AmeriSource
Corporation v Jongsun Park
Claim Number: FA0108000099134
PARTIES
Complainant is AmeriSource Corporation, Chesterbrook, PA ("Complainant") represented by James J. Johnston of Dechert. Respondent is Jongsun Park, Anyang-city, Kyunggi-do, Korea ("Respondent") represented by Kijoong Kim of Dongsuh International Law Offices.
REGISTRAR AND
DISPUTED DOMAIN NAMES
The domain names at issue are <amerisourcebergen.com> and <amerisource-bergen.com>, registered with Hangang.
PANEL
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.
Young Kim as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on August 20, 2001; the Forum received a hard copy of the Complaint on August 20, 2001.
On August 20, 2001, Hangang confirmed by e-mail to the Forum that the domain names <amerisourcebergen.com> and <amerisource-bergen.com> are registered with Hangang and that the Respondent is the current registrant of the names. Hangang has verified that Respondent is bound by the Hangang 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 August 27, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 17, 2001 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@ amerisourcebergen.com, postmaster@amerisource-bergen.com by e-mail.
On August 30, 2001, Respondent filed a request to suspend or terminate the
administrative proceeding with a copy of complaint filed with a Korean district
court by Respondent, which was received by the Forum on September 5, 2001.
A timely response was received and determined to be complete on September 14, 2001.
On September 20,
2001, an Additional Submission by Complainant was served upon Respondent by
electronic mail and facsimile directed to the offices of Respondent's
representative and was received with the Forum on September 24, 2001. It complies with Supplemental Rule 7(a) of
the Forum.
On October 8, 2001, pursuant to Complainant's request to have the dispute
decided by a single-member Panel,
the Forum appointed Young Kim as Panelist.
In
accordance with Rule 11, the proceedings have been conducted in the language of
the registration agreement, Korean.
Both Complaint and Response were submitted in Korean. The Panel has determined that the decision
itself will be published in English.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant asserts the following in accordance with ICANN Policy 4.
1. Complainant's Trademark Rights and Similarity between Trademarks and
Domain Names
Complainant asserts that it is a leading distributor of pharmaceutical and healthcare products, with more than $12 billion in annual sales, and is the owner of U.S. trademark registrations for "AMERISOURCE" and "AMERISOURCE SELECT" ("the Subject Marks"). Complainant also asserts that it has used the AMERISOURCE mark for over seven years, and the AMERISOURCE SELECT mark for nearly five years in commerce in connection with its products. Complaint also registered a domain name <amerisource.com> and operated a web site under that URL.
On March 19, 2001, Complainant and Bergen
Brunswig Corporation announced a merger plan.
On the same day, Respondent registered the domain names <amerisourcebergen.com> and <amerisource-bergen.com> ("the subject Domain Names”).
Complainant asserts that the subject Domain
Names are confusingly similar to the Subject Marks.
2. Rights or Legitimate Interests
In summary, Complainant asserts that Respondent
has never been known by the term "AmeriSource," has not used the
subject Domain Names in connection with a bona fide offering of goods or
services, and is not making a legitimate noncommercial or fair use of the
subject Domain Names, without intent for commercial gain to misleadingly divert
consumers or to tarnish the Subject Marks.
On May 15 and May 16, 2001, Complainant's counsel sent a cease and desist letter to Respondent by e-mail and by Federal express, and Respondent replied via return e-mail that he did not understand English.
After May 31, 2001 and before July 1, 2001,
Respondent changed the web sites at the subject Domain Name URLs to incorporate
a text of "AMERIcan language SOURCE for BERGEN university." Complainant asserts that the above web site
is a static page of text and graphics, its sole functionality consisting of a
prepackaged toolbar of links maintained and hosted by the Korean web portal,
Netian.com, and it was changed to lend an aura of legitimacy to Respondent's
action.
Complainant asserts, based on the above, that
Respondent cannot show before any notice of the dispute, he used or made
demonstrable preparations to use the subject Domain Names or name(s)
corresponding to the subject Domain Name(s) in connection with a bona fide offering
of goods or services.
