Dynavax Technologies Corporation v. Mee / Hoxha, Saimir
Claim Number: FA1208001458991
Complainant is Dynavax Technologies Corporation (“Complainant”), represented by Beth M. Goldman of Orrick, Herrington & Sutcliffe LLP, California, USA. Respondent is mee / Hoxha, Saimir (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <heplisav.com>, registered with GoDaddy.com, LLC.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 21, 2012; the National Arbitration Forum received payment on August 21, 2012.
On August 23, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <heplisav.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 23, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@heplisav.com. Also on August 23, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on September 12, 2012.
Complainant then made an Additional Submission to the Forum according to Supplemental Rule #7 on September 16, 2012 which was adjudged timely.
On September 24, Respondent also made an Additional Submission which was accepted by the Forum and taken into account by the Panel.
On September 18, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in the term HEPLISAV and alleges that the disputed domain name is identical to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent broadly denies those allegations. In particular, Respondent submits that it has a legitimate interest in the disputed domain name and so did not register the domain name in bad faith or act in bad faith.
Panel has extracted the following passages from Response:
This name is just not a domain but it has a meaning behind it. I will explain how I came to create this domain. Well when I was born which was a small town in Albania called Proptish a doctor named Hepli saved my life and my moms life while I was being delivered. I own my life to Hepli which made it possible for me to live. And the last three (3) letter which are SAV, (SA) is for Saimir which is my first name and V its Dr.Hepli's last name which is Vangeli. This domain is being brought up to pay respect and to remember his memories.
…
Respondent added a disclaimer to the resolving website that states: “This website is not part of, nor owned by or partnered with DYAVAX TECHNOLOGIES CORPORATION Trademarked Name.”
…
I am going to make it clear that this domain will never be sold nor be used for commercial use.
C. Additional Submission
As described earlier, both parties made an Additional Submission.
In its Additional Submission, Complainant wrote, inter alia, that Respondent purports to have rights and legitimate interests to the disputed domain name based on assertions which, on their face, are “wildly incredible” and which, in any event, are not supported by any evidence.
Complainant goes on to state that:
Respondent’s newly-crafted argument that he has always intended to build a website to honor an individual and purchased the Disputed Domain Name with that intent belies the facts on the record. . . . In support of his argument, Respondent attaches e-mail correspondence with Complainant where he asserts his “plans” to use the domain to develop a website . . . . Respondent first offered to sell the Disputed Domain Name to Complainant for over $85,000, and then made a counter-offer of $12,500 in a later email.
Panel has read and taken into account Respondent's Additional Submission but Panel finds it unneccessary to repeat any of the argument here.
The factual findings pertinent to the decision in this case are that:
1. Complainant is a pharmaceutical company which has used the trademark HEPLISAV in connection with its hepatitis B vaccine since 2007.
2. Complainant owns, amongst others, United States Trademark Reg. No. 3,795,025 filed September 26, 2005 for the trademark HEPLISAV.
3. The disputed domain name was registered on November 19, 2010.
4. The domain name resolves to a website holding page which states “Future home of something quite cool” plus the image of a shirt hanging in a closet.
5. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
6. Respondent offered to sell the disputed domain name to Complainant for considerations far exceeding the out of pocket registration cost for the name.
Preliminary Issue: Consent to Transfer
Panel notes that Response contains the following wording:
Consent to Remedy (Optional)
[6.] The Respondent consents to the remedy requested by the Complainant and agrees to [transfer/cancel] the disputed domain name(s) on the basis of Party agreement, without need for a decision being rendered by the Administrative Panel.]
Although Complainant made Additional Submissions, it said nothing of this matter. In Panel’s own assessment, this wording from the Forum’s response template has mistakenly found its way into Response and Panel gives it no weight.
Primary Issues
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."
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its United States Patent and Trademark Office trademark registration, the Panel is satisfied that it has trademark rights. See State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
Panel is also satisfied that the disputed domain name is legally identical to Complainant’s trademark since it takes the trademark and merely adds the non-distinctive gTLD, “.com.” See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. For the avoidance of doubt, Panel adds here that the inclusion of a disclaimer has no influence on the assessment of this aspect of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests. See Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000); see also Hanna‑Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
The publicly available WHOIS information identifies Respondent as “Mee / Hoxha, Saimir” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization. The domain name resolves to a webpage holding page indicating a site essentially under construction. There is no current use of the domain name, commercial or otherwise. See, e.g., T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (concluding that the respondent had no rights or legitimate interests in the domain name <worldgyms.com> because it contained no substantive content, just the phrase “coming soon” and a picture of someone working out). Finally, Complainant provides documentary and sworn evidence that Respondent offered the domain name to Complainant, initially at a cost of US$85,000. That action is a contra-indication of any legitimate interest in the name. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name).
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name.
Respondent asserts that it had no intention to sell the domain name. Panel finds that the evidence demonstrably contradicts that assertion. Respondent has not provided any convincing evidence for its account of why it registered the domain name. Absent supporting evidence, that account can be given very little weight. Finally, there is no use of the domain name in relation to an offering of goods or services and the evidence of a possible future bona fide offering of goods or services is not at all compelling.
On the evidence before it, Panel finds that Respondent has not done enough to meet the burden of proof which fell to it to show that it has rights or a legitimate interest in the domain name and so Panel finds that Complainant has established the second element of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.
On an assessment of the whole of the evidence, Panel finds clear indications that Respondent registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to Complainant or to a competitor of Complainant for a consideration in excess of Respondent’s out-of-pocket registration costs. Accordingly, Panel finds that Respondent’s actions fall squarely under paragraph 4(b)(i) above.
Panel finds that Complainant has established the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <heplisav.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: September 29, 2012
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