ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution Policy
1. Parties and Contested Domain Name
The contested domain name is <vigorex.com>, registered with Network Solutions, Inc. The complainant is Vital Health Products, 48 Berkeley Square, London, UK. The respondent is EM Linha, PO Box 91, Oeiras, Portugal
2. Procedural History
The electronic version of
the Complaint form was filed on-line through eResolution’s Website on April
17, 2001. The hardcopy of the Complaint Form and annexes were received on April
23, 2001. Payment was received on
April 19, 2001.
Upon receiving all the
required information, eResolution’s clerk proceeded to:
Confirm the identity of the Registrar for the contested Domain Name;
Verify the Registrar’s Whois Database and confirm all the essential
contact information for Respondent;
Verify if the contested Domain Name resolved to an active Web page;
Verify if the Complaint was administratively compliant.
This inquiry lead the Clerk
of eResolution to the following conclusions: the Registrar is Network Solutions,
Inc., the Whois database contains all the required contact information, the
contested Domain Name resolves to an inactive Web page and the Complaint is
An email was sent to the
Registrar by eResolution Clerk’s Office to obtain confirmation and a copy of
the Registration Agreement on April 18, 2001.
The requested information was received April 23, 2001
The Clerk then proceeded to
send a copy of the Complaint Form and the required Cover Sheet in accordance
with paragraph 2 (a) of the ICANN’s Rules for
Uniform Domain Name Dispute Resolution Policy.
The Clerk’s Office fulfilled all its
responsibilities under Paragraph
2(a) in forwarding the Complaint to the Respondent, notifying the
Complainant, the concerned Registrar and ICANN on April 23, 2001. This
date is the official commencement date of the administrative proceeding.
All emails were sent successfully. All the faxes were successful.
official notification and all the annexes were sent via registered mail with
proof of service, to the respondent. According
to the Canada Post tracking system, all were delivered.
did not submit a Response neither via eResolution’s website nor a signed
On May 14,
2001, the Clerk’s Office contacted Mr.
Richard Hill, and requested that he acts as panelist
in this case.
15, 2001, Mr. Richard Hill
accepted to act as panelist in this case and filed the necessary Declaration of
Independence and Impartiality.
15, 2001, the Clerk’s Office forwarded a user name
to Mr. Richard Hill, allowing him to access the
Complaint Form and the evidence through eResolution’s Automated Docket
15, 2001, the parties were notified that Mr.
Richard Hill had been appointed and that a decision
was to be, save exceptional circumstances, handed down on May 28, 2001.
On 15 May,
2001, the clerk’s office sent the following communication to both parties:
reference to ICANN domain name dispute AF804, "vigorex.com", and in
accordance with Article 12 of the ICANN Rules, the Panel requests the
Complainant to provide proof of the assertion it has made in its Complaint that
VIGOREX is a trademark registered in the United States of America by the
Complainant Vital Health Products, a United Kingdom company.
Panel allows the Complainant seven (7) days to provide the requested proof.
Panel allows the Respondent seven (7) days after receipt of the Complainant's
additional submission to submit arguments or evidence in rebuttal of
No reply was received from
3. Factual Background
The parties have not provided any information
concerning the factual background, apart from the fact that the respondent has
registered the contested domain name. In
support of its contention that the respondent has acted in bad faith, the
complainant submits an exchange of E-Mails showing that, in response to the
complainant’s offer to buy the contested domain name, the respondent requested
a payment of UK pounds 50’000.
4. Parties' Contentions
The respondent makes the
following contentions, reproduced in toto (verbatim):
With respect to the mark in
VIGOREX (US REGISTERED TRADEMARK) (name of our product)
With respect to
IDENTICAL TO OUR PRODUCT NAME
With respect to
RESPONDENT HAS NO AUTHORITY TO DISTRIBUTE PRODUCT
With respect to bad faith:
THEY ARE NOT USING WEB SITE
AND ASKED FOR STERLING £50,000 TO TRANSFER DOMAIN NAME TO VITAL HEALTH PRODUCTS
The respondent has defaulted and thus makes no contentions.
5. Discussion and Findings
The panel will first address the procedural issues related to the fact that the respondent has defaulted and then analyse the evidence to determine whether the complainant has proven, in accordance with article 4.a of the ICANN Policy that:
- The respondent has no rights or legitimates interests in the contested domain name, and
The contested domain name is
identical or confusingly similar to a trademark in which the
- The respondent registered and used
the contested domain name in bad faith.
