WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Spine Wave Inc. v. Anonymous Transactions Services Case No. D2009-1360 1. The Parties
Complainant is Spine Wave Inc., Shelton, Connecticut, United States of America, represented internally.
Respondent is Anonymous Transactions Services, San Diego, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with R. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2009. On October 14, 2009, the Center transmitted by email to R a request for registrar verification in connection with the disputed domain name. On October 14, 2009, R transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to an email sent by the Center regarding the Registrant information, Complainant filed an amendment to the Complaint on October 20, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 22, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 11, 2009. Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 12, 2009.
The Center appointed Jordan S. Weinstein as the sole panelist in this matter on November 18, 2009. 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. 4. Factual Background
Complainant is the owner of a Community Trademark (CTM) registration for the mark SPINE WAVE, in connection with medical devices and materials for implantation within or connection of the skeletal and/or neurologic structure, as well as related marketing and medical research design and engineering services. The registration issued on December 5, 2008 under CTM No. 006731591. The CTM application was filed on February 28, 2008. 5. Parties' Contentions A. Complainant
Complainant asserts that the domain name which is the subject of this dispute was registered on February 19, 2001 and renewed on September 23, 2009. Complainant asserts that it solely owns rights in the trademark SPINE WAVE for medical goods, namely materials for implantation within the spine, particularly for the repair, replacement and augmentation of the intervertebral discs and vertebral bodies of the spine. In addition to owning the aforementioned CTM registration, Complainant asserts that it has filed for registration of the trademark SPINE WAVE in the United States and other countries. No copies of such filings were attached to the Complaint. Complainant asserts that the name “Spine Wave” further serves as the trade name of Complainant which is registered to do business in various states in the United States and elsewhere internationally, and that the domain name incorporates Complainant's trademark “SPINE WAVE” identically.
Complainant asserts that it engaged Respondent to register the subject domain name on Complainant's behalf; however, Respondent registered the domain name under its own name knowingly using Complainant's trademark. Complainant asserts that Respondent subsequently stopped communicating with Complainant without transferring rights to the domain name and that Complainant cannot make changes to or assert control over such domain name because the domain name is registered in Respondent's name and Complainant has no rights in its own domain name. Complainant asserts that without transfer of the domain name to it, Respondent has full control over the domain name with the ability to divert consumers, possibly tarnishing Complainant's trademark with the potential for causing significant confusion in the marketplace and financial consequences to Complainant.
Complainant asserts that although Respondent represented it initially in registering the domain name, Respondent is not now allowing Complainant access to the registration, and is not transferring rights to the domain name to Complainant despite Complainant's repeated attempted contacts and requests for Respondent to do so. Complainant asserts that Respondent's failure to provide access to the registration and transfer the registration rights has the potential for misuse of Complainant's trademark with significant confusion in the marketplace, and the potential inability for Complainant properly to maintain the subject domain name, including the inability to update DNS servers. Complainant requests that the Panel transfer the domain name to Complainant. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Applicable Policy Provisions
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
In order to prevail in a proceeding under the Policy, a complainant must typically prove both registration and use in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman,WIPO Case No. D1999-0001; Robert Ellenbogen v. Mike Pearson,WIPO Case No. D2000-0001.
However, the Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that [the respondent has] registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location.
Policy, paragraph 4(b). These circumstances are non-exclusive, and a panel may consider other circumstances as constituting registration and use of a domain name in bad faith. Id.
Respondent may demonstrate rights in or legitimate interests to the domain name by any of the following, without limitation:
(i) Before any notice to you of the dispute, your use of, or 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; or
(ii) you, as an individual, business, or other organization have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Policy, paragraph 4(c)
Where, as here, a respondent is in default, the Panel may draw such inferences as it considers appropriate. Policy, paragraph 14(b). B. Identical or Confusingly Similar
As a threshold matter, the Panel notes that Respondent's registration of the domain name at issue predated by several years Complainant's trademark or trade name rights. As Complainant noted, the subject domain name was registered on February 19, 2001, while the application for Complainant's CTM registration was not filed until February 28, 2008. Complainant failed to include in its Complaint any information about when it commenced using its trademark SPINE WAVE in connection with its medical products. However, the Panel takes judicial notice of Complainant's U.S. February 28, 2008 application for the mark, referenced in the Complaint, in which Complainant provided a verified date of first use of its mark in the U.S. of June 19, 2006. Complainant has provided no evidence that as of or prior to the date Respondent registered the domain name, Complainant owned any rights in the trademark or trade name SPINE WAVE.
