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A Nattermann & Cie GmbH and Sanofiaventis v Watson

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A Nattermann & Cie GmbH and Sanofiaventis v WatsonA,a,&,Cie,GmbH,Gmbh,and

     ARBITRATION AND MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

    A. Nattermann & Cie. GmbH and Sanofi-aventis

    v. Watson Pharmaceuticals, Inc.

    Case No. D2010-0800

1. The Parties

    The Complainants are A. Nattermann & Cie. GmbH of Cologne, Germany, and Sanofi-aventis of Paris, France, represented by Selarl Marchais De Candé, France.

The Respondent is Watson Pharmaceuticals, Inc. of California, United States of America (USA), represented

    by Forsyth Simpson Solicitors, United Kingdom of Great Britain and Northern Ireland (UK).

2. The Domain Name and Registrar

The disputed domain name <ferrlecit.com> (the Domain Name) is registered with MarkMonitor Inc.

    (the Registrar).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) on May 19, 2010. The

    Center transmitted its request for registrar verification to the Registrar on May 19, 2010. The Registrar replied the same day, confirming that it had received a copy of the Complaint, that it was the registrar for the Domain Name, that the registration agreement was in English and that it had placed a registrar lock on the Domain Name in compliance with the Uniform Domain Name Dispute Resolution Policy (the Policy or UDRP). The

    Registrar also provided the full contact details held on its WhoIs database in respect of the Domain Name; in relation to the registrant these identified the contact as Domain Manager Watson Pharmaceuticals, Inc.

    Notwithstanding the reference in this entry to Domain Manager, the Panel considers that the Respondent is

    correctly identified as Watson Pharmaceuticals, Inc., as stated in both the Complaint and the Response.

    The Center verified that the Complaint satisfied the formal requirements of the UDRP, 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 21, 2010. In accordance with paragraph 5(a) of the Rules, the due date for Response was June 10, 2010. The Response was filed with the Center June 10, 2010. In it the Respondent elected to have the dispute decided by a three-member panel.

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    The Complainant submitted observations on the Response to the Center by email of 14 June, 2010. In accordance with the Centers normal practice, these observations were forwarded to the Panel following its appointment for consideration in its discretion.

    The Center appointed Jonathan Turner, M. Scott Donahey and Warwick Smith as panelists in this matter on July 26, 2010. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.

4. Procedural Ruling

    The observations on the Response sent by the Complainant to the Center do not contain any request by the Complainant to admit them as an additional submission but the Panel has nevertheless considered whether it should do so.

    Whether supplemental submissions can and should be admitted in proceedings under the UDRP has been considered in many cases. In The E.W. Scripps Company v. Sinologic Industries, WIPO Case

    No. D2003-0447, the Panel summarised the position as follows:

    The principles adopted and confirmed in these decisions are that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimise prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.

    These principles are based on the purpose of the Policy and Rules of providing an expeditious and relatively inexpensive procedure for determining a certain type of domain name dispute, in which each party is entitled to make just one submission. One of the matters which the Panel has to bear in mind is that the admission of a further submission from one party may lead the other party to submit a further document in reply, which may lead to a further submission by the first party, and so on, thereby compromising the procedural economy sought to be established by the Policy and the Rules.

In this case, the Panel considers that the first point in the Complainants observations on the Response is a

    repetition of a point already made in the Complaint, and that the third point is one which the Complainant could and should have made in the Complaint. The Panel therefore does not admit these points.

By contrast, the second point of the Complainants observations responds to a statement made in the

    Response which, in the Panels view, the Complainant could not reasonably have been expected to anticipate. The Panel therefore admits this point.

The Respondent has not asked for an opportunity to reply to the Complainants observations. The Panel has

    nevertheless considered whether the Respondent should be invited to do so. Given the limited significance of the only point in the Complainants observations which the Panel is admitting, the Panel considers that it is not necessary or desirable to invite any further submission by the Respondent.

5. Factual Background

    page 3

    The first Complainant is a subsidiary of the second Complainant which is the parent of a leading pharmaceutical group. The first Complainant owns the trademark FERRLECIT which is used for an intravenous treatment of iron deficiency. The trademark is registered in the name of the first Complainant in the USA and other countries.

