Thenarcanproject.com

The timeline behind thenarcanproject.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 Emergent BioSolutions Inc. v. Mark Hanley Claim Number: FA2412002128192 PARTIES Complainant is Emergent BioSolutions Inc. ("Complainant"), represented by Virginia Wolk Marino of Crowell & Moring LLP, Illinois, USA. Respondent is Mark Hanley ("Respondent"), Arizona, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <thenarcanproject.com>, registered with Godaddy.Com, 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. Debrett G. Lyons as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to Forum electronically on December 5, 2024; Forum received payment on December 5, 2024. On December 5, 2024, Godaddy.Com, Llc; confirmed by e-mail to Forum that the <thenarcanproject.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 December 12, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2025 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@thenarcanproject.com. Also on December 12, 2024, 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. Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default. On January 3, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Debrett G. Lyons as Panelist. On January 7, 2025, the Forum received an informal and out-of-time email which was on-sent to the Panel to consider at its discretion. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a Formal response from Respondent. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant Complainant asserts trademark rights in NARCAN. It states that by itself and through its subsidiary, Emergent Operations Ireland Limited, it has used the trademark NARCAN. Complainant submits that the disputed domain name is confusingly similar to the 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 failed to submit a formal Response in this proceeding. FINDINGS The factual findings pertinent to the decision in this case are that: 1. Complainant is a biopharmaceutical company that, amongst other things, offers a naloxone nasal spray with narcotic and opioid antagonist properties under the trademark NARCAN; 2. the trademark NARCAN is registered with United States Patent & Trademark Office ("USPTO") as, inter alia, Reg. No. 808366, registered May 17, 1966; and 3. the disputed domain name was registered on June 17, 2024, and resolves to a website under construction. 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." 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. In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. Identical and/or Confusingly Similar Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant relies on a USPTO and other national and pan-national registrations for NARCAN. All are in the name of Emergent Operations Ireland Limited. Complainant makes an unsupported claim that Emergent Operations Ireland Limited is a subsidiary company. The Complaint might have nominated both Complainant and Emergent Operations Ireland Limited as joint complainants. Nevertheless, paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview"), asks: "Does a trademark owner's affiliate or licensee have standing to file a UDRP complaint?" In answer, it is said that: 1.4.1 A trademark owner's affiliate such as a subsidiary of a parent or of a holding company, or an exclusive trademark licensee, is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint. The Panel takes the view that Complainant can be understood as "affiliated" with the trademark owner. Accordingly, the Panel finds that Complainant has rights since it provides proof of registration of NARCAN with the USPTO, a national trademark authority. Comparing the disputed domain name with the trademark, it is well accepted that the gTLD, ".com" can be disregarded (see, for example, Am. Int'l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007)). The disputed domain name then differs from the trademark by addition of the definite article and the generic/descriptive word, "project". The Panel finds that the composite expression, "the narcan project" is confusingly similar to the trademark (see, for example, Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) finding that "[w]here a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."); Emergent BioSolutions Inc. v. Kaveman Ko, FA 2115054 (Forum October 7, 2024) finding <narcanready.com> confusingly similar to the trademark). The Panel finds that the requirements of paragraph 4(a)(i) of the Policy are satisfied. Rights or Legitimate Interests 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 trademark 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, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)). The name of the domain name owner does not carry any suggestion that Respondent might be commonly known by the domain name. There is no evidence that Respondent has any trademark rights of its own. The evidence accompany the Complaint show the domain name to resolve to a webpage which simply states: "Saving Lives Through Education". Complainant asserts that these words are set "as an overlay against an image of an open bottle of medication with pills spilling out, an obvious reference to NARCAN® Nasal Spray." In the evidence before the Panel there is no imagery. The Panel has reviewed the resolving page as it now stands and sees the image described and the words "coming soon". There is now no reference to "Saving Lives Through Education". The Panel has difficulty accepting that either that slogan or the spilled pill bottle is an obvious reference to the NARCAN Nasal Spray. There is no trademark shown and Complainant's spray dispenser is nothing like a pill container nor is there evidence that Complainant's goods come in pill form. However, for the purposes of paragraph 4(c) of the Policy, the Panel makes the simple finding that there is essentially no use of the disputed domain name (see, for example, Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) ("Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent's <kohler-corporation.com> resolves to an inactive webpage displaying the message "website coming soon!"). A prima facie case has been made and so the onus shifts to Respondent. In the absence of a Response, the Panel finds that Respondent has not discharged the onus and finds the Respondent has no rights or interests. The Panel finds that Complainant has satisfied the second limb of the Policy. Registration and Use in Bad Faith Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and 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.' The email sent to Forum on January 7, 2025, was not from Respondent but from someone purporting to be an "Executive Assistant". It states that: "the individual in question is Mark Hanley's 17-year-old son, who … was unaware that the use of the name "Narcan" was not permitted and unintentionally included it on his landing page and other pages on his website. Upon receiving the notice, he promptly removed the name from all locations, including the landing page." From the Panel's perspective, there was no time when the trademark was used on the landing page. There are no other pages. The asserted corrections do not address the domain name which is the focus of these proceedings. In short, the Panel finds the statements to be of no assistance. The Panel notes that the actions of Respondent in this matter do not fall under Policy ¶ 4(b)(i)-(iv). Those scenarios are illustrative rather than exclusive but if not relied upon then registration in bad faith and use in bad faith must be in evidence. Whilst there is no evidence of use or reputation accompanying the Complaint, the USPTO registration shows that the trademark was first used in commerce in 1965. The Panel can draw no conclusions about reputation but based on the evidence as a whole makes the reasonable inference that Complainant has continued to sell nasal spray under the trademark for some decades. The Panel finds on the balance of probabilities that, at the time of registration of the domain name in 2024, Respondent had actual knowledge of Complainant's NARCAN mark. The trademark is distinctive and has no obvious alternative meaning and so, without explanation, the Panel finds that Respondent's intention was to capitalize on whatever reputation exists in the trademark. In the absence of rights or legitimate interests of its own the Panel finds registration in bad faith. The WIPO Overview asks at #3.3. Can the "passive holding" or non-use of a domain name support a finding of bad faith? "From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or "coming soon" page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent's concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. Respondent has, without explanation or active use, registered a domain name containing a trademark with ordinary or dictionary meaning. Nor does the trademark appear to be the name of the active ingredient of the spray. Respondent concealed its identity using a privacy service and the Panel can think of no plausible good faith use to which the domain name may be put without authorisation from Complainant. The Panel finds passive holding and use in bad faith. The Panel finds that Complainant has satisfied the third and final element of the Policy. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <thenarcanproject.com> domain name be TRANSFERRED from Respondent to Complainant. Debrett G. Lyons, Panelist January 10, 2025 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.