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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cepheid Corporation v. Healthexpert LLC and John Johnson
Case No. D2001-1272
1. The Parties
The Complainant is Cepheid Corporation, a corporation organized and existing under the laws of the State of California, United States of America, having its principal place of business at 1190 Borregas Avenue, Sunnyvale, California, United States of America.
The Respondents are Healthexpert LLC, a United States Company, and John Johnson, its Chief Executive Officer, both having a business address at 4710 Burbank Drive, Columbus, Ohio, United States of America (hereinafter collectively referred to as the "Respondent").
2. The Domain Name and Registrar
The domain name at issue is <genexpert.com>, which is registered with GKG.Net, Inc., based in College Station, Texas, United States of America ("GKG.Net").
3. Procedural History
A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on October 31, 2001. This followed the following events
a. The receipt of the signed original together with four copies forwarded by express courier, which was received by the WIPO Center on October 19, 2001.
b. An Acknowledgment of Receipt that was sent by the WIPO Center to the Complainant, dated October 24, 2001.
c. The WIPO Center transmission of a Notification of Deficiency to the Complainant on October 31, 2001, notifying the Complainant that the Center had not yet received the Complaint in Electronic format.
On October 26, 2001, a Request for Registrar Verification was transmitted to the registrar, GKG.Net, requesting it among other things to: (1) confirm that the domain name at issue is registered with GKG.Net; (2) confirm that the person identified as the Respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar’s Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain name.
On October 26, 2001, GKG.Net confirmed by reply e-mail that the domain name at issue is registered with GKG.Net, is currently in active status, and that the Respondent is the current registrant of the name. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Uniform Rules, and the Supplemental Rules. The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
No formal deficiencies having been recorded, on November 1, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, GKG and ICANN), setting a deadline of November 21, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by courier and by e-mail to the e-mail addresses indicated in the Complaint. In any event, evidence of proper notice is provided by the evidence in the record of the Respondent’s participation in these proceedings.
A Response was received on November 21, 2000. An Acknowledgment of Receipt (Response) was sent by the WIPO Center on November 22, 2001.
On December 4, 2001, having received M. Scott Donahey’s Statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which M. Scott Donahey was formally appointed as the Sole Panelist. The Projected Decision Date was December 15, 2001. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the WIPO Supplemental Rules.
4. Factual Background
Complainant has applied for registration of the trademark GENEXPERT with the United States Patent and Trademark Office ("USPTO") in connection with a device for DNA bioanalysis. The trademark application was filed on August 5, 1999, as an "intent to use" application, and the pending application shows a first use in commerce on April 27, 2001. The application has been allowed, but no registration has yet issued (Complaint, Annex C). Complainant contends that this application puts Respondent on constructive notice of Complainant's rights in the trademark GENEXPERT.
Complainant has also applied in numerous other countries for registration of the trademark GENEXPERT (Complaint, Annex D).
Complainant asserts that the mark is comprised of a contrived term and is entitled to broad protection. Complainant also asserts, but produces no evidence in support of such assertion, that the name has acquired secondary meaning.
Respondent registered the domain name at issue on January 26, 2000 (Response, Annex iii). Respondent has registered at least two other domain names: <healthxpert.com> on December 15, 1998, and <medicinexpert.com> on March 1, 1999 (Response, Annexes i and ii). Respondent contends that just as "medicinexpert" and "healthxpert" are the combinations of "expert" with another word, "genexpert" is the combination of "gene" and "expert."
The domain name at issue resolves to a web site that is "under construction." The web site is identified as "HealthXpert LLC, Bringing affordable and quality healthcare to all people."
Respondent states that the company has planned an online presence since it registered the first of the three domain names in December, 1998. Respondent described the nature of the proposed business as the provision of "free information and resources to all individuals about pharmaceuticals and genetics/biotechnology." Respondent indicated that the prospective launch date of the business was April 2002.
Complainant sent Respondent a letter by certified mail and a follow up email and voice mail, asserting Complainant's rights in the mark and demanding that Complainant surrender the domain name at issue. Respondent did not respond to these communications.
Complainant had a third party contact Respondent and offer to purchase the domain name at issue for an amount of money comparable to the estimated out-of-pocket expenses of Respondent. According to Complainant, Respondent said that the amount offered was unacceptable in light of another offer of $10,000 for the domain name that had been received.
Respondent acknowledged having received offers of $500 and $10,000 for the domain name at issue, but that Respondent had no interest in selling the domain name.