The Respondent is also a pharmaceutical company.

    In 1993 the first Complainant or a predecessor entered into a distribution agreement granting the Respondent an exclusive licence to import, use and sell the product in the USA, Canada and Greece, and a trademark agreement granting the Respondent an exclusive licence to use the FERRLECIT trademark for the product in the same territory.

    The Respondent registered the Domain Name in 1999 and used it to promote the FERRLECIT product.

    An arbitration between the parties in Switzerland in 2009 resulted in an award which declared that these agreements would expire on December 31, 2009 and ordered the Respondent to cease selling the product after that date and to transfer various documents and materials to the Complainant promptly following that date. However, it appears that the award (at least as quoted in the provided pleadings) did not refer to the Domain Name.

    The Respondent has retained the Domain Name following the expiry of the agreements and has directed it to a web page which states that the Respondent no longer markets FERRLECIT and that this product is now being marketed by the second Complainant. The web page goes on to invite readers to submit contact details to receive information from the Respondent about alternatives and to promote an alternative intravenous remedy for iron deficiency.

    The second Complainant asked the Respondent to return the Domain Name by letter of January 7, 2010. Following several reminders the Respondent replied on April 21, 2010, offering to transfer it to the second Complainant for $25,000.

6. Parties Contentions

A. Complainants

    The Complainants contend that the Domain Name is identical to the trademark FERRLECIT registered in the name of the first Complainant in the USA and other countries.

    The Complainants submit that the Respondent has no rights or legitimate interests in respect of the Domain Name. They state that it is not commonly known by the Domain Name and that it has no current licence, contract or consent to use the FERRLECIT mark in a domain name. The Complainants acknowledge that the parties signed a distribution agreement in 1993 allowing the Respondent to market FERRLECIT in the USA and other countries, but state that this agreement has now terminated, as confirmed by the arbitration award.

    The Complainants allege that the Domain Name was registered and is being used in bad faith. They note that the second Complainant requested the return of the Domain Name on January 7, 2010, but (despite repeating the request) did not receive an answer from the Respondent until April 21, 2010, when the latter offered to sell the Domain Name for $25,000. The Complainants submit that the Respondents offer to sell the Domain Name

    for a sum greatly exceeding the expenses incurred in registering it shows that it was registered for the purpose of selling, renting or otherwise transferring the Domain Name to the owner of the mark for valuable consideration in excess of the Respondents out-of-pocket costs directly related to the Domain Name. The

    Complainants accordingly rely on paragraph 4(b)(i) of the UDRP.

    The Complainants also note that the Respondent is using the Domain Name to promote a competing product and to build a database for its own commercial benefit. The Complainants submit that the Respondent has

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    intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainants mark as to the source, sponsorship or affiliation of the website.

    The Complainant requests a decision that the Domain Name be transferred to A. Nattermann & Cie. GmbH.

B. Respondent

The Respondent does not make any submission in response to the Complainants contention that the Domain

    Name is identical to the mark FERRLECIT in which the first Complainant has rights.

The Respondent submits that it used the Domain Name in connection with a bona fide offering of goods before

    any notice to it of the dispute and that this demonstrates that it has rights or legitimate interests in the Domain Name in accordance with paragraph 4(c)(i) of the UDRP.

    The Respondent states that it registered the Domain Name in 1999 while the distribution and trademark agreements between the parties were in force and that the Complainants were aware of its registration and use of the Domain Name. The Respondent adds that the Complainants did not include the Domain Name in the arbitration between the parties and that it was not mentioned in the award. The Respondent emphasizes that its registration of the Domain Name occurred many years prior to any dispute between the parties and was in connection with a bona fide offering of goods or services.

    The Respondent also claims that it invested significant time and money in connection with setting up, hosting and maintaining the Domain Name and that these costs from 1999 to the present have exceeded $100,000. According to the Respondent, it owns significant goodwill attached to the Domain Name independent of any goodwill attached to the FERRLECIT trademark or product.

