Belimed AG v. Irene Schembs
Case No. D2005-1212
1. The Parties
The Complainant is Belimed AG, Zug, Switzerland, represented by Raggenbass Rechtsanwдlte, Amriswil, Switzerland.
The Respondent is Irene Schembs, Lutz, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <belimed.com> is registered with Network Solutions,
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2005. On November 23, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On November 23, 2005, Network Solutions, LLC 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 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 20, 2005.
The Center appointed The Honourable Neil Anthony Brown QC
as the Sole Panelist in this matter on January 6, 2006. 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 Swiss company which designs, produces and sells machinery and equipment for cleaning, disinfecting and sterilizing medical, laboratory and pharmaceutical installations. It operates in Switzerland and throughout the world.
The Complainant is the owner of several trademarks, namely:
(a) Trademark No. 383117, registered on May 24, 1991, with the Swiss Federal Institute of Intellectual Property for BELIMED HYGIENE TECHNIK;
(b) Trademark No.454496, registered on September 15, 1998, with the Swiss Federal Institute of Intellectual Property for BELIMED INTERNATIONAL;
(c) Trademark Serial No.: 76/302,435, registered on February 17, 2004, with the United States Patent and Trademark Office for BELIMED;
(d) Trademark No TMA603,074, registered on February 24, 2004, with the Canadian Intellectual Property Office for BELIMED; and
(e) Trademark No 002185734, registered on March 6, 2003, with the Office for Harmonisation in the Internal Market of the European Community for BELIMED.
The Respondent registered the domain name <belimed.com> on February 2, 1999,
i.e. after the registration of the first two of the trademarks.
5. Parties’ Contentions
The Complainant alleges that the contentious domain name <belimed.com> should no longer be registered with the Respondent, but that it should be transferred to the Complainant.
It contends that this should be done because, within the meaning of paragraph 4 the Policy, the domain name is identical or confusingly similar to the Complainant’s registered trademarks, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.
In support of its case on the first of these three elements, the Complainant maintains that the domain name <belimed.com> is confusingly similar to the trademarks BELIMED HYGIENE TECHNIK, BELIMED INTERNATIONAL and BELIMED, in each of which it has rights as the owner of the trademarks. It points to the obvious similarity between the domain name and each of the trademarks, that the domain name consists entirely of the predominant part of the first two trademarks and of the entirety of the third and fourth of the trademarks. It also points to the likelihood of confusion between the domain name and each of the trademarks.
The Complainant then contends, to establish the second element, that it is simply a matter of fact that the Respondent has no rights or interests in the domain name, because she does not conduct a business under that name, is not commonly known by it and does not use it in connection with a bona fide offering of goods or services or in any way legitimately.
In any event, the Complainant also recounts that it has actually bought the domain name from the Respondent, paid her for it, used it as its own and paid the Registrar, Network Solutions, the registration fees since 2003, but that it has not been able, so far, to effect a transfer of the name to itself.
Finally, the Complainant alleges that the domain name was registered and is being used in bad faith. It contends that this is so because the Respondent registered the name primarily for the purpose of selling it to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name.
It argues, in effect, that this is the only inference that can be drawn from the fact that the Respondent readily sold the domain name to the Complainant for US$1,500 and took the money, but has failed to reply to communications or to do her part to effect a transfer of the registration to the Complainant.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
It is appropriate therefore to note that the fact that the Respondent has not made a Response to the Complaint does not avoid the necessity of examining the issues and of doing so in the light of the evidence. In fact, paragraph 4 of the Policy expressly provides that in administrative proceedings ‘ …the complainant must prove’ its case and it follows that, as the proceeding is a civil one, the standard of proof must be the balance of probabilities. The onus of proof clearly remains on the Complainant even where, as in the present case, the Respondent has not made a Response or put in a submission. That principle has been enunciated on many occasions by UDRP panels.
The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before an order can be made to transfer the domain name.