Complainant also asserts that there is no
Bergen University located in Korea, and Respondent has no relationship with the
University of Bergen located in Bergen, Norway, and therefore, Respondent is
not making a legitimate noncommercial or fair use of the subject Domain Names,
without intent for commercial gain to misleadingly divert consumers or to
tarnish the Subject Marks at issue.
3. Registration and Use in Bad Faith
Respondent registered the subject Domain Names
on the same day when Complainant, AmeriSource Corporation, and Bergen Brunswig
Corporation announced a proposed merger.
On July 5, 2001, Complainant's counsel received an e-mail from an individual identified as Chung Sik Kim, who purported to be an acquaintance of Respondent. The e-mail held out the possibility that Respondent might use the site to display pornographic material, and indicated that if Complainant were not to engage Mr. Kim to settle this matter, Complainant would have to pay tremendous money to get the subject Domain Names. The e-mail indicated that Mr. Kim knew the weaknesses of Respondent, and could assist Complainant in obtaining the registrations.
Complainant asserts that Complainant's counsel received the e-mail from Mr. Kim, one day after Complainant's counsel spoke to Respondent. Complainant also asserts that Complainant's counsel had copied no other party in the e-mail or post correspondence with Respondent. Complainant contends that Mr. Kim could only have discovered the identity and e-mail address of Complainant's counsel through Respondent, and therefore, Mr. Kim operated in concert with Respondent.
Complainant contends that Respondent did not
use the subject Domain Names for any other purpose until after notice of
Complainant's objection, and such parking has been found in and of itself to be
evidence of bad faith.
Respondent asserts the following in accordance with ICANN Policy 4.
1. Identical and/or Confusingly Similar
Respondent asserts that although the subject Domain Names are similar to
Complainant's U.S. trademark "AMERISOURCE", they do not cause
confusion. Respondent also asserts that
in order for some marks to cause confusion, they must generate a
misunderstanding that the marks are managed by the same holder, or the sources
of the marks are same. Respondent added
that it is not likely that people confuse the subject Domain Names of an
individual in Asia with the large company, that is Complainant.
2. Rights or Legitimate Interests
Respondent contends that he expressed his intention to use the subject
Domain Names noncommercially on his web site.
Specifically, he asserts that he plans to establish a web site to
provide information on University of Bergen, although Respondent has no
relationship with University of Bergen.
Respondent asserts that since University of Bergen in Norway is favorable
for foreigners, Korean students planning to study in Europe are interested in
the University, and thus, it is possible for a Korean to plan a web site on the
University. Respondent asserts that
the fact that he is not related to Bergen University does not preclude him from
having legitimate interest in the subject Domain Names.
Respondent asserts that Respondent does not understand English well, but
can use English enough to introduce information about a university located in
other countries.
Respondent contends that he could not establish a web site because he did
not have enough time after he registered the subject Domain Names on March 19,
2001. Respondent also contends that
Respondent could not proceed to establish the web site, after Respondent
received the cease and desist letter from Complainant that is a very big
company.
3. Registration and Use in Bad Faith
Respondent asserts he did not know about Complainant and the merger, and it
was merely a coincidence that the subject Domain Name registrations and the
merger announcement occurred on the same day.
Respondent asserts that Chung Sik Kim is a colleague of Respondent,
however, Respondent did not know why Chung Sik Kim sent an e-mail to
Complainant's counsel, and how he got the e-mail address of Complainant's
counsel. Respondent also asserts that
Respondent is not related to his behavior, regardless of why he sent the e-mail
to Complainant's counsel.
Respondent contends that "AmeriSource" is a common abbreviation
for "American Source", and it does not appear to be famous or have acquired
a secondary meaning outside the United States.
Respondent
contends that he did not know what kind of business Complainant was doing, and
therefore, it is impossible for Respondent to intentionally attempt to attract
Internet users to Respondent's web site by creating a likelihood of confusion.
Respondent contends that a web site consisting of only a "under
construction" page may not be a proof for bad faith.
