WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION BioClin B.V v. MG USA Case No. D2010-0046 1. The Parties
The Complainant is BioClin B.V of Delft, the Netherlands, represented by Valegis Advocaten, the Netherlands.
The Respondent is MG USA of Illinois, United States of America, represented by Brad C. Anderson, United States of America. 2. The Domain Name and Registrar
The disputed domain name (“the Domain Name”) is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2010. On January 13, 2010, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the Domain Name. On January 14, 2010, Melbourne IT Ltd transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 14, 2010, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an Amended Complaint on January 26, 2010. The Center verified that the Amended 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 the Respondent of the Complaint, and the proceedings commenced on February 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 23, 2010. The Response was filed with the Center on February 24, 2010 at 1.26am Central European Time.
The Center appointed Warwick Smith as the sole panelist in this matter on March 2, 2010. 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 The Complainant and its Products
The Complainant is a Dutch corporation, which markets a range of feminine hygiene or gynecological products, including products under the name Multi-Gyn. According to the Complaint, the Complainant's Multi-Gyn products are sold in pharmacies and drug stores in over 30 countries. They are also sold over the Internet.
The Complainant says that all of its products in the Multi-Gyn range have “Medical Device” registrations. The products are sometimes prescribed by gynecologists and general medical practitioners, and sometimes purchased and used by women on a “self-care” basis. Full information on the products is provided for consumers and healthcare professionals on the Complainant's website, and many of the Complainant's distributors operate similar websites in their local languages, so that consumers have ready access to relevant information.
The Complainant says that on all of its products, and in its product information leaflets, it refers consumers to its websites for further information. That is said to be crucial for the consumer, as the Multi-Gyn products are often used at home in relation to gynecological problems, such as may occur during pregnancy or childbirth. The Complainant's Trademarks
The Complainant holds Benelux, European Union, and international registrations of the trademark MULTI-GYN. The Benelux registration dates from December 21, 1995, and the Community Trademark from March 15, 2005. These registrations cover a variety of products in international classes 3 and 5, namely cosmetics; pharmaceutical and medicinal preparations, also for the treatment of gynecological disorders; homeopathic and phytotherapeutic medicines; hygienic and disinfecting; materials for dressings. The international registration covers the same products, and was registered on September 11, 2009. There are two designated countries, Australia and the United States.
In addition, the Complainant has registered a figurative Community Trademark which looks like the outline of a stylized female form. This mark (“the figurative mark”) has been registered with effect from 2002. The Complainant's domain names
It appears that the Complainant may also hold a number of “Multi-Gyn” domain names – the Respondent appears to acknowledge as much in the Response. However, the material the Complainant produced to support that claim was in the Dutch language, and the Complainant did not provide any translation. The Respondent and the Domain Name – The Complainant's Story
There is some history between the parties.
The Complainant says that the Respondent was incorporated by one of the Complainant's former distributors, a Mrs. Joy Bonga. Mrs. Bonga ceased to be an official distributor of the Complainant's products on May 3, 2004. Notwithstanding that termination of the relationship, the Complainant says that “up till this very moment she refused to transfer the website to [the Complainant] although this was part of the [confidentiality and secrecy] agreement” which had been signed by the Complainant and Mrs. Bonga. The Complainant did not produce a copy of the agreement, nor copies of any correspondence or other communications relating to the formation or termination of the agreement.
The Domain Name was created on February 23, 2002, and the Respondent began selling the Complainant's Multi-Gyn products through a website at the Domain Name (“the Respondent's website”) not long after that date. However there is evidence that products labeled “Multi-Gyn” or “MultiGyn”, have been sold on the Respondent's website after the termination of the Complainant's agreement with Mrs. Bonga. The Complainant says that there was no problem in the early stages, as the parties were promoting different products. But when some of the Complainant's Multi-Gyn customers indicated that they had been confused by the two websites, the Respondent's use of the Domain Name became a major issue for the Complainant.
