WIPO Domain Name Decision D2000-0179 for medisite.com

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Medisite S.A. R.L. v. Intellisolve Limited

Case No. D2000-0179

 

1. The Parties

The Complainant is a company organized and existing under the laws of France having its principal place of business at 36 Rue du Sentier, 75002, Paris 02, France and registered at the trade register of Paris under number B 414 754 O10.

The Respondent is Intellisolve Limited a limited company with an address at 72, Walsh Avenue, Warfield, Berkshire, RG42 3XZ, UK.

 

2. The Domain Name(s) and Registrar(s)

The Complaint relates to the registration of the domain name by the Respondent.

 

3. Procedural History

On March 17, 2000, the WIPO Arbitration and Mediation Center (hereinafter the "Center") received the Complaint by e-mail. On the same date, the Complainant sent to the Center a copy of the Complaint as prescribed by rule 3 of the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter "the Rules") together with the cover sheet as prescribed by rule 4 of the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution (hereinafter the "Supplemental Rules"). A copy of the Complaint was sent by the Complainant to the Registrar on the same date.

On March 22, 2000, the Center received the hard copy of the Complaint and in accordance with rule 5 of the Rules and rule 5 of the Supplemental Rules verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (hereinafter the "Policy"), the Rules and the Supplemental Rules and that payment in the required amount had been made to the Center by the Respondent.

On March 23, 2000, the Center received an e-mail from the Respondent's administrative contact, providing the Center with "contact details for dispute correspondence".

On March 28, 2000, the Center sent an Acknowledgement of Receipt of Complaint to the Complainant.

On March 28, 2000, the Center sent to the Respondent by Courier (with enclosures) and by e-mail (with attachments) a Notification of Complaint and Commencement of Administrative Proceeding and inter alia advised the Respondent that it was required to submit a Response within 20 days from the date said Notification was received by the Respondent. A copy of said Notification was sent by e-mail to the representatives of the Complainant and to the Internet Corporation for Assigned Names and Numbers (ICANN). Due to an administrative oversight a copy was not sent to the Registrar of the domain name on that date. The Registrar was subsequently advised of the commencement of the proceedings. This Administrative Panel notes that the Registrar had been sent a copy of the Complaint by the Complainant on March 17, 2000, and therefore the Registrar had been alerted to the dispute. Furthermore, as the Parties have not commented on the matter this Administrative Panel concludes that the late notification was a de minimis oversight which has been remedied without prejudice to either party.

On April 14, 2000, the Center received the Response and a hard copy of the same was received on April 18, 2000. The Center acknowledged receipt of the said Response by e-mail on April 14, 2000, with a courtesy copy to the representatives of the Complainant.

James Bridgeman was invited to act as Presiding Panelist and on April 26, 2000, his Statement of Acceptance and Declaration of Impartiality and Independence was sent to the Center as required by rule 7 of the Rules.

On April 26, 2000, the Center sent the case file to the Administrative Panel.

On April 26, 2000, the Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the representative of the Complainant and to the Respondent by e-mail in accordance with rule 6(f) of the Rules.

This Administrative Panel concludes that it has been properly constituted and appointed.

Subsequently each of the parties continued to send further submissions to the Center.

Said further submissions were not requested by the Administrative Panel and were sent to the Center without the leave of the Administrative Panel.

 

4. Factual Background

The said domain name was registered by the Respondent on February 20, 2000.

The Complainant is the owner of the French registered trademark and service mark , incorporating a stylized letter "I". The application for registration of said trademark and service mark was filed on May 7, 1998 at the French National Institute for Intellectual Property and was given registration number 98 731 542 in classes, 5, 35 and 38 for the following goods and services: "Pharmaceutical products. Advertising: service of renting of computerized advertising space. Telecommunications: computer system accessible through worldwide telecommunications networks."

The Complainant is also the registered owner of the device mark , registered in colors, incorporating a stylized letter "I", registration number 99 782 614 deposited on March 24, 1999 in respect of "Designated products and services: Pharmaceutical products, Advertising, service of renting of computerized advertising space. Telecommunications: computer system accessible through worldwide telecommunications networks."

The Complainant offers commercial services on its web site which can be accessed via the domain names: , and .

 

5. Parties� Contentions

A. Complainant

The Complainant submits that:

1. the said domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

2. the Respondent has no rights or legitimate interest in respect of said domain name ; and

3. said domain name was registered and is being used in bad faith.

Complainants Trademark Rights

The relevant submissions put forward by the Complainant in respect of its trademark service mark rights are as follows:.

In addition to the above mentioned French registered trademarks and service marks, the Complainant claims to be the owner of numerous other registered trademarks incorporating the word . The Complainant has however only submitted to the Administrative Panel copies of the registration certificates in respect of the above registrations.