5. Parties’ Contentions
Complainant contends that Respondent has registered a domain name which is identical or substantially similar to the trademark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
Respondent contends that it has rights and legitimate interests in respect of the domain name, namely to provide current and free news and information to users in the area of medicine and genetics, that Complainant's alleged mark is merely generic, and that Respondent has registered and is using the domain name at issue in good faith, and that Complainant is engaging in reverse domain name hijacking.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the 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." Since the Complainant, Respondent, and Registrar are all domiciled in the United States, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
1) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
2) that 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 at issue is identical to the trademark claimed by Complainant. (See Credit Management Solutions, Inc. v. Collex Resource Management, WIPO Case No. D2000-0029 - the addition of the .com generic Top Level Domain suffix is irrelevant to a similarity determination.)
However, this does not entirely address the first prong of the three prongs that Complainant must establish. The question remains: what rights does Complainant have in the trademark, and when did those rights arise? Complainant asserts that the trademark is a "contrived term and is, therefore, inherently distinctive and entitled to broad protection." This is an oblique application of the common law of the United States, since in most civil law countries trademark rights arise from registration and not use. The Panel believes that the application of United States law is proper in this case, for the reasons set out above.
However, the Panel disagrees with Complainant's assertion. The name in question is not simply a fanciful term, but is one constructed of either two words combined ("gene" and "expert") or the combination of the root of a word and another word ("gen-" and "expert"). An argument can be made, and Respondent has suggested, that the term is a descriptive one. After all, the trademark is used in conjunction with a DNA bioanalysis system. Although the distinction can be a subtle one, the Panel believes that the mark is suggestive, rather than descriptive.
"A term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of the goods. A term is descriptive if it forthwith conveys an immediate idea of the ingredients qualities or characteristics of the goods." (Stix Products, Inc. v. United Merchants Mfrs., Inc., 295 F. Supp. 479, 160 U.S.P.Q. 777 (S.D.N.Y. 1968).)
Applying the "degree of imagination" test, the Panel believes that imagination, thought, and perception would be required to reach a conclusion that GENEXERT was a DNA bioanalysis system. If the mark were merely descriptive, Complainant would have to show the acquisition of secondary meaning, which Complainant failed to do. However, a suggestive mark is inherently distinctive and is entitled to be protected without proof of secondary meaning (Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 112 S. Ct. 2753, 2757-59 (1992)). Thus, at the time of the trademark's creation, Complainant had ownership rights. Since the mark had been created at least as early as the filing of the trademark application, Complainant has had ownership rights in relation to the mark since at least August 5, 1999.
Complainant has asserted that Respondent has no rights or legitimate interests in respect of the domain name. Where such an assertion has been made, this Panel is of the view that it is incumbent upon Respondent to come forward with concrete evidence rebutting this assertion. As this information is uniquely within the knowledge and control of Respondent, the failure to come forward with such concrete evidence is tantamount to admitting the truth of Complainant's assertions (Do the Hustle, LLC v. Tropic Web WIPO Case No. D2000-0624 - analyzing the interplay between Policy paragraph 4(a), which imposes a burden on Complainant to show that the Respondent has no rights or legitimate interests, and Policy paragraph 4(c), which instructs Respondent how to demonstrate its rights or legitimate interests.)
Respondent has failed to produce such concrete evidence. Respondent has failed to offer articles of incorporation or other indicia of the creation of a business. Respondent has failed to produce a business plan. Respondent has failed to furnish any documentation that would demonstrate that the business described is actually being conducted. In fact the business Respondent claims to be engaged in, the furnishing of free information and background for genetics and biotechnology, is completely at odds with the description of services on Respondent's web site, providing low cost quality healthcare. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue.
Respondent's conduct does not come clearly within any of the examples of bad faith registration and use offered at paragraph 4(b) of the Policy. However, those examples are intended to be illustrative, rather than exhaustive. (See Telstra Corporation Limited v. Nuclear Marshmallows, ICANN Case No. D2000-0003 – "Telstra"). In Telstra it was established that "inaction can constitute bad faith use", and the Telstra decision has since been cited numerous times for that proposition and followed by subsequent panels. Telstra established that whether "inaction" could constitute bad faith registration and use could only be determined by analyzing the facts in a given case.
In the present case the Panel finds that the facts 1) that Complainant's application for a trademark was pending before the USPTO at the time that Respondent registered the domain name at issue, 2) that a trademark search done prior to the registration of the domain name at issue would have revealed the existence of the application, 3) that in the almost two years since Respondent registered the domain name at issue, it has not been used to resolve to an active web site, 4) that Respondent failed to produce any concrete evidence of a business utilizing the domain name at issue, and 5) that Respondent failed to respond to any of the communications sent by Complainant concerning the domain name at issue constitute bad faith registration and use under the Telstra analysis.
For all of the foregoing reasons, the Panel decides that the domain name <genexpert.com> registered by Respondent is identical to the trademark in which Complainant has rights, that Respondent has no rights to or legitimate interests in respect of the domain name at issue, and that Respondent's domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel requires that the registration of the domain name <genexpert.com> be transferred to Complainant.
M. Scott Donahey
Dated: December 10, 2001