The Complainant produced a signed declaration from one of its customers, who the panel will refer to as Mrs. M. Mrs. M declared that she had been a Multi-Gyn gel customer for years, but that when (in June 2009) she ordered some Multi-Gyn gel from the Respondent's website, she noticed that the package no longer had the Bio-Active hologram with which she had become familiar on the front, and that the material the tube had been made of had changed to plastic. She also noted that the product was now made in the USA. Mrs. M noted that some of the ingredients were different from the Multi-Gyn product with which she had been familiar. She contacted the Complainant on June 24, 2009, and later provided the Complainant with pictures of the product she had bought through the Respondent's website.
The Complainant also produced copies of some November 2009 correspondence from another customer, who the Panel will refer to as Ms. S. In an e-mail to the Complainant dated November 11, 2009, Ms. S. indicated that she had been a customer of the Complainant and, as she lived in the United States, she ordered the Complainant's product through the Respondent's website, assuming it to be the Complainant's website. When she received the products she had ordered from the Respondent's website, she noted various differences from the product with which she was familiar (i.e. the Complainant's product), and that the boxes contained advice that the product was now being developed and produced by “MultiGyn USA”, of Illinois. Ms. S., not being satisfied with the product she had ordered through the Respondent's website, said in her email to the Complainant that she had emailed “the MultiGyn USA site manager, a lady who goes by the name of Joy, several times but have yet to receive a reply”. She concluded her email by asking if the Complainant's product was no longer distributed in the United States, or whether MultiGyn USA had created a copycat version of the Complainant's product.
The Complainant responded to Ms. S. on November 9, 2009, advising that the products she had purchased were counterfeit and illegal.
According to the Complaint, the Respondent has falsely claimed that the products marketed on the Respondent's website are manufactured by the Complainant and/or contain the same ingredients as the Complainant's products. The Complainant stated that the latter claim could not have been correct, due to the confidential nature of the product formula, and the patented main active ingredient. Furthermore, said the Complainant, the counterfeit products marketed by Mrs. Bonga through the Respondent's website have been presented as medical products, but have had no registration and have not been backed by clinical research. Products not supported by proper clinical research could be dangerous to the health of the consumer.
The Complainant stated that in all cases, including that of Mrs. Bonga, the distributor would sign an agreement with the Complainant under which the Complainant had the right to demand that all aspects related to the Complainant's trademarks (including websites, local registration, etc.) be delivered back to the Complainant by the distributor. In the event of such a demand, the distributor was obliged to effect the required transfer immediately.
At Annex 9 to the Complaint, the Complainant produced pictures of its own products and of the very similar products marketed on the Respondent's website. Substantial elements of the Respondent's product packaging appeared to be identical to the packaging of the corresponding products marketed by the Complainant. In particular, both product packs had the expression “Multi-Gyn” (or in the case of the Respondent's product, “MultiGyn”) written in white lettering against a black rectangle background, with the rectangle and the written expression rotated 90º to the left, so that the reader had to turn his or her head (or lie the box flat) to read the product name. The figurative mark (or in the case of the Respondent's product, a very close approximation of it) appeared immediately to the right of the black rectangle, with the right hand side of the black rectangle merged into the left hand side of the figurative mark. Both product packs had at the bottom: “For the relief of vaginal discomforts”.
Pictures of the Complainant's and the Respondent's respective product tubes also appeared to show a high degree of similarity.
The Complainant also produced a Google search result list, showing results of a Google search it had run in January 2010 on the expression “multi-gyn+gel”. The search results were substantially in the Dutch language, and no translation was provided. However, the search did clearly list “Multi-Gyn-USA”, and the Respondent's website, as the third result. The Complainant's Dutch website appeared as the fourth result on the search results printout. The Respondent's Story
The Respondent appears now to be owned or controlled by Mr. Karl Bonga, the ex-husband of Mrs. Joy Bonga.
