The Complainant is Unilabs SA of Geneva, Switzerland, represented by Ports Group AB, Sweden.
The Respondent is Gregg Ostrick, GNO, Inc. of Steele, Alabama, United States of America (“United States”), represented by John Berryhill, Ph.d., Esq., United States. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 13, 2017, 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 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 April 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 14, 2017. On May 12, 2017, the Respondent filed a request for an additional four calendar days to file the Response. In accordance with paragraph 5(b) of the Rules, the Center granted the extension of time. The Response was filed timely with the Center.
The Center appointed Steven A. Maier, Jacques de Werra and Adam Taylor as panelists in this matter on June 14, 2017. The Panel finds that it was properly constituted. Each member of 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 a limited liability company headquartered in Geneva, Switzerland. It is a medical diagnostic company with a presence principally in Europe.
The Complainant is the proprietor of the following trademark registrations:
- Switzerland trademark number P-513796 for a combined mark including a device and the words “Bio check up CONCERNED BY YOUR HEALTH”, registered on August 27, 2003 in Classes 35, 42 and 44;
- International trademark number 816486 for a combined mark including a device and the words “Bio check up CONCERNED BY YOUR HEALTH”, registered on December 23, 2003 in Classes 35, 42 and 44 and designating Germany, Spain, France, Italy, Monaco and the Russian Federation;
- European Union Trade Mark number 009855727 for a combined trademark including the words “BioCheck Up” registered on March 27, 2013 with a filing date of March 31, 2011 in Class 44;
- France trademark number 4035524 for a combined trademark including the words “BioCheck Up” registered on August 1, 2014 with a filing date of March 31, 2011 in Class 44;
- Switzerland trademark number 618595 for a combined trademark including the words “BioCheck Up” registered on August 22, 2011 with a filing date of February 28, 2011 in Classes 35, 41, 42 and 44.
The disputed domain name was registered on June 24, 2006.
The Complainant has submitted evidence by way of a screen shot dated March 7, 2017 that the disputed domain name has resolved to a website offering links to services including “Medical Check Up” and stating that the disputed domain name was for sale. 5. Parties’ Contentions A. Complainant
The Complainant states that it has operated since 1987 and has extensive coverage in Europe as well as operating laboratories in Peru and Dubai. It states that it employs more than 5,300 individuals including 300 medical doctors and that it integrates a wide range of services including laboratory medicine, imaging and drug development services. The Complainant states that it services customers including public and private healthcare providers, insurance companies and the pharmaceutical industry as well as the general public.
The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant refers to the trademark registrations set out above and contends that the Complainant has registered rights in respect of the terms “Bio check up” and “BioCheck Up”. The Complainant contends that the disputed domain name is effectively identical to these terms.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that the Respondent has no rights in any trademark BIOCHECKUP, that the Respondent is not a licensee of the Complainant and that the Complainant has not authorized the Respondent to use its trademarks for the purpose of the disputed domain name. The Complainant denies that the Respondent has been commonly known by the disputed domain name or that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name. The Complainant refers to the screen shot dated March 7, 2017 and submits that the Respondent’s website includes only advertising and links to competing businesses, which do not evidence any rights or legitimate interests in the disputed domain name.
The Complainant submits that the disputed domain name has been registered and is being used in bad faith. The Complainant contends that the Complainant had been “well exposed” under the terms “Bio check up” and “BioCheck Up”, both through its own marketing channels and through its partners in the healthcare industry, for many years prior to the registration of the disputed domain name. The Complainant contends that it is “therefore obvious” that the Respondent registered the disputed domain name in the knowledge of the Complainant’s trademark rights.
The Complainant submits that the Respondent’s prior knowledge of the Complainant’s trademark rights is also obvious from the Respondent’s use of the disputed domain name for the website described above. The Complainant contends that the Respondent registered the disputed domain name to prevent the Complainant from reflecting its trademark in a corresponding domain name and that the Respondent registered and has used the disputed domain name with the intention of obtaining an offer from the Complainant to purchase the disputed domain name.
The Complainant further alleges that the Respondent’s website has intentionally advertised activities that can be confused with the Complainant’s main practice areas, which creates a risk of confusion with the Complainant’s trademarks.
