WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BECA Inc. v. CanAm Health Source, Inc.
Case No. D2004-0298
1. The Parties
The Complainant is BECA Inc. of La Mesa, California, United States of America, represented by Timothy James Priebe of Colorado Springs, Colorado, United States of America.
The Respondent is CanAm Health Source, Inc. of Montreal, Quebec, Canada, represented by Fasken Martineau DuMoulin, LLP of Montreal, Quebec, Canada.
2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC.
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on April 24, 2004. On April 26, 2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On April 27, 2004, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and billing contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on May�18,�2004. The Center verified that the Complaint, together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the�“Supplemental Rules”).
3.2 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 25, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June�14,�2004. The Response was filed with the Center on June�14, 2004.
3.3 The Center appointed Matthew S. Harris as the sole panelist in this matter on June�22,�2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
3.4 The Complainant’s Representative sent an email on June 22, 2004, to the Panel requesting that the Complainant be entitled to submit additional evidence in respect of the Complaint, in the form of a sworn deposition by Ms. Susan Haeger. The Panel responded that paragraph 8 of the Rules forbade unilateral communications with the Panel and that any such request must be submitted to the Center. By e-mail to the Center the Respondent’s Representative objected to the Complainant’s request.
3.5 On June 23, 2004, the Complainant’s Representative repeated, by e-mail, to the Center, its request that the Complainant be entitled to submit additional evidence. This request was then forwarded to the Panel for consideration. After considering this request and the Respondent’s objections, the Panel issued Procedural Order No 1 on June 23, 2004, whereby the Panel ordered that:
(i) the Complainant should, in accordance with the Supplemental Rules, and by no later than 5.30 p.m. GMT on June 29, 2004, submit to the Center copied to the Respondent the deposition of Ms. Susan Haeger, together with any exhibits thereto, that it wishes the Panel to consider together with submissions as to the reasons why the Panel should consider and take notice of such deposition in coming to its decision;
(ii) the Respondent by 5.30 p.m. GMT on July 9, 2004, could, if so advised, make further submissions to the Panel in relation to the matters raised in any deposition so submitted by the Complainant or Complainant’s submissions (including its admissibility);
(iii) the Panel would address the question of whether it should consider the additional material submitted by the Complainant, in its decision; and
(iv) the decision of the Panel would be postponed until July 23, 2004.
3.6 A copy of the Complainant’s substantive response to Procedural Order No. 1 and a copy of Susan Haeger’s deposition (the “Deposition”) were forwarded by email to the Center on June 25, 2004. No further submissions or material were forwarded to the Center by the Respondent in this respect.
4. Factual Background
4.1. The Complainant is a Californian non-profit organization whose principal place of business is in the State of California, United States of America.
4.2 United Health Alliance, Inc. (“UHA”), a non-profit health system organization located in South Western Vermont, United States of America first started a web-based service program using the name Medicine Assist some time in the year 2000.
4.3 The UHA Medicine Assist program targeted the residents of Vermont, New York and Massachusetts, in particular the elderly, providing them with information and assistance in obtaining prescription medication from Canada at a lower cost then it is available in the United States of America.
4.4 On April 22, 2003, UHA entered into a Sale and Purchase Agreement with the Complainant for the sale to the Complainant of certain UHA assets including, all intellectual property used in connection with the Medicine Assist program, including, without limitation, trade names, domain names, databases, URLs, business and marketing plans and books and records.
4.5 Subsequent court proceedings between UHA, the Complainant and World Health Resources, Inc. (“WHR”) in relation to the Sale and Purchase Agreement were settled between UHA and the Complainant on January 20, 2004. UHA and the Complainant entered into a Settlement and Indemnity Agreement and Release whereby UHA agreed to transfer its assets to the Complainant pursuant to the terms of the Sale and Purchase Agreement.
4.6 The Respondent was incorporated in the Province of Quebec, Canada on March�25,�2003.
4.7 The Respondent applied to register MEDICINEASSIST as a Canadian trademark on August 13, 2003 for “mail order and on-line sale of pharmaceutical preparations, contact lenses, pets’ supplies, animal medicines, veterinarian pharmaceutical preparations.” This application was advertised on April 21, 2004.