Respondent asserts that he filed a suit in Suwon District Court of Korea to
enjoin Complainant from taking further legal action against Respondent on
August 25, 2001. Based on this,
Respondent asks the Panel to suspend or terminate the administrative proceeding
in accordance with ICANN Policy 4(k) and ICANN Rule 18(a).
Complainant claims in the supplement to the
complaint that the term "AmeriSource" has no common meaning except as
the name of Complainant's business.
Complainant also asserts that on September 3,
2001, Global Marine Inc. and Santa Fe International Corporation announced their
merger and the new name, GlobalSantaFe.
On the next day, Respondent registered the domain names <GLOBALSANTEFE.COM>
and <GLOBALSANTEFE.NET>.
Based on the above, Complainant asserts that
Respondent has monitored press releases regarding mergers of American
companies, and has registered in bad faith domain names corresponding to the
announced names of merging companies.
Complainant asserts that it has not been served with process in connection
with any such lawsuit in connection with the subject Domain Names.
Complainant has confirmed the followings: U.S.
trademark registration No. 2,040,884 for "AMERISOURCE" is held by
AmeriSource Heritage Corporation, which is a wholly owned subsidiary of AmeriSource
Health Corporation; AmerisourceBergen Corporation has been formed from the
merger of AmeriSource Health Corporation and Bergen Brunswig Corporation; after
the merger, AmeriSource Health Corporation and Bergen Brunswig Corporation
still exist as direct subsidiaries of AmerisourceBergen Corporation; and
Complainant is an operating company of AmerisourceBergen Corporation.
On August 25, 2001, Respondent filed a civil
action with Suwon District Court of Korea seeking a decision holding that
Complainant in this administrative proceeding has no right to enjoin Respondent
from using the subject Domain Names or to claim the transfer the subject Domain
Names. The English translation of the
complaint for the Korean court action has not been submitted and served to
Complainant.
The Panel finds that Complainant has not established its trademark right in the name “AmerisourceBergen” or “Amerisource-Bergen”. Further, the Panel finds that the name “AmerisourceBergen” or “Amerisource-Bergen” is not identical or confusingly similar to the name “AmeriSource”.
The Panel finds that Respondent has no rights or legitimate interests in the subject Domain Names.
The Panel finds that the subject Domain Names have been registered and are being used in bad faith.
A. Respondent’s Request for Suspension or Termination of the Administrative Proceeding
Respondent has requested that the Panel should suspend or terminate the administrative proceeding in accordance with ICANN Policy 4(k) and ICANN Rule 18(a). It is noted that Respondent has filed an action with the Suwon District Court, seeking a decision holding that Complainant in the administrative proceeding has no right to enjoin Respondent from using the subject Domain Names or to claim the transfer the subject Domain Names. Since the Panel also has an authority to find whether Complainant has such a right for the subject Domain Names, the Panel rejects Respondent’s request for suspension or termination of the administrative proceeding.
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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
The company formed from the merger between AmeriSource Health Corporation and Bergen Brunswig Corporation is AmerisourceBergen Corporation, and not Complainant. Further, AmeriSource Health Corporation and Bergen Brunswig Corporation still exist after the merger. Complainant argues that it is an operating company of AmerisourceBergen Corporation and the interrelated nature of the two companies is illustrated by the fact that the chief executive officer of the two companies is the same person. However, the legal capacity of an operating company is questionable and the mere fact that the chief executive officer of the two companies is the same person does not automatically bestow to Complainant any right that AmerisourceBergen Corporation has. Thus, the Panel concludes that Complainant has no trademark rights for the name “AmerisourceBergen” or “Amerisource-Bergen”.
The Panel's above conclusion is supported by other decisions including The Avenue, Inc. and United Retail Inc. v. Chris Guirguis dba Lighthouse Web Design, D2000-0013(WIPO Mar. 19, 2000); and Westfield Corp., and Westfield Ltd. v. Hobbs, D2000-0227 (WIPO May 18, 2000). In these cases, the complaints were filed by more than two complainants (e.g., the owners of trademark registrations and licensees of the trademarks). The panels in these cases determined that the domain names at issue be transferred only to one of the complainants who is the owner of the trademark registrations.