In the Response, Mr. Bonga stated that the Respondent had started its business in 1999. He agreed that the Respondent (through Mrs. Bonga) and the Complainant entered into a Distribution Agreement in 2002, and that such agreement was terminated in 2004. Under the agreement, the Complainant manufactured products at the Respondent's request, and the Respondent then sold those products in the United States. After the termination of the Distribution Agreement, the Respondent secured a local manufacturing firm to make the Respondent's own “MultiGyn” products, using what the Respondent described as “an improved formulation”. The Respondent stated that, for the last 6 years, it has been selling its MultiGyn products, in the United States exclusively, with the Complainant's full knowledge. These products fully follow the United States Food and Drug Administration Guidelines.
Mr. Bonga asserted in the Response that it was his ex-wife who entered into the Distribution Agreement with the Complainant, and that he had never seen the “Agreement” referred to by the Complainant. He speculated that either the “Agreement” does not exist, or if it does exist, it does not contain any reference to trademark rights for either party.
As for the product packaging referred to by the Complainant, the Respondent asserted that it was entitled to use the packaging under the initial manufacturing agreement, and that when that agreement soured, the Respondent elected to have its supply sourced from a local manufacturing company.
As for the Google search produced by the Complainant, the Respondent stated that, to the best of its knowledge, the Respondent's website has appeared in the number 1 position for the last 8 years.
The Respondent claimed to have worked hard developing and promoting its business in the United States, and that the business conducted through the Respondent's website is the Respondent's only source of income. 5. Parties' Contentions A. Complainant
The Complainant contends:
1. The Domain Name is identical or confusingly similar to the Complainant's MULTI-GYN mark.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent is offering counterfeit products, including products sold under the Complainant's brand name which were not developed or produced by the Complainant. The Respondent, through Mr. Bonga, is aware of the Complainant's domain name, having worked with Mrs. Bonga as a distributor for the Complainant. The Respondent therefore knows that the Domain Name is the intellectual property of the Complainant. The Respondent offers a product in the same category as the Complainant's Multi-Gyn product, and at the same time claims on the Respondent's website that the Complainant is the party who produces the product offered by the Respondent. The Respondent has been falsely implying that it has been working in co-operation with the Complainant.
3. The Domain Name was registered and is being used in bad faith. The Respondent just wants to confuse the public. It attempts to attract the Complainant's Multi-Gyn products customers by creating a likelihood of confusion with the Complainant's trademark. The Respondent uses the identical trademark, and also uses the figurative mark and identical product names. Furthermore, the Respondent tries to use the good name and medical registration of the Complainant's trademark, in order to sell counterfeit copies of the Complainant's products that are not medical, have no medical registration and are not developed or manufactured by the Complainant. The Respondent's bad faith is further evidenced by the Respondent's use of clinical evidence relating to the Complainant's products. B. Respondent
The Respondent contends:
1. Any rights the Complainant has in the expression “Multigyn” are non-exclusive rights which do not stretch to the United States (the Respondent's country of operation) or to Australia which is the country of registration. Alternatively, any rights the Complainant might have had in the United States have been extinguished by acquiescence or abandonment.
2. The agreement relating to intellectual property rights which the Complainant referred to either does not exist or does not affect trademark rights for either party.
3. The Complainant had no trademark rights in the United States in a “MultiGyn” trademark until it filed an application utilizing the Madrid Protocol on September 11, 2009, some 7 years after the Respondent registered the Domain Name. By then, the Respondent held common law rights in the trademark in the United States, and it will dispute the use of the Madrid Protocol to create a United States registration. Documents which the Complainant produced which are in a foreign language should be ignored by the Panel.
4. The Complainant cannot rely on the existence of any “multigyn” domain names it might own. The Complainant did not begin registering those domain names until recently.
5. The Respondent does have rights and a legitimate interest in the Domain Name, having regard to the following:
(i) The Complainant, having failed to use its mark in the United States, must be regarded as having abandoned its mark (on the grounds of non-use for three consecutive years, under 15 U.S.C. §1127). Whatever rights the Complainant mistakenly feels that it had, would have lapsed when it considered that it was “not a major issue” to have the Respondent working hard to build up a customer base that has come to know the Respondent by the Domain Name. The Respondent's continuous use for 8 years establishes the Respondent's rights and legitimate use of the Domain Name, and its solidification of a common law trademark rights within the United States.