4.8 As part of its application to register a Canadian trademark the Respondent signed a declaration stating that, by itself and for/or through a licensee, it intended to use the trademark applied for in Canada in association with the goods or services referred to in the application and that it was satisfied that it is entitled to use the trademark in Canada in association with the goods or services applied for.
4.9 The Respondent applied to register the trademark MEDICINEASSIST as a United States registered trademark on February 13, 2004 using its Canadian priority date of August 13, 2003.
4.10 The Respondent registered the domain name on February�10, 2004 (the “Domain Name”). The Complaint was made on April�24,�2004.
4.11 The Respondent is using the Domain Name in connection with a web-based service for the online sale of prescription pharmaceuticals from Canada operated by it under the trading name “Prescription Choice.”
5. Procedural Arguments
5.1 It is convenient before setting out the respective contentions of the parties to deal with the procedural issue whether or not the Complainant is entitled to rely upon the further evidence and submissions forwarded to the Center on June 26, 2004.
5.2 Under paragraph 10(a) of the Rules, the Panel has the power to conduct these administrative proceedings in such a manner as it considers appropriate in accordance with the Policy and the Rules. Paragraph 12 of the Rules permit the Panel to request, in its sole discretion, further statements or documents from either of the Parties in addition to the Complaint and the Response. Paragraph 10(d) states that the Panel shall determine the admissibility, relevance, materiality and weight of the evidence submitted to it. In determining whether it should admit evidence and if so the relevance, materiality and weight of such evidence the Panel shall, in accordance with paragraph 10(b) of the Rules, in all cases ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
5.3 However, it is now well-established that a supplemental filing will rarely be considered. In DK Bellevue, Inc. d/b/a Digital Kitchen v. Sam Landers, WIPO Case No. D2003-0780 the panel stated as follows:
“As is by now well established the Rules do not provide any right of reply. Parfums Christian Dior S.A. v Jadore, WIPO Case No. D2000-0938. Although supplemental submissions may be accepted to address new legal developments, see e.g., Pet Warehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105, or to rebut unexpected factual assertions, see e.g., Pacific Fence & Wire Co. v. Pacific Fence and Jim Paradise, WIPO Case No. D2001-0237, they should be allowed sparingly.”
5.4 What then is the purported justification for the filing of additional evidence in this case? The Response contains the following statements:
(i) “the Disputed Domain Name is composed of two common, and related, words in the English language, “medicine” and “assist,” brought together in a simple, if not evident, sequence”; and
(ii) “in Canada, the Respondent filed an application to register the trademark MEDICINEASSIST on August 13, 2003, more than nine months before the complaint.”
These statements, the Complainant contends, imply that the Respondent chose the Domain Name in ignorance of UHA’s use of the mark MEDICINE ASSIST.
5.5 It has already been explained that the additional evidence submitted by the Complainant takes the form of the contents of a sworn deposition by a Ms.�Susan�Haeger. Ms. Haeger is a director and shareholder in WHR and the deposition was given on May 26, 2004, in the context of proceedings between WHR and the Complainant.
5.6 For reasons that are described in greater detail later on in this decision, the Complainant maintains that the contents of the Deposition suggest that the Respondent was aware of UHA’s use of the name “Medecine Assist” prior to the Respondent’s decision to use that name and to register that name as a Canadian trademark. The Complainant, therefore, wishes to bring this before the Panel to counter the alleged implication to the contrary in the Response.
5.7 The Complainant states that the reasons why this evidence was not submitted as part of the original Complaint are that:
(i) the Deposition of Ms. Haeger did not take place until after the original Complaint was submitted on May 15, 2004; and
(ii) as Ms. Haeger is not involved with the Complainant there was no way that that the Complainant would have been aware of this information at the time the Complaint was filed.
5.8 The Respondent has not forwarded submissions to the Panel in response to the matters raised in the Deposition or the Complainant’s accompanying submissions.
5.9 The Panel accepts that the way that the Response is drafted is such as to invite the reader to infer that the Respondent had independently decided to adopt the name “MedicineAssist” without knowledge of the Complainant. As is the case in many domain name disputes under the UDRP, what exactly was the knowledge and intention of the Respondent at the time it registered the Domain Name is likely to be a matter of importance. Further, the Panel accepts the Complainant’s explanations to why its additional evidence was not brought before the Panel at the time of its Complaint.