However, in the course of deciding whether that onus has been discharged, it is possible to draw inferences both from the evidence that has been submitted and, in appropriate cases, from silence. Indeed, paragraph 14 of the Rules specifically provides that if a party does not comply with its obligations, the panel is still required to proceed to a decision, but it is also required to draw such inferences ‘as it considers appropriate’ from the non-compliance.
That being so, the Panel will now proceed to enquire if the Complainant has discharged its onus to prove each of the three elements specified in paragraph 4(a) of the Policy.
Those three elements, all of which must be proved, are that:
A. the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
B. the Respondent has no rights or legitimate interests in respect of the domain name; and
C. the domain name has been registered and is being used in bad faith.
The Panel will deal with each of these requirements in turn.
A. Identical or Confusingly Similar
The Panel finds that the domain name <belimed.com> is identical to the
three trademarks (c), (d) and (e) described above in paragraph 4, because in
each case the domain name consists of the entirety of the trademark. The only
difference is the addition in the domain name of the generic Top Level Domain
suffix ‘.com’ and it has long been held that this addition cannot
avoid the conclusion of identicality or confusing similarity: Foundation
Le Corbusier v. Mercado M ,WIPO Case No. D2004-0723.
It is true, of course, that each of the three trademarks just referred to was
registered after the registration of the domain name, but it has been widely
held that the question is whether the Complainant has an interest in the relevant
trademark at the time of the proceeding and not whether the trademark was registered
before the domain name: see for example: AB Svenska Spel v. Andrey Zacharov,
WIPO Case No. D2003-0527.
In any event, the Panel also finds that the domain name is confusingly similar to the two trademarks (a) and (b) described above in paragraph 4. Both of those trademarks were registered before the Respondent registered the domain name.
The domain name is confusingly similar to the first trademark BELIMED HYGIENE TECHNIK, because it consists of the substantive or dominant part of the trademark and the remainder of the trademark merely states the industry in which the Complainant is actually engaged and with which it is known to be associated. Any reasonable bystander, possessed of the facts, would inevitably conclude that the domain name related to the same name that appeared in the trademark and that it was therefore confusingly similar to the trademark.
The same principle applies to the trademark BELIMED INTERNATIONAL and the domain name is also confusingly similar to that trademark. That is so because, once again, the Respondent has taken the substantive or dominant part of the trademark and used it as the entirety of the domain name. The remaining part of the trademark merely reflects that the Complainant trademark owner operates internationally. Any objective observer would therefore naturally assume that the ‘belimed’ of the domain name was the ‘BELIMED’ of the trademark, especially as it is an unusual and clearly invented name for an enterprise in the medical field. The two are therefore confusingly similar.
It also clear that the Complainant has rights in each of the trademarks relied on, namely as their owner.
The Complainant has therefore made out its case under paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel’s task in deciding if a registrant has any rights or legitimate interests in a domain name is made more difficult when the registrant is in default and does not make a Response or any other form of submission. The Respondent in the present case was given notice that she had until December 18, 2005 to send in her Response, that she would be in default if she did not do so and that, by virtue of paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.
As the Respondent is in default, the Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, draws the inference that the Respondent has no rights or legitimate interests in the domain name. It is appropriate to draw that inference because, first, if the Respondent had any such rights or interests, it was a simple matter to say what they were. Moreover, the Respondent has clearly appropriated the Complainant’s unusual and unique name without permission and seven years after the trademark was first registered, giving rise to the prima facie assumption that she did so for an illegitimate purpose. If there were a more innocent or legitimate explanation, the Respondent could have given it, but this she has failed to do.
Furthermore, the Respondent had the opportunity to bring herself within paragraph 4(c) of the Policy which sets out several criteria, any one of which, if proved, ‘is to be taken to demonstrate’ the Respondent’s rights or legitimate interests in the domain name. However, the Respondent has not endeavoured to establish even one of the criteria set out in paragraph 4(c), giving rise to the inevitable inference that she could not do so by credible evidence.
All of these facts support the conclusion that the Respondent has no rights or legitimate interests in the domain name.
Moreover, it is quite apparent, on the unchallenged evidence, that the Respondent could not bring herself within any of those criteria.