(ii) The Complainant has offered free products to individuals who would say that the Respondent's MultiGyn products are “counterfeit”. The Respondent has developed a bona fide business in the United States selling the products, and the Complainant has harmed Mr. Bonga and the Respondent's reputation by alleging that the Respondent's products are counterfeit.
(iii) The Respondent believes that the products marketed on the Respondent's website are the Respondent's products, and that the Respondent is entitled to use the packaging which it uses.
(iv) The Complainant has known of the Respondent's continuous use of the Domain Name to sell the Respondent's own line of products. The question has become not whether the Respondent has any rights in the Domain Name, but what rights, if any, the Complainant has in a “MultiGyn” mark.
(v) The Respondent does not benefit from any activity of the Complainant in other countries, since the Respondent's business is focused solely in the United States.
6. The Complainant has failed to prove bad faith registration of the Domain Name. At the time of registration, the Complainant had no common law, or registered trademarks in the United States, and the Complainant therefore did not have sufficient rights for the Respondent to have acted in bad faith towards the Complainant, or in any way to have caused a likelihood of confusion with the Complainant's products. The registration was made in good faith, and apparently with the blessing, acquiescence, or indifference of the Complainant. The Complainant has not met its burden of proving bad faith registration, and the Complaint must therefore fail.
7. Nor has the Complainant proved bad faith use of the Domain Name. The Complainant freely admits that it does not operate in the United States, whereas the Respondent has been operating in good faith in that country for 8 years. The Complainant cannot be permitted to stand by for 8 years, letting the Respondent build up a solid small business, and then attempt to steal that business by hijacking the Domain Name.
8. The present dispute is not an appropriate one for resolution under the Policy, which is intended to provide a relatively speedy and inexpensive method to remedy cybersquatting.
9. The Complainant has been guilty of sitting on its hand, or acquiescing in the Respondent's registration and use of the Domain Name, and the Complaint should be rejected on the grounds of laches or acquiescence. A complainant's delay in seeking relief is relevant to a determination of whether a respondent has been able to build up legitimate rights in a disputed domain name in the interim, and whether the respondent has been using the disputed domain name in bad faith (citing Square Peg Interactive Inc. v. Naim Interactive Inc., NAF Claim No. FA209572, and Iogen Corporation v. IOGEN,WIPO Case No. D2003-0544). The Complainant freely admits that it was aware of the Respondent's registration, and 8 years is an unreasonable delay before commencing this proceeding. If the Panel were to grant the remedy sought by the Complainant, it would unjustly destroy the Respondent's business.
10. The Complainant has been guilty of reverse domain name hijacking in bringing the present proceeding. The Domain Name has been registered for 8 years and the Complainant has been well aware of the Respondent's operations and business activity. The Complainant has attempted to intimidate the Respondent and force the Respondent into giving up its rights in a business created from nothing. The Complainant is aware that the business operated through the Respondent's website is the Respondent's only source of income, and is trying to drive the Respondent out of business without providing just compensation. The Respondent has suffered extensive emotional stress and financial burden defending itself against the Complainant. 6. Discussion and Findings A. What the Complainant must prove under the Policy - General
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
These are conjunctive requirements: to succeed, a complainant must prove all three elements.
Paragraph 15(a) of the Rules requires the panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. B. Identical or Confusingly Similar
The Complainant has proved this part of the Complaint. It is the registered proprietor of a MUTLI-GYN mark in the Benelux countries, in the European Union, and internationally under the Madrid Agreement and Protocol. Those registrations have not been challenged, except to the extent that the Respondent attacks the validity of the United States designation under the international registration. But that attack is misconceived: it does not matter for the purposes of paragraph 4(a)(i) of the Policy where in the world a complainant happens to hold a relevant registered trademark. Any jurisdiction will do.
The point is summarized in the Center's online document “WIPO Overview of WIPO Panel Views on selected UDRP Questions” at paragraph 1.1, as follows:
“The location of the registered trademark and the goods and/or services it is registered for are irrelevant when finding rights in a mark”.