I. The procedural issue related to the
default of the respondent
Since the respondent has
defaulted, this panel must first determine what the procedural implications are
of a default. Should the
complainant automatically prevail, or should the panel anyway examine the
evidence and base its decision on its determination of the relevant facts and
While the ICANN Policy,
Rules and the Supplemental Rules that govern these proceedings do not explicitly
address this question, they do give some guidance.
Notably, article 4.a of the ICANN Policy states:
“In the administrative
proceeding, the complainant must prove that each of these three elements
are present.” [emphasis added]
This panel therefore holds that it cannot grant the claimant’s request automatically, but that it must instead examine the evidence presented to determine whether or not the complainant has proven its case as required by the ICANN Policy.
II. Analysis of the evidence in this case
Similarity between the trademark and the domain name
In its brief, the
complainant claims rights to the contested domain name because it is identical
to the US registered trademark VIGOREX. A
search of the US Patent Office register shows that the mark VIGOREX is
registered by Taylor-Wright Pharmacals, Inc. a Delaware corporation with address
at 231 Marketplace, #371 San Ramon California 94583, USA.
The mark is registered for homeopathic formulation for prostate health
and for homeopathic formulations for the treatment of sexual dysfunction.
See for example http://tarr.uspto.gov/servlet/tarr?regser=registration&entry=2138592&action=Request+Status.
Given that the registered
owner of the US trademark is not the complainant, the panel, in
accordance with Article 12 of the ICANN Rules, requested the complainant to
provide proof of the assertion it had made in its complaint that it (the
complainant) had rights to a US trademark VIGOREX.
complainant did not reply to this request of the panel.
complainant has not provided any arguments, much less evidence, that would
indicate that it has either rights to the US trademark VIGOREX, or rights to the
mark VIGOREX in some other country.
A search on the Web reveals
the site http://www.vigorexuk.com,
which appears to be a site offering for sale the products trademarked in the USA
by Taylor-Wright Pharmacals. The
site appears to be owned and operated by the complainant.
Even if the panel were
willing to assume—in the absence of evidence—that the complainant is an
authorized distributor of Taylor-Wright for the trademarked products, the panel
cannot assume—in absence of evidence—that the complainant owns the rights to
Taylor-Wright’s mark or that the complainant has received authorization from
Taylor-Wright to initiate these proceedings on its behalf.
The panel is thus forced to conclude that the complainant has not satisfied its burden of proving that it has rights to a trademark that is identical or confusingly similar to the contested domain name.
Lack of rights or legitimate interests in the contested
Although the question is
moot because of the finding above, the panel notes that the only argument given
by the complainant regarding the respondent’s lack of rights in the contested
domain name is:
RESPONDENT HAS NO AUTHORITY TO DISTRIBUTE PRODUCT
While the panel has no reason to doubt the veracity of this assertion, it is surely woefully inadequate to satisfy the complainant’s burden of proving that the respondent has no rights or legitimate interest in the contested domain name. Rights in the contested domain name could arise from some purpose other than distributing the complainant’s products.
Bad faith registration and use of the contested domain
Although the question is
moot because of the finding with respect to the existence of the trademark, the
panel notes that the only evidence given by the complainant with respect to the
question of bad faith is the exchange of E-Mails referred to in section 3
It appears clear from these
E-Mails that the complainant proposed to the respondent to buy the contested
domain name, and that the respondent suggested a purchase price of UK pounds
50’000. The complainant appears
to believe that this is sufficient evidence of bad faith under the ICANN Policy.
But article 4(b)(i) of the Policy states that bad faith can be found if
(for example and without limitation):
indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain
While it is evident that
the amount requested by the respondent is well is excess of out-of-pocket costs,
it is not evident that the respondent has acquired the domain name primarily for
the purpose of selling it to the owner of the mark VIGOREX. Indeed, as noted
above, the complainant has failed to prove that it owns, or even has rights in,
the mark VIGOREX. And the evidence
shows only that the respondent has attempted to sell the disputed domain name to
the complainant, not to the owner of record of the mark.
As the panel stated in WIPO
decision D2000-0638 <manchesterairport.com>:
is not contested that the Respondent has attempted to sell the Domain Name to
the Complainant for an amount well in excess of the registration fees.
selling a domain name is not per se prohibited by the ICANN Policy (nor
is it illegal or even, in a capitalist system, ethically reprehensible). Selling
of domain names is prohibited by the ICANN Policy only if the other
elements of the ICANN Policy are also violated, namely trademark infringement
and lack of legitimate interest.
The same conclusion must be reached in the present case: the respondent has failed to prove that any of the other elements of the ICANN Policy have been violated, hence the respondent’s attempt to sell the contested domain name for a high price cannot, on its own, be considered sufficient to establish bad faith under the Policy.
For all the above reasons, the panel rejects the complaint