    The Respondent maintains that its offer to sell the Domain Name to the second Complainant does not alter the fact that the Domain Name was not registered or acquired primarily for the purpose of selling, renting or otherwise transferring the Domain Name to the Complainants or a competitor of the Complainants for valuable consideration in excess of its out of pocket costs directly related to the Domain Name. The Respondent explains that it offered to sell the Domain Name for a reasonable price in light of the time and costs incurred in registering, maintaining and promoting the Domain Name and invited the second Complainant to make an alternative offer in order to settle the matter amicably.

    The Respondent denies that the Domain Name was registered in order to prevent the Complainants from reflecting their mark in a corresponding name, or to disrupt their business, or in an intentional attempt to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainants

    mark as to the source, sponsorship, affiliation or endorsement of its website or of a product or service on its website.

    The Respondent denies that its current use of the Domain Name is in bad faith. It points out that its website immediately informs visitors that the Respondent no longer distributes the FERRLECIT product and directs them to the second Complainant for further information about it.

Finally, the Respondent submits that the two elements of the third requirement of the UDRP bad faith

    registration and use are cumulative requirements, referring to a number of decisions on this point.

C. Complainants observations on the Response

    In point 2 of their observations on the Response the Complainants point out that the $100,000 allegedly spent by the Respondent in setting up, hosting and maintaining its website at the Domain Name cannot correspond to its out-of-pocket costs directly related to the Domain Name.

However, the Complainants do not dispute the Respondents statement that they were aware of its registration

    and use of the Domain Name while the agreements between the parties were in force.

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7. Discussion and Findings

    In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding in relation to the Domain Name, the Complainants must prove (i) that the Domain Name is identical or confusingly similar to a mark in which one or both of them has rights; (ii) that the Respondent has no rights or legitimate interests in respect of that Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.

    It is clear from the terms of the UDRP and numerous decisions under it that these are cumulative requirements which must all be satisfied for a complaint to succeed in relation to a domain name. They will therefore be considered in turn.

A. Identical or Confusingly Similar

    The Panel finds on the undisputed evidence that the Domain Name is identical to the mark FERRLECIT in which the first Complainant has registered rights. It is well established that when comparing a disputed domain name with a complainants mark under paragraph 4(a)(i) of the UDRP, the generic top level domain suffix should be discounted. The first requirement of the UDRP is satisfied.

B. Rights or Legitimate Interests

    The Panel finds on the evidence that the Respondent no longer has any right or legitimate interest in respect of the Domain Name following the expiry of the distribution and trademark agreements between the parties at the end of 2009 as confirmed in the arbitration award.

    The Panel considers that paragraph 4(a)(ii) of the UDRP refers to a right or legitimate interest existing at the time of the complaint. The present tense is used and the inclusion of this requirement would make no sense if it did not refer to the present. A registrant who did not have any right or legitimate interest at the date of registration may subsequently acquire a right or legitimate interest, for example by using the disputed domain name in connection with a bona fide offering of goods. Equally a registrant who had a right or legitimate

    interest may lose it, for example if the trademark owner legitimately withdraws its consent or the registrant ceases to distribute the trademark owners goods or uses the domain name to promote rival products: see

    Lonely Planet Publications Pty Ltd v. Mike Tyler; WIPO Case No. D2004-0670, and Levantur, S.A. v. Media

    Insight, WIPO Case No. D2009-0608.

    The Panel recognizes that paragraph 4(c)(i) of the UDRP does not refer explicitly to a continuing use of the domain name in connection with a bona fide offering of goods. However, the Panel considers that this

    provision must be read in conjunction with paragraph 4(a)(ii) which it exemplifies.

The Panel therefore finds that the second requirement of the UDRP is satisfied.

C. Registered and Used in Bad Faith

    It is clear from the terms of paragraph 4(a)(iii) of the UDRP and confirmed by numerous decisions under it that the two elements of this third requirement are cumulative; both registration and use in bad faith must be proved for a complaint to succeed. See, for example, World Wrestling Federation Entertainment, Inc. v.

    Michael Bosman, WIPO Case No. D1999-0001 and Telstra Computers Ltd v. Nuclear Marshmallows, WIPO

    Case No. D2000-0003.