Furthermore the Complainant states that the word has been used as the corporate and business name of the Complainant since its creation on December 18, 1997. In this regard, the Complainant has furnished a copy of the trade register abstract of February 25, 2000, which confirms that the Complainant was established and registered at the Registre du Commerce et des Societes on that date.

In addition the Complainant claims that the word is the main element in the domain names in use by the Complainant as the addresses of its www site viz. , and . The Complainant has furnished copies of a search of the Network Solutions Inc. WHOIS database to substantiate this claim and states that its single www site can be accessed via each of these domain names.

The Complainant argues that the said domain name is identical or confusingly similar to the Complainant�s trademarks.

Respondents Rights or Legitimate Interest in the Domain Name

As regards the requirement that the Complainant must establish that the Respondent has no rights or legitimate interest in the domain name, the Complainant claims that the Respondent has no existing www site at the address . The address leads only to a temporary page provided by the Registrar. The Complainant has exhibited a copy of the print-out of this page.

Issue of Bad Faith

On the question of bad faith, the Complainant states that the Respondent should be considered as having registered and used the domain name in bad faith.

The Complainant was the owner of the disputed domain name, which it had previously registered with Network Solutions Inc. The Complainant's registration of the said domain name expired in mid February due to an involuntary administrative oversight. Before the Complainant was even aware of the expiration, the Respondent registered the disputed domain name on February 20, 2000. The Complainant argues that these circumstances indicate that the Respondent has used an automatic means for being informed of expiration of domain names, in order to register "good" domain names recently expired before the owner has rights over these names can recover its legitimate rights.

It is further submitted by the Complainant that the Respondent has acquired the disputed domain name for the purpose of selling it to the Complainant for valuable consideration in excess of the out-of-pocket costs directly related to the disputed domain name. In the course of pre-complaint dealings, the Respondent has asked the Complainant for payment of �250,000 sterling for the transfer of the domain name. The Complainant has submitted a copy of an e-mail from the Respondent's administrative contact requesting such amount.

The Complainant requests the Administrative Panel to issue a decision that the domain name be transferred to the Complainant.

B. Respondent

The Respondent's principal submissions are as follows:

Complainants Trademark Rights

The Respondent accepts that the Complainant is the owner of two French service marks but submits that the Complainant does not have worldwide rights in the name . It is argued that the Complainant has submitted no evidence to suggest that it has achieved fame with the name of the organization in France or anywhere else in the world.

Although the Complainant states that it uses the service mark to the word to locate the www site on which it offers its services via the domain names , and , the Respondent argues that the Complainant has so rights in the word simpliciter, as the registered trademarks and service marks include the stylized letter "I".

Because the registered trademarks and service marks incorporate a stylized letter "I" it is submitted by the Respondent that the stylized letter "I" element could be interpreted as merely a symbol and that the Complainant's trademark is in fact the word .

The Respondent further argues that the word is a generic and descriptive term and that a number of organizations around the world use that name or a variation of that name. The Respondent states that there is a drug manufacturing company in America called , that there is a www site called and that there is an organization and www site called .

The Respondent submits that there is no evidence from the Complainant to suggest that the domain name was used in connection with any of their business activity or advertising, is the only name used by the Complainant and that the domain name was of no importance to the Complainant.

Respondents Rights or Legitimate Interest in the Domain Name

The Respondent states that it is in the early stages of its business, and after carrying out some market research, business planning and financial statistics it decided to reserve the domain name as one of the first steps in beginning the venture. The Respondent had contacted an accountant to formulate a business plan prior to the date on which it had registered the domain name.

It is submitted on behalf of the Respondent that as the domain name was reserved on February 20, 2000, and as the complaint was filed on March 17, 2000, it is reasonable that it should not have a www site up and running in this short period. There is a temporary page posted on the internet which states that the Respondent has reserved the domain name. The Respondent claims to have a www site under construction.

Furthermore the Respondent has submitted an undated document as evidence of preparation of a logo.

The Respondent states that one of the persons associated with the Respondent company is a registered pharmacist and another person is an IT consultant and argues that this demonstrates a legitimate interest in the medical area and in e-commerce.

The Respondent argues that the Policy does not require that the domain name should be the Respondent's corporate name.

It is further argued that the Respondent put much thought and research into deciding on a suitable name for the planned venture. The Respondent intended to establish an internet based locum agency for the medical and pharmaceutical professions.

Issue of Bad Faith

As regards the Complainants allegations that the Respondent had registered and is using the domain name in bad faith, the Respondent denies that it used an automatic means for being informed of the expiration of domain names. It accepts that the Complainant was the previous owner of the domain name but refutes the Complainants claim that the domain name expired without its knowledge.

