known
by the <biogenusa.com> domain name.
(x) There is no evidence to suggest that the Respondent is making legitimate noncommercial or fair use of the Domain Name.
(xi) The Respondent registered the Domain Name in bad faith and continues to use the
Domain Name in bad faith.
B.
Respondent
The Respondent did not reply to the Complainant’s contentions.
6.
Discussion and Findings
A.
Language
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The Complaint, although submitted in Korean language, was originally prepared in the
English language. Yet, there was no response in either language. Although Korean
language was apparently the language of the registration agreement for the Domain
Name, the Complainant asserts that English should be the language of the proceeding.
The vast majority of the annexes are in English.
According to Paragraph 11 of the Rules, the language of the administrative proceeding
shall be the language of the registration agreement unless the Panel decides otherwise.
The spirit of Paragraph 11 is to ensure fairness in the selection of language by giving
full consideration to the parties’ level of comfort with each language, the expenses to be
incurred and the possibility of delay in the proceeding in the event translations are
required and other relevant factors.
In the present case, even if the registration agreement for the Domain Name was made
in the Korean language, it is apparent that as both the Respondent and the Complainant
are located in the United States, it is very likely that the Respondent would have little
difficulty in communicating in the English language.
On the other hand, the Complainant is not able to communicate in Korean and therefore,
if the Complainant were required to submit all documents in Korean, the UDRP
proceeding will be unduly delayed and the Complainant would have to incur substantial
expenses for translation. Therefore, in consideration of the above circumstances and in
the interest of fairness to both parties, the Panel hereby decides, under Paragraph 11 of
the Rules, that English shall be the language of administrative proceeding in this case.
However, based on the Panel’s discretion, Korean language documents submitted, have
been reviewed by the Panel.
B.
Substantive Elements of the Policy
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds
of the statements and documents submitted and in accordance with the Policy, the Rules
and any rules and principles of law that it deems applicable.
Moreover, under Paragraph 14(b) of the Rules, it is established that: “If a Party, in the
absence of exceptional circumstances, does not comply with any provision of, or
requirement under, these Rules or any request from the Panel, the Panel shall draw such
inferences therefrom as it considers appropriate”.
In light of the above, the Panel may draw such inferences from the Respondent’s failure
to comply with the Rules as considered appropriate (see Paragraph 14(b) of the Policy;
see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
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Under Paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i)
the Domain Name is identical or confusingly similar to the Complainant’s
trademark or service mark;
(ii)
the Respondent has no rights or legitimate interests in respect of the
Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
C.
Identical or Confusingly Similar
The Domain Name differs from the Complainant’s BIOGEN marks and domain names
only in the addition of a geographical term, “USA”. This difference is legally
inconsequential and does not prevent a finding of confusing similarity. Wal-Mart Stores,
Inc. v. Walmarket Canada., WIPO Case No. D2000-0150 (May 2, 2000)
(<walmartcanada.com> transferred to Complainant) (“Persons dealing with, or even
perusing the website of <walmartcanada.com> could easily conclude that the registrant
of the domain name was associated with the Wal-Mart operation in Canada.”); InterIKEA v. Polanski, WIPO Case No. D2000-1614 (January 22, 2001) (<ikeausa.com>
transferred to Complainant) (“The domain name <ikeausa.com> is not identical to the
trademarks of Complainant, but integrates in its entirety the wordmark IKEA followed
by the letters USA, which is generally being understood as an abbreviation for the
United States of America.”) (“The combination of a trademark with a geographical
name is common place for many domain names and does not exclude confusing
similarity.”).
Therefore, the Panel finds that the Domain Name is confusingly similar to the
Complainant’s trademark pursuant to the Policy Paragraph 4(a)(i).
D.
Rights or Legitimate Interests
According to Paragraph 4(a)(ii) of the Policy, the Complainant must prove that the
Respondent has no rights or legitimate interests in the Domain Name. In connection
with the burden of proof, several WIPO decisions have held that “once a Complainant
establishes a prima facie evidence showing that none of the three circumstances
establishing legitimate interests or rights applies, the burden of production on this factor
shifts to the Respondent to rebut the showing” (see Universal City Studios, Inc. v. David
Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International
Hospitality Management-IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No.
D2002-0683).
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The Complainant asserted that the Respondent has no relationship with or authorization
from the Complainant for using the Complainant’s marks; that the Respondent had no
prior rights or legitimate interests in the Domain Name; and that the Respondent has not
been commonly known by the Domain Name. The Panel’s view is that facts must be
taken as proven provided that they have not been denied by the Respondent.
The Respondent has not submitted a proper response. Therefore, the Respondent has
failed to invoke any circumstance that could have demonstrated any rights or legitimate
interests in the Domain Name under Paragraph 4(c) of the Policy. Accordingly, the
Panel holds that the Respondent has no legitimate interests or rights in the Domain
Name pursuant to Paragraph 4(b) of the Policy.
E.
Registered and Used in Bad Faith
Under past UDRP decisions (see for instance Nike, Inc. v. B.B. de Boer, WIPO Case No.
D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No.
D2002-0806) and under the Policy (see Section 2), a well-established principle is that
when someone registers a domain name, he represents and warrants to the Registrar that,
to his knowledge, the registration of the domain name will not infringe the rights of any
third party. In the case at issue, the Panel reasonably finds that since the Complainant’s
marks are very well known, it is very unlikely that the Respondent, at the time of
registration of the Domain Name or thereafter, was not aware that he was infringing the
Complainant’s mark. The Respondent has attempted to auction the <biogenusa.com>
domain name for an amount well in excess of the registration costs (Annex 12 of the
Complaint).
The law is clear that registering a domain name for the primary purpose of offering to
sell, rent, or otherwise transfer the domain name for an amount in excess of the
registration cost is evidence that a domain name was registered and/or being used in bad
faith. Adidas-Saloman AG v. Vincent Stipo, WIPO Case No. D2001-0372
(May 14, 2001).
The conduct described above falls squarely within paragraph 4(b)(i) of the Policy and
accordingly the Panel concludes that the Respondent registered the Domain Name in
bad faith.
In light of the above, the Panel concludes that the Complainant has proven bad faith in
registration and use on the part of the Respondent.
7.
Decision
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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, <biogenusa.com >, be transferred
to the Complainant.
_________________________________________
Thomas P. Pinansky
Sole Panelist
Date: March 8, 2004
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