The Complainant produces evidence of a “cease and desist” letter to the Respondent dated March 7, 2017 and states that the Respondent failed to transfer the disputed domain name to it in response to that letter. The Complainant also alleges that that Respondent altered its website in response to the “cease and desist” letter, which it relies on as further evidence of bad faith. The Complainant exhibits a screen shot dated April 7, 2017 which contains links that no longer include “Medical Check Up” or any similar service.
The Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent submits that the disputed domain name comprises a non-distinctive combination of two common terms, “bio” and “checkup”, which the Respondent registered in 2006 and has legitimately used for keyword advertising relating to those two terms.
With regard to the Complainant’s trademark rights, the Respondent submits that the Complainant has failed to provide any particulars of any commercial activity, reputation or customer recognition relating to its marks. The Respondent also submits evidence that the Complainant attempted to register a United States trademark similar to its “BioCheck Up” trademarks referred to above, but subsequently abandoned that application.
The Respondent further contends that all of the Complainant’s registered trademarks contain a figurative element and that the term “biocheckup” amounts to a relatively small component of those marks, and in particular the Complainant’s 2003 trademarks. The Respondent denies in the circumstances that the disputed domain name resembles the Complainant’s trademarks.
Concerning rights or legitimate interests, the Respondent contends that the disputed domain name comprises two descriptive terms which are suggestive of checking biological functions. The Respondent argues that elements of the disputed domain name including “biocheck” and “bio checkup” are commonplace and he exhibits multiple examples of the use of these term by other parties. The Respondent submits, therefore, that none of the terms “bio”, “check” or “up”, or those terms in combination, are uniquely or distinctively associated with the Complainant.
The Respondent submits that he (or his organization) is a well-known registrant of combinations of common and descriptive words and phrases. He refers to other of his domain name registrations which have been unsuccessfully challenged under the UDRP, including and . The Respondent also cites the decision in Larry S. Nichter, M.D. & Another v. Domain Administrator/Thought Convergence, Inc., NAF Case No. FA1611001702547, denying a claim concerning the domain name .
The Respondent submits that his use of the disputed domain name for over ten years without objection from the Complainant also undermines the Complainant’s claim that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
On the question of bad faith, the Respondent submits that, prior to being made aware of the Complainant’s claim, he had never heard of the Complainant and had no duty to have been aware of the Complainant’s 2003 trademarks.
The Respondent contends that a registrant is free to register domain names comprising common terms on a first-come, first-served basis and that the use of such domain names for the purpose of revenue generating pay-per-click websites is not of itself unlawful.
The Respondent repeats his submission that the term “biocheckup” represents only a small proportion of the Complainant’s 2003 trademarks, which were the only trademarks to predate the registration of the disputed domain name, and that the disputed domain name does not resemble the Complainant’s figurative trademarks. The Respondent also restates that the Complainant failed to obtain a corresponding trademark registration in the United States, which the Respondent refers to as the “mutual jurisdiction” for the purposes of this proceeding.
The Respondent repeats his submission that the disputed domain name comprises a combination of descriptive terms which was not informed by the Complainant’s 2003 registrations. The Respondent states that he is the registrant of numerous other descriptive domain names that include the term “bio” such as , and . The Respondent contends that the term “bio” indicates “biological” and is descriptive of living systems and that the term “checkup” is descriptive of monitoring or testing relating to such living systems.
The Respondent takes issue with the Complainant’s allegations concerning his alleged advertising of “competing businesses”. The Respondent submits that the Complainant relies solely on the term “Medical Check Up” which appears on the screen shot dated March 7, 2017, but that the Complainant fails to identify any such competing business or to describe its own relevant products or services. The Respondent contends that there is a profusion of online activities relating to medical check ups and that the use of the disputed domain name for this purpose is not suggestive of the Complainant or its services.
The Respondent also denies that its use of the disputed domain name has caused any customer confusion or that the Complainant has produced any relevant evidence in that regard.
