Источник информации:
официальный сайт ВОИС

Для удобства навигации:
Перейти в начало каталога
Дела по доменам общего пользования
Дела по национальным доменам

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Laminar Medica Limited v. Marc Price

Case No. D2006-1161

1. The Parties

The Complainant is Laminar Medica Limited, , Buckinghamshire, United Kingdom of Great Britain and Northern Ireland represented by Eversheds, LLP, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Marc Price, Sittingbourne, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <laminarmedica.com> is registered with Schlund + Partner.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2006. On September 12, 2006, the Center transmitted by email to Schlund + Partner a request for registrar verification in connection with the domain name at issue. On September 13, 2006, Schlund + Partner 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 contacts. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 21, 2006. 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 the Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for the 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 September 22, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 12, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 13, 2006.

The Center appointed Jon Lang as the sole panelist in this matter on October 31, 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 was established in 1975 under the name Laminar Cases (Manufacturing) Limited, changing its name to Laminar Medica Limited in 1991, since when it has continually traded under the name Laminar Medica. It has become a world market leader in the design, test, validation and manufacture of packaging systems to protect medical products against extreme temperatures during transportation. The Complainant works with major pharmaceutical and biotech companies globally and other industry sectors. In the last five years the Complainant has doubled its turnover from Ј4.7m to an anticipated turnover of close to Ј10m in 2006. The Complainant promotes its goods and services under the name Laminar Medica. During the last financial year its marketing spend (excluding salaries) was Ј120,000.

The Complainant’s parent company, Clinimed (Holdings) Limited is the registered proprietor of a UK trademark (number 2180020 in classes 10,11,17,39) and a CTM trademark (number E1139393 in the same classes) for Laminar Medica, and the Complainant has been licensed to use these marks since its incorporation.

The Complainant has operated a website at “laminarmedica.co.uk” since 1998 and submits that as a result of the Complainant’s use of the name Laminar Medica over the past 15 years (and Laminar Cases, its former name, for 16 years before that) it has built up substantial goodwill in the names Laminar and Laminar Medica.

The Respondent is said by the Complainant (the Respondent not having participated in these proceedings) to be a UK citizen. Until February 7, 2006, the Respondent was employed by the Complainant. Around the same time as the Respondent raised an internal grievance against the Complaintant, he registered the domain name <laminarmedica.com> and since then has created a website to which the domain name in issue points. This website is alleged to contain a photograph of the managing director of the Complainant and a photograph of its headquarters.

The Complainant and Respondent exchanged letters between June and August 2006, the Complainant requesting that the domain name in issue be transferred to them. The Respondent gave no indication that the domain name would be transferred and, to date, it has not been transferred, hence these proceedings.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the registration agreement pursuant to which the domain name in issue was registered (on or about December 22, 2005) incorporates the Policy

Paragraph 4 (a) of the policy requires a registrant

“…. to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of these three elements are present.”

Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights

It is permissible to ignore the ‘.com’ suffix (because of its inevitable presence in this context) for present purposes. Therefore the Complainant contends that the Domain Name is identical to the name Laminar Medica in which it has rights due to its use of the name Laminar for over 30 years and its use of the name Laminar Medica for over 16 years. It is also licensed to use the trademarks.

Significant amounts of money have been spent by the Complainant in advertising and promoting the higly distinctive name Lamina Medica. The Complainant is not aware of any unconnected third party using the name Laminar Medica, except in relation to the Complainant’s business, a contention that appears to be supported by a Google search. Since the domain name is identical to the Complainant’s name and its own domain name (<laminarmedicaco.uk>), and given the popularity of the .com suffix, there is a risk that the public will be confused by the Respondent’s registration and use of the Domain Name. It is also submitted that the public will be led to believe that the Respondent’s website is linked to the Complainant which would be damaging to the Complainant.

No rights or legitimate interests in respect of the Domain Name

The Complainant contends that the Respondent has no legitimate interest in the Domain Name. He does not trade under the name Laminar Medica, nor is he known by that name. He is no longer employed by the Complainant and even during his employment had no legitimate reason or interest in owning it. It is contended therefore that the Respondent is not making a legitimate or fair use of the Domain Name.

Domain Name has been registered and is being used in bad faith

The Complainant contends that the Domain Name was registered and is being used in bad faith. The Respondent knew of the Complainant’s rights when he registered the Domain Name, being employed at that time by it. The Domain Name was registered on the same day as the Respondent informed the Complainant that he wished to escalate a grievance about which there had been an earlier hearing. It was not within the scope of the Respondent’s job description to register domain names which, in any event, was registered in his own name not that of his employer (the Complainant). At no time during his employment did the Respondent disclose the fact of his registration or seek reimbursement. The Complainant submits that the Domain Name was registered by the Respondent to prevent the Complainant or its parent company from registering it and in order to disrupt the Complainant’s business.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the Domain Name is identical to a trademark in which the Complainant has rights. The Complainant is not the registered proprietor of the trademarks in question but that does not prevent the acquisition of rights in those trademarks. The Panel finds that the Complainant does have ‘rights’ for the purposes of the Policy. In any event, in most circumstances under the Policy, a licensee of a trademark, or a related company such as a subsidiary of a registered proprietor of a mark, is considered to have rights in the trademark for the purposes of the Policy (Telcel, C.A. v. jerm and Jhonattan Ramirez WIPO Case No. D2002-0309).

B. Rights or Legitimate Interests

The Panel accepts the submissions of the Complainant that the Respondent has no rights or legitimate interest in the Domain Name. The Respondent has chosen not to participate in these proceedings even though he did write a letter to the Complainant’s legal advisors in response their first letter of complaint, prior to the issue of these proceedings. It is difficult to discern from that letter any obvious right or legitimate interest in the Domain Name but, in any event, the Respondent has had ample opportunity, since that letter, to make out a case under the Policy in these proceedings. He has chosen not to and the Panel draws the inference, as it is entitled to do, that in all likelihood nothing that the Respondent could have said would have advanced his case. In any event, once a Complainant makes out a prima facie case of a lack of rights or legitimate interest in a Domain Name, (which the Complainant has at the least done in this case) the Respondent carries the burden of demonstrating that he does in fact have such rights or legitimate interests (Croatia Airlines d.d. v. Modern Empire Internet Ltd. WIPO Case No. D2003-0455). The Respondent has made no attempt to do so and has therefore failed to satisfy the burden falling upon him.

C. Registered and Used in Bad Faith

The Respondent has put forward no credible explanation for registration of the Domain Name either in his letter to the Complainant’s solicitors or in these proceedings. The Complainant on the other hand has made credible submissions as to why the Respondent has registered and used the Domain Name in bad faith. Again, the Panel draws the inference, as a result of the Respondent’s decision not to participate in these proceedings, that in all likelihood nothing he could have said would in any way have supported his position or answer the submissions of the Complainant. The Panel therefore finds that the Respondent registered the Domain Name to disrupt the business of the Complainant and/or to prevent it from registering the Domain Name itself as alleged and that, for the purposes of these proceedings, the registration has been in bad faith. It further finds, given the lack of participation in these proceedings, the circumstances surrounding registration and the difficulty in conceiving a good faith use in all the circumstances that, for the purposes of these proceedings, the Domain Name is also being used in bad faith.

7. Decision

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 <laminarmedica.com> be transferred to the Complainant.

---

Jon Lang
Sole Panelist

Dated: November 14, 2006