Case No. D2005-1183

1. The Parties

The Complainant is Ribbel International Limited, of New Delhi, India.

The Respondent is Ribbel Medizintechnik GmbH, of Wuppertal, Germany.

2. The Domain Name and Registrar

The disputed domain name <ribbel-med.com> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2005. On November 14, 2005, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On November 15, 2005, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 28, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 19, 2005.

The Center appointed Keita Sato as the sole panelist in this matter on December 28, 2005. 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.

After the Notification of Respondent’s default, the Center received the Respondent’s late response in the German language, which was filed on December 23, 2005. The Panel decided not to consider such Response. (see below)

4. Factual Background

The Complainant is a company incorporated in 1992 which is based on the Indian Company Act. At first, the name of the company was Ribble International Limited, but it was changed into Ribbel International Limited in 1993. The Complainant is a manufacturer of surgical blades and related goods, and has been accredited by ISO 13485. Also, their products are allowed to use the CE mark under the Medical Device Directive 93 / 42 EEC, and have ISO 9001 certification by DNV (Det Norske Veritas) Norway. The Complainant’s products are also registered with FDA in USA, BIS in India, MOH in the Russian Federation and TGA in Australia.

The Respondent is a German Company, named Ribbel Medizintechnik GmbH. It registered the Domain Name at issue <ribbel-med.com> on April 20, 2005. In the WHOIS data of the Domain Name at issue, the administrative contact is Mr. Arun Gupta, who was once a director of the Complainant Company from 1992 to 1999.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the Domain Name at issue is confusingly similar to the common law trademark “RIBBEL” owned by the Complainant, and the mark is identical or confusingly similar to the Domain Name at issue. The mark “RIBBEL” has been in extensive, continuous and uninterrupted use since 1992 in relation to the Complainant’s business, and the domain name has been in use since 1996. More specifically, the mark “RIBBEL” has been in use, in India and internationally, by the Complainant in relation to all its stationery articles including letterheads, visiting cards, order forms, bill books, envelopes, application forms and in relation to sales promotional materials like brochures, catalogues, price lists etc. The mark “RIBBEL” has also been used in relation to advertisements and related business/commercial information disseminated in several print media such as newspapers, magazines etc. both in India as well as abroad.

The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name at issue, since the Complainant has not licensed or otherwise permitted the Respondent to use its trademark “RIBBEL” or to apply for any domain name incorporating this mark.

The Complainant further argues that the Respondent registered the Domain Name at issue in bad faith, since the Respondent clearly knew of the Complainant’s prior rights when it registered the domain name. In fact, the Principal Officer of the Respondent was a member of the board of directors of the Complainant. And the fact that the website has been activated amounts to the misuse of the Complainant’s trade name, registered trademark and amounts to bad faith.

For all these reasons, the Complainant requests the Panel to issue a decision ordering that the Domain Name <ribbel-med.com> be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions within the deadline. The Respondent submitted, however, a reply in German by facsimile on December 23, 2005. The reply had attached inter alia a German trademark certificate for RIBBEL in the name of Mr. Gupta. As the reply came late, without any explanation for the delay, and was in the wrong language, the Panel did not accept it to the case file. Having said that, it is clear from the Complaint that the Complainant recognizes the Respondent’s German trademark.

6. Discussion and Findings

For the Complaint to succeed, the Panel must, under paragraph 4(a) of the Policy, be satisfied:

i) 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

ii) that the respondent has no rights or legitimate interests in respect of the domain name; and

iii) that the domain name has been registered and is being used in bad faith.

Identical or Confusingly Similar

The Complainant must establish that it has rights in a trade or service mark, and that the disputed domain name is identical or confusingly similar to the mark. The question is whether a non-registered name in which the Complainant claims common law trademark rights can be protected under the Policy. It should be noted that the Policy does not require that a trademark be registered in order to be invoked under the Policy. Common law trademark rights can indeed be vested in names and signs on the basis of the use which is made thereof, even in the absence of a trademark registration (See Jones Apparel Group v. jonesapparelgroup.com, WIPO Case No. D2001-0719, citing several cases such as Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235 and Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210). And common law rights have been the basis now for many UDRP decisions, for example, Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235, Frederick M. Nicholas, Administrator, The Sam Francis Estate v. Magidson Fine Art, Inc., WIPO Case No. D2000-0673, Bill Withers v. Robert Dominico et al., WIPO Case No. D2000-1621, Marty Rodriguez Real Estate, Inc. v. Lancaster Industries, WIPO Case No. D2000-1468.