The Respondent denies that his rejection of the Complainant’s “cease and desist” letter is evidence of bad faith and submits that the Complainant has failed to exhibit the Respondent’s representative’s reply to that letter dated April 11, 2017 denying the Complainant’s claim, which the Respondent himself exhibits. The Respondent states that he did alter the keyword settings on the relevant website after receipt of the Complainant’s “cease and desist” letter, but submits that he did so in order to avoid the possibility of “keyword spiking” in order to make the website appear incriminating. 6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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. A. Identical or Confusingly Similar
The Complainant has established that it has registered trademark rights in the figurative or combined trademarks referred to above, all of which registrations include the terms “Bio check up” or “BioCheck Up”. While these terms form only part of the overall trademark registration in each case, the Panel finds them to be significant elements nonetheless and clearly sufficient to satisfy the threshold test contemplated by paragraph 4(a)(i) of the Policy when compared to the disputed domain name. The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Panel finds that the disputed domain name is descriptive in nature and comprised of the dictionary terms “bio”, “check” and “up” or “checkup”. A registrant may legitimately register a descriptive domain name in circumstances where the registrant is not targeting or seeking to take unfair advantage of a complainant’s trademark rights. A registrant may also legitimately use such a domain name for the purpose of a revenue generating pay-per-click website corresponding with the descriptive nature of the domain name, again in circumstances where it is not seeking to target or take unfair advantage of the goodwill attaching to a complainant’s trademark.
In this case, the Complainant submits that the Respondent must have registered the disputed domain name with the Complainant’s trademarks in mind and that the Respondent has used the disputed domain name in bad faith to confuse Internet users and/or to solicit an offer from the Complainant to purchase the disputed domain name. The Complainant submits in this regard that it had used the terms “Bio check up” and “BioCheck Up” for many years prior to the Respondent’s registration of the disputed domain name and that it was “well exposed” as the owner of those marks.
However, at the date of registration of the disputed domain name in 2006, the Complainant was the owner only of the trademarks that had been registered in 2003 in a limited number of territories, not including the United States. Those trademarks were figurative or combined in nature and included a device and the words “concerned by your health” in addition to the term “Bio check up”. The Complainant has produced little or no evidence of the reputation of its trademarks as of 2006 (and no evidence at all specific to the United States) and the Panel is not persuaded that the descriptive term “biocheckup” can only have referred to the Complainant’s trademarks at that time, or that the Respondent knew or ought to have known of the Complainant’s trademark rights.
In the view of the Panel, therefore, the disputed domain name is descriptive in nature and Complainant has not discharged the burden of proving on balance that the Respondent registered the disputed domain name with the Complainant’s trademarks in mind and with the intention of targeting or taking unfair advantage of the Complainant’s trademark rights. In the circumstances, the Complainant has not established that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Given that the three elements under paragraph 4(a) of the Policy are cumulative, and given that the Complainant has failed to establish that the Respondent had no rights or legitimate interests in respect of the disputed domain name, there is no technical need for the Panel to assess whether the Respondent registered and has used the disputed domain name in bad faith. However, in view of the Parties’ submissions, the Panel makes the following brief observations on the third element.
Similar considerations to those above apply in assessing whether or not the disputed domain name was registered and has been used in bad faith. Once again, the Complainant has not demonstrated to the satisfaction of the Panel that the Respondent knew or ought to have known of the Complainant’s trademark rights at the date of registration of the disputed domain name and that he registered the disputed domain name with the intention of taking unfair advantage of the Complainant’s rights.
With regard to the use of the disputed domain name for a pay-per-click website which linked to services including “Medical Check Up”, the Panel finds that this was a predictable name for a link corresponding to the descriptive nature of the disputed domain name and that the Complainant has failed to establish that this was deliberately intended to cause confusion with the Complainant and its services.
As to the fact that the disputed domain name was offered for sale, the mere fact of offering a descriptive domain name for sale is not of itself indicative of bad faith and the Panel finds no evidence that the Respondent intended to solicit a sale of the disputed domain name specifically to the Complainant or to a competitor of the Complainant.
Nor does the Panel consider that the Respondent acted in bad faith in response to the Complainant’s “cease and desist” letter. The Respondent did not ignore that letter, but replied to it denying the Complainant’s claim. While the Respondent admits to having then changed the relevant pay-per-click settings on his website, the Panel views this as a neutral point in response to the Complainant’s letter and not as one that indicates culpability on the part of the Respondent.
In the circumstances, the Panel finds that the Complainant has failed to establish that the disputed domain name has been registered and is being used in bad faith. 7. Decision
For the foregoing reasons, the Complaint is denied.
Steven A. Maier
Presiding Panelist
Jacques de Werra
Panelist
Adam Taylor
Panelist
Date: June 26, 2017
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