The Complainant is Lonza AG of Visp, Switzerland, represented by Crowell & Moring, LLP, Belgium.
The Respondent is Onyx Networks, Inc. of Burlingame, California, United States of America ("United States"). 2. The Domain Names and Registrar
The disputed domain names and (the "Disputed Domain Names") are registered with Network Solutions, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 17, 2015. On August 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On August 20, 2015, 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. The Registrar also indicated that the Disputed Domain Names had expired. Following subsequent correspondence the Complainant paid certain fees in order to renew the Disputed Domain Names and hence enable them to be dealt with in the present procedure1.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 8, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 28, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 29, 2015.
The Center appointed Nick J. Gardner as the sole panelist in this matter on November 6, 2015. 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 is Lonza AG. It is a Swiss company and a supplier to the pharmaceutical and biotechnology industries. One of its products is used for the treatment of slug and snail attacks on plants, and is marketed under the brand name "Axcela". The filed evidence establishes this product is sold widely in many countries of the world.
The Complainant is the owner of various trademarks for AXCELA including for example United States trademark registration 4692727 filed on October 27, 2011 and registered on February 24, 2015. These trademarks are referred to collectively as the "AXCELA trademark" below. The Complainant says that it has used the AXCELA trademark since 2014.
The Complainant also incorporates the AXCELA trademark in its website content which is accessible via "" .
On April 17, 2000 the Respondent registered the Disputed Domain Names. At the present time the Disputed Domain Names do not resolve to any content. There is no evidence before the Panel as to whether or not that has always been the case.
The Complainant has sent a cease and desist letter of Complaint to the Respondent on August 4, 2015 but received no reply. 5. Parties' Contentions A. Complainant
The Complainant's case can be summarised as follows.
a) The Disputed Domain Names are identical to the AXCELA trademark as (i) they incorporate in their entirety that trademark, and (ii) the suffixes ".com" and ".net" are to be disregarded in making this comparison.
b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Names. The Respondent's name is Onyx Networks, Inc. and the word "axcela" has no relevance to this name. Further the Respondent has provided false contact details.
c) The Respondent uses the Disputed Domain Names in bad faith. This is established by a subsequent use of the Disputed Domain Names to trade on the goodwill of a rights holder irrespective of the state of mind of the Respondent at the time the Disputed Domain Names were registered. The Complainant relies upon Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions,WIPO Case No. D2009-0786. This case is referred to below as the "Octogen Case".
The Complainant also refers to paragraph 4(b)(iv) of the Policy and notes it refers only to the "use" of the domain name ("the use of a domain name for intentionally attempting to attract, for commercial gain, Internet users to a web site 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 the Respondent's web site or location or of a product or service on the Respondent's web site or location"). The Complainant says this is applicable in this case.
The Complainant also draws attention to the language of paragraph 2 of the Policy, entitled "Your Representations" which it says requires registrants to represent and warrant that they "will not knowingly use the domain name in violation of any applicable laws or regulations. It is [the registrant's] responsibility to determine whether [the] domain name infringes or violates someone else's rights". The Complainant says this provision not only imposes a duty on the part of the registrant to conduct an investigation at the time of registration, but also includes a representation and warranty by the registrant that it will not now or in the future use the domain name in violation of any laws or regulations. The Complainant says this effectively imposes on the registrant a continuing duty to ensure that the domain name is not used in violation of another's rights and clearly covers intellectual property rights and the laws protecting them, including copyright and trademark. The Complainant says this representation and warranty is not limited to the moment at which the registrant registers the domain name; rather, it extends to any use of the domain name in the future. And if a party uses or passively holds the domain name in the future so as to call into question the party's compliance with the party's representations and warranties, this may be deemed to be retroactive bad faith registration. In this regard the Complainant again relies upon the Octogen Case and also upon Jappy GmbH v. Satoshi Shimoshita,WIPO Case No. D2010-1001.
The Complainant says that although the Disputed Domain Names do not resolve to any content it is impossible to imagine any plausible legitimate use of the Disputed Domain Names by the Respondent, especially in view of the well-known character of the Complainant's AXCELA trademark. It also says that it cannot be excluded that the Respondent uses or will use the Disputed Domain Names for fraudulent activity, e.g., by profiting off the likelihood of confusion with the Complainant's trademark for phishing activities and that the use of the Disputed Domain Names for fraudulent activity is likely, since the Respondent breached the registration agreement by providing false contact details.
The Complainant also says that the registration of the Disputed Domain Names prevents the Complainant, as the holder of a trademark, from reflecting its mark in corresponding domain names. The Respondent registered multiple domain names identical to the Complainant's AXCELA Trademark. The effect of the registrations is to affect the business of the Complainant by attracting visitors looking for information about the Complainant or its marks and creating difficulties for persons searching the internet.