5.10 In the circumstances, this is a case which falls within the scope of the unusual circumstances envisaged in Digital Kitchen, supra. The Complainant should be permitted to adduce additional evidence not in existence at the date of the Complaint to rebut any suggestion in the Response that the Respondent had no knowledge of the “Medicine Assist” name. The fact that the Response had been carefully drafted so that there is no express assertion as to the Respondent’s knowledge makes no difference in the particular circumstances of this case. Accordingly, the Panel finds that it can take into account the evidence submitted in the Deposition.
6. Parties’ Contentions
A. Complainant
6.1 The Complainant contends as follows:
The Complainant’s Trademark
6.2 The Complainant relies on its acquisition of the assets of and intellectual property rights in the Medicine Assist program operated by UHA pursuant to the Sale and Purchase Agreement of April 22, 2003.
6.3 UHA has used Medicine Assist as a service program and trade name since the year 2000. The Complainant has submitted various items of evidence to support this contention including government testimonies and various on-line news articles (the earliest of which is a testimony given on September 5, 2001).
6.4 Through use, UHA and, subsequently, the Complainant have obtained a common law trademark in the United States of America in the name “Medicine Assist” and such unregistered mark is protectable by United States law. Such unregistered rights are protectable under the Policy to the same extent as those emanating from registered marks (American Home Products Corporation v. Ben Malgioglio, WIPO Case No. D2000-1602).
6.5 The Complainant’s rights and interests in the unregistered trademark MEDICINEASSIST predate the Respondent’s registration of the Domain Name or any application to register the same as a trademark.
Identical or confusingly similar
6.6 The Complainant contends that by registering the Domain Name the Respondent is using an identical name to the Complainant’s unregistered trademark.
No Rights or Legitimate Interests
6.7 The Respondent is not using the Domain Name in connection with a business operating under that name. The Complainant relies on the fact that the website hosted at the Domain Name relates to the Respondent’s business operated under the trading name “Prescription Choice.”
Registered and Used in Bad Faith
6.8 The Complainant relies on the Deposition of Ms. Haeger to assert that the Respondent knew of UHA’s Medicine Assist program prior to either the registration of the Domain Name or the Respondent’s Canadian trademark application. This, it is claimed, evidences bad faith.
6.9 The Complainant contends that the Complainant and Respondent are operating in a similar field of business (namely, assisting in the purchase of prescription drugs from Canadian pharmacies by United States citizens) and the Respondent is using the website hosted at the Domain Name to intentionally attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark. This is evidence of bad under paragraph 4(b)(iv) of the Policy.
6.10 The Complainant requests that the Domain Name be transferred to the Complainant in accordance with the Policy.
B Respondent
6.11 The Respondent makes no admissions as to the Complainant’s assertions of rights in the unregistered trademark MEDICINEASSIST in the United States. The Respondent does not, however, put forward any arguments challenging the basis upon which the Complainant asserts rights.
6.12 The Respondent contends that its applications to register MEDICINEASSIST as a Canadian and United States trademark give it rights in the mark MEDICINEASSIST in Canada and the United States.
6.13 The Respondent relies on its Canadian trademark application on August 13, 2003, more than nine months before the Complaint, as evidence that the Respondent has rights or legitimate interests in the Domain Name.
6.14 The Respondent contends that under Canadian law the proprietor of a registered trademark has ownership rights in that trademark in Canada even where there is no actual use of the trademark provided that such use commences three years from the date of filing or six months from the notice of allowance to file a declaration establishing use of the trademark in Canada.
6.15 The Respondent contends that the registration of the Domain Name is part of the Respondent’s plans to operate a business under the mark MEDICINEASSIST and that its trademark applications are also part of this business plan.
6.16 The Respondent asserts that it is working on a coherent marketing and sales platform for the mail order and on-line sale of pharmaceutical preparations, contact lenses, pet supplies, animal medicines and veterinarian pharmaceutical preparations (the subject matter of its Canadian trademark application) under the trademark MEDICINEASSIST and, in the meantime, is pointing the Domain Name to the Respondent’s “” website until this work is completed.
6.17 In the circumstances, the Respondent maintains that it made “demonstrable preparations to use a name corresponding to the registered domain name in connection with the bona fide offering of services” in accordance with paragraph 4(c)(i) of the Policy.
