Synvist.com

The timeline behind synvist.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.

NATIONAL ARBITRATION FORUM DECISION Genzyme Corporation v. Texas International Property Associates Claim Number: FA0702000921807 PARTIES Complainant is Genzyme Corporation (“Complainant”), represented by Lawrence R. Robins, of Finnegan, Henderson, Farabow, Garrett & Dunner L.L.P., 55 Cambridge Parkway, Cambridge, MA 02142-1292. Respondent is Texas International Property Associates (“Respondent”), represented by Gary Wayne Tucker, of Law Office of Gary Wayne Tucker PO Box 703431, Dallas, TX 75370. 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 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

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