pharmaciamonsanto.com

WIPO Arbitration and Mediation Center

Complainant:Pharmacia & Upjohn AB, S-112 87 Stockholm, Sweden

Represented by:Karol A. Kepchar, Jordan A. LaVine, Akin, Gump, Strauss, Hauer & Feld, LLP, One Commerce Square, 2005 Market Street, Suite 2200, Philadelphia, PA 19103-7086, USA

Respondent:Sol Meyer, 20 Bartlett Road, Monsey, NY 10952, USA

Domain Name:PHARMACIAMONSANTO. COM

Registrar:Register. Com, 575 8^th Avenue – 11^th Floor, New York, NY 10018, USA

The Complaint was received by WIPO by email on July 13 2000 and in hard copy on July 14 2000. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.

The Complaint was properly notified in accordance with the Rules, paragraph 2(a). The Respondent was informed that the last day for filing his Response was August 13 2000, but filed no Response. WIPO issued to the Respondent a Notification of Respondent Default on August 17 2000 informing the Respondent of the consequences of his default.

The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

No further submissions were received by WIPO or the Panel as a consequence of which the date scheduled for the issuance of the Panel’s Decision is September 3 2000.

The Complainant is a research based pharmaceutical company incorporated in Sweden.

The Complainant is the proprietor of, inter alia, US Trade Mark Registrations numbers 1,277,927 (issued May 15 1984), 1,025,527 and 1,025,528 (both issued November 25 1975). While this is certainly a fact, the registration details accompanying the Complaint identified other companies in the Complainant’s Group of Companies, not the Complainant, as the registrant/owner of these trade mark registrations. The Panel took it upon itself to carry out an online search and verified the accuracy of the assertion in the Complaint. All these registrations are for the name PHARMACIA.

Monsanto Company of Delaware, a life sciences company, is the proprietor of US Trade Mark Registrations 0,315,300 (issued January 19 1934), 0,795,369 (issued September 7 1965) and 2,363,705 (issued June 27 2000). All these registrations are for the name MONSANTO.

On December 17 1999 Associated Press and the Wall Street Journal announced that the Complainant and Monsanto Company were in merger talks. Relevant extracts of the publications were produced to the Panel. In passing, the Panel observes that elsewhere in the Complaint it is stated "in early December 1999, it was announced that Pharmacia & Upjohn AB and its related companies and Monsanto Company had entered into a definitive agreement to merge their two companies …". The Complaint contained no documentary evidence in support of that statement and it was inconsistent with the fact that merger talks were first reported on December 17 1999. The inconsistency is of no particular significance to the Decision, but the Complainant should be aware that inconsistencies of this kind do not ease the task of the Panel.

The WHOIS database printout provided to WIPO by the Registrar indicates that the record showing the Respondent as the registrant of pharmaciamonsanto. com ("the Domain Name") was created on December 17 1999.

On April 3, 2000 Pharmacia Corporation was created from the merger of the Complainant and its related companies and Monsanto Company. The Complainant remains a subsidiary of Pharmacia Corporation.

On April 17, 2000 Counsel for the Complainant sent an email to the Respondent drawing the Respondent’s attention to the facts and matters set out above, drawing attention to what the Complainant believes to be the likely confusion that will result when persons attempt to access a website connected to the Domain Name and asserting that the Respondent’s activities amount to violation of the Complainant’s trade mark rights under United States law and violation of the Trade Mark Cyber Piracy Prevention provision of the Trade Mark Act. The email went on to demand, inter alia, prompt transfer of the Domain Name to the Complainant.

On April 28, 2000, no response having been received to the email of April 17, 2000 Counsel for the Complainant sent to the Respondent a chaser email.

The Complaint asserts as a fact that "Counsel for [the Complainant] subsequently received a telephone call from Respondent wherein Respondent offered to sell [the Domain Name] for an unspecified price, which would include compensation for Respondent’s "time", in excess of Respondent’s out-of-pocket costs to register [the Domain Name]. " While the Panel has no reason to doubt the assertion, the Panel observes that there is no documentary support in the way of a file note of the conversation. Since, in some cases, evidence of an attempt to sell the domain name in issue for an excessive price is the only evidence of bad faith, it is very important that evidence of that kind is supported to the hilt. The Panel proposes to ignore this unsupported allegation.

The Domain Name does not resolve to any website or online presence.

A. Complainant

The Complainant contends that it has used the trade mark PHARMACIA for upwards of 25 years.

By virtue of the long and substantially exclusive use of the PHARMACIA name and mark in United States commerce and abroad, the name and mark have been and are well known among the general public. It categorises the PHARMACIA mark as a famous mark and points out that the name and mark are accordingly extremely valuable assets of the Complainant.