7. Discussion and Findings
7.1 The Panel has reviewed the Complaint and the documents annexed to the Complaint and the Response and the documents annexed to the Response. The Panel has also reviewed the evidence submitted by the Complainant in accordance with Procedural Order No 1. In light of the material, the Panel sets out its findings below.
7.2 The Complainant must “prove” each of following elements of the Policy, which are set out in paragraph 4(a) of the Policy as follows:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
7.3 Under paragraph 4 of the Policy, it is expressly stated that the burden of proof in demonstrating each of the three elements is with the Complainant.
A. Identical or confusingly similar
7.4 Under paragraph 4(a)(i) of the Policy, the Complainant first has to prove that he has rights in the trademark of service mark. Secondly, he must prove that the domain name is identical or confusingly similar to the trademark or service mark.
7.5 In respect of this first element, the Complainant relies on United States common law to show that it has a protectable right in the “unregistered” trademark MEDICINEASSIST.
7.6 It is now clear that “common law rights” suffice for the purpose of establishing trademark rights pursuant to paragraphs 4(a)(i) of the Policy. There are numerous cases in which this has been held sufficient and by way of example the Panel would refer to its own decision in this respect in Sibyl Avery Jackson v. Jan Teluch, WIPO Case No. D2002-1180.
7.7 The Respondent does not dispute that use of a name can give rise to protectable unregistered trademark rights under United States law, nor the Complainant’s assertion that such rights have accrued though use by UHA of the “Medicine Assist” name since the year 2000, nor that these rights were transferred to the Complainant pursuant to the Sale And Purchase Agreement with UHA.
7.8 Therefore, on the basis of the evidence provided by the Complainant and in the absence of an argument by the Respondent to the contrary, the Panel accepts that the Complainant has protectable rights in the United States in the name “Medicine Assist” that are capable of constituting a trademark for the purposes of paragraph 4(a) of the Policy. Accordingly, the Complainant has made out the first element under paragraph 4(a)(i).
7.9 In relation to the second element, the Respondent admits, “unquestionably, the disputed domain name is identical to the Complainant’s alleged common law trademark.” The Panel, therefore, finds that the Domain Name is identical to the Complainant’s unregistered mark.
7.10 Accordingly, the Panel concludes that the Complainant has made out both of the elements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
7.11 Before addressing the question of “rights or legitimate interests” it is convenient for the Panel first to come to a conclusion on an issue of fact. Why is it that the Respondent chose the name “Medicine Assist” in the first place? We are told that the Domain Name was chosen to reflect the Respondent’s pre-existing trademark applications in the United States and Canada. However, this is not, by itself, a sufficient answer where each of these applications post date the initial use of this name by UHA.
7.12 As has already been explained in this decision, the Complainant contends that Ms. Haeger’s Deposition shows that the Respondent had knowledge of UHA’s Medicine Assist program in the United States when it chose to apply for a Canadian trademark in that name. Much of the evidence in the Deposition is irrelevant for these proceedings. However, the material to be found at pages 61 to 65 of the Deposition does indeed suggest that one “Mr. Mimaran” had knowledge of the Medicine Assist program prior to the Complainant’s purchase of “Medicine Assist” from UHA. The Complainant’s attorney in the note that accompanies the Deposition then goes on to assert that he was told by Mr. Nitoslawski (the Respondent’s attorney) “that Mr. Mimran was an officer of” the Respondent.
7.13 There are problems with this evidence. Firstly, it only goes so far as to suggest that Mr. Mimaran (or Mimran?) who was “an officer” of the Respondent had the knowledge. It is not entirely clear to what extent the fact that Mr. Mimaran had that knowledge means that at the time that the Domain Name was registered it can fairly be said that this knowledge can be imputed to the Respondent. The degree of Mr. Mimaran’s involvement in and control over the action of the Respondent is not clearly explained. Further, Ms. Haeger is not personally aware that Mr. Mimaran had the relevant knowledge. She was simply told that this was the case by her friend Dr. Weener who, at the relevant time, was the “executive director of UHA” and “the founder of Medicine Assist.” Therefore, this evidence needs to be treated with some caution.
7.14 Nevertheless, there is no reason to believe that either Ms. Haeger’s recollection of her conversation with Dr. Weener is inaccurate, or that Dr. Weener’s recounting of events to her was not correct or that the Complainant’s attorney does not accurately report his conversation with the Respondent’s attorney. Indeed, it strikes the Panel as inherently credible that the Respondent, which is engaged in the sale of prescription pharmaceuticals from Canada into the United States, would be aware of the existence of a program called “Medicine Assist” offered by a non-profit health system organisation which targeted persons in the United States who were interested in information in obtaining prescription medicines from Canada.
