Alpharma Pharmaceuticals LLC v. Pier Francesco Maria Santi
Claim Number: FA0803001158562
Complainant is Alpharma Pharmaceuticals LLC (“Complainant”), represented by Maury
M. Tepper, of Womble Carlyle Sandridge & Rice, PLLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <embedda.com>, registered with Tucows Inc.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 6, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 7, 2008.
On March 12, 2008, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <embedda.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On March 14, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 3, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 8, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <embedda.com> domain name is confusingly similar to Complainant’s EMBEDA mark.
2. Respondent does not have any rights or legitimate interests in the <embedda.com> domain name.
3. Respondent registered and used the <embedda.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Alpharma Pharmaceuticals LLC, is a global
specialty pharmaceutical company providing products for humans and
animals. Complainant markets a
pharmaceutical for the treatment of pain under the EMBEDA mark, and has filed a
new drug application with the Food and Drug Administration (“FDA”) for approval
of this pain medication for sale in the
Respondent was previously the owner of the <embeda.com> domain name which was registered in November 2004. Complainant contacted Respondent to inquire about purchasing that domain name in November 2007. Respondent completed the sale of the <embeda.com> domain name to Complainant on December 10, 2007. On December 7, 2007, Respondent, without notifying Complainant, registered the <embedda.com> domain name. The website that resolves from the <embedda.com> domain name purports to sell software products.
Paragraph 15(a) of the Rules instructs this 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 draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant filed a trademark application for the EMBEDA mark with the USPTO on November 16, 2007. However, this application alone does not confer rights in the EMBEDA mark under Policy ¶ 4(a)(i). See Computer Nerds Int’l, Inc. v. Ultimate Search, FA 155179 (Nat. Arb. Forum June 23, 2003) (“Complainant's pending trademark applications do not establish its rights in the mark pursuant to Policy 4(a)(i).”); see also Wave Indus., Inc. v. Angler Supply, FA 304784 (Nat. Arb. Forum Sept. 20, 2004) (finding that the complainant’s pending trademark applications did not establish rights because “an application for [a] mark is not per se sufficient to establish rights [in] a trademark for the purposes of the [Policy]”).
Regardless, a trademark application or registration is not necessary for a complainant to establish rights in a mark. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Instead, a complainant can establish common law rights in the mark for the purposes of Policy ¶ 4(a)(i). See Hiatt v. Pers. Fan & Official Site Builders : we build great sites, FA 881460 (Nat. Arb. Forum Feb. 21, 2007) (“Registration with a trademark authority is unnecessary under Policy ¶ 4(a)(i) in instances where a mark has gained secondary meaning through extensive commercial use and common law rights have been established ….”).
Based on the allegations in the Complaint and the corresponding
evidence in the record, the Panel cannot determine any first date of use in
commerce of the EMBEDA mark by Complainant.
The USPTO trademark application does not identify such a date. Complainant has filed a new drug application
with the FDA to authorize the future sale of the drug in the
Accordingly, the Panel finds that Complainant has failed to satisfy Policy ¶ 4(a)(i).
Since Complainant failed to satisfy Policy ¶ 4(a)(i) because it has failed to establish any protectable rights in the EMBEDA mark, the Panel declines to analyze this element of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
For the same reason as discussed in ¶ 4(a)(ii), the Panel declines to analyze this element of the Policy.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <embedda.com> domain name REMAIN with Respondent.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 14, 2008
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