In addition, the trademark registrations for “AMERISOURCE” and “AMERISOURCE SELECT” are held by AmeriSource Heritage Corporation, which is a wholly owned subsidiary of AmeriSource Health Corporation. Even if Complainant (AmeriSource Corporation) has acquired a trademark right for “AmeriSource” due to its use of the name for several years, “amerisourcebergen” and “amerisource-bergen” are not identical or confusingly similar to “AmeriSource”. The trademark “AmeriSource” is not so famous that any name containing AmeriSource is related to AmeriSource or Complainant. Further, the name “Bergen” has been used for a long time by Bergen Brunswig Corporation, that still exists after the merger. Thus, “amerisourcebergen” and “amerisource-bergen” is not identical or confusingly similar to “AmeriSource”.
In any event, AmerisourceBergen Corporation
exists separately and independently of AmeriSource Health Corporation and
Bergen Brunswig Corporation (which also
continue to exist after the merger).
This Panel finds it difficult to hold that a domain name that may belong
to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong
to AmeriSource Corporation because they are affiliated companies.
Rights or
Legitimate Interests
Respondent
has never been known by the term "
amerisourcebergen " or
"AmerisourceBergen". The web
site at the subject Domain Name URLs was comprised of an "under
construction" page before Complainant sent a cease and desist letter to
Respondent. The web site was later
changed to incorporate only a text of "AMERIcan language SOURCE for BERGEN
university".
Respondent claims
that although Respondent has nothing to do with University of Bergen in Norway, he was going to set up a web
site to provide information on University of Bergen to Korean students. Respondent
contends that it chose the subject Domain Names to provide information about
University of Bergen, and "AMERISOURCEBERGEN" represents the "AMERIcan
language SOURCE for BERGEN university" phrase.
However, the combination of "Amerisource" and Bergen" is not
ordinary but arbitrary especially because the University of Bergen is located
in Norway (and not in America) and is not famous in Korea. Further, the phrase "AMERIcan language
SOURCE for BERGEN university" is so artificial. In addition, Respondent admitted that he has nothing to do with
University of Bergen. Thus, it is not
believed that Respondent has chosen the subject Domain Names to provide
information about University of Bergen.
Therefore, the Panel concludes that Respondent
has no rights or legitimate interests in the subject Domain Names.
Respondent
registered the subject Domain Names on the same day (March 19, 2001) when
Amerisource Health Corporation announced a proposed merger with Bergen Brunswig
Corporation and the name of the new company to be formed by the merger. And the press release about the proposed
merger was also publicly available on the Internet to users worldwide on the
same day. Besides, the subject Domain
Names are not considered generic names that can be chosen by anyone. Therefore, the Panel finds that Respondent
registered the subject Domain Names in bad faith. Such timing of the subject Domain Name registration and merger
announcement could not be a coincidence.
See Time Warner Inc. and EMI Group plc v. CPIC Net, D2000-0433
(WIPO Sept. 15, 2000); see also EntergyShaw
LLC v. CPIC Net, FA 95950 (Nat. Arb. Forum Dec. 8, 2000); see also The London Metal Exch. Ltd. v.
Hussain, D2000-1388 (WIPO Dec. 15, 2000).
In
addition, Respondent showed a pattern of registering names of soon-to-be merged
companies. One day after Global Marine
Inc. and Santa Fe International Corporation announced their merger and the name
of the new company, GlobalSantaFe, Respondent registered the domain names <GLOBALSANTEFE.COM>
and <GLOBALSANTEFE.NET>.
It
is highly unlikely that Respondent registered two names of the merged companies
by chance.
Further, it is considered that Respondent is
using the subject Domain Names in bad faith by continuing to unreasonably argue
that he plans to set up a web site to provide information on University of
Bergen to Korean students.
DECISION
For the foregoing reasons, the Panel decides
that the relief sought by Complainant is hereby DENIED.
Young Kim, Panelist
Dated: November 5, 2001
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