Once it is appreciated that the Complainant did not need to establish the existence of any trademark rights in the United States, it is clear that the Complainant has made out its case on this part of the Complaint. The Complainant has rights in a MULTI-GYN mark in the Benelux jurisdiction and in the European Union, and the Domain Name is almost identical to that mark. The only difference is that the Domain Name does not contain a hyphen (the generic “.com” suffix is not taken into account in the comparison). The absence of a hyphen in the Domain Name does not change the look, sound, or impression given by the Domain Name. C. Rights or Legitimate Interests
In view of the conclusion the Panel has reached on the question of bad faith registration and use (Policy, paragraph 4(a)(iii) – section 6D of this decision), it is unnecessary for the Panel to make any findings on this part of the Complaint. D. Registered and Used in Bad Faith
The Panel being of the view that the Complainant has failed to prove this part of its case, the Complaint must fail.
The Panel's reasons for coming to that view are as follows.
1. The Panel accepts the Respondent's submission that a complainant under the Policy must prove both bad faith registration and bad faith use. The panel decision most commonly cited for that proposition is Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In that case, the panel noted:
“7.4 The significance of the use of the conjunction ‘and' is that paragraph 4(a)(iii) requires the Complainant to prove use in bad faith as well as registration in bad faith …
7.5 … For a remedy to be available, the Complainant must prove both that the domain was registered in bad faith and that it is being used in bad faith.”
The panel in Telstra Corporation drew support for that view from the Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, which had been submitted to the ICANN Board at its meeting on October 24, 1999. Paragraph 4.5 of the Report read:
“The WIPO Report, the DNSO recommendation, and the registrar's-group recommendation all required both registration and use in bad faith before the streamlined procedure would be invoked. Staff recommends that this requirement not be changed without study and recommendation by the DNSO.”
The Telstra Corporation panel noted that the ICANN Board accepted the approach recommended in the Second Staff Report, and adopted the Policy in the form originally proposed. The clear inference was that ICANN intended that, for a remedy to be available, proof of bad faith use alone would not be sufficient.
2. Until fairly recently, that interpretation of paragraph 4(a)(iii) of the Policy was followed almost universally by UDRP panels; indeed, the Panel cannot think of a case decided before mid-2009 which did not follow the Telstra Corporation approach as described above. The consensus of panel decisions clearly supported the Respondent's submission that the Complainant must prove bad faith registration, as well as bad faith use.
3. In 2009, there was a new development. A number of panel decisions held that, once a complainant had proved use falling within paragraph 4(b)(iv) of the Policy, the complainant was not in all circumstances necessarily required to prove that the respondent had acted in bad faith in registering the disputed domain name (even if the registration had occurred many years prior to the proved bad faith use). The new cases included Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions,WIPO Case No. D2009-0786, City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE,WIPO Case No. D2009-0643, Ville de Paris v. Jeff Walter,WIPO Case No. D2009-1278, and Zerospam Security Inc. v. Internet Retail Billing, Inc., Host Master,WIPO Case No. D2009-1276.
In the Ville de Paris case, the (eminent) panelist summarized his views on this issue in the following terms:
“... it seems clear to this Panel that the intent and effect of the Policy is that the requirement of Paragraph 4(a)(iii) can, in certain circumstances, be met where the respondent has used the domain name in bad faith, even though it may have been acquired in good faith. As the [Telstra Corporation Limited v Nuclear Marshmallows, supra] decision states ‘the relevant issue is ... whether in all the circumstances of the case, it can be said that the Respondent is acting in bad faith'.”
4. This Panel considered the new line of cases, in Torus Insurance Holdings Limited v. Torus Computer Resources,WIPO Case No. D2009-1455. For the reasons which are set out in detail in the Torus case, the Panel declined to follow the Octogen line of cases.
