Genzyme Corporation v.
Claim Number: FA0702000921807
PARTIES
Complainant is Genzyme Corporation (“Complainant”), represented by Lawrence
R. Robins, of Finnegan,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <synvist.com>, registered with Compana, LLC.
PANEL
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 Honourable Neil Anthony Brown QC as
Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 22, 2007; the
National Arbitration Forum received a hard copy of the Complaint on February 23, 2007.
On March 1, 2007, Compana, LLC confirmed by e-mail to the
National Arbitration Forum that the <synvist.com> domain name is
registered with Compana, LLC and that the
Respondent is the current registrant of the name. Compana, LLC
has verified that Respondent is bound by the Compana,
LLC 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 7, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of March 27, 2007 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 postmaster@synvist.com by e-mail.
A timely Response was received and determined to be complete on March 27, 2007.
On April 2, 2007 pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant Genzyme Corporation contends that:
1. The domain name <synvist.com>, which is registered in the name of Respondent,
is nearly identical and confusingly similar to Complainant’s trademark,
SYNVISC, which is US Trademark Registration No.1, 418,125 registered with the
United States Patent and Trademark Office (“USPTO”) on November 25, 1986.
2. Respondent does not have any rights or
legitimate interests in the <synvist.com>
domain name.
3. Respondent registered and is using the
domain name <synvist.com> in
bad faith.
4. The domain name should be transferred from
Respondent to Complainant.
B. Respondent
Respondent Texas International Property Associates agrees to the relief
requested by Complainant and will, upon order of the Panel, do so. Respondent maintains that this is not an
admission that the three elements required to be proved under paragraph 4(a) of
the Policy have been established. Accordingly, the Respondent expressly
stipulates and requests that the domain name <synvist.com> be transferred to Complainant.
FINDINGS
Complainant is a leading biotechnology
company and among many other products produces pharmaceutical treatments for
osteoarthritis of the knee under its trademark SYNVISC. It registered SYNVISC with the USPTO on
November 25, 1986 as a trademark.
The domain name <synvist.com> was registered on November 12, 2005 and the
registration was subsequently transferred to Respondent.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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;
(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.
However, it is clear that this proceeding is now a request for a consent
order. That is so because Complainant
asks for an order that the contentious domain name be transferred to it and
Respondent in its Response also seeks an order that the domain name be
transferred to Complainant.
It is open to the Panel when faced with such a
situation to forgo the usual UDRP analysis of the three issues set out above
and simply make an order for the transfer of the domain name to
Complainant. That course was followed in
Boehringer Ingelheim Int’l GmbH v. modern
Ltd-Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003). It was also followed in PSC Mgmt. Ltd. Partnership v. PSC Mgmt. Ltd. Partnership, FA 467747 (Nat. Arb. Forum June 6, 2005), Disney
Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005)
and Malev Hungarian Airlines, Ltd. v.
Vertical Axis Inc., FA 212653 (Nat. Arb. Forum Jan. 13,
2004) (“In this case, the parties have both asked for the domain name to be
transferred to the Complainant…Since the requests of the parties in this case
are identical, the panel has no scope to do anything other than to recognize
the common request, and it has no mandate to make findings of fact or of
compliance (or not) with the Policy.”). The same course was followed by the
panel as presently constituted in Norgren,
Inc. v. Norgren, Inc., FA 670051 (Nat. Arb. Forum, May
23, 2006), Diners Club International Ltd.
v. Nokta Internet Technologies, FA 720824 (Nat.
Arb. Forum, Aug 2, 2006) and Digg Inc. v. Damien Overeem, FA 836770 (Nat. Arb. Forum, Dec. 20, 2006) and
also in The Body Shop Int’l plc v. Agri,
Lacus, and Caelum LLC, FA 679564
(Nat. Arb. Forum May 25, 2006).
The
Panel respectfully adopts the position as expressed in the The Body Shop Int’l plc case:
Consistent with a general legal principle governing arbitrations as
well as national court proceedings, this Panel holds that it cannot issue a
decision that would be either less than requested, or more than requested by
the parties. Because both Complainant and Respondent request the transfer
of the disputed domain name to Complainant, the Panel must recognize the common
request of the two parties.
Indeed, it would be unwise to make any other
findings in case the same issues arise in later proceedings. Accordingly, the Panel will not make any
findings of fact or compliance or otherwise, but will make the only order that
is appropriate in the circumstances, which is an order for the transfer of the
domain name to Complainant.
DECISION
Accordingly, it is Ordered that the <synvist.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 13, 2007
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