v.
Kumar Bhatt
[Indexed as: Boehringer Ingelheim Corporation v. Kumar Bhatt ]
[Indexed as:MICARDIS.com; TELMISARTAN.com; MELOXICAM.com]
National Arbitration Forum
Administrative Panel Decision
Claim Number: FA0006000095011
Commenced: 7 July 2000
Judgment: 11 August 2000.
Presiding Panelist: Harold Kalina (Ret.)
Domain name - pharmaceutical products -U.S. Trademark -Domain name dispute resolution policy - Identical -Confusingly similar-Unrelated industry-Web site Not Developed - Bad faith registration - Cybersquatting - Extortion - Initial contact - U.S. Service mark.
Complainant presently markets pharmaceutical products under the Micardis trademark. Complainant selected the name telmisartan to market pharmaceutical products containing telmisartan as an active ingredient under the Micardis trademark. Complainant presently markets pharmaceutical products containing meloxicam, an ingredient which the FDA has given it exclusive rights to market through April 13, 2005. Respondent later registered the domain names micardis.com, telmisartan.com and, meloxicam.com.
Held, All Three Names Transferred to Complainant.
The domain names micardis.com, telmisartan.com and meloxicam.com are identical or confusingly similar to Complainant's Micardi, and Mobic trademarks. It is also clear that the failure of Respondent to produce any evidence sufficient to rebut Complainants allegations entitles the Panel to conclude that Respondent has no rights or legitimate interests in respect of the three domain names in dispute
Since Respondent offered to transfer the domain names for consideration in excess of Respondents documented out-of-pocket costs directly related to the domain names, Respondent demonstrated bad faith use of the mark.
Policies referred to
Paragraph 4(a)(I), (ii), and (iii), of the ICANN Uniform Domain Name
Dispute Policy ("Policy")
Registration Agreements referred to
Network Solutions Service Agreement Version 4.0.
Cases referred to
Parfume Christian Dior v. Q.T.R. Corp., No2000-0023 (WIPO Mar. 9, 2000).
Telstra Corp. Ltd. v. Barry Cheng Kwok Chu, No2000-0423 (June 21, 2000).
Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000).
Harold Kalina, Panelist:-
PARTIES
The Complainant is Boehringer Ingelheim Corporation, Ridgefield, CT,
USA ("Complainant"). The Respondent is Kumar Bhatt, Granger, IN, USA ("Respondent").
The Attorney for the Complainant is Timothy X. Witkowski, Esq., Boehringer
Ingelheim Corp., Ridgefield, CT, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are "MICARDIS.COM" and "TELMISARTAN.COM",
registered with Network Solutions Inc ("NSI") and "MELOXICAM.COM", registered
with Register.com.
PANELIST(s)
The Panelist certifies that he or she has acted independently and impartially
and to the best of his or her knowledge, has no known conflict in serving
as the panelist in this proceeding. Judge Harold Kalina (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
("The Forum") electronically on 06/14/2000; The Forum received a hard copy
of the Complaint on 06/14/2000.
On 06/16/2000, Register.com confirmed by e-mail to The Forum that the
domain name "MELOXICAM.COM" is registered with Register.com and that the
Respondent is the current registrant of the name.
On 06/28/2000, NSI confirmed by e-mail to The Forum that the domain
names "TELMISARTAN.COM" and "MICARDIS.COM" are registered with NSI and
that the Respondent is the current registrant of the name. NSI has verified
that Respondent is bound by the Network Solutions Service Agreement Version
4.0 for names registered with NSI and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANNs UDRP.
On 07/07/2000, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of 07/27/2000
by which Respondent could file a Response to the Complaint, was transmitted
to Respondent via e-mail, post and fax, and to all entities and persons
listed on Respondents registration as technical, administrative and billing
contacts by e-mail.
On July 28, 2000, pursuant to Complainants request to have the dispute
decided by a Single Member panel, The Forum appointed Judge Harold Kalina
(Ret.) as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain names be transferred from
the Respondent to the Complainant.
