The Complainant is Amgen Inc., California, United States of America, represented by DLA Piper Rudnick Gray Cary US, LLP, United States of America.
The Respondent is Sam Chou, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <amgen.info> is registered with Melbourne IT
trading as Internet Names Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2006. On June 9, 2006, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On June 13, 2006, Melbourne IT trading as Internet Names Worldwide 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 June 14, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 4, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 5, 2006.
The Center appointed Gary J. Nelson as the sole panelist in this matter on July 14, 2006. 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.
This proceeding is conducted in English.
4. Factual Background
Complainant is a publically traded company on the NASDAQ stock exchange under the symbol AMGN, and is in the business of distributing pharmaceuticals and developing pharmaceuticals.
Complainant is the owner of United States Trademark Registration Nos. 1,621,967 (AMGEN) and 2,170,735 (AMGEN [stylized]). Both registrations are for pharmaceuticals and pharmaceutical-related services.
Complainant operates a website corresponding to the URL address “www.amgen.com” and owns the following domain names: <amgen.net>, <amgen.org> and <amgen.biz>.
Respondent registered the <amgen.info> domain
name on February 6, 2006. Respondent operates a website with multiple click-through
opportunities at this URL address.
5. Parties’ Contentions
A. Complainant
Complainant has been using the AMGEN trademark for pharmaceuticals and pharmaceutical related services for over twenty five years. Complainant has received a great deal of publicity over the past few decades related to its AMGEN trademark.
Complainant owns trademark registrations in the United States for AMGEN for pharmaceuticals and pharmaceutical related services.
Complainant operates a website at “www.amgen.com,” and owns other Amgen-based domain names. Complainant alleges the AMGEN trademark is well known as a result of the extensive use and promotion of the products and services bearing the AMGEN trademark.
The <amgen.info> domain name is identical to Complainant’s AMGEN trademark, and Respondent was familiar with the AMGEN trademark at the time Respondent registered the <amgen.info> domain name.
Complainant contacted Respondent on March 28, 2006, informing Respondent of the trademark rights owned by Complainant in the AMGEN trademark. Respondent failed to respond to this contact.
Respondent offered to sell the <amgen.info> domain name to Complainant for
US $2,875 while incurring only US $39 in registration fees for this same domain name.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) The domain name in issue is identical or confusingly similar to a trademark or service mark in which Complainant has rights and
(ii) The Respondent has no right or legitimate interest in the contested domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Complainant’s Trademark Rights; Identical or Confusingly Similar
Complainant owns numerous United Statestrademark registrations for its AMGEN
trademark. Therefore, Complainant has established rights in the AMGEN trademark
pursuant to Policy, Paragraph 4(a)(i). See Janus Int’l Holding Co.
v. Rademacher, WIPO Case No. D2002-0201
(finding that the registration of a mark is prima facie evidence of validity,
which creates a rebuttable presumption that the mark is inherently distinctive.
Respondent has the burden of refuting this assumption).
The <amgen.info> domain name is confusingly similar to Complainant’s
well-known AMGEN trademark. The contested domain name is identical to Complainant’s
AMGEN trademark except for the addition of “.info.” The necessary
addition of a top-level domain name such as “.info” is insufficient
to over come a finding of confusing similarity. See Rollerblade, Inc. v.
McCrady, WIPO Case No. D2000-0429
(finding that top level domain names such as “.net” or “.com”
do not affect the domain name for the purpose of determining whether it is identical
or confusingly similar to Complainant’s trademark).
Complainant has proven the requirement of Policy, Paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel finds that Respondent has not rights or legitimate interests in the contested domain name.
Respondent has failed to file a Response, which can suggest, in appropriate
circumstances, that the Respondent lacks rights or legitimate interests in the
disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd.,
WIPO Case No. D2000-1221 (December 4, 2000)
(finding that respondent’s failure to respond in a UDRP proceeding can
be construed, in appropriate circumstances, as an admission that it has no legitimate
interest in the contested domain names).
By not filing a Response, Respondent has not provided any evidence that it
is commonly known by the <amgen.info> domain name, or that it is commonly
known by any name consisting of, or incorporating the name, “Amgen.”
In Charles Jourdan Holding AG v. AAIM, WIPO
Case No. D2000-0403, the panel held that a lack of rights or legitimate
interest could be found where (1) Respondent is not a licensee of Complainant;
(2) Complainant’s rights in its related trademarks precede Respondent’s
registration of the contested domain name; and (3) Respondent is not commonly
known by the domain name in question. The Panel notes that by not submitting
a response, the Respondent also failed to provide any evidence that it is a
licensee of Complainant or that its registration of the <amgen.info> domain
name predates Complainant’s rights in the AMGEN trademark.
The <amgen.info> domain name resolves to a website featuring numerous click-through opportunities for pharmaceutical products. Because Complainant also promotes and distributes pharmaceutical products, the Panel concludes that Respondent is using the contested domain name in association with a website that competes directly with Complainant’s business interests. Furthermore, it is likely Respondent is receiving click-through fees each time an Internet User accesses the website at “www.amgen.info” and clicks on any of the numerous options available. The use of another’s well known trademark for the purpose of deriving this type of commercial benefit is evidence that Respondent has no legitimate right or interest in the <amgen.info> domain name.
Accordingly, the Panel concludes Respondent is not using the <amgen.info>
domain name in association with a bona fide offering of goods and service
pursuant to Policy, Paragraph 4(c)(iii). See Am. Online, Inc. v. Fu,
WIPO Case No. D2000-1374 (“it would
be unconscionable to find […] a bona fide offering of services
in a respondent’s operation of [a] web-site using a domain name which
is confusingly similar to the complainant’s mark and for the same business”).
Complainant has proven the requirement of Policy, Paragraph (a)(ii).
C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the contested domain name in bad faith.
Respondent is using Complainant’s AMGEN trademark to attract Internet
User to a website associated with the <amgen.info> domain name. This website
features click-through opportunities to products that compete directly with
the products sold by Complainant under its AMGEN trademark. This is sufficient
evidence of bad faith registration and use. . See Lilly ICOS LLC v. Tudor
Burdern d/b/a BM Marketing/Burden Marketing, WIPO
Case No. D2005-0313.
The Panel also finds that Respondent likely chose the <amgen.info> domain
name with full knowledge of Complainant’s rights in the AMGEN trademark.
Respondent’s awareness of Complainant’s AMGEN trademark may be inferred
because the mark was registered with the USPTO prior to Respondent’s registration
of the contested domain name and since the AMGEN trademark is well-known in
the pharmaceutical industry. See Kraft Foods (Norway) v. Wide, WIPO
Case No. D2000-0911 (“the fact that Respondent [chose] to register
a well-known mark to which he has no connections or rights indicates that he
was in bad faith when registering the domain name at issue”).
Further evidence of bad faith registration and use is the attempt by Respondent
to sell the <amgen.info> domain name to Complainant for US $2,875 when
Respondent in all likelihood incurred registration costs of only US $39. This
attempt to sell a domain name, containing a well-known trademark of another,
for profit in excess of renewable costs associated with the registration of
the domain name is sufficient evidence of bad faith registration and use under
Paragraph 4(b)(i) of the Policy. See Justin Kent Luhrs v. Steve Regan,
WIPO Case No. D2002-0671 (finding bad
faith in offering domain name for sale for $400).
Complainant has proven the requirement of Policy, Paragraph 4(a)(iii).
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders the domain name <amgen.info> be transferred to the Complainant.
Gary J. Nelson
Sole Panelist
Date: July 26, 2006
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