Nevertheless, the consensus view among WIPO panels is that the issue of priority is not relevant to a finding of identity or confusing similarity, because the Policy makes no specific reference to the date on which complainant acquired rights to its trademark. See paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
Comparing the domain name with Complainant's asserted trademark SPINE WAVE, the Panel notes that the only difference is the presence in the trademark of a space between the two words of the mark. The presence of the space is irrelevant for purposes of the Panel's comparison, because it is not possible to insert spaces in domain names. See Speedway Properties Company, LLC v. Registrant,WIPO Case No. D2005-1260; Banca Intesa S.p.A v. Roshan Wickramaratna,WIPO Case No. D2006-0215. Therefore, the Panel finds that Complainant has established this element of the Policy. C. Rights or Legitimate Interests
It is difficult for the Panel to assess whether Respondent has rights or legitimate interests in respect to the domain name because Complainant failed to submit the agreement defining the relationship between Complainant and Respondent with regard to registration of the domain name. This Panel has trouble reconciling Complainant's assertion that Complainant engaged Respondent to register the domain name at issue, with the fact that Respondent registered the domain name several years prior to the date Complainant claimed it first used its trademark. Nevertheless, Respondent has defaulted in this proceeding and there is no evidence regarding the purpose for which the domain name was registered. In view of the fact that the domain name resolves to Complainant's website, the Panel is constrained to conclude that Respondent has no rights or legitimate interests in the domain name. D. Registered and Used in Bad Faith
As mentioned above, it is the consensus view among WIPO panels that registering a domain name before a complainant acquires trademark rights does not prevent a finding of identity or confusing similarity. However, it is also the consensus view that a complainant's lack of priority over the domain name registration may make it difficult to prove the domain name was registered in bad faith, as it can be difficult to show that the domain name was registered with a future trademark in mind. See paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
Respondent registered its domain name in 2001 while the earliest priority date for use or registration of Complainant's trademark or trade name for which this Panel has evidence was in 2006. Complainant has failed to provide the aforementioned agreement between it and Respondent, so the Panel cannot ascertain whether the parties had a contractual relationship concerning registration of the domain name at or near the time it was registered in 2001. Furthermore, Complainant fails to specify when it first began publicizing or advertising its products under its trademark, so this Panel cannot conclude Respondent had knowledge of Complainant's trademark when the domain name was registered. In the absence of such evidence, the Panel is constrained to conclude that Respondent cannot have registered the domain name in bad faith because there is no evidence that Respondent had knowledge of Complainant's trademark (or even that Complainant had a trademark) at the time.
Recent decisions have proposed a “unified concept” approach, under which the panel need not ascertain separately whether a complainant has both registered and used a domain name in bad faith, but in proper circumstances may find that a domain name registrant's conduct after registration satisfies the Policy requirement of Paragraph 4 (a)(iii) even without evidence that the domain name was registered in bad faith. See, e.g., City Views Ltd. v. Moniker Privacy Servs / Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009-0643; Phillip Securities Pte Ltd v. Leong, ADNDRC Decision DE-0900226; Octogen Pharmacal Co. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786.
Under the present circumstances, it is not necessary to decide here whether to follow the “unified concept” approach, because Complainant has failed to demonstrate any activity by Respondent which would constitute evidence of abusive registration or use of the disputed domain name, at the time of registration or afterward. Complainant's assertion that Respondent registered the domain name on its behalf but has failed to transfer same to Complainant is insufficient to constitute circumstances indicating that Respondent registered or acquired the domain name for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant. The record includes no evidence that Respondent registered the domain name to prevent Complainant from reflecting its trademark in a corresponding domain name; to the contrary, it appears Respondent facilitated Complainant's ability to reflect its trademark in a corresponding domain name. There is no evidence from which the Panel can conclude that Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor. Finally, the evidence fails to support a finding that Respondent has, by using the domain name, intentionally attempted to attract Internet users to its website by creating a likelihood of confusion, because the website linked to the domain name at issue is Complainant's own website. Such use cannot, in the present circumstances, suffice to establish Respondent's bad faith, in the absence of evidence of the very agreement Respondent is said to have breached. However, if the use of the disputed domain name was to become abusive only after the issuing of the present decision, it is a matter that may warrant subsequent reexamination in an appropriate forum. However, because Complainant has not succeeded in the present proceeding in proving either bad faith registration or bad faith use of the disputed domain name, it cannot prevail. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Jordan S. Weinstein
Sole Panelist
Dated: December 3, 2009
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