The Respondent denies that it registered the domain name for the purposes of selling it to the Complainant. It is submitted that the Respondent did not know of the existence of the Complainant until the Complainant contacted the Respondent and submits a statement from four named but otherwise unidentified persons who state that to their knowledge the domain name was not purchased with the intention of selling it on.

The Respondent argues that if the domain name had been registered for the purpose of selling it on, the Respondent would have made the initial contact with the Complainant. It is submitted on behalf of the Respondent that the first mention of payment was when the Complainant offered to purchase the domain name. The Respondent states that when the it asked for �250,000, an employee of the Complainant agreed to pay this figure "straight away."

 

6. Discussion and Findings

Additional Submissions

The Rules, at rule 15(a), require the Administrative Panel to decide on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Rule 10(a) the Rules requires the Administrative Panel to conduct the Administrative Proceeding in such manner as it considers appropriate in accordance with the Policy and the Rules. At rule 10(c) the Administrative Panel is empowered to determine the admissibility, relevance, materiality and weight of the evidence.

Rule 12 of the Rules provides that in addition to the Complaint and the Response, the Administrative Panel may request, in its sole discretion, further statements or documents from either of the Parties.

In these Administrative Proceedings, both parties have continued to submit further statements and documents subsequent to the date on which the file was submitted to the Administrative Panel. These statements were not requested by the Administrative Panel and neither Party sought leave of the Administrative Panel to file these documents. The Center passed copies of these documents to the Administrative Panel and the Administrative Panel has had the benefit of considering the content of same.

It would appear to this Administrative Panel that Parties to these Administrative Proceedings have had ample opportunity to state their cases within the procedure set out in the Rules. Although there may be exceptional circumstances in any given case, it appears to this Administrative Panel, that rule 12 of the Rules exists primarily to allow the Administrative Panel to seek clarification of any matters which the Administrative Panel, in its sole discretion, may require in order to ensure that the Administrative Panel fully understands the Complaint and the Response.

In this case, the Administrative Panel has considered these additional submissions and documents and finds that in accordance with rule 12 of the Rules there was no requirement for further submissions. In the event, the further submissions did not advance the arguments in any way, and to a great extent they gave the impression that each Party wanted to have the last word. Therefore it is not necessary for the Administrative Panel to avail of these submissions in coming to its decision. There is no need therefore for this Administrative Panel to consider their admissibility or relevance or the materiality and weight of the evidence submitted with them.

Furthermore in submitting these further documents the parties have caused unnecessary difficulties for the Center and the Administrative Panel with inevitable delays in producing this decision.

Substantive Issues

In accordance with paragraph 4(a) of the Policy, the Complainant bears the onus of proof and must establish:

i. that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

ii. that the Respondent has no legitimate interests in respect of the domain name;

iii. that the domain name has been registered and used in bad faith.

Complainants Trademarks and Service Marks

The Respondent accepts that the Complainant is the owner of two French trademarks and service marks and details of which are set our above. It is argued that the Complainant has submitted no evidence to suggest that it has achieved fame with the name of the organization in France or anywhere else in the world. This, however, is not required by paragraph 4(a) of the Policy.

The Respondent has argued that the above trademark and service mark registrations are in respect of the word as the stylized letter "I" should be ignored. It seems clear that the word which is registered, albeit in a stylized is or .

The Complainant is claiming trademark and service mark rights to the word simpliciter. The Administrative Panel is conscious that each of the above trademark and service mark registrations are in respect of marks registered in color and incorporating a stylized letter "I". It is not necessary for this Administrative Panel to address this question or any other question relating to any common law rights which the Complainant may have or the criteria to be applied in respect of common law rights, since the parties have agreed that the Complainant has rights in the above referenced registered trademarks.

As the Complainant has agreed to submit, with respect to any challenges to this decision, to the jurisdiction of the courts at the location of the Respondent's address as shown for the registration of the domain name in the Registrar's database at the time the complaint was submitted to the provider in accordance with rule 1 and rule 3(b)(xiii) of the Rules, it would appear to this Administrative Panel to be appropriate to call in aid the rules of comparison developed in English law when courts have been faced with the problem of deciding how to approach the question of similarity of marks.

In Pianotist Co's Application (1906) 23 R.P.C. 774 at 777 Parker J. set out what has become the standard test to assist courts in comparing trademarks: "You must take the two words. You must judge them, both by their look and by their sound. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for goods of the respective owners of the marks."

Applying this test it appears to this Administrative Panel that the domain name is confusingly similar to the Respondent's trademarks and service marks.

