Caliper Technologies Corp. v. NorChip AS
Claim Number: FA0204000110842
Complainant is Stephen R. Flach d/b/a Caliper Technologies Corp., Mountain View, CA, USA (“Complainant”). Respondent is Einar Morland NorChip AS, Klokkarstua, NORWAY (“Respondent”) represented by Julius Stobbs, of Boult Wade Tennant.
The domain name at issue is <LabChip.biz>, registered with ASCIO Technologies, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Clive Elliott as Panelist.
Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel. As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).
Complainant submitted a Complaint to the Forum electronically on April 25, 2002; the Forum received a hard copy of the Complaint on April 26, 2002.
On April 30, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 20, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).
A timely Response was received and determined to be complete on May 17, 2002.
On June 27, 2002, pursuant to STOP Rule 6(b), the Forum appointed Clive Elliott as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
LabChip is a registered trademark of Caliper Technologies Corp., registered on February 22, 2000 under Registration Number 2,322,022 with the United States Patent and Trademark Office. A copy of the Certificate of Registration has been supplied.
Complainant states LabChip is used to brand the microfluidic technology developed by it and for which it holds patents on the design and operation of these microfluidic chips. Complainant states that it developed this technology in 1996 and has been selling these chips since 1997.
LabChip is currently used by Complainant to market existing products and is
described in its technical literature as the core technology of its microfluidic products.
Complainant has also registered <LabChip.com>, <LabChip.net>, <LabChip.tv>, <LabChip.org>, <LabChip.ws>, <LabChip.cc> and <LabChip.bz> domains for the purpose of directing interested parties to its LabChip products.
It is asserted that the use of <LabChip.biz> by Respondent interferes with the dissemination of information about the LabChip products made by the Complainant
It is asserted that the products of Respondent are known by the names AutoChip, IMRAMP, NASB and Molecular Beacons. It is also asserted that the term LabChip is nowhere used to describe any of these products.
Complainant argues that Respondent has registered the domain <LabChip.biz> with no intention of using it to describe any of their existing or future products or lines of business. Accordingly, it is submitted that, having no use for the domain <LabChip.biz>, the Respondent has registered it solely to prevent the Complainant from using it as a domain name which describes the technology and directs customers to a site listing LabChip products.
Respondent admits that, according to the evidence submitted, that Complainant appears to be the registered proprietor of the trade mark LabChip registered in the United States. The Respondent however states that it was unaware of the existence of any proprietary right in the word labchip and that it was unaware of the existence of the Complainant's US registration of the trade mark.
Although the Complainant has set out details of the nature of the products and services offered under the LabChip mark, no common-law rights are claimed and the Respondent makes no admission as to the existence of any such rights. The Complainant has not given details of the geographical location of its use of the mark, which would be required to define the existence and scope of any such common-law trade mark "right".
Respondent also admits that it has not made any use of the domain name as yet as this has been prevented by the STOP procedure. Secondly, the Complainant's registration of several domain names incorporating labchip grants no right to register the same name in different domains. Indeed, the fact that the Complainant already has several domain names incorporating the word labchip indicates that the Complainant is already able to disseminate information about its own products.
Respondent points out that it registered the domain names <LabChip.no> and <LabChip.info> as of 12 March 2001 and 20 September 2001respectively and this was before notice of the commencement of this dispute. It is also mentioned that both of these domain names point to the Respondent's main site, <norchip.com>.
Respondent states that other parties unconnected with either the Complainant or Respondent have also registered domain names consisting of the word labchip and examples were given.
Respondent claims that many parties within this area of expertise use the generic term labchip in a purely descriptive manner, to describe a particular class of product It also asserts Respondent has an entirely legitimate interest in using the term this way, either as a domain name to point to its own website, or to refer to its own products which are described by the term.