Monsanto Company and its predecessors in interest and title and related companies have used the mark Monsanto in commerce in connection with its well known chemical and agricultural businesses and products for more than 70 years.

By virtue of the long and substantially exclusive use of the MONSANTO name and mark in the United States commerce and abroad the name and mark have been and are well known among the general public. Again, the MONSANTO mark is characterised as a famous mark and the Complainant points out that the name and mark are accordingly extremely valuable assets of Monsanto Company.

The Domain Name is confusingly similar to the PHARMACIA trade mark in which the Complainant has rights and to the MONSANTO trade mark in which Pharmacia has rights by virtue of the merger with Monsanto Company.

The Respondent has no rights or legitimate interests with respect to the Domain Name on the basis that neither the Complainant nor Pharmacia nor Monsanto has previously agreed or consented to the Respondent’s use or registration of a domain name comprising the unique, well known and federally registered PHARMACIA or MONSANTO trade marks.

The Domain Name should be considered as having been registered and used in bad faith because the two parts of the Domain Name are known to be marks of the Complainant and Monsanto Company respectively and the Respondent registered the marks (sic) for no other purpose than to sell, rent or otherwise transfer the Domain Name registration to the Complainant subsequent to the merger with Monsanto Company or to any of their respective competitors.

The Respondent has refused to co-operate with the Complainant to resolve this domain name dispute.

In further support of the bad faith claim the Complainant points to the fact that the registration of the Domain Name took place on the same day as the announcement of the merger talks in Associated Press and the Wall Street Journal.

The Complainant goes on to recite paragraphs 4(b)(i), (ii) and (iv) of the Policy and argues that those circumstances are shown by the facts and matters set out in the Complaint and to a large degree recited above.

The essence of the Complainant’s argument is that the facts "strongly indicate not only that the Respondent had knowledge of the Complainant’s registered mark Pharmacia and Monsanto Company’s registered mark MONSANTO, but also that the Respondent had knowledge that a merger between the two corporations was likely and wished to profit from it. "

Finally, in recognition of the fact that the Respondent has been inactive in that there is no online presence or website associated with the Domain Name, the Complainant points to the Telstra Corp –v- Nuclear Marshmallows decision (WIPO Center Case No D 2000-0003) to the effect that "it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith. " The Complainant argues that the rationale in that case is applicable to the circumstances of this case.

B. Respondent

The Respondent has made no response.

According to paragraph 4(a) of the Uniform Dispute Resolution Procedure Policy, the Complainant must prove that:-

(i)the Domain Names are identical or confusingly similar to the service marks in which the Complainant has rights; and

(ii)the Respondent has no rights or legitimate interests in respect of the Domain Names or any of them; and

(iii)the Domain Names have been registered and are being used in bad faith.

It is a prerequisite that the Complainant has rights in the relevant trade mark(s) or service mark(s). At the outset, the Panel was faced with a bare assertion that the Complainant owned the PHARMACIA trade mark registrations cited. The trade mark documentation filed in support of the Complaint did not bear out the assertion. The Panel therefore had to consider whether or not to dismiss the Complaint out of hand. The Panel concluded that the circumstances were such that dismissal of the Complaint on that ground would have been unjust. The Panel had in mind, in particular, that the companies identified on the trade mark documentation appeared to be part of the same group of companies as the Complainant. The on-line search carried out by the Panel verified that the Complainant is the owner of the cited PHARMACIA trade mark registrations.

There is scope for an interesting argument as to the extent to which if at all the Complainant (as opposed to its parent or any associated company) can be said to have rights in the MONSANTO trade mark. Clearly, however, and particularly given the circumstances under which the Domain Name was registered, the first part of the Domain Name is intended to refer to the Complainant; moreover, it is a prominent part of the Domain Name and is identical to the PHARMACIA trade marks in which the Complainant has rights. The second part of the Domain Name does nothing to diminish the manifest likelihood of confusion.

Accordingly the Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights and the Complainant succeeds under this heading.

While it is clear from the terms of paragraph 4(a) of the Policy that the overall burden of proof is on the Complainant, the introductory paragraph to paragraph 4(c) of the Policy advises a Respondent how to demonstrate its rights to and legitimate interests in the Domain Name in responding to a Complaint. The paragraph goes on to set out a non-exhaustive list of circumstances which, if the Respondent can prove any of them to the satisfaction of the Panel, will establish the relevant rights and/or legitimate interests of the Respondent.

