The Complainant is Omron Corporation of Kyoto Japan, represented by Sanderson & Co., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Paul Mattera of Raleigh, North Carolina, United States of America. 2. The Disputed Domain Names And Registrar
The disputed domain names , , and are registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on September 6, 2012. On September 7, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 11, 2012, the Registrar 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 disputed domain names.
The Center verified that 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 the Respondent of the Complaint, and the proceedings commenced on September 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 2, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 3, 2012.
The Center appointed Andrew Brown QC as the sole panelist in this matter on October 12, 2012. 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.
On October 24, 2012, the Respondent wrote to the Center requesting a list of the materials contained in the Case File, to which the Center responded on November 1, 2012, providing the requested list. 4. Factual Background
The disputed domain names , , and were each first registered on April 23, 2005, (“the Relevant Date”). Even though the Registrar has confirmed that the disputed domain names were registered to the Respondent on November 14, 2010, the Panel finds that there is nothing in the Record that would indicate that the Respondent was not the original registrant of the disputed domain names when these were first created on April 23, 2005. The Panel therefore treats this as the Relevant Date.
The Complainant is a Japanese electronics company based in Kyoto, which was established in 1933, and incorporated in 1948. It undertakes the manufacture and sale of automation components, equipment and systems. It states that it is generally known for medical equipment such as digital thermometers, blood pressure monitors and nebulizers. It further states that it has used the name ”Omron” on products and services since at least 1959, that its goods and services have been extensively promoted under the OMRON mark since that time, and that it is has extensively used the name “Omron Healthcare” in respect of the goods and services in its healthcare division. The Complainant’s healthcare division is stated to have subsidiaries worldwide such as Omron Healthcare Co. Limited in Japan, Omron Healthcare, Inc. in the United States and Omron Healthcare BV in Europe.
The Complainant is the registered proprietor of the following trademark registrations for OMRON, which predate the registration of the disputed domain names, and which it relies on:
- United States Trademark Registration No. 0984928 for the word mark OMRON filed on September 20, 1971, in class 26 for “computer controlled cash, check and bank or creditcard processing units”.
- Japanese Trademark Registration Nos. 2504071, 0622187 and 1742268 with registration dates of February 26, 1993, July 29, 1963 and January 23, 1985, (no further particulars of these trademarks were provided by the Complainant).
- Community Trademark (“CTM”) Registration No. 000216721 for the OMRON mark and design filed on April 1, 1996, in classes 9 and 10 including, relevantly, for the following goods in class 10:
“Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials, including: electronic sphygmomanometers, electronic clinical thermometers, electronic blood cell counters, auto cell analyzers, electric steam inhalers, ultrasonic nebulizers, electrocardiographs, electric massagers, electric pulse massagers, urine monitors, digital pedometers, ultrasonic cleaners, blood glucose monitors, flow cytometeries, sphygmomanometers, hyperthermia treatment systems.”
- United States Trademark Registration No. 3204195 for the OMRON mark and design filed on September 28, 2004, in classes 19, 21, 23, 26, 31, 35, 36, 38, 39, 44, 100, 101, 103, 106, for a wide range of goods including, relevantly, for the following goods in class 10:
“Apparatus for the treatment of deafness, namely, hearing aids; appliances for washing body cavities, namely, douches; arterial blood pressure measuring apparatus; diagnostic audiometers; bed vibrators; blankets for medical purposes; blood pressure monitors; blood testing apparatus; body fat analyzers for medical use and monitors for medical purposes; contraceptive apparatus; dental apparatus, namely, dental endoscopes, dental hand-piece controls, dental lights, dental cuspidors, dental chairs and component parts therefore, dental cameras and dental radiographs; devices measuring blood sugar; diagnostic apparatus for medical purposes, namely, thermometers, heart rate monitors, pedometers, respiratory monitors, stethoscopes, sphygmomanometers and aneroids; electroencephalographs; electrocardiographs; electrodes for medical use; massage apparatus, namely, hydrotherapy capsules and tubes for medical therapy purposes, facial statements in the nature of saunas and pedicure spa units in the nature of electric foot spa massagers; hearing aids for the deaf; heart pacemakers; heart rate monitors; heating cushions for medical purposes; hematimeters for counting cells; hot air vibrators for medical purposes; hypothermia treatment systems, namely, thermal blankets; infrared radiation appliances, namely, radiation therapy machines and radiological medical diagnostic apparatus; inhalers for medical purposes; lasers for medical purposes; low frequency treatment apparatus, namely, low frequency magnetic field generators and low frequency pulsed current generators; massage apparatus, namely, automatic electric massagers and electric muscle and nerve stimulators; obstetric apparatus, namely, real-time ultrasound scanners; ophthalmoscopes; orthopedic articles, namely, artificial limbs; otoscopes; peak flow meters for medical use; phonocardiographs for recording heart and lung activity; physical exercise apparatus for medical purposes, namely, treadmills; radiation therapy machines. respirators for artificial respiration; soft laser apparatus for treatment of the skin, namely, medical lasers; sphygmomanometers for measuring blood pressure; spirometers for medical purposes; sprayers for medical purpose; steam therapeutic inhalers; stethoscopes; therapeutic instruments utilizing radioactive materials, namely, scentiscanners, pneumotachograms and galvanic skin reflexometers; thermoelectric therapeutic instruments, namely, thermoelectric heat pumps, thermoelectric coolers and modules and thermoelectric temperature controllers; thermometers for medical purposes; traction apparatus for medical purposes; ultrasonic diagnostic apparatus; urological apparatus and instruments, namely, lasers and optical devices for endoscopy; vaporizers that emit menthol for treatment of upper respiratory conditions; vibro massage apparatus, namely, mechanical vibrating massagers; and walking aids for medical purposes.”
