LeitsätzlichesWer eine Domain registriert, kann sich nach Ansicht der Schiedsrichter nicht darauf stützen, dass lediglich in seinem eigenen Staat keine Markeneintragung vorliegt. Dies gilt besonders, wenn ein in den USA lebender Journalist eine mit einer europäischen Marke eines Pharmazie-Unternehmens registriert mit der Angabe, er habe über die Auswirkungen solcher Produkte demnächst berichten wollen.
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fall Nummer: D2002-0980
Entscheidung vom 11. Dezember 2002
1. The Parties
The Complainant in this administrative proceeding is L.B. INTERNATIONAL ..., France. The Respondent in this administrative proceeding is Mr. J.N.H. ..., United States of America.
2. The Domain Names and Registrar
Registrar: Verisign, Inc
3. Procedural History
This is a mandatory administrative proceeding submitted for decision in accordance with the Uniform Domain Name Dispute Resolution Policy, (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, (the "Rules") and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
The Complaint was received by WIPO by email on October 11, 2002, and in hard copy form on October 22, 2002. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
Verisign, Inc has confirmed that the domain names <testogel.com> and <testogel.net> ("the Domain Names") were registered through Verisign, Inc and that Mr James N Hanks is the current registrant. Verisign, Inc has further confirmed that the Policy is applicable to the Domain Names.
The Panel is of the view that all the domain names the subject of the Complaint ought sensibly to be dealt with together. However, it cannot be. The agreement between CentralNic and the Respondent, which was in force at the date of the Complaint, does not incorporate the Policy. The agreement currently in force refers to the Policy, but insofar as the Policy is concerned only permits CentralNic to cancel or suspend the registration of a domain name. It does not seem to permit CentralNic to transfer a domain name. The Complaint only seeks transfer of the â€˜.uk.comâ€™ domain names. More fundamentally, in the context of the Policy, the new agreement only permits action adverse to the Respondent in circumstances where " ... following [the Policy] the name has been judged to infringe the trademark or other intellectual property of the complainant." That is not a finding, which a Panel is required to make under the Policy.Reluctantly, the Panel concludes that it does not have jurisdiction to hear this Complaint insofar as it concerns the â€˜.uk.comâ€™ domain names.On October 31, 2002, WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending his Response to the Complainant and to WIPO was November 20, 2002.
The Response was received by WIPO on November 19, 2002.
The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panelâ€™s Decision is December 12, 2002.
4. Factual Background
The Complainant is a French pharmaceutical company. It is the proprietor of various trade mark registrations for the word TESTOGEL including a French registration dating back to April 30, 1970, in Class 5 for "pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use; food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants".
The Complainant has no trade mark registrations in the United States. The Complaint contains no details of any use made of the trademark by the Complainant.
The Respondent is a freelance writer based in San Francisco, United States. He registered the Domain Names on April 12, 2000.
5. Partiesâ€™ Contentions
The Complainant contends that the Domain Names, absent the generic domain suffixes, are each identical to the Complainantâ€™s trademark TESTOGEL.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Complainant has undertaken various trademark searches and can find no trace of any registration of the mark TESTOGEL in the name of the Respondent. The Complainant points out that there is no website connected to either of the Domain Names. The Complainant contends that none of the circumstances set out in paragraph 4(c) of the Policy apply.
The Complainant contends that the Domain Names were registered in bad faith and are being used in bad faith within the meaning of paragraph 4(b)(i) of the Policy. The Complainant refers to the fact that in correspondence the Respondent offered to sell the Domain Names to the Complainant for varying sums ranging from, at the outset, US$250,000 down to, more recently, US$40,000.
The Respondent contends that the Complainant has no relevant trade mark rights. The Respondent contends that for the Complainant to get off first base the Complainant has to have a trade mark registration in the United States, which the Respondent identifies as "the country of registration".
The Respondent asserts that the Complainant could not have acquired any relevant rights in the name TESTOGEL such as to defeat the Respondentâ€™s registration of the Domain Names because it was not until July 2002 (over two years after registration of the Domain Names), that the Complainant first announced its intention to introduce a product under the name TESTOGEL.
The Respondent claims that he has significant rights and legitimate interests in respect of the Domain Names. His reason for registering the Domain Names is set out on page 5 of the Complaint as follows:
"Shortly before registering his domains, the Respondent heard of people in the HIV community that were undergoing hormone replacement therapy through transdermal patches to combat cachexia, fatigue, and other AIDS-related symptoms. Through various delivery methods (cremes, patches, gels, injections, etc.), testosterone is often prescribed to combat these problems.