PARTIES CONTENTIONS
A. Complainant
Complainant presently markets pharmaceutical products under the Micardis®®
trademark, and has invested substantial sums of money in developing and
marketing such products. On August 2, 1996, Complainant filed an Intent
To Use (ITU) Trademark Application in the U.S. Patent and Trademark Office
for the Micardis®® trademark, which was published for opposition
on June 17, 1997, and registered on April 6, 1999, on the Principal Register
of the U.S. Patent and Trademark Office and accorded Reg. No. 2,237, 153.
Respondent registered the domain name micardis.com after the filing and
publication for opposition of Complainants ITU Trademark Application
for the Micardis trademark.
Complainant selected the name telmisartan to market pharmaceutical
products containing telmisartan as an active ingredient under the Micardis®®
trademark. Complainants U.S. Patent No. 5,591,762 establishes Complainant
to have exclusive rights to such products. It is the only entity that is
approved for marketing telmisartan by the Food & Drug Administration
(FDA). Under FDA regulations Complainant must identify its pharmaceutical
products sold under the Micardis®® trademark by including the term
telmisartan e.g., Micardis®® (telmisartan) tablets. Respondent
registered the domain name telmisartan.com on April 11, 1999.
Complainant presently markets pharmaceutical products containing meloxicam
(INN Request No. 5615; World Health Organization proposed INN published
November 1984; World Health Organization recommended INN Published April
1987) as an active ingredient under the Mobic®® trademark, and
has invested substantial sums of money in developing and marketing such
products. Complainant selected the name meloxicam. It is the only entity
approved to market meloxicam by the FDA , and has exclusivity with respect
to meloxicam until April 13, 2005, for a "new chemical entity" under FDA
rules. Respondent registered the domain name meloxicam.com on June 1, 2000.
Complainant contends the domain name micardis.com is identical to its
Micardis®® trademark, and the domain names telmisartan.com and
meloxicam.com are either identical to, or confusingly similar to product
identification it markets under the Micardis®® trademark and the
Mobic®® trademark. With respect to Respondents allegation that,
"Although Mobic®® is a registered trademark, the domain name mobic.com
is owned by an unrelated company involved in the communications business
and hence Complainant has registered Mobictablet.com. In similar fashion
Complainant may similarly register meloxicamtablet.com, telmisartantablet.com,
and micardistablet.com". Complainant contends this is without merit. Complainant
argues that Respondent ignores that the domain name holder of mobic.com
(for communication services) is unrelated to Complainants field of use
(pharmaceuticals), while Respondent, in contrast has no legitimate rights
to the disputed domain names.
Complainant alleges Respondent has not used, or made preparation to
use the domain names in connection with a bona fide offering of goods and
services, is not commonly known by the domain names, and is not making
a legitimate noncommercial or fair use of the domain names. Specifically,
Respondent has failed to file any supporting documentation to establish
(a) that he has developed, and is currently developing websites to assist
his patients and the general public as he asserts, (b) that his domain
name paincontrolcenter.org is not operational, (c) that he has provided
no bona fide services to any customers, and (d) that he and Technopharma
LLC are "highly skilled in internet strategies and marketing intelligence,
or that it is operational". Complainant contends the Respondent has no
rights or legitimate interests in the domain names in dispute.
Complainant contends it has rights in the Micardis®® trademark
and the telmisartan and meloxicam marks that are superior to any Respondent
may claim to have. That in addition to patent rights it has rights of exclusivity
to market, has attained World Health Organization approval, is the only
"source" for telmisartan and meloxicam products, and that Respondent has
not adequately challenged those facts.
Complainant contends that Respondent is disrupting and preventing Complainant
from properly conducting its business. By registering the domain names
it makes it much more difficult, if not impossible, for most consumers
to find information from the only source of these products, Boehringer
Ingelheim Corporation, the Complainant. Currently, if a consumer is looking
for authoritative information about the use, side effects, hazards, dosages,
overdosages, etc. of these products on the Internet, they would be denied
easy access to the same by the cybersquatting of the Respondent. Furthermore,
Respondent is thereby preventing Complainant from receiving information
about possible adverse effects from their Micardis®® (telmisartan)
and Mobic®® (meloxicam) products directly from physicians and consumers
through the Internet.
