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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ABX SA v. ABX.COM
Case No. D2000-0877
1. The Parties
The Complainant in this administrative proceeding is ABX SA, with its registered office at Parc Euromйdecine, Rue du Caducйe, 34000 Montpellier, France, represented by Virginie Ulmann and Tania Kern, attorneys for Baker & McKenzie – Paris, with offices at 32, avenue Klйber, 75116 Paris, France, hereinafter the "Complainant".
Respondent is ABX.COM, 900 Highland Av., Johnstown, PA 15902-2848, United States, hereinafter the "Respondent".
2. Domain Name and Registrar
The domain name at issue is "abx.com", registered on February 26, 1999, hereinafter referred to as the "Domain Name". The registrar is Network Solutions.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complainant’s complaint on July 26, 2000 (electronic version) and July 28, 2000 (hard copy). The Center verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainant made the required payment to the Center. The formal date of the commencement of this administrative proceeding is August 22, 2000.
On July 30, 2000, the Center transmitted via email to Network Solutions a request for registrar verification in connection with this case. On August 3, 2000, Network Solutions transmitted via email to the Center its verification response, confirming that the registrant is ABX.COM, that the administrative and billing contact is ABX.COM domain name – Mr. James M. Van Johns and that the technical and zone contact is DNS Administration – "Infa dot Net" Web Services.
Having verified that the complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on August 22, 2000, to the Respondent and to Network Solutions, Notification of Complaint and Commencement of the Administrative Proceeding, via post/courier, fax and e-mail, in accordance with the following contact details:
900 Highland Av.
Johnstown, PA 15902-2848
"Infa dot Net" Web Services
PO Box 221
Fayette City, PA 15438-0221
Fax: +1 (412) 666-0646
The Center advised that the response was due by September 10, 2000. However, no response was submitted and consequently, the Center issued a Notification of Respondent Default on September 18, 2000.
In view of the Complainant’s designation of a single panelist, the Center invited Mr. Geert Glas to serve as a panelist.
Having received Mr. Geert Glas’ Statement of Acceptance and Declaration of Impartiality and Independence on October 17, 2000, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Geert Glas was formally appointed as the Sole Panelist, on October 19, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
The Administrative Panel shall issue its Decision based on the complaint, the evidence presented, the Policy, the Rules and the Supplemental Rules.
4. Factual Background
According to the information provided by Complainant, Complainant was initially created in 1983. Its activities are in the manufacturing and selling of technical and scientific instruments in the hematology field. Complainant conceives, develops, manufactures and sells blood cell counters and reagents. Complainant is a well known company and is one of the leaders in the field of hematology. Its products are distributed in more than 25 countries.
Complainant’s products are presented on its web site http://www.abx.fr. Complainant has agencies all around the world including an affiliate in the United States which is ABX Diagnostics Inc. ABX Diagnostics Inc was incorporated in July 19, 1997. Over 2.800 American laboratories are now equipped with ABX's instruments.
Complainant is the owner of numerous trademark registrations for the trademark "ABX", registered as a word mark or as a semi-figurative mark in various countries. Copies of those registrations are attached to the complaint. These are, among others:
- The French word mark ABX, filed on November 28, 1984, under number 1306625, with the French National Institute of Industrial Property, for the classes 9 and 10;
- The United States trademark ABX MICROS, filed on June 26, 1997, under number 75/330347, with the United States Patent and Trademark Office (the "USPTO"), for the class 10;
- The United States trademark ABX MILIOS, filed on April 8, 1998, under number 75/466254, with the USPTO, for the class 10; and
- The United States trademark ABX PENTRA, filed on July 20, 1998, under number 74/521650, with the USPTO, for the class 10.
On June 13, 2000, Complainant's attorney sent Respondent a cease and desist letter regarding Respondent's registration and use of the Domain Name and made an offer to purchase it for US$ 3,000.00. This letter was sent by FedEx, which confirmed that the delivery of the letter to Mr. James M Van Johns had occurred on June 15, 2000 at 10:10 am.
Complainant’s attorney tried to send the letter by fax on June 14, 2000, without success, and also tried to send e-mails to Respondent’s e-mail address mentioned in the WHOIS database.
The Panel has no knowledge of any response to the cease and desist letter.
There is no relation between Respondent and Complainant, and Respondent is not a licensee of Complainant, nor has he otherwise obtained an authorization to use Complainant’s trademarks.