The Complainant relies upon all of the above factors in showing the Disputed Domain Names were registered and are being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Before considering the substantive issues, it is necessary to consider whether the lack of Response prevents the Panel proceeding to resolve this dispute. Under the Rules, paragraph 2:
"Communications
(a) When forwarding a complaint, including any annexes, electronically to the Respondent, it shall be the Provider's responsibility to employ reasonably available means calculated to achieve actual notice to Respondent. Achieving actual notice, or employing the following measures to do so, shall discharge this responsibility:
(i) sending Written Notice of the complaint to all postal-mail and facsimile addresses (A) shown in the domain name's registration data in Registrar's Whois database for the registered domain-name holder, the technical contact, and the administrative contact and (B) supplied by Registrar to the Provider for the registration's billing contact; and
(ii) sending the complaint, including any annexes, in electronic form by e-mail to:
(A) the e-mail addresses for those technical, administrative, and billing contacts;
(B) postmaster@; and
(C) if the domain name (or 'www.' followed by the domain name) resolves to an active web page (other than a generic page the Provider concludes is maintained by a registrar or ISP for parking domain-names registered by multiple domain-name holders), any e-mail address shown or e-mail links on that web page; and
(iii) sending the complaint, including any annexes, to any e-mail address the Respondent has notified the Provider it prefers and, to the extent practicable, to all other e-mail addresses provided to the Provider by Complainant under paragraph 3(b)(v).
(b) Except as provided in paragraph 2(a), any written communication to Complainant or Respondent provided for under these Rules shall be made electronically via the Internet (a record of its transmission being available), or by any reasonably requested preferred means stated by the Complainant or Respondent, respectively (see paragraphs 3(b)(iii) and 5(b)(iii))."
The Complaint was served by the Center via email to the appropriate email addresses as identified in the Complaint and as recorded in respect of the Respondent in the Registrar's records. No Response was received to any of these. The Center then sought to serve written notice of the Complaint by courier to the Respondent's postal address. The courier was unable to effect delivery.
In these circumstances the Panel is satisfied that the Center has complied with its obligation to employ "reasonably available means calculated to achieve actual notice to Respondent". Under the Rules (paragraph 5(e)) "If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint." The Panel concludes that there are no exceptional circumstances which prevent the Panel deciding the dispute. While the Respondent's failure to file a response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent's default (see e.g., Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909). Substantive Issues
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
i. the Disputed Domain Names are identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. the Respondent has no rights or legitimate interests in the Disputed Domain Names;
iii. the Disputed Domain Names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant has submitted detailed evidence that it is the owner of various trademarks in respect of the word "axcela".
The Panel holds that the Disputed Domain Names are each identical to the AXCELA trademark. It is well established that the specific top level of the domain name (in this case ".com" and ".net") does not typically affect the domain name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
It does not matter for the purposes of this element that the Disputed Domain Names were registered before the AXCELA trademark existed – the Panel agrees with the consensus approach as explained in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") paragraph 1.4: "Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights. However, in such circumstances it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP" (see below as to bad faith issues).
Accordingly the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in a domain name:
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 organisation) 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 consumers or to tarnish the trademark or service mark at issue.
In the present case the Disputed Domain Names were registered in 2000. Whilst at present they do not resolve to any active content there is no evidence before the Panel as to whether this has always been the case and, if not, how they may have been used in the past. Although in some circumstances a complainant may raise a prima facie case which suffices to shift the burden of production onto a respondent to show that it has rights or legitimate interests, the Panel's preliminary view is that it is not satisfied that this is such a case. However given the Panel's finding in relation to bad faith (below) the Panel does not need to make any finding in relation to this issue. C. Registered and Used in Bad Faith
The difficulty that the Complainant faces in this case is that the Disputed Domain Names were registered in 2000 but the Complainant did not seek to register the AXCELA trademark until 2011. No case is advanced by the Complainant that it had earlier unregistered rights in the name "axcela" – on the contrary the Complaint expressly states that "The Complainant has used its trademark ever since 2014". The Disputed Domain Names were registered long before this date. Given that paragraph 4(a)(iii) of the Policy provides that the Complainant has to establish in respect of each of the Disputed Domain Names that it "has been registered and is being used in bad faith" [emphasis added], the question arises as to how this can be the case when the Respondent cannot have had the Complainant or its AXCELA trademark in mind?
The difficulty is expressly identified in WIPO Overview 2.0 which states in paragraph 3.1: "Can bad faith be found if the disputed domain name was registered before the trademark was registered or before unregistered trademark rights were acquired? Consensus view: Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date…when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right."