Complainant contends Respondent made the initial contact with Complainant
offering to transfer the domain names for a consideration in his January
4, 2000 email. In that email Respondent offered to provide consulting services
to Complainant for two years at $70k dollars per year plus 0.05% of total
annual sales of Micardis. Complainant was not in need of consulting services
or marketing assistance. The consideration sought by Respondent was in
excess of his costs directly related to the registration of the domain
names. As further evidence of bad faith Respondent represented to Complainant
in his January 4, 2000 email that he was president of Technopharma LLC
when in fact the Articles of Organization were not executed until January
11, 2000. This together with other matters referred to above show a pattern
of conduct from which it can reasonably be concluded Respondent had no
other purpose in registering the domain names than to extort money from
Complainant.
Complainant requests that all 3 domain names in dispute be transferred
from Respondent to Complainant.
B. Respondent
Respondent is a board-certified family practice Physician (Doctor of
Osteopathy), and president for Technopharma LLC, a consulting firm organized
as a limited liability company under the Indiana Business Flexibility Act.
The articles of organization were executed by Respondent Kumar R. Bhatt
on January 11, 2000.
Respondent claims to be assisting his patients and the general public
with numerous websites he has developed and is developing. Respondent claims
that he and his company are highly skilled in internet strategies and marketing
intelligence.
Respondent registered with the intent of creating a centralized reference
site for access to information regarding medication overdose. It is with
this intention that Respondent originally registered Micardis.com. Registration
was on April 1, 1999. This would be a free service providing information
to other physicians and to the public regarding overdosage.
Respondent claims he and his company are "highly skilled in internet
strategies and marketing intelligence". Respondent also claims to be an
uncompensated moderator for several internet medical information groups.
Respondent denies he is in the business of selling domain names, and
that he has never intended to sell micardis.com. Respondent admits that
micardis.com is identical to the Complainants tradename, but claims that
at the time of his registration there was neither a trademark or service
mark for Micardis. Respondent contends that the terms "telmisartan" and
"meloxicam" are generic terms that are property of the public domain.
Respondent claims that in the latter part of December, 1999, one Jim
Heins, a staff member of Complainant, contacted him regarding the domain
name micardis.com. Mr. Heins requested Respondent to name a price for transfer
of the domain name to Complainant. In response, Respondent emailed a "business
proposal" whereby Respondent agreed to provide Complainant consulting services
for two years at $70k dollars per year plus 0.05% of total Micardis sales.
Respondent would then allow Complainant to use the micardis.com URL with
a website to be developed by Complainant, and allow a redirect to the primary
site of telmisartan.com to more completely direct information flow to the
appropriate site. Respondent would be willing to entertain alternate proposals.
Respondent points out that no reference to meloxicam.com is made in his
business proposal dated January 4, 2000.
As a physician and president of Technopharma LLC Respondent contends
he is making legitimate and fair use of the domain names in dispute, that
his actions do not prevent or disrupt Complainants business, and that
he is obtaining no commercial gain from the domain name.
FINDINGS
. Complainant is the owner of Micardis®® trademark Reg. No.
2,237,153, and the owner of Patent No. 5,591,762 which establishes exclusive
rights to Complainant to market pharmaceutical products containing telmisartan
as an active ingredient under the Micardis trademark.
. Complainant is the only entity that is approved for marketing meloxicam
by the Food and Drug Administration, and has exclusivity with respect to
meloxicam until April 13, 2005, for a "new entity" under Food and Drug
Administration rules.
. Complainant has invested substantial sums of money in developing
and marketing said products.
. The domain name micardis.com is identical to Complainants Micardis
trademark except for "com". (See Rollerblade, Inc. v. McCrady, D2000-0429-WIPO
June 25, 2000).
. Telmisartan.com is confusingly similar to Complainants telmisartan
products marketed under the Micardis®® trademark as evidence by
Respondents acknowledgement that the use of telmisartan.com would more
completely direct information flow to the appropriate site.
. The domain name meloxicam.com is confusingly similar to Complainants
meloxicam products marketed under the Mobic®® trademark.
. Respondent has not used or made preparation to use the domain names
in dispute, or a name corresponding to the domain names in connection with
a bona fide offering of goods or services, is not known by the domain names,
and is not making a legitimate noncommercial or fair use of the domain
names. (See Telstra Corp. Ltd. v. Barry Cheng Kwok Chu, No2000-0423, June
21, 2000.) Respondent has no rights or legitimate interests with respect
to the domain names.