With the idea of addressing certain topics brought up by hormone replacement, the Respondent, who works as a freelance writer, conceived a short film about testosterone therapy. After drafting up a screenplay, the Respondent had numerous conversations in San Francisco with a friend, neighbor, and AIDS filmmaker, Thomas E. Brown, about directing this film. During these meetings, the Respondent discussed plot structure and filming techniques with Mr. Brown. The Respondent and Mr. Brown thought this film to be an interesting (and hopefully oddly humorous) way to discuss how testosterone replacement therapy affects men in the HIV community. After these conversations, the Respondent registered the domains, <testogel.com> and <testogel.net> to be used for future marketing purposes."
The Respondent says that the Domain Names are not connected to websites because the film has not yet been made. The Respondent anticipates that the film will be shot in early 2003.
The Respondent states that when registering the Domain Names he did not know and had no reason to know of the Complainantâ€™s trademarks. Accordingly, when registering the Domain Names, he could not have had the Complainant in mind. Specifically, contrary to what is asserted by the Complainant, he did not register the Domain Names with the intention of selling them to the Complainant. As to the allegation that he offered to sell the Domain Names to the Complainant, he points out that the â€˜offersâ€™ were made in response to approaches from the Complainant. The reason he put a high figure on the names was that he had no desire to sell them. He has since had second thoughts and appreciates that this could be a way of making money to fund the film, but he is adamant that this was something that never entered his mind until after he had been approached by the Complainant.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
Identical or confusingly similar
The Domain Names, absent the generic domain suffixes, are identical to the Complainantâ€™s French trademark. The Respondent asserts that for the Complainant to succeed, the registration has to be in the United States which he identifies as "the country of registration" in relation to the Domain Names. Paragraph 4(a)(i) of the Policy does not call for any particular jurisdiction. For the purposes of this sub-paragraph of the Policy, all that the Complainant has to do is to prove the existence of a trademark in which the Complainant has rights. This the Complainant has done.
The Panel finds that the Domain Names are identical to a trademark in which the Complainant has rights.
Rights or Legitimate Interests
In light of the Panelâ€™s finding in respect of Bad Faith, there is no need for the Panel to go into this particular element of the Policy in any great detail.
The Panel simply observes that in circumstances where a Complainant has demonstrated rights in respect of a name or mark and has conducted sufficient searches which throw up no obvious good reason for the registrant to have registered the domain name in question, the registrant must, if he is going to rely upon the fact that he has made demonstrable preparations to use the name within the meaning of paragraph 4(c)(i) of the Policy, produce solid evidence to demonstrate what he claims is demonstrable.
For a bad faith claim under the Policy to succeed, the Respondent must, ordinarily, at the very least, have had the Complainant or the Complainantâ€™s trade/service mark in mind. All the examples of what may constitute bad faith, which are set out in paragraph 4(b) of the Policy, involve the Respondent targeting the Complainant or the Complainantâ€™s goodwill in some way.
The reason given by the Respondent for having registered the Domain Names is that the name TESTOGEL is a combination of an abbreviation of testosterone and the word gel, gel being a common delivery method for testosterone in hormone replacement therapy. The name TESTOGEL was to be and is still to be the name of a short film that he is proposing to make concerning testosterone replacement therapy.
The Panel sees no reason to doubt that explanation. In any event, the Complainant has come forward with nothing to show why a freelance writer in San Francisco should have been aware of the existence of the Complainantâ€™s trademark at the time of registration of the Domain Names. It appears that at that date the Complainant had not made any use of the trademark. The Panel sees no reason to doubt the Respondentâ€™s assertion that he was completely unaware of the Complainant at the time of registration of the Domain Names.
The fact that in correspondence with the Complainant the Respondent indicated that he was willing to sell the Domain Names for a large sum of money is not of itself evidence of any bad faith intention at the time of registration of the Domain Names. It is consistent with the Respondentâ€™s position that he was not prepared to part with the Domain Names, names which he regarded as being of a value wholly independent of the Complainantâ€™s trade mark, save for a large sum of money.
The Panel finds that the Complainant has failed to prove that the Domain Names were registered in bad faith and are being used in bad faith.
The Complaint is dismissed.