7.15 Against this background, the careful drafting of the Response and the fact that the Respondent has chosen not to put forward any evidence or statement contradicting the Complainant’s contentions, is telling.
7.16 The Panel, accordingly, finds on the evidence before it that it is likely that Respondent deliberately chose the name “MedicineAssist” for the purpose of its business of offering online the sale of prescription medicines from Canada in full knowledge of the operation of the non-profit health system program operating under the name “Medicine Assist” in the United States.
7.17 Given this finding of fact, it is necessary for the Panel in this case to address the following question. Does an application to register a name as a trademark constitute a right or legitimate interest in a registration of a domain name for the purpose of paragraph 4(c) of the Policy even where that name was chosen in full knowledge of the rights of another party in that name in another jurisdiction?
7.18 The wording of the Policy provides little guidance here. Paragraph 4(a)(ii) talks of “rights or legitimate interests”. The word “rights” is not qualified and, therefore, it might be argued that a trademark in a name provides a right of some sort in a domain name that incorporates that trademark. Further, paragraph 4(c) of the Policy provides a non-exhaustive list of ways in which a respondent can demonstrate rights or legitimate interests. Does not the wording of paragraph 4(c)(ii) which describes a situation where right or legitimate interest can exist “even if [the respondent has] acquired no trademark or service mark rights” assume that the existence of trademark rights would be sufficient?
7.19 However, a conclusion that a trademark wherever and however obtained grants sufficient rights under paragraph 4(a)(ii) is unattractive. It suggests that a cybersquatter can avoid the Policy by the mere device of obtaining a trademark registration anywhere in the world. Given that in some jurisdictions a trademark can be obtained without any real process of examination this would open up a significant lacuna in the Policy.
7.20 The Respondent does indeed appear to contend that a respondent can establish a right or legitimate interest by “proving the existence of trademark rights prior to receiving notice of a domain name dispute.” It relies upon Ronson Plc v Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011, as authority for this proposition. However, it reads far too much into this decision. In Ronson, the panel when considering “rights or legitimate interests” merely noted that the respondent did not have a trademark registration in the mark in any jurisdiction. It does not go so far as to suggest that the converse is true; i.e., that mere ownership of a trademark anywhere in the world provides a sufficient right or legitimate interest in the corresponding domain name.
7.21 Other decisions of potential relevance here are ISL Marketing AG, and the Union des Associations Europ�ennes de Football v. The European Unique Resources Organisation 2000 B.V., WIPO Case No. D2000-0230 and Madonna Ciccone, p/k/a Madonna v. Dan Parisi and M,” WIPO Case No. D2000-0847.
7.22 In Euro2000, supra, the complainant was the organizer of a well-known European football competition occurring every four years. In the year 2000, this competition was held in Belgium and the Netherlands under the title “Euro2000.” The respondent operated a website at the contested domain name , which linked to various European events, including Euro2000. The respondent filed a United States trademark application on April 2, 1997, and acquired Benelux trademark registrations. There had already been a dispute between the parties on the basis of the complainant’s French trademark rights in the French courts which had been determined in favor of the respondent. Significantly, the three-person panel in this case found that the respondent was aware of the Euro2000 competition and that there was “an arguable case that the registration of the domain name intended to capitalize on that event and on [the complainant’s] corresponding trademark rights from the very beginning.”
7.23 In determining the impact of an application or registration of a trademark on paragraph 4(a)(ii), the panel in Euro 2000 came to the conclusion that while a registration of a trademark could show that the respondent had an interest in the domain name, not all interests are “legitimate.” In that case, it noted that the respondent’s United States trademark application was filed after it had received the complainant’s Cease and Desist Letter. The panel went on to state that:
“While the interpretation of the word “rights” in paragraph 4(a)(iii) is not obvious (and perhaps some future guidance by ICANN would be in order), the Panel’s feeling is that the general principle that the owner of the domain name identical to the previous trademark or service mark may, when challenged by that trademark owner, establish (retroactively) legitimate use simply by filing a fresh trademark application in a jurisdiction other than those where the Complainant’s trademark is registered, is a dangerous principle. The owner of every contested domain name will always easily find at least one register where its opponent’s trademark or service mark is not registered. Paragraph 4(c)(i) of the Policy regards chronology as relevant. In WIPO Case No. D2000-0030, Lion Nathan Limited v. Wallace Waugh, the fact that the Respondent had filed a United States trademark application and obtained a notice of allowance did not “carry weight” since the Respondent did not register the trademark “before [Complainant] complained of [Respondent’s] activities.” On the other hand, Respondent’s United States trademark in our case went all the way to registration and there is no evidence that Complainant opposed it (a move they may have made).