The Complainant also claims unregistered rights in the trademark OMRON HEALTHCARE by way of its domain name registration (created on January 14, 1997).
The Complainant states that it has had common law rights over the name “Omron Healthcare”, “for years”. The Panel has been able to verify this by reference to the dates of trademark registrations for this mark in Europe and the United States, as well as registration of the Complainant’s domain name. However, the Complaint would have been assisted by the inclusion of more specific dating of its claims of use of registered and unregistered trademarks prior to the Relevant Date.
As at the date of the Complaint, all of the disputed domain names were redirecting to an online retail website hosted at . The physical address given for that online retail business is located in Raleigh, North Carolina (the location of the Respondent in this proceeding). The particular goods offered for sale on include both the goods of the Complainant, and competitors of the Complainant. The particular goods offered for sale include: surgical and medical apparatus, blood pressure monitors, thermometers, heart rate monitors and stethoscopes, all being items expressly covered in the specifications for the Complainant’s trademark registrations for OMRON predating the Relevant Date (including CTM Registration No. 000216721 and United States Trademark Registration No. 3204195). 5. Parties’ Contentions A. Complainant
The Complainant asserts that it has satisfied the three elements of paragraph 4(a) of the Policy and requests that the disputed domain names be transferred to it. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. 6. Discussion And Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain names in order to succeed in this proceeding:
(i) that the disputed domain names are 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 names; and
(iii) that the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant had registered rights in the trademark OMRON as at the Relevant Date and November 14, 2010. These rights exist by way of the Complainant’s registered trademarks for OMRON in the United States, and a Community Trademark in numerous classes including class 10, all predating the Relevant Date. If the later date of November 14, 2010 is taken, the Complainant’s rights were the same.
The Panel also finds that the Complainant had unregistered rights in the trademark OMRON HEALTHCARE as at each of the dates given above by way of use of its domain name , which predates April 23, 2005.
The disputed domain name is identical to the registered trademarks for OMRON relied on by the Complainant. Further, the Complainant’s distinctive OMRON registered trademark is instantly recognisable in the remaining disputed domain names (, and ). The descriptive element “healthcare” does not differentiate the disputed domain name from the Complainant’s registered trademarks but rather serves to reinforce the connection with the Complainant by pointing directly to items within a number of the Complainant’s registered trademark specifications as detailed above.
Further still, the disputed domain names , and are identical to the Complainant’s unregistered trademark OMRON HEALTHCARE.
The Panel accordingly finds that is identical to trademarks in which the Complainant has registered rights. Further, the remaining disputed domain names (, and ) are confusingly similar to the trademarks in which the Complainant has registered rights, and identical to a trademark in which the Complainant has unregistered rights. The Panel therefore finds that paragraph 4(a)(i) of the Policy is satisfied in favour of the Complainant. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that he has rights or legitimate interests in the disputed domain names, among other circumstances, by showing any of the following elements:
(i) that before notice of the dispute, the Respondent used or made demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the disputed domain names, even if he has acquired no trademark or service mark rights; or
(iii) that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain names lies with the Complainant. However the Complainant is required only to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once a prima facie case is made out, the burden shifts to the Respondent to come forward with appropriate evidence demonstrating his rights or legitimate interests in the disputed domain names.
The Complainant states, and the Panel accepts on the uncontroverted evidence submitted, that it has never given the Respondent any licence or authority to use the trademark OMRON and that the Respondent is not associated with the Complainant.
There is no evidence that the Respondent has made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods. The disputed domain names are not similar to the Respondent’s name, and there is no evidence that the Respondent operates any business under any name that is similar or the same to the disputed domain names.
Nor were the disputed domain names being used for any legitimate interests which might dispel the prima facie case made out by the Complainant. The disputed domain names were, at the time of the Complaint, redirecting to an online retail website offering for sale (inter alia) goods produced and sold by competitors of the Complainant. The Panel notes that while the Respondent’s website did also offer for sale goods of the Complainant under the OMRON trademark, he did not use its site to sell only those goods. Accordingly, such use does not amount to bona fide or legitimate use (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903).
In the circumstances, the Panel finds that the Complainant has satisfied the burden of showing a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.
Accordingly, and in the absence of any Response from the Respondent, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant. C. Registered and Used in Bad Faith
The Panel finds that bad faith existed at both the Relevant Date and the later date of November 14, 2010.
The Panel is accordingly satisfied that the disputed domain names were registered in bad faith.
The Complainant has trademark registrations for OMRON which well predate April 23, 2005, including a registration in the United States, being the location of the Respondent, dating from September 28, 2004. This registration includes an extensive list of healthcare products in class 10. It also has established unregistered rights in OMRON HEALTHCARE prior to that date. The Respondent chose to use in the disputed domain names the Complainant’s substantially distinctive OMRON trademark together with a descriptive word (i.e. “healthcare”) which directly describes goods which fall within certain elements of the Complainant’s trademark specifications, which were in place prior to the Relevant Date (i.e. healthcare related products). The Panel finds that the Respondent must have been aware of the Complainant’s mark and services at the time he registered or acquired the disputed domain names whether that be at the Relevant Date or at the later date of November 14, 2010.
The Panel is also satisfied that the disputed domain names are being used in bad faith, in particular for attracting Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks. The goods offered for sale on the Respondent’s website match in part goods, offered by competitors of the Complainant, which are covered directly by the Complainant’s registered trademarks. There is therefore a demonstrated intent to attract Internet users searching for the Complainant’s trademarks to the Respondent’s website for commercial gain.
Accordingly, and in the absence of any formal Response from the Respondent, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favor of the Complainant. 7. Decision
For these reasons and in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names , , and be transferred to the Complainant.
Andrew Brown QC
Sole Panelist
Dated: November 1, 2012
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