UDRP does not apply to disputes involving INNs

In Teva Pharmaceutical Industries Limited v BLTC Research, a World Intellectual Property Organization (WIPO) panel has ruled that a de facto monopoly in an International Non-proprietary Name (INN) is not sufficient to satisfy the trademark requirements of the Uniform Domain Name Dispute Resolution Policy (UDRP).

Teva Pharmaceutical Industries Limited (Teva) specializes in the development, production and marketing of generic and branded drugs. It filed a complaint under the UDRP against BLTC Research, asserting rights in the name rasagiline, which had been selected as an INN in 1994. On February 12 2000, BLTC registered the domain name 'rasagiline.com' and the website provides detailed information about rasagiline and other drugs.

While the name rasagiline is an INN, Teva asserted a de facto right to the name, by virtue of its substantial investment in the product, which is protected by patents in several countries and marketed under the marks AGILECT and AZILECT. Teva also claimed that it is the only entity that controls the sale and supply of rasagiline, as well as being the world's largest generic pharmaceutical company. As a result, the name rasagiline was exclusively associated with Teva.

BLTC contended that the domain name did not resemble the trademarks used by Teva (ie, AGILECT and AZILECT). As INNs exist in the public domain and are generic terms with non-proprietary status conferred by international legislation, the domain name in question could not be identical or similar to any trademark in which Teva may have rights.

BLTC also referred to a National Arbitration Forum (NAF) panel's decision in Boehringer Ingelheim Corporation v Bhatt, arguing that it could be distinguished.

The WIPO panel considered the above case, the only other case of a domain name comprised of an INN. Noting that the NAF panel's decision asserted that the complainant had received approval from the World Health Organization for the relevant terms as trade names and had patent rights in the names, the WIPO panel declined to follow this decision.

The WIPO panel examined Paragraph 4(a) of the UDRP, which requires the complainant to have rights in a trademark to which the domain name is identical or confusingly similar. It concluded that an INN is not a trademark, and is instead a generic and non-proprietary term for describing a particular pharmaceutical. As such, it falls outside the scope of the UDRP. While Teva submitted that the name did function "for all practical purposes" as a trademark, the panel did not consider that this amounted to an actual trademark, which is required for the UDRP to apply. For example, if no patent protection or an expired patent existed in a country where a third party started to produce rasagiline, the panel doubted that Teva could successfully bring trademark proceedings. Accordingly, the panel refused to order the transfer of the domain name.

The panel also referred to a report made by WIPO following the Second WIPO Internet Domain Name Process. This included recommendations that steps should be taken to require domain name registrars to refuse to register INNs and that any INNs already registered as domain names should be cancelled. To date, these recommendations have not been implemented . Having come to this finding, the panel, were not required to consider and decide on the other two principal elements under the UDRP that Teva would need to establish in order to succeed.

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