The Complainant is IONBENCH, France, represented by Cabinet Guiu - Jurispatent, France.
The Respondent is Scott Ramscar, KRSS Ltd, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2020. On February 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 13, 2020, 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 February 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2020. On March 19, 2020, the Center received a request from the Complainant to suspend the proceeding to pursue a settlement with the Respondent. On March 19, 2020, the Center send out a Notification of Suspension, in accordance with the Rules, paragraph 17. Pursuant to a request from the Complainant, the Center reinstituted the proceeding on April 6, 2020. The Response was filed with the Center on April 6, 2020. The Center appointed Assen Alexiev as the sole panelist in this matter on April 9, 2020. 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 a manufacturer of mobile furniture and workstations for scientific instruments, especially such designed for mass spectrometers. The Complainant owns the following trademark registrations of the sign IONBENCH (the “IONBENCH trademark”): - the French trademark IONBENCH with registration No.174414564, registered on April 13, 2018 for goods in International Classes 9, 20, 37, and 42; - the European Union trademark IONBENCH with registration No.017913516, registered on February 2, 2019 for goods in International Classes 9, 20, 37 and 42; and - the International trademark IONBENCH with registration No.1427763, designating the United States of America, the United Kingdom, and China, registered on June 12, 2018 for goods in International Classes 9, 20, 37, and 42. The Complainant’s official website is located at the domain name The disputed domain name was registered on July 1, 2016. It redirects to the website at “www.ms-workstation.com”, where the Respondent offers mobile furniture and workstations for laboratories for sale. 5. Parties’ Contentions A. Complainant According to the Complainant, the disputed domain name is identical to the IONBENCH trademark, which it reproduces in full, the two words being separated by a hyphen. The Complainant adds that the disputed domain name is almost identical to the Complainant’s domain name The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It points out that the Respondent is not known by the disputed domain name, and it has never been licensed or otherwise authorized by the Complainant to use or apply for any domain name incorporating the IONBENCH trademark. The Complainant adds that the Respondent has not used or made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name attracts Internet users seeking to find the Complainant’s website and redirects them to the Respondent’s website at “www.ms-workstation.com”, which offers mobile furniture and workstation for laboratories, and especially for mass spectrometers, which products directly compete with those of the Complainant. The Complainant contends that the disputed domain name was registered and is being used in bad faith. According to the Complainant, when registering the disputed domain name, the Respondent could not have ignored the existence of the Complainant’s IONBENCH trademark, company name and business name, due to the very small numbers of specialists in this specific market, in which the Parties are direct competitors. The Respondent registered the disputed domain name to disrupt the business of the Complainant by diverting business from the Complainant’s website to the Respondent’s website. According to the Complainant, the fact that the disputed domain name was registered prior to the registration of the IONBENCH trademark is irrelevant, because the Respondent had knowledge that the Complainant’s trademark rights would soon arise through use or registration of the trademark by the Complainant. The Complainant notes that it has invested substantial sums of money in developing and marketing its products under the IONBENCH trademark in specialized professional reviews and has been doing business through its company name and through the domain name The Respondent states that in September 2017 it had a telephone conversation with a representative of the Complainant, in which the Respondent agreed to cancel the registration of the disputed domain name in return for the Complainant removing any references to “MS-Workstation” from the Complainant’s website, which advertises the Complainant’s products using this designation. According to the Respondent, MS-Workstation is a trademark within their industry in which the Respondent has acquired considerable goodwill. The Respondent points out that on December 20, 2017, the Complainant filed an application for the IONBENCH trademark already knowing that the Respondent owned the disputed domain name, and the Complainant’s website still refers to IONBENCH (TM) without any notice that the IONBENCH trademark has been registered. According to the Respondent, the Complainant has thus failed to provide adequate notice of its rights to the IONBENCH trademark. The Respondent further states that in the course of the present proceeding it agreed to transfer the registration of the disputed domain name to the Complainant on the condition that no infringement claim would be brought against the Respondent. The Respondent notes that it has the option not to submit a formal Response if it consents to the remedy being sought by the Complainant and agrees to either cancel or transfer the disputed domain name, and states that it is unsure what further step it is required to take at present other than those it has already taken. 