The Complainant addresses this issue by suggesting the approach of the panel in the Octogen Case. This approach is also identified in WIPO Overview 2.0 paragraph 3.1 as follows: "Furthermore: Irrespective of whether the domain name was registered before the relevant trademark was registered or acquired, a small number of panels have begun to consider the effect of the requirement of paragraph 2 of the UDRP, which states: 'By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that . . . (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights.' Some panels have regarded this as a warranty at the time of registration that the domain name will not be used in bad faith, finding that, by breaching such warranty, use in bad faith may render the registration in bad faith. Other panels have looked at the totality of the circumstances in assessing 'registration and use in bad faith,' as a unitary concept, given that some of the circumstances listed as evidence of bad faith registration and use in paragraph 4(b) of the UDRP appear to discuss only use and not registration. Still other panels that have considered these approaches have instead reaffirmed the 'literal' interpretation of bad faith registration and bad faith use regardless of paragraphs 2 or 4(b) of the UDRP. This is a developing area of UDRP jurisprudence."
As WIPO Overview 2.0 states, this is a developing area of jurisprudence. While the UDRP does not operate on a system of binding precedent, panels generally find it beneficial to adopt similar reasoning where permitted by case circumstances, so as to contribute to the overall predictability of the UDRP system, i.e., due deference should be given to previous panel decisions, especially where a consensus or considered view has emerged amongst a majority of panelists. The Panel believes it is fair to say that the majority of subsequent panels which have considered the issue now regard the approach adopted in the Octogen Case as being confined to a specific factual situation and not of general application. However some panels take a contrary view. See Xbridge Limited v. Marchex Sales, Inc.,WIPO Case No. D2010-2069 for a helpful exposition of the relevant views – a case in which by a majority a three member panel declined to adopt the Octogen Case approach, whilst the dissenting panelist expressed a contrary view.
However the Panel in the present case does not consider it necessary in the circumstances of this case to determine whether the Octogen Case approach should be followed. That approach relies upon a certain type of subsequent bad faith use as also indicative of bad faith registration; it also uses breaches of the registrant's representations and warranties in this regard to reinforce such a conclusion. In the present case the evidence does not in the Panel's view establish bad faith use or any breaches of the registrant's representations and warranties. The evidence filed by the Complainant when analyzed amounts to only two core allegations. The first allegation is that the Disputed Domain Names are being passively held and do not resolve to any content. That is self-evidently correct but on its own does not in the Panel's view indicate bad faith in respect of domain names which were registered before the Complainant's rights came into existence. While scores of UDRP decisions address passive holding in terms of satisfying the third element, in a case such as the present, such non-use cannot by itself (i.e., without other indicia of bad faith) amount to an attempt to capitalize on whatever reputation or fame the Complainant may have subsequently achieved in its trademark. The second allegation is that the Respondent has provided false contact details. The Complaint makes much of this and uses it to make entirely speculative allegations that the Respondent may at some stage in the future engage in phising, fraud or some other form of objectionable behaviour. The Panel is aware that attempting to prove that a party has provided false contact details involves proving a negative which is inherently difficult – nevertheless certain basic steps could be taken which would at least give rise to an inference that such was the case. That has not happened. All that the Panel knows is that the case file establishes that as at the present date no entity of the Respondent's name resides at the postal address that was provided when the Disputed Domain Names were registered. No evidence has been provided to assist the Panel in determining whether or not a company of the Respondent's name did then exist (or indeed whether it still exists now). A simple Internet search will show that the postal address given by the Respondent is a genuine postal address. It seems to the Panel to be entirely possible that a company of the name of the Respondent did exist at the address concerned but has moved, or ceased to exist, or has been taken over or changed its name. Taking all of this into account the Panel is not satisfied that the Respondent has provided false contact details. Accordingly the Panel is not satisfied that the Complainant has established bad faith use by the Respondent, nor that it has breached the representations and warranties it provided. In these circumstances the Panel does not need to consider whether or not questions of bad faith registration, as per the Octogen Case approach, should apply, nor whether a case can be made out by application of Policy paragraph 4(b)(iv).
Accordingly the third condition of paragraph 4(a) of the Policy has not been fulfilled. 7. Decision
For the foregoing reasons, the Complaint is denied.
Nick J. Gardner
Sole Panelist
Date: November 19, 2015
1 The Panel did not find it entirely straightforward to understand the status of the Disputed Domain Names in this regard. In different factual circumstances the Panel may have needed further information on such an issue in order to reach a conclusion. Here however the Panel's conclusion on wider issues (see below) means this is not necessary
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