Tezosentan.com

The timeline behind tezosentan.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

DECISION Actelion Pharmaceuticals Ltd. V. Kumar Bhatt dba Tezosentan.com Claim Number: FA0109000099677 PARTIES Complainant is Actelion Pharmaceuticals Ltd., Allschwil, Switzerland ("Complainant") represented by Edward J. Naughton, of Holland & Knight LLP. Respondent is Kumar Bhatt dba Tezosentan.com, Rio, Brazil ("Respondent"). REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <tezosentan.com>, registered with Network Solutions. 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. John J. Upchurch as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 7, 2001; the Forum received a hard copy of the Complaint on September 6, 2001. On September 10, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <tezosentan.com> is registered with Network Solutions and that Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 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 September 17, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 9, 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@tezosentan.com by e-mail. Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default. On October 22, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent. RELIEF SOUGHT Complainant requests that the domain name be transferred from the Respondent to the Complainant. PARTIES’ CONTENTIONS A. Complainant The <tezosentan.com> domain name is identical to complainant’s patented drug TEZOSENTAN. Respondent has no rights or legitimate interests in respect to the <tezosentan.com> domain name. Respondent registered and used the <tezosentan.com> domain name in bad faith. B. Respondent No Response was received. FINDINGS Complainant’s predecessor-in-interest selected bosentan as the official name of its pharmaceutical product, and subsequently received approval from the World Health organization for bosetan family of names. TEZOSENTAN is covered by a pending U.S. patent, filed July 15, 1999 by Complainant’s predecessor-in-interest. By virtue of the license granted to Complainant by its predecessor-in-interest, Complainant has exclusive right to the TEZOSENTAN mark under the pending application. Complainant is currently funding clinical trials for TEZOSENTAN and has invested millions in those trials and efforts to secure FDA approval to market the drug. Respondent owned <tezosentan.com> until April 16, 2001. After Complainant contacted Respondent about transfering the domain name, Respondent transferred it to a Nicaraguan entity named Tezosentan.com on April 16, 2001 and then transferred it again on August 6, 2001 to a Brazilian entity called tezosentan.com. Respondent refused to answer to Complainant. In addition, Respondent has a history of using the famous marks of others, many of them patented names of drugs, as domain names. DISCUSSION 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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules. 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. Identical and/or Confusingly Similar Respondent’s domain name <tezosentan.com> is identical to Complainant’s patented drug TEZOSENTAN. See Boehringer Ingelheim Corp. v. Bhatt, FA 560011 (Nat. Arb. Forum Aug. 11, 2000) (finding <meloxicam.com> and <telmisartan.com> identical to drugs MELOXICAM and TELMISARTAN); see also Brookfield Communications, Inc. v. West coast Ent. Corp., 174 F.3d 1036, 1054 n.7 (9th Cir. 1999); see also Planned Parenthood Fed. of Am., Inc. v. Bucci, 1997 U.S. Dist. LEXIS 3338, No. 97-0629 (S.D.N.Y. Mar. 24, 1997). The Panel finds that Policy 4(a)(i) has been satisfied. Rights or Legitimate Interests Respondent does not have a legitimate interest in <tezosentan.com> because he did not use it for a bona fide offering of goods or service. Instead, Respondent refused to respond to Complainant’s offer to purchase <tezosentan.com>, and continued to passively hold the domain name. Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the Respondent failed to submit a response to the Complaint and had made no use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the Respondent is not commonly known by the domain name). Respondent did not have a legitimate right or interest in <tezosentan.com> because Respondent was not commonly known by <tezosentan.com> and made no use of the domain name. See Strojirny v. Rautiainen, D2000-1394 (WIPO Dec. 20, 2000) (finding that Respondent has no rights or legitimate interests in the domain name where Respondent is not commonly known by the distinct ADAST mark and has made no use of the domain name in question); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark). Respondent did not have a legitimate right or interest in <tezosentan.com> because Respondent’s passive holding of <tezosentan.com> is not a legitimate or fair use of the domain name. See BMW AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding no rights in the domain name where Respondent claimed to be using the domain name for a non-commercial purpose but had made no actual use of the domain name). The Panel finds that Policy 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Respondent’s pattern of registering names and marks of third parties, including other patented drug names, is evidence of bad faith. Pursuant to Policy 4(b)(ii) See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names which infringe upon others’ famous and registered trademarks); see also Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (Sept. 6, 2000) (finding bad faith where the Respondent engaged in the practice of registering domain names containing the trademarks of others). Respondent’s disruption of Complainant’s business is evidence of bad faith. Due to Respondent’s unauthorized holding of the domain name, it is more difficult for consumers to find information from the only lawful source of the drug bosentan. See Toyota Jidosha Kabushiki Kaisha v. S&S Enter. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (finding that "Registration of a domain name (by Respondent that incorporates another’s trademark) goes further than merely correctly using in an advertisement the trade mark of another in connection with that other’s goods or services: it prevents the trade mark owner from reflecting that mark in a corresponding domain name"). Respondent’s passive holding of the <tezosentan.com> domain name is evidence of bad faith. See Am. Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way). The Panel finds that Policy 4(a)(iii) has been satisfied. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted. Accordingly, it is Ordered that the domain name <tezosentan.com> be transferred from Respondent to Complainant. John J. Upchurch, Panelist Dated: October 31, 2001 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.