In addition to all of this, the Complainant’s real complaint is that it bought the domain name from the Respondent and paid for it, but that the Respondent will not effect a transfer of the registration to the Complainant. If the Panel accepts the evidence of this transaction, as it does, it is clear that the Respondent has no rights or legitimate interests in the domain name. That is so because there has been a contract for the sale of the domain name, the consideration has passed, the Complainant has done all that it can to finalise the contract and the Respondent is therefore obliged to perform the last remaining act to consummate the transaction, namely to transfer the registration of the domain name to the Complainant. Accordingly, on any test, the Respondent has no rights or legitimate interests in the domain name, as she has sold them.
For all of these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the domain name and that the Complainant has made out its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
With respect to the third element, paragraph 4(b) of the Policy sets out some detailed criteria, any one of which, if proven, is deemed to be ‘evidence of the registration and use of a domain name in bad faith’. Both features must be proved, i.e. that the domain name was registered in bad faith and that it is being used in bad faith.
It is also clear that the criteria listed in paragraph 4(b) are not exhaustive and that other factors may also be relied on to show bad faith. In the present case, the Complainant relies only on paragraph 4(b)(i), which is that there are:
“(i) circumstances indicating that (the Respondent has) registered or … 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 (the Respondent’s) documented out-of-pocket costs directly related to the domain name;…”
The Complainant has set out a history to the effect that it discovered the domain name had been registered by the Respondent and that it then set about a process of buying it from her. It contacted a representative of the Respondent, namely Mr. Hammerton at the same address of the Respondent in Florida and made an offer to buy the domain name for US$1,500 which was accepted. There is no direct evidence of how Mr. Hammerton came to be representing the Respondent, but the Panel notes that the Complaint has been prepared by the Complainant’s attorneys who have certified that the information contained in the Complaint is to the best of the Complainant’s knowledge complete and accurate. The Panel’s view is therefore that it should accept as fact the events as described.
It appears also that Mr. Hammerton originally asked for US$2,000 but accepted the offer of US$1,500 and that the money was actually paid to Mr. Hammerton on or about April 7, 1999.
The evidence is also that, since then, the Respondent has not applied to the Registrar to change the registration to the Complainant despite her being asked to do so by the Complainant and that in fact no mail, email or faxes to her have been replied to. The Complainant has applied to transfer the registration to itself, but without success, and it is clear that in the absence of the Respondent co-operating, the transfer will not be effected without an order from an administrative panel pursuant to the Policy.
It should also be said that the Registrar has accepted the payment of registration fee by the Complainant, the domain name has been and is effectively used by the Complainant as its own domain name which resolves to its own legitimate website and that all of this has been done without any objection from the Respondent.
The Complainant must make out its case under each of the requirements set out in paragraph 4(a) of the Policy. With respect to the requirements of paragraph 4(a)(iii), namely bad faith and the element relied on by the Complainant set out above in paragraph 4(b)(i), the Panel draws the only inference that is open to it on the unchallenged evidence.
That inference is that, on the balance of probabilities, the Respondent registered as her domain name, this unusual and unique name, which is the trademark of the Complainant and obviously relates to a business in the medical field, knowing that it was the trademark of the Complainant and with the intention of selling it to the Complainant for as much as she could get and certainly for more than it cost her to register the name.
Those inferences are supported by the sequence of events. A search by the Panel shows that on June 5, 1998, Belimed International of Switzerland, clearly an associate company of the Complainant, for its address was the same as the then address of the Complainant, registered the domain name <belimed.ch>1. On September 15, 1998, it registered the second Swiss trademark. On February 1999, the Respondent registered the contentious domain name. It stretches credulity almost to breaking point to suggest that these events were unconnected. Accordingly, the Respondent’s conduct amounts to bad faith both in the registration and the use of the domain name.
The Complainant has therefore made out its case under paragraph 4(a)(iii) of
the Policy and hence all of its requirements.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <belimed.com>be transferred to the Complainant.
The Honourable Neil Anthony Brown QC
Dated: January 12, 2006