Nevertheless, the panel concluded that it did not have to decide the issue because the decision of the French court had, at least temporarily, created a “right” recognizable under paragraph 4(a)(ii) for the respondent in the domain name.
7.24 In Madonna the facts differed to the Euro2000 case in that the respondent had registered MADONNA as a trademark in Tunisia before notice of the dispute. However, the respondent had made the Tunisian trademark application subsequent to the registration of the disputed domain name. The panel deciding that the respondent had no rights or legitimate interests in the domain name. In doing so it stated:
“It would be a mistake to conclude that mere registration of a trademark creates a legitimate interest under the Policy… to establish cognizable rights, the overall circumstances should demonstrate that the registration was obtained in good faith for the purpose of making bona fide use of the mark in the jurisdiction where the mark is registered and not obtained merely to circumvent the application of the Policy.”
7.25 The panel noted that the respondent was not located in Tunisia and that the registration was not obtained for the purpose of making bona fide use of the mark in commerce in Tunisia. In addition, the respondent had admitted that the Tunisian registration was obtained merely to protect his interests in the domain name.
7.26 From these decisions, it is perhaps possible to draw the following guidance:
(i) When considering the question of “rights or legitimate interests” under paragraph 4(a)(ii), a panel can, in an appropriate case, question the legitimacy of a trademark relied upon by a respondent. The mere fact that a trademark has been applied for or obtained by a respondent is not an absolute bar to a complainant succeeding under the UDRP. In a case where, in the opinion of the panel, a trademark has not been sought or obtained for a legitimate or bona fide purpose, but merely in order to bolster a domain name registration, the trademark can be disregarded.
(ii) The chronology of events is an important factor in determining whether the application is bona fide or merely a way of bolstering the respondent’s domain name registration. A trademark application made subsequent to notice of a dispute or the domain name registration may indicate a lack of legitimate interest.
(iii) The knowledge and intention of the respondent at the time the disputed domain name is registered is highly relevant, but knowledge of the complainant’s rights does not, in itself, preclude the respondent from having a right or legitimate interest in the domain name.
(iv) The connection, or lack of it, between the respondent and the jurisdiction in which it is seeking a trademark registration may indicate whether the trademark application or registration is “legitimate.”
7.27 This Panel would add one further observation. Trademark rights are territorial in nature. National trademark laws often permit a party to obtain registered trademark rights in that jurisdiction even where it is clear that the party has deliberately chosen that trademark having seen the use of that name in another jurisdiction. This is particularly so where the name in question is quasi generic in nature. These factors may also be relevant to the question of whether an application for a trademark registration should be treated as being sought merely to bolster a domain name registration.
7.28 Neither in Euro 2000 or Madonna was the relevant trademark applied for prior to the date of the domain name, but if a panel were convinced that a trademark was sought merely to bolster a subsequent domain name registration this Panel sees no reason why this should make any difference. Of course, it may be difficult for the complainant to prove that this was the purpose of the registration, but this is an issue of evidence rather than principle.
7.29 However, it is one thing to disregard a trademark registration when that registration is a device to bolster a registration. It is quite another to disregard a trademark registration where it is claimed that this registration is for some other reason not bona fide and/or it is claimed that the registration is invalid. To do so would involve making a decision on matters that impinge on the field of competence of national courts or trademark registries.
7.30 In this case, the Respondent has not yet obtained a registered trademark in Canada. It has simply claimed that the trademark application “has been approved [by the Canadian Intellectual Property Office (“CIPO”)] and advertised in the Canadian Trade-Marks Journal” and that “the registration is expected to issue in due course.” Does this make a difference?