    The Panel finds that the Domain Name is being used in bad faith. The Respondent has no entitlement to use a domain name consisting of the first Complainants mark. The Respondent is using the Domain Name to

    attract Internet users looking for information about the Complainants product to its website by deception.

    Internet users naturally assume that a website at the Domain Name is a website of or endorsed by the

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    Complainants. The Respondent is profiting from this deception to obtain valuable marketing information and to promote a rival product.

The Panel does not consider that all those visiting the Respondents website as a result of this deception are

    disabused by its content. Indeed, many of the visitors might suppose that the content of the website must have been agreed between the parties. But in any case, it is well established that the posting of content making it clear that the website is not approved by the owner of a trademark contained in the domain name does not avoid a finding of bad faith. On the contrary, bad faith has often been found where the registrant uses a domain name containing a rivals mark to attract Internet users by initial confusion to its website where other products or services are promoted and/or sold: see, for example, Government Employees Insurance Company v.

    Netsolutions Proxy Services, WIPO Case No. D2004-0919, Future Brands LLC v. Mario Dolzer, WIPO Case

    No. D2004-0718, Bass Hotels & Resorts, Inc. v. Mike Rodgerall, WIPO Case No. D2000-0568, and Chargers

    Football Company v. One Sex Entertainment Co., a/k/a Chargergirls.net, WIPO Case No. D2000-0118.

    The more difficult question is whether the Domain Name was registered in bad faith. The Complainant invokes paragraph 4(b)(i) of the UDRP, relying on the fact that the Respondent offered to sell the Domain Name to the Complainant for $25,000 in April 2010. But paragraph 4(b) states:

    the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

    (i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name. [emphasis added]

    In many cases an offer by a respondent to sell a domain name for an elevated price indicates that it registered or acquired the domain name wholly or primarily for that purpose. This inference may readily be drawn where the offer for sale is made shortly after the domain name is registered or acquired, or where there is no other credible reason why the respondent registered the domain name.

    By contrast, in this case, the offer for sale was made more than ten years after the Respondent registered the Domain Name and the Respondent had a very credible reason for registering the Domain Name in 1999, namely to promote the legitimate sale of the FERRLECIT product under its agreements with the first Complainant or its predecessor. The Respondent has stated that this was its purpose in its certified Response and the Complainants have not produced any evidence to the contrary. The Panel considers it most likely that the Respondent had no intention of selling the Domain Name to the Complainants when it registered it in 1999; but even if this was one of the Respondents purposes, the Panel is not satisfied on the evidence that this was

    its primary purpose. The Panel cannot find that the Domain Name was registered in bad faith on the basis that paragraph 4(b)(i) of the UDRP applies.

    In a number of cases Panels have held that a domain name was registered in bad faith on the grounds that the respondent has subsequently acted in bad faith. In some of these cases, the Panel has inferred from the respondents subsequent conduct that it acted in bad faith when it registered the domain name: see, for example, Omnigraphics Capital (Pty) Ltd. v. Fleximount, Guy Langevin, WIPO Case No. D2004-0471, and

    R&M Italia SpA, Tycon Technologies SrL v. EnQuip Technologies Group, Inc., WIPO Case No. D2007-1477.

    However, in other cases Panels have held that where the legitimacy of a registration is subject to compliance with certain conditions, a subsequent non-compliance with those conditions may make it a registration in bad faith, even if the registrant was intending to comply with the conditions when it registered the domain name: see UVA Solar GmbH & Co K.G. v. Mads Kragh, WIPO Case No. D2001-0373; Exel Oyj v. KH Trading, Inc.,

    WIPO Case No. D2004-0433; City Views Limited v. Moniker Privacy Services / Xander, Jeduyu,

    ALGEBRALIVE, WIPO Case No. D2009-0643; Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc.

    / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786, and Ville de Paris v. Jeff Walter, WIPO

    Case No. D2009-1278.