It appears from annexes to the Complaint that the Domain Name resolves to an "under construction" web page, which contains a link to another page on which the Domain Name is offered for sale. More recently, this link to the page on which the Domain Name is offered for sale seems to have been deleted. The Domain Name now only resolves to an "under construction" web page.
5. Parties Contentions
Complainant contends that Respondent registered the Domain Name which is identical to the trademarks and service marks in which the Complainant has rights.
Complainant also alleges that Respondent should be considered as having no rights or legitimate interests in respect of the Domain Name that is the subject of the Complaint because:
- there is no ABX company at the address mentioned on the WHOIS database;
- there is no United States trademark registration for ABX in the name of ABX.COM or Mr. James M. Van Johns;
- there exists no relationship between Complainant and Registrant which would give rise to any license, permission or other right by which Registrant could own any domain name incorporating Complainant’s ABX mark; and
Respondent wants to sell the Domain Name.
Finally, Complainant sustains that Respondent registered and used the Domain Name in bad faith for the following reasons:
- The Domain Name resolves to an "under construction" web page, which contains a link to a web page where the Domain Name is advertised for sale, at least since March 17, 2000, and still on July 26, 2000;
- Respondent is identified as ABX.COM, i.e., the domain name itself. Respondent is likely to have registered many domain names in order to sell them because the administrative contact is identified as "ABX.COM domain name, James M. van Johns". The fact that the domain name in question must be indicated before the name of the administrative contact, implies that the administrative contact acts as such for several domain names.
- The e-mail address of the administrative contact is email@example.com. Domainage.com is a domain name which is the property of Infa Do Net. Domainage seems to be dedicated to the sale of registered domain names. According to Domainage, fair prices to buy domain names are between USD 7,500.00 and 50,000.00.
- On June 13, 2000, Complainant's attorney sent Respondent a cease and desist letter regarding Respondent's registration and use of the domain name "abx.com" and made an offer to purchase the name for US$ 3,000.00 in order to reach an amicable resolution to the dispute. The letter was send by registered mail, by fax and also be email. Respondent's continued to offer for sale the domain name after having received notice from Complaint of its rights on the marks "abx" and failed to respond to Complainant's counsel.
- The above circumstances indicate that the domain name was registered or acquired primarily for the purpose of selling or renting it to Complainant or to a competitor of Complainant, for valuable consideration in excess of the domain name registrant’s out-of-pocket costs directly related to the domain name, thus satisfying the evidence requirements to establish bad faith registration and use.
Consequently, Complainant requires the transfer of the Domain Name registration.
No response has been submitted.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Administrative Panel as to the principles the Administrative Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
(2) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and,
(3) that the Domain Name has been registered and is being used in bad faith.
The Domain Name is "abx.com".
"ABX" is a registered trademark of Complainant.
In view of the above, the Administrative Panel finds that the Domain Name is identical to the trademark of Complainant.
(2) Rights or Legitimate Interests
Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to apply for any domain name incorporating any of those marks, nor has he ever been known by this name.
By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4c of the Policy, any rights or legitimate interests in the Domain Name.
The Administrative Panel therefore finds that Respondent has no legitimate right or interest in the Domain Name.
3) Registration and Use in Bad Faith
Several facts have to be taken into consideration when assessing the absence/presence of bad faith in this matter:
(a) "ABX" is a registered trademark of Complainant.
(b) The Domain Name resolves to an "under construction" web page. The evidence submitted by Complainant shows that at a certain time, a link was placed on this page resolving to a web page offering the Domain Name for sale.
(c) No Response has been submitted.
(d) Respondent identified itself as "abx.com" when registering the Domain Name.
There does however not seem to be any such company or any company using such trade name at the address provided by Respondent.
(e) The administrative contact for Respondent provided when registering the
Domain Name (firstname.lastname@example.org) is a company specialised in the sale of Domain Name.
The Panel finds that circumstances are present indicating that Respondent has registered or acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring it, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name.
In addition, by not submitting a response, Respondent has failed to invoke any circumstances which could demonstrate that it did neither register, nor used the Domain Name in bad faith.
In conclusion and in view of the above, it is the Panel’s opinion that Respondent registered and used the Domain Name in bad faith.
In light of the foregoing, the Administrative Panel decides that the Domain Name "abx.com" registered by Respondent is identical to the trademark of Complainant, that Respondent has no right or legitimate interest in respect of the Domain Name, and that Respondent registered and used the Domain Name in bad faith.
Accordingly, pursuant to Paragraph 4, i of the Policy, the Administrative Panel requires that the registration of the Domain Name "abx.com" be transferred to Complainant.
Dated: November 1, 2000