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 Complainant’s 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 Respondent’s 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 ICANN’’s 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 Respondent’’s registration as technical, administrative and billing contacts by e-mail. 
On July 28, 2000, pursuant to Complainant’’s 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 Complainant’’s 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. Complainant’’s 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 Respondent’’s 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 Complainant’’s 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 Complainant’’s 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 Complainant’’s 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 Complainant’’s Micardis trademark except for "com". (See Rollerblade, Inc. v. McCrady, D2000-0429-WIPO June 25, 2000). 
. Telmisartan.com is confusingly similar to Complainant’’s telmisartan products marketed under the Micardis®® trademark as evidence by Respondent’’s 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 Complainant’’s 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 Respondent’’s 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 Respondent’’s 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 Complainant’’s 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 Complainant’’s 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. Complainant’’s rights are superior to any rights Respondent may claim to have. 
. Respondent’’s 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. 
. Respondent’’s 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. 
. Respondent’’s 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. Respondent’’s 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 company’’s 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 Respondent’’s 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. Respondent’’s 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 Complainant’’s Micardis®® trademark. The domain name telmisartan.com is confusingly similar to Complainant’’s telmisartan products marketed under the Micardis®® trademark. The domain name meloxicam.com is confusingly similar to Complainant’’s meloxicam products marketed under the Mobic®® trademark.
Rights or Legitimate Interests
The failure of Respondent to produce any evidence sufficient to rebut Complainant’’s 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. Respondent’’s 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.