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    In the Octogen case, the Panel referred to the representation in paragraph 2 of the UDRP that the registrant will not knowingly use the domain name in violation of any applicable laws or regulations. The Panel in that

    case considered that this negated the temporal distinction suggested in paragraph 4(a)(iii) of the UDRP between the past registration and present use of the domain name which must both be in bad faith. However, paragraph 2 of the UDRP contains some representations relating to the time of registration and other representations relating to the future. The majority of the present Panel considers that the former may be relevant to bad faith registration while the latter may be relevant to bad faith use. In any case, paragraph 2 of the UDRP does not determine the ambit of the administrative proceeding specified in its paragraph 4. On the contrary, it is clear that the criteria specified in paragraph 4 are not coterminous with the representations in paragraph 2 and in particular with the representation relied on in the Octogen case.

    In the Ville de Paris case, the Panel referred to paragraph 4(b)(iv) of the UDRP as supporting the view that a complainant may succeed on the basis of subsequent misuse of a domain name originally registered without any bad faith intent. However, the majority of the Panel draws the opposite conclusion from the terms of paragraph 4(b)(iv).

Paragraph 4(b) states:

    the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: …

    (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainants mark, as

    to the source, sponsorship, affiliation or endorsement of your web site or location or of a product or service on your web site or location [emphasis added]

    Thus the abuse of a domain name as specified in paragraph 4(b)(iv) of the UDRP is evidence of bad faith registration and use but is not conclusive. It may be rebutted by contrary evidence that the registration was in fact made in good faith. Indeed, it is difficult to imagine a case in which use of a domain name as specified in paragraph 4(b)(iv) of the UDRP could not be in bad faith. It seems to follow that the UDRPs characterization of

    such abuse as only evidence of bad faith registration and use is inconsistent with the view that subsequent misuse in itself causes the registration to have been made in bad faith.

The UDRP is not a statute, but rather derives its legal force from being a contract accepted by the respondent 1in the registration agreement and by the complainant in its complaint. However, in its preparation and function

    the UDRP resembles to some extent an international convention and it may be appropriate to follow the principles identified in the Vienna Convention on the Law of Treaties when interpreting and applying the UDRP. Article 31 of this Convention provides:

    1. A treaty shall be interpreted in good faith in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of its object and purpose.

    2. The context for the purpose of the interpretation of a treaty shall comprise, in addition to the text, including its preamble and annexes:

    (a) any agreement relating to the treaty which was made between all the parties in connexion with the conclusion of the treaty;

    (b) any instrument which was made by one or more parties in connexion with the conclusion of the treaty and accepted by the other parties as an instrument related to the treaty.

3. There shall be taken into account, together with the context:

     1 See Clarke v. Dunraven (The Satanita) [1897] AC 59 for another example of a contract formed by the separate acceptance by the parties of terms of participation in an activity

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    (a) any subsequent agreement between the parties regarding the interpretation of the treaty or the application of its provisions;

    (b) any subsequent practice in the application of the treaty which establishes the agreement of the parties regarding its interpretation;

    (c) any relevant rules of international law applicable in the relations between the parties.

4. A special meaning shall be given to a term if it is established that the parties so intended.

Article 32 provides:

    Recourse may be had to supplementary means of interpretation, including the preparatory work of the treaty and the circumstances of its conclusion, in order to confirm the meaning resulting from the application of article 31, or to determine the meaning when the interpretation according to article 31:

(a) leaves the meaning ambiguous or obscure; or

(b) leads to a result which is manifestly absurd or unreasonable.

    On this basis, the UDRP should be interpreted in accordance with the ordinary meaning to be given to its terms in the context of other documents adopted in connection with it (such as the Rules) and in the light of its object and purpose. Recourse to travaux préparatoires should be limited to confirming the meaning so established or

    determining the meaning when this approach leaves it ambiguous, obscure or manifestly absurd or unreasonable.

    However, in the view of the majority of the Panel, the resolution of the present issue is the same whichever approach to interpretation is used. WIPOs Final Report on the First WIPO Internet Domain Name Process

    established the concepts and much of the wording of the UDRP as subsequently adopted. This report must be regarded as the primary travail préparatoire and the most significant extrinsic evidence of the object and

    purpose of the UDRP.