Since the Torus decision, several panels have expressed their views on the issue. At least one has followed the Octogen line – Samsung Electronics Co., Ltd v. Pimser Electronics Ltd. (Samsung Turkey),WIPO Case No. D2009-1630. Others have come to the same conclusion this Panel inclined to in the Torus case – see Validas, LLC v. SMVS Consultancy Private Limited,WIPO Case No. D2009-1413 and Camon S.p.A. v. Intelli-Pet, LLC,WIPO Case No. D2009-1716. The reasoning in the Validas case particularly commends itself to this Panel. The panel in Validas, while noting the “laudable desire” of some panels to provide a remedy in cases of good faith registration followed by bad faith use, concluded that the only permissible way for a remedy to be provided in such circumstances would be for ICANN to amend the Policy, paragraph 4(a)(iii), by changing “and” into “or”. This Panel agrees with that conclusion, and sees no need to depart from the view it expressed provisionally in the Torus case.
Before leaving the point, the Panel notes that, in another very recent variation on the “no need to prove bad faith registration” theme, the panel in Eastman Sporto Group LLC v. Jim and Kenny,WIPO Case No. D2009-1688, took the view that the perceived problem of good faith registration followed by bad faith use could be met by treating each renewal of the disputed domain name as a new registration for the purposes of paragraph 4(a)(iii) of the Policy. The panel in Eastman Sporto acknowledged the difficulty that earlier panel decisions have concluded that renewals do not constitute new registrations (refer to the Center's “Overview” document, paragraph 3.7, for the consensus view of WIPO panels to that effect), but nevertheless concluded that such consensus view should not prevail, at least on the facts with which the panel was concerned.
It seems to this Panel that there are difficulties with the interpretation adopted by the panel in Eastman Sporto, not least that paragraph 2 of the Policy appears to treat registration and renewal of a domain name as separate and distinct concepts. And the Panel is not sure where the adoption of the approach applied in Eastman Sporto might lead – for example, would a respondent's previous bad faith use be “cured” if a complainant could not prove that the respondent acted in bad faith at renewal time? Numerous “registrations” by the same registrant is a difficult concept, which would bring with it a new set of interpretation problems. But the major problem this Panel sees with the “renewal theory” is that, like the approach adopted by the panels in the Octogen line of cases, it seeks to provide a remedy in circumstances where the framers of the Policy appear to have intended that there should be none. To this Panel it seems that, if the intention of the framers of the Policy was that subsequent bad faith use of a domain name which had been registered in good faith was not to be caught by the Policy (as appears to this Panel to have been the case), an interpretation of the Policy which would eventually catch all such registrants (when they renewed their registrations) is to be avoided. Given the clear intention expressed in the Second Staff Report (paragraph 1 above), it seems to the Panel that the bad faith registration requirement was intended to catch a respondent's bad faith in the choice of the disputed domain name. That choice is of course made at the time of the original registration or acquisition, not at renewal time.
For all of the foregoing reasons, the Panel accepts the Respondent's submission that the Complainant cannot succeed without proving that the Domain Name was registered in February of 2002 in bad faith.
5. Turning to the facts of this case, the Complainant has fallen well short of proving that the Domain Name was registered in bad faith. The Panel notes first that the Respondent was an authorized distributor of the Complainant's products at the time the Domain Name was registered. The obvious question in those circumstances is whether the Complainant's distributors, including the Respondent, were authorized to use the Complainant's mark in their domain names.
The Complainant has failed to address that question at all. It has referred to a “confidentiality and secrecy agreement” between it and the Respondent, but it has not produced a copy of that agreement, or even referred to its terms so far as they might have affected the registration of the Domain Name. The wording of the Complaint suggests, if anything, that the Respondent may have been entitled to register the Domain Name: the Complainant stated in the Complaint: “Up till this very moment she refused to transfer the website to [the Complainant] although this was part of the agreement” (the Panel's emphasis). (The “agreement” in question was presumably the “confidentiality and secrecy agreement”, it being the only agreement between the parties mentioned by the Complainant). If it was “part of the agreement” that the Respondent would transfer back to the Complainant any relevant intellectual property, including “the website”, the implication would seem to be that the Respondent must have had the right to hold the “intellectual property” until the “transfer back” obligation arose.
