ADMINISTRATIVE PANEL DECISION

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 administratively compliant. 

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.  

The complaint, 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. 

The Respondent did not submit a Response neither via eResolution’s website nor a signed version. 

On May 14, 2001, the Clerk’s Office contacted Mr. Richard Hill, and requested that he acts as panelist in this case. 

On May 15, 2001, Mr. Richard Hill accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality. 

On May 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 Management System. 

On May 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: 

With 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. 

The Panel allows the Complainant seven (7) days to provide the requested proof. 

The Panel allows the Respondent seven (7) days after receipt of the Complainant's additional submission to submit arguments or evidence in rebuttal of Complainan't submissions. 

No reply was received from either party. 

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 question: 

VIGOREX (US REGISTERED TRADEMARK) (name of our product) 

With respect to similarity: 

IDENTICAL TO OUR PRODUCT NAME 

With respect to illegitimacy: 

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            complainant has rights, and        

            -      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 laws? 

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. 

The complainant did not reply to this request of the panel. 

The 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 domain name 

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 name 

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 (Factual Background). 

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): 

circumstances 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 name 

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>: 

It 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. 

But 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.

6. Conclusion

For all the above reasons, the panel rejects the complaint

7. Signature