After discussing the pros and cons and levels of support for wider and narrower approaches, the WIPO Final

    Report concluded at paragraph 168:

    We are persuaded by the wisdom of proceeding firmly but cautiously and of tackling, at the first stage, problems which all agree require a solution. It was a striking fact that in all the 17 consultation meetings held throughout the world in the course of the WIPO Process, all participants agreed that cybersquatting was

    wrong. It is in the interests of all, including the efficiency of economic relations, the avoidance of consumer confusion, the protection of consumers against fraud, the credibility of the domain name system and the protection of intellectual property rights, that the practice of deliberate abusive registrations of domain names be suppressed.

Paragraph 170 indicated what was understood by the term cybersquatting, namely: deliberate, bad faith

    abusive registration of a domain name in violation of rights in trademarks and service marks, before going on

    to say that it was desirable to use the term abusive registration and give it a more precise meaning.

    Paragraph 171 and Schedule 4 then set out a definition of abusive registration in terms substantially the same (at any rate so far as relevant to this issue) as the UDRP as subsequently adopted, in particular with the cumulative requirement that the domain name has been registered and is used in bad faith.

The WIPO Final Report also recognised in paragraph 149(v) that:

    it is desirable that the use of the administrative procedure should lead to the construction of a body of consistent principles that may provide guidance for the future.

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    Subsequent attempts by some stakeholders to broaden the language, in particular by making the requirements of bad faith registration and bad faith use alternatives rather than conjunctive, were unsuccessful, and the conjunctive requirement was retained in the UDRP as adopted. Professor Froomkin, who participated in these 2discussions, has recorded that:

    In leaving WIPOs language in this section basically unchanged, ICANN resisted a forceful call by the International Trademark Association (INTA), among others, to change the and in sub-section (iii) (your

    domain name has been registered and is being used in bad faith) to an or. Both sides of this debate had some

    valid points. Trademark partisans argued that it would be difficult to prove the motive for a registration after the fact. Furthermore, since trademark violations turn on use, it should suffice to show bad-faith use to establish a violation; a hypothetical pure-hearted registrant gone bad should not escape the policy. In addition, trademark partisans worried that wily cybersquatters would register domains in bad faith, fully intending to ransom to mark holders, but would not actually use them to forestall any finding of bad-faith use or might hatch complex schemes in which one person registers a name but leases or transfers to another who actually uses it.

    Registrant partisans countered that current trademark law, at least in the United States, was quite clear that mere registration of a domain name, without some kind of commercial use, did not constitute trademark infringement. Although courts had held that offering a domain name for sale was commercial use, it could not follow that a plaintiffs psychic conclusion that warehousing was in bad faith could substitute for actual conduct. They also argued that, large-scale cybersquatters excepted, the only way to tell that a registration was in bad faith was to look at subsequent conduct, i.e., use, and that the two therefore should not be separated. Furthermore, as noted below, ICANN has greatly broadened the evidence that would suffice to find an intent to profit by selling to the complainant. The small drafting committee empaneled by ICANN deadlocked on this issue, and ICANN Counsel Louis Touton single-handedly decided it in favor of and. In practice, however, this

    distinction appears to have been completely lost on numerous arbitrators, who have read and as if it meant

    or.‟“

    This account is corroborated by the Second Staff Report of ICANN in the passage quoted by the dissenting member of this Panel below.

The majority of the Panel considers that Professor Froomkins account is entirely consistent with the view that

    bad faith use can be evidence of bad faith registration without in itself constituting bad faith registration and without eliding the two concepts.

In summary, although some proposed a broader scope both before and after the WIPO Final Report, a

    narrower scope (and in particular a conjunctive requirement of bad faith registration and use) was adopted in the WIPO Final Report and retained thereafter in the UDRP as adopted.

    The majority of the present Panel is not persuaded to depart from the ordinary meaning of paragraph 4(a)(iii) of the UDRP and the long line of previous decisions which have required bad faith to be shown at the time of registration, albeit that such bad faith can be inferred in appropriate cases from the respondents subsequent

    conduct.