There was nothing in the Response which bolstered the Complainant's case on this issue. Mr. Karl Bonga professed to have no knowledge of the agreement his ex-wife had entered into with the Complainant. He submitted that the registration had been effected in good faith, and “apparently with the blessing, acquiescence, or indifference of the Complainant”. The onus of proof is on the Complainant, and it was for the Complainant (especially in the present circumstances, in which there is an apparent history between the parties) to persuade the Panel, by clear evidence and submissions, that the Domain Name was not registered with the Complainant's “blessing” (to borrow the Respondent's wording).
As noted above, the Complainant did not even address this point, let alone produce any evidence to support a case of bad faith registration. Its whole case appears to have been premised on the belief that bad faith on the part of the Respondent in retaining the Domain Name after the Distribution Agreement was terminated, would suffice to establish bad faith registration. For the reasons outlined above, the Panel does not accept that argument: the termination of the Distribution Agreement did not occur until May of 2004, and the Domain Name had been registered more than 2 years earlier. For the purpose of addressing the issue of the Respondent's intent on registration of the Domain Name, the original registration date by the Respondent (on February 23, 2002) was the relevant one.
In light of the Panel's findings on the bad faith registration issue, there is no need to address under this heading the Respondent's other arguments, including the arguments based on alleged laches and acquiescence. E. Reverse Domain Name Hijacking
Although the Complaint has failed, the Panel is not prepared to make a finding of reverse domain name hijacking. The Domain Name is virtually identical to the Complainant's MULTI-GYN mark, and there appears to the Panel to have been deliberate copying of the Complainant's product packaging, including copying of the figurative mark. Even minor textual elements appear to have been copied (e.g. use of the plural “vaginal discomforts” when a (singular) reference to “discomfort” might have been the more natural English usage).
So regardless of the fact that the Complainant did not have a United States trademark registration until fairly recently, it looks as if the Respondent has deliberately made its products look very much like the Complainant's products. Why would any trader want to do that? The obvious answer is that he or she probably wanted to benefit from consumer confusion, and/or create the impression of an ongoing association with the owner of the copied get-up. In either case, the aim would likely have been to trade off that owner's goodwill. Add the near-identity between the Domain Name and the Complainant's mark, and the Complainant can hardly be blamed for taking the view that it had a strongly arguable case on the “bad faith use” issue.
The Respondent's submissions based on laches and acquiescence do not affect the foregoing analysis. Panel decisions under the Policy appear to universally uphold the position that there is no defense of “laches”, or unreasonable delay – see for example The Jennifer Lopez Foundation v. Jeremiah Tieman , Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC,WIPO Case No. D2009-0057, where the delay in question was nine years. The panel in that case noted that “[t]he remedies under the Policy are injunctive rather than compensatory in nature, and the concern is to avoid ongoing or future confusion as to the source of communications, goods, or services” (citing The Hebrew University of Jerusalem v. Alberta Hot Rods,WIPO Case No. D2002-0616, The E.W. Scripps Company v. Sinologic Industries,WIPO Case No. D2003-0447, and Tom Cruise v. Network Operations Center / Alberta Hot Rods,WIPO Case No. D2006-0560). The existence of such a body of case law must negate any argument that the Complainant should have appreciated that its delays would be fatal to the Complaint.
The Complaint in this case has failed principally because the Complainant did not provide any submissions or evidence directed to the question of bad faith registration as at February 23, 2002, and the Panel has found no basis on the present record for concluding that the Respondent was acting in bad faith vis a vis the Complainant and its mark at that time. As the Octogen line of cases eloquently demonstrates, an argument that no such evidence was necessary, although it may not have prevailed, would clearly not have been so hopeless that the Complaint should not have been filed.
In all those circumstances, the Panel declines to find that the Complaint was brought in an attempt at reverse domain name hijacking, or otherwise in bad faith. 7. Decision
For all the foregoing reasons, the Complaint is denied. The Respondent's allegation of reverse domain name hijacking is rejected.
Warwick Smith
Sole Panelist
Dated: March 22, 2010
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