In order to establish common law interest, the Complainant must establish that it has a reputation that inheres in the common law marks or some other indication that the common law would recognize that the Complainant has rights in the marks (See, Jones Apparel Group case above-mentioned). The Complainant submitted several catalogs of its products (with several examples which are pamphlets of the Complainant’s exhibitions for trade shows, Annex C and M), and a one-page figure which shows figures of the Complainant’s international sales (Annex D) and figures of the Complainant’s advertisement expenses without any examples of advertisement in newspapers or some other sources. It is doubtful whether this is sufficient evidence to show the Complainant’s reputation.

The Panel notes that the Domain Name at issue is not identical with the Complainant’s company name, Ribbel International Limited, since the Domain Name at issue, <ribbel-med.com> has a part “-med”. However, “med” is most likely in this context understood to be an abbreviation of medicine, or medical etc. The Panel finds that the addition of the generic and/or descriptive term “med” does little to reduce confusion with the Complainant.

As the Complainant must prove all three elements of the Policy to prevail, but fails under the second element (see below), it is not necessary for the Panel to conclude under this first element of the Policy.

Rights or Legitimate Interests and Registered and Used in Bad Faith

It is clear from the case file that the Complainant recognized that the Respondent registered the trademark “Ribbel” for scalpels and surgical blades in Germany. It seems that this trademark has been registered since 1996 in the Federal Republic of Germany. It may also be that the Respondent has used the trademark in the medical field  for many years before 1996. Ordinarily, provided there are no contradicting circumstances, if a respondent proves that it has a registered trademark, it also demonstrates a legitimate interest in the domain name, and a complaint would therefore fail, see, e.g. PRL USA Holdings, Inc .v. Catherine Mary Witham, WIPO Case No. D2002-0361. This is also the case in the present matter. Due to the Respondent’s registered trademark, the Panel finds it difficult to conclude that paragraph 4(ii) has been met.

The Panel is mindful of the Complainant’s evidence that proves that Mr. Arun Gupta had been a director of the Complainant, and the manager of an authorized dealer for the Complainant’s product. Thus, it is obvious that the Respondent knew the Complainant’s company name, and it may be argued that the Respondent initially registered the disputed domain name in bad faith.

However, the case is not that straightforward. There is a long and windy relationship between the parties. After Mr. Gupta stopped working in the Complainant’s company, the Complainant appointed Mr. Gupta/Ribbel Imp.-Exp. GmbH. as its authorised representative in Germany. The relationship between the company Ribbel Imp.-Exp. GmbH and the Respondent/Mr. Gupta is not clear from the case file. The Complainant has not submitted evidence which proves its allegation that “the Respondent has been duly credited with the mark “Ribbel”; but he surrendered the mark to the Complainant” (Complaint, 12.5).

Based on the rather unclear factual situation, the Panel finds that it is difficult to conclude that the Respondent has acted in bad faith.

Having said that, the Panel would like to note that both parties, and not only the Complainant, could have clarified some of the factual uncertainties of this case. The Respondent should have filed its Response on time, and in the English language. However, despite the Respondent, by its own choice, not having defended itself properly, the Complainant has not made out its case.

The Panel would like to point out that the UDRP is designed for relatively straightforward cases of bad faith registrations (cybersquatting), and that the Panel’s finding does not in any way attempt to prejudge the reasoning or outcome of any eventual trademark dispute between the parties under the relevant national law. A national court could be a more appropriate venue to clarify the complicated relationship between the parties as more evidence would be presented and oral examination is likely to take place.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Keita Sato
Sole Panelist

Date: January 16, 2006