In relation to paragraph 4(a)(ii) of the Policy (dealing with the rights and legitimate interests of the Respondent), the Panel reads these two provisions of the Policy (4(a) and 4(c)) as meaning that while the overall burden of proof lies with the Complainant, once the Complainant has established a prima facie case under this head (4(a)(ii)), the burden is on the Respondent to establish the contrary.

The Respondent has not responded to the Complainant’s allegations.

The Panel accepts that the PHARMACIA and MONSANTO trade marks are very well known and that in using them in juxtaposition the Respondent knew perfectly well that he was using names belonging to the Complainant and Monsanto Company respectively. The papers disclose no hint of any reason why the Respondent might legitimately lay claim to rights in or relating to the Domain Name. The prima facie case is made out and, despite having been given an opportunity to respond, the Respondent has not done so.

In these circumstances, the Panel has no hesitation in finding that the Respondent has no rights or legitimate interests in respect of the Domain Name and accordingly the Complaint succeeds under this head also.

Under this head the Complainant has to prove both that the Domain Name has been registered in bad faith and that it is being used in bad faith.

Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

In support of its case the Complainant asserts sub paragraphs (i), (ii) and (iv) of paragraph 4(b) which read as follows:-

1. circumstances indicating that you [i. e. the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name;
2. you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iv)by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of your website or location or of a product or service on your website or location.

The Complainant has difficulty with all three of these paragraphs. In the case of sub-paragraph (i) there is no direct evidence that the Respondent wishes or ever wished to trade in the Domain Name, whether for a reasonable fee or for an excessive fee. For the Panel to have to come to that conclusion it has to infer the intention from the circumstances. In relation to (ii) the Complainant has to establish a pattern of conduct and this is usually done by showing that the Respondent has registered two or more domain names in similar circumstances and to similar effect. In this case the Panel is unaware of any domain name registrations in the name of the Respondent other than the case in point. Sub-paragraph (iv) calls for the Respondent to have a "website or other online location". The Complainant acknowledges that the Domain Name is not connected to any website or other online location and there is no evidence that the Respondent has any intention of connecting the Domain Name to a website or other online location.

Accordingly, the Panel has to consider whether it is reasonable for it to infer from all the surrounding circumstances that the Respondent registered the Domain Name primarily for any of the purposes set out in paragraph 4(b)(i) of the Policy or whether there are other reasons for finding bad faith.

Having concluded under the previous heading that the Respondent knew when he registered the Domain Name that it was a combination of well known names owned by third parties, being names in which he has no right or legitimate interest, it is not difficult for the Panel to find and the Panel does in fact find that the Respondent registered the Domain Name in bad faith.

That leaves the question of ‘use in bad faith’ in circumstances when in ordinary parlance the Respondent is making no use of the Domain Name of any kind.

The fact that the Domain Name was registered on the very day that news was first published of the merger talks between the Complainant and Monsanto Company leads the Panel irresistibly to the conclusion that it was an opportunistic act by an alert entrepreneur with a view to making a profit.

Accordingly, the Panel finds that the circumstances set out in paragraph 4(b)(i) of the Policy are present. If the Respondent has not already made a demand for a sum in excess of his documented out of pocket costs directly related to the Domain Name, he will at some stage do so. The Panel is of the view that maintaining a registration for that purpose is use in bad faith.

Additionally, even if the Panel is wrong on that and the Respondent’s intention is and always has been to sit back and do nothing with the Domain Name, but simply to ‘block’ the Complainant and its parent and related companies, the Panel is of the view that there is nothing ‘good faith’ about that posture. The continuing threat to the Complainant is that the Respondent might change his mind at any time. Where, as in this case, to the Respondent’s knowledge the Domain Name can only sensibly refer to one entity, the group of companies of which the Complainant forms part, and is intended to refer to that entity and where use of it by any third party would inevitably lead to severe risk of confusion, the Panel is of the view that that ‘blocking’ behaviour constitutes bad faith use even in the absence of a pattern of such behaviour. In other circumstances a pattern of such behaviour might be necessary to establish the bad faith element, but not in the circumstances of this case.

Accordingly, the Panel finds that the Complaint succeeds under this head also.

For the reasons set out above, the Panel decides that the Domain Name pharmaciamonsanto. com is confusingly similar to a trade mark or service mark in which the Complainant has rights, the Respondent has no rights or legitimate interests in respect of the Domain Name and the Domain Name has been registered and is being used in bad faith.

While the latter part of the Domain Name is a name in relation to which the Complainant does not have rights, it is a name in which the parent or a related company of the Complainant has rights. In those circumstances the Panel decides that it is right that the Domain Name should be transferred to the Complainant and the Panel so directs.

Tony Willoughby
Panelist

Dated: August 23, 2000