    The majority of this Panel is reinforced in this view by a number of recent decisions, including decisions of three-member Panels, which have rejected the re-evaluation of this issue in the Octogen case: see Camon

    S.p.A. v. Intelli-Pet, LLC, WIPO Case No. D2009-1716; BioClin B.V v. MG USA, WIPO Case No. D2010-0046;

    Heraeus Kulzer GmbH v. Dr. Walt Stoll, WIPO Case No. D2010-0137; Tata Communications International Pte

    Ltd (f/k/a VSNL International Pte Ltd) v. Portmedia Inc. / TRUEROOTS.COM c/o Nameview Inc. Whois, WIPO

    Case No. D2010-0217; Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case

    No. D2010-0470; India Infoline Ltd. v. Myles Hare, WIPO Case No. D2010-0542; Editions Milan v. Secureplus,

    Inc., WIPO Case No. D2010-0606, and RapidShare AG and Christian Schmid v. The holder of the domain

    name rapidshare.net, WIPO Case No. D2010-0598.

     2 ICANN’S ‘Uniform Dispute Resolution Policy’—Causes and (Partial) Cures, Brooklyn L.Rev. No. 3, 655 (2002) pp655-656

    page 10

As observed in the Octogen case, this is the generally accepted panel view. And as stated in Guildline

    Instruments Limited v. Anthony Anderson, WIPO Case No. D2006-0157,

    A long line of decisions has held that the first of these conditions requires that the original registration, or possibly a subsequent acquisition, of the Domain Name was in bad faith, and that the maintenance or renewal in bad faith of a registration originally made in good faith does not suffice: see Telaxis Communications Corp.

    v. William E. Minkle, WIPO Case No. D2000-0005, Teradyne Inc v. 4tel Technology, WIPO Case

    No. D2000-0026, Smart Design LLC v. Carolyn Hughes, WIPO Case No. D2000-0993, e-Duction, Inc. v. John

    Zuccarini, d/b/a The Cupcake Party & Cupcake Movies, WIPO Case No. D2000-1369, Weatherall Green &

    Smith v. Everymedia.com, WIPO Case No. D2000-1528, Village Resorts Ltd v. Steven Lieberman, WIPO

    Case No. D2001-0814, Substance Abuse Management, Inc. v. Screen Actors Modesl International, Inc.,

    WIPO Case No. D2001-0782, Gamer.tv Limited v. Bestinfo, WIPO Case No. D2004-0320, PAA Laboratories

    GmbH v. Printing Arts America, WIPO Case No. D2004-0338, Green Tyre Company Plc. v. Shannon Group,

    WIPO Case No. D2005-0877.

In The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447, the panel expressed the

    view that registered in bad faith could cover maintaining a domain name on the register in bad faith, but found that the original registration had in any event been in bad faith. In WIPO Case No. D2004-0338, cited above, the panel considered that Absent the consistency of approach which has found favour with numerous earlier panels, this Panel would have seen no good reason for a renewal not to be considered as equivalent to registration‟‟.

    Having reviewed the cases, the Panel considers that the consensus view, that the original registration or subsequent acquisition must have been in bad faith, should be followed in the interest of clarity and certainty.

    Following the generally accepted view, the majority of the Panel considers the critical question in the present case to be whether on the totality of the evidence and taking into account the evidentiary presumption in paragraph 4(b)(iv) of the UDRP, the Complainant has proved that the Respondent acted in bad faith when it registered the Domain Name in 1999.

    The majority of the Panel notes that the registration of the Domain Name was consistent with the agreements between the parties, that the Complainants did not object to it prior to the expiry of these agreements even 3though they knew of it, and that the Complainants did not complain about it in the arbitration. On the balance of probabilities, the Panel concludes that the Respondent registered the Domain Name in good faith to promote the sale of the FERRLECIT product under its agreements with the first Complainant. On the totality of the evidence, the majority of the Panel finds that the Respondent did not register the Domain Name in bad faith.

    It follows that the third requirement of the UDRP is not satisfied and the Complaint must therefore be rejected.

8. Decision

For all the foregoing reasons, the Complaint is denied.

Jonathan Turner

     3 This point distinguishes this case from Omnigraphics Capital (Pty) Ltd. v. Fleximount, Guy Langevin, WIPO Case No. D2004-0471

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