. On January 4, 2000, Respondent offered to transfer the domain names
for consideration in excess of Respondents documented out-of-pocket costs
directly related to the domain names.
. The evidence submitted conclusively establishes that Respondent has
no other intent or purpose in registering, and using, the domain names
than to transfer them to Complainant for a value in excess of Respondents
out-of-pocket costs directly related to the domain name.
. Respondent made no reference to meloxicam.com in his January 4, 2000
email to Complainant; nevertheless, the conduct of Respondent in registering
this name after the filing and publication for opposition of Complainants
ITU Trademark Application for the Mobic®® trademark indicates a
pattern of conduct in registering domain names of trademarks and/or necessary
product indicators to obtain a profit from said owners.
. Respondent submitted no supportive evidence to rebut Complainants
request for relief, nor to substantiate his allegations.
. Complainant selected telmisartan and meloxicam as the official names
for its pharmaceutical products, has received approval for this tradename
from the World Health Organization, has valid patent rights in these names,
and is the only source for these two products. Complainants rights are
superior to any rights Respondent may claim to have.
. Respondents company Technopharma LLC was organized on January 11,
2000. Respondent was not legally president of said company on January 4,
2000 as he claimed on January 4, 2000.
. Respondents sole purpose in creating Technopharma LLC was a pretext
for pretending to offer non-existent services to Complainant as a cover
for selling, renting, or transferring the domain names in dispute.
. Respondents conduct does prevent and disrupt Complainant from conducting
its business by making it more difficult, if not impossible, for most consumers
to find information from the only source of these products.
. Respondent acted in bad faith when he registered the domain names,
and in using the domain names.
DISCUSSION
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("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.
Complainant has clearly established a prima facie case on all issues
in dispute. Respondents defense consisted of undocumented claims and
allegations that cannot withstand the test of credibility and belief. Respondent
failed to rebut the proof submitted by Complainant. Respondent failed to
produce any documentation to support the position he has taken. Respondent
relied on bold and broad statements of pride in his and his companys
expertise skills, and intelligence as internet marketing consultants. A
lot of claim, but no substance. Complainant made a very pertinent and effective
analysis in regards to Respondents claim that at the time Respondent
registered the domain names there was no registered trademark for Micardis®®.
It is as follows: " Respondent alleged that when the micardis.com domain
name was registered Micardis®® was neither a trademark nor a service
mark. This point is irrelevant, as Micardis®® is now a federally
registered trademark and the trademark was applied for on August 2, 1996,
and published on June 17, 1997, well before Respondent registered micardis.com
domain name. Respondents theory would allow any cybersquatter to review
the published trademark applications and register a identical or confusingly
similar name before the application is issued and the trademark holder
would have no recourse, an nonsensical result".
Complainant has proven all 3 elements under policy 4 (a) (i), (ii),
and (iii).
Identical and/or Confusingly Similar
The domain name micardis.com is identical to Complainants Micardis®®
trademark. The domain name telmisartan.com is confusingly similar to Complainants
telmisartan products marketed under the Micardis®® trademark. The
domain name meloxicam.com is confusingly similar to Complainants meloxicam
products marketed under the Mobic®® trademark.
Rights or Legitimate Interests
The failure of Respondent to produce any evidence sufficient to rebut
Complainants allegations entitles the Panel to conclude that Respondent
has no rights or legitimate interests in respect of the three (3) domain
names in dispute. (See Parfume Christian Dior v. Q.T.R. Corp., No2000-0023-WIPO
Mar. 9, 2000).
Registration and Use in Bad Faith
Respondent acted in bad faith at the time he registered the domain
names in dispute. Respondents conduct since registration establishes
that he continues to act in bad faith with regards to the use of the domain
names in dispute.
DECISION
Having established all three (3) elements required by ICANN Policy
Rule 4 (a), (I), (ii), and (iii), it is the decision of the Panel that
the requested relief be granted.
Accordingly, for all the foregoing reasons it is ordered that the domain
names micardis.com, telmisartan.com and meloxicam.com be transferred from
Respondent to the Complainant.