6. Discussion and Findings Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name: (i) the disputed domain name is identical 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 respect of the disputed domain name; and (iii) the Respondent has registered and is using the disputed domain name in bad faith. A. Identical or Confusingly Similar The Complainant has provided evidence and has thus established its rights in the IONBENCH trademark. The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD of the disputed domain name. The relevant part of the disputed domain name is therefore the sequence “ion-bench”, which consists of the elements “ion” and “bench”, separated by a hyphen. These two elements reproduce the IONBENCH trademark in its entirety, and this trademark is clearly recognizable in the disputed domain name, regardless of the inclusion of a hyphen between the two word elements of it. Where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. See section 1.7 of the WIPO Overview 3.0. In view of the above, the Panel finds that the disputed domain name is confusingly similar to the IONBENCH trademark in which the Complainant has rights. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent has not been authorized by the Complainant to use the IONBENCH trademark and that the Respondent is not carrying out a bona fide use of the disputed domain name. According to the Complainant, the Respondent uses the disputed domain name to redirect visitors to its own website that offers products that are competitive to the products of the Complainant. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. In its informal Response, the Respondent does not dispute these contentions of the Complainant and does not explain why it has registered the disputed domain name. It states that in 2017 it engaged in negotiations with the Complainant offering to cancel the registration of the disputed domain name in exchange of the Complainant removing the references to “MS-Workstation”1 from the Complainant’s website. The Respondent also states that it now agrees to the transfer of the disputed domain name subject to the condition that the Complainant would undertake not to raise infringement claims against the Respondent. The disputed domain name is confusingly similar to the Complainant’s business name, to the IONBENCH brand, and to the Complainant’s domain name, and the latter has submitted evidence that it had started using them several years prior to the registration of the disputed domain name. The Respondent does not deny that it had knowledge of the Complainant when it registered the disputed domain name and does not offer products bearing the IONBENCH trademark. Internet users may be attracted by the disputed domain name in the mistaken belief that it refers to an official location of the Complainant where its IONBENCH products are offered for sale, but instead arrive at the Respondent’s website that offers products under other trademarks that compete with the Complainant’s IONBENCH products. In view of the above, it appears to the Panel that it is more likely than not that the Respondent, being aware of the goodwill of the Complainant and of its then still unregistered IONBENCH trademark, has registered and used the disputed domain name in an attempt to achieve a commercial advantage, be it the attraction of Internet users to the Respondent’s website that offers products that compete with the Complainant’s products, or the forcing of the Complainant to make changes to its marketing policy. To the Panel, such conduct does not appear to be fair or giving rise to rights or legitimate interests of the Respondent in the disputed domain name. Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” As discussed above, the disputed domain name is confusingly similar to the Complainant’s business name and to its IONBENCH trademark and domain name, and was registered several years after the Complainant started using them. This similarity may attract Internet users looking for the Complainant’s IONBENCH products to the disputed domain name, which will lead them to the Respondent’s website and offered competing products. The disputed domain name was registered prior to the registration of the IONBENCH trademark. Normally, where a respondent registers a domain name before the complainant’s trademark rights accrue, this would preclude the finding of bad faith registration on the part of the respondent. However, as discussed in section 3.8.2 of the WIPO Overview 3.0, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith. This Panel accepts that the facts of the present dispute indeed support such a finding. In its informal Response, the Respondent, whilst not denying that it had knowledge of the Complainant when it registered the disputed domain name and that the Parties are competitors in what appears to be a small niche market, asserts that in 2017 it offered to cancel the registration of the disputed domain name if the Complainant agreed to modify its website to remove references to a term in which the Respondent now claims having certain unsubstantiated rights. The Respondent has not brought to the Panel’s attention any justification of its choice of the disputed domain name. These circumstances satisfy the Panel that it is more likely than not that the Respondent had knowledge of the Complainant when it registered the disputed domain name, and that its registration and use were made either with the purpose of disrupting the business of the Complainant as competitor to the Respondent, or in an intentional attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s IONBENCH trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the product offered for sale on it. Therefore, the Panel finds that the disputed domain name was registered and used in bad faith. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name Assen Alexiev 1 The Respondent alleges to have rights in this designation, but does not provide any evidence in this regard, and it appears as an abbreviation of “mass spectrometer workstation”. The Panel notes that this issue is in any case beyond the scope of the present dispute under the Policy.
Sole Panelist
Date: April 27, 2020
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