Domain name – Domain name dispute resolution policy – U.S. Trademark – Identical –  Confusingly similar - Bad faith registration.

Complainant was registrant of three U.S. trademarks for “BOTOX.  Respondent registered domain name, BOTOX.COM.  Complainant alleged that the domain name and trademark were identical and that the Respondent registered the domain name at issue in bad faith.

Held, Name Transferred to Complainant.

Two telephone conversations took place between the parties.  In the first conversation Respondent offered to sell the domain name for $5000 and in the second, he increased the price to $10,000.  Respondent has not used the site for any purpose and when access is attempted an “error” message appears.  Complainant, a pharmaceutical company, submitted that Respondent, a physician, was aware of the BOTOX products.

Complainant must establish bad faith registration and bad faith use.

The domain name, BOTOX.COM, is identical or confusingly similar to the registered trademark of the complainant.  In addition, Respondent can show no legitimate interest in the domain name. 

Respondent registered BOTOX.COM for the sole purpose of effecting payment from Complainant and thereby demonstrated bad faith use.

Panel Decision referred to
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Brandt, Panelist: -

Findings

The Claimant is an Irvine, California-based seller of pharmaceutical products under the name of BOTOX. It owns three U.S. trademark registrations for BOTOX. The Respondent is a physician who practices plastic surgery in New York. The Claimant wrote to the Respondent on January 27, 1999, requesting that the Respondent cease the use of the BOTOX domain name. The Claimant received no response.
Representatives of the Claimant had two telephone conversations with the Respondent in April, 1999. In one conversation, the Respondent stated that he wanted $5,000 for the site. In the other, he increased his demand to $10,000. 
The Respondent has not used the domain name for any purpose. When access to the site is attempted, the message "error" appears. The Claimant believes that as a physician, the Respondent is aware of its products and its name BOTOX.

Conclusions
· The name BOTOX which the Respondent registered is identical to the trademark in which the Complainant has rights. 
· The Respondent has no legitimate interest in the name BOTOX. 
· The Respondent registered the name BOTOX for the primary purpose of selling the name to the Complainant who is the owner of the registered trademark. He accordingly has acted in bad faith. 

Decision
The Respondent’s domain name registration in BOTOX is transferred to the Claimant.

Robert S. Brandt
Arbitrator
Date: March 8, 2000