Respondents Rights or Legitimate Interest in the Domain Name Paragraph 4(c) of the Policy provides that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate the Respondent's rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii) of the Policy: (i) that the Respondent had used, or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services, before any notice to the Respondent of the dispute,; or (ii) that the Respondent (as an individual, business, or other organisation) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or (iii) that the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainants have satisfied the Administrative Panel that the Respondent had not used the domain name in connection with a bona fide offering of goods or services prior to receipt of any notice to the Respondent of the dispute. The domain name was used as the address of a single page supplied by the Registrar and beyond stating that the name had been reserved by the Respondent, the site was essentially an advertisement for the Registrar's services as distinct from any services offered by the Respondent. This Administrative Panel does not accept that the statement on a www page that the Respondent has reserved the name amounts to a use in connection with a bona fide offering of goods or services. Although the Administrative Panel is conscious that the burden rests on the Complainant to prove its case, the Administrative Panel accepts that there has been no demonstrable preparations by the Respondent for use of the domain name in connection with a bona fide offering of goods or services. The Respondent has submitted documents that indicate that persons connected with the Respondent were in the initial stages of considering an internet based venture connected with the medical or pharmaceutical services. This Administrative Panel accepts that parties associated with the Respondent were indeed considering such a venture, however, except for what is claimed to be a copy of a logo, there is no mention of the word in the documents relating to these plans. On balance this Administrative Panel must conclude that there was no demonstrable preparations by the Respondent to use the domain name in connection with the planned venture. It is common case that the Respondent has not been commonly known by the domain name. On the agreed facts it seems clear to this Administrative Panel that the Respondent had not acquired any trademark rights in the domain name. It has no registered trade marks or service marks and had no applications for trademarks or service marks. Neither had it commenced trading so as to acquire any common law rights.

The question of non-commercial or fair use does not arise.

In the circumstances, it appears to this Administrative Panel that the Respondent has no legitimate interests in the domain name.

Issue of Bad Faith

Bad Faith Paragraph 4(b) of the Policy provides inter alia, that for the purposes of paragraph 4(a)(iii) of the Policy, circumstances indicating that the Respondent has registered or has 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 the Respondent's documented out-of-pocket costs directly related to the domain name shall be evidence of the registration and use of a domain name in bad faith.

The Complainant has not in any way substantiated its allegation that the Respondent has used an automatic means for being informed of expiration of the domain name.

The Respondent has submitted that it put much thought and research into deciding on a suitable name for the planned venture. It would appear that the Respondent intended to establish an internet based locum agency for the medical and pharmaceutical professions. The Respondent denies any knowledge of the existence of the Respondent or its business activities prior to the date on which it registered the domain name. This Administrative Panel must conclude that if the Respondent carried out any reasonable amount of research into an internet project, it would surely have become aware of the existence of the Complainant and of Complainant's www site and its domain names , and .[Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000�0003, February 18, 2000, page 7 pgph 7.6].

It is common case that in the course of pre-complaint dealings, the Respondent has asked the Complainant for payment of �250,000 sterling for the transfer of the domain name. The Complainant argues that this proves that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name.

It appears that the first contact between the Parties was initiated by the Complainant. The Respondent submits that the initial mention of payment and the initial offer to buy came from the Complainant. There is some conflict on the evidence as to how the negotiations proceeded. The Respondent however, further states that when the Respondent asked for a payment of �250,000 the employee of the Complainant agreed "straight away" to pay this sum.

Although conscious that the initial contact was made by the Complainant, this Administrative Panel is not convinced that an employee of the Complainant would agree to pay such a large sum "straight away".

The Complainant has established a prima facie case that the Respondent registered the said domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant. The Respondent has not adduced any or any sufficient evidence to rebut that case. Consequently, this Administrative Panel must conclude that on balance the domain name was registered in bad faith.

The passive holding of a domain name has been held to be use of that domain name in bad faith. [Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000�0003, February 18, 2000, at page 7, pgph 7.11] Similarly failure to commercialize a domain name over a substantial period of time has been held to be a factor to be considered in deciding whether a domain name has been registered and used in bad faith. [ Mary-Lynn Mondich and American Vintage Wine Biscuits Inc. v. Shane Brown d/b/a Big Daddy�s Antiques, WIPO Case No. D2000-0004, February 16, 2000, at page 3].

In this case, the Respondent has not established a www site at the address except for a token page supplied by the Registrar. It has argued that it could not be expected to establish such a site in the short period from the date of its registration to the commencement of these Administrative Proceedings. However it is clear that the Respondent has not taken any real steps to commence business.

Based on these factors, taken together, the Administrative Panel must conclude on balance, that the domain name has been registered and used in bad faith

 

7. Decision

The Administrative Panel decides that the Respondent has registered the domain name identical or confusingly similar to the Complainant's trade marks and service marks, that the Respondent has no rights or legitimate interest in respect of that domain name and that the Respondent has registered and used that domain name in bad faith. Accordingly, this Administrative Panel decides that said domain name should be transferred to the Complainant.

 

 

James Bridgeman
Presiding Panelist

Dated: May 19, 2000

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