7.31 Whether an application is to be given the same status as a trademark for the purpose of paragraph 4(a)(i) of the Policy is a complex issue (see the Panel’s discussion of the issue in HQUK Limited v. Head Quarters, WIPO Case No. D2003-0942). However, even if an application does not provide rights in a trademark for the purposes of paragraph 4(a)(i) of the Policy, it does not follow that it is not sufficient to found rights or legitimate interests in a name under paragraph 4(a)(ii). The tests are different. Further, for a panel to form a view upon the outcome of an application once again involves trespassing upon issues best left to national courts and registries. If a panel is not willing to do this, the issue becomes one of to whom the Panel should give the benefit of the doubt. Given that the burden of proof is on the Complainant it should not be surprising if the benefit of the doubt falls in favour of registration in the case of rights and legitimate interests under paragraph 4(a)(ii) and falls against registration in the case of rights in a trademark under paragraph 4(a)(i).
7.32 In light of all of the above, is this then a case where the Panel can and should disregard the Respondent’s trademark applications? So far as the Canadian trademark application is concerned, the following factors would suggest that the application is something more than a device to bolster domain name registration:
(a) The Respondent applied to register the Canadian trademark some six months before registering the Domain Name and some nine months before the Complaint.
(b) The Respondent is incorporated in Canada and its business is clearly connected to some degree with Canada.
7.33 That is not to say that the evidence put forward by the Respondent as to its use to date of the name is compelling. Exactly the opposite is the case. Firstly, the Response contends that the Respondent is “currently working on a coherent marketing and sales platform for this business.” However, no real evidence of this assertion is offered. A respondent should not be surprised if unsupported assertions of this type are given little weight by a panel. Secondly, the use made of the Domain Name to date appears to be very limited. It appears simply to be used as the URL for a website in which the Respondent trades under the name “Prescription Choice.” It is also noteworthy in this respect that the Respondent does not disclose when that use began. Since, for the reasons already described above, it is clear that the exact wording adopted in the Response has been chosen with care, this does not strike the Panel as an insignificant omission. Nevertheless, none of the above factors is sufficient to lead the Panel to conclude that a trademark application made six months prior to the date of registration of the Domain Name can be construed as a device to bolster its registration of the Domain Name and, accordingly, can be disregarded for the purposes of paragraph 4(a)(ii) of the Policy.
7.34 The Panel notes that the Complainant in its Response to Procedural Order No. 1 appears to assert (although the wording used by the Complainant here is somewhat opaque) that the knowledge by an officer of the Respondent of the use of the “Medicine Assist” name by UHA prior to the Canadian application would invalidate the Canadian trademark registration. For the reasons already set out in detail above, the Panel is reluctant to consider the substance of this assertion. This is a matter upon which the Canadian courts and/or trademark registry are better placed to adjudicate. However, even if the Panel were prepared to consider this issue it further notes that:
(a) the Complainant appears to have taken no steps in Canada to oppose this application or invalidate this application and the Complainant has given no reason why, as a matter of fact, the application will not proceed to grant; and
(b) the Complainant’s contention here is little more than assertion and is not supported by any authority. Some authority for this proposition is offered as a matter of United States law in relation to the United States trademark application, but it is Canadian law that is relevant to the Canadian application.
7.35 In the circumstances, the Panel concludes that the Complainant has failed to show that the Respondent does not have any rights or legitimate interests in the domain name as required by 4(a)(ii) of the Policy.
7.36 The Panel notes that this has been a difficult case. The Respondent’s actions in choosing and dealing with the “Medicine Assist” name appear, on the limited evidence placed before the Panel, to be at least open to question. However, the Panel is of the view that the UDRP is not the appropriate forum in which that question should be resolved. A national court, with its knowledge of local trademark law and the power to call and cross-examine witnesses, would be a more suitable forum for resolving disputes such as this one.
7.37 In light of this finding, it is not necessary to consider the Respondent’s separate contention that it has rights or legitimate interests in accordance with paragraph 4(c)(i) of the Policy.
C. Registered and used in bad faith
7.38 Given that the Complainant has failed to succeed under paragraph 4(a)(ii) of the Policy, it is not necessary for the Panel to consider whether or not the Respondent has registered or is using the domain name in bad faith under paragraph 4(a)(iii).
8. Decision
For all the foregoing reasons, the Complaint is denied.
Matthew S. Harris
Sole Panelist
Dated: July 23, 2004
Full & Egal Universal Law Academy