Respondent claims that it has used the word labchip as a generic term to describe some of their own products and it commenced doing so as early as June 1998. An extract from the Respondent's 1998 Business plan states:
"Norchip AS possesses highly specialised know-how and experience related to bio-technology, bio-informatics, molecular and genetic biology, relational database software and software development and project administration and organisation. On this basis, NorChip AS intends to develop e.g. the following applications:
LabChip is designed to break down, identify, concentrate and separate micro-organisms in any sample media. The Labchip will be constructed as an user-friendly, integrated and compact instrument for direct in-situ use." (Emphasis added)
Respondent claims to have a legitimate interest in using what it and other parties consider a generic term to refer to their own products.
In its use of the domain names <LabChip.no> and <LabChip.info>, the Respondent has made further use of names corresponding to the domain name <LabChip.biz> in connection with a bona fide offering of goods or services, as these names are used to point to its main site <norchip.com>, where details of its microfabricated fluidic systems are available. On this basis it is submitted that Respondent has demonstrated its legitimate interest in the domain name.
It is argued that, even if Respondent had not used the term at all, this would not affect its legitimate interest to do so: use of a generic, descriptive term in reference to the products it describes is inherently legitimate. It is submitted that it is for this reason, coupled with its own unhindered use of the term for some four years, that the Registrant chose the domain name and that it had a legitimate interest in doing so.
Further, it is suggested that even if Respondent had made no use of the term labchip, its belief that the term is generic and its awareness of various parties' use of the term in a generic way would lead to an entirely legitimate interest in the domain name to allow Internet users to identify its own products.
Respondent contends that even if it were established that the term labchip were not generic, Respondent cannot be considered to have acted in bad faith in registering the domain name given nearly four years unhindered use and Respondents reasonable expectation that it could continue such use. However, it submits that the evidence showing various parties' use of the term, labchip as a descriptive and/or generic term referring to a particular kind of product, strongly supports the Respondents belief that the term is indeed generic.
Finally, Respondent asserts that the Complainant has not been able to provide any evidence to indicate that any of the circumstances indicating bad-faith registration as set out in paragraph 4(b) of the STOP Policy are present.
For the reasons set out below it is found that Complainant has failed to satisfy the requirements of paragraph 4 (a) of the STOP Policy and accordingly the Complaint is dismissed.
Paragraph 15(a) of the STOP Rules instructs this Panel to “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.”
Paragraph 4(a) of the STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.
Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.
Complainant has a registration for the trade mark LabChip in the USA in relation to various scientific apparatus. The registration is dated February 22, 2000 and covers a relatively restrictive category of goods. Respondent does not dispute the registration as such. Leaving aside the descriptive element "biz", it is clear that the registered trade mark and disputed domain name are identical.
Accordingly, it is possible to conclude without difficulty, that the domain name is identical to a trade mark in which Complainant has rights. Accordingly, the first ground is made out by the Complainant.
While Respondent accepts Complainant has rights in the USA by way of a trade mark registration, it asserts it was unaware of such trade mark registration. It also asserts that labchip is both descriptive and generic of a particular scientific process.
A reasonable body of evidence has been lodged, illustrating that the term labchip is indeed descriptive of the process as described by the Respondent. Accordingly, there is merit in Respondent's contention that it was both a reasonable and legitimate belief that the term was generic and that it would therefore be an appropriate term to use in a domain name to allow Internet users to identify Respondent's own products.
While Complainant asserts that Respondent has used other names to identify its products and it had no real intention of using the disputed domain name to describe existing or future products, this assertion ignores the fact that others in the industry have used the term labchip/lab chip to refer to the relevant process. Further, it does not address Respondent's primary argument, namely that it had used the term labchip/lab chip as a generic term to describe some of its own products as early as June 1998. In this regard, reference is made to Respondent's business plan.
The question therefore becomes whether the registration of Complainant's mark in the USA should prevent an entity in another country from using a descriptive and/or generic term and one which it itself had used before the relevant registration date. More appropriately, within the context of this particular inquiry, the question is whether this situation points towards or away from a right or legitimate interest?
In the Panel's view it points towards a legitimate interest. Further, there is no compelling evidence to suggest that the conclusion should be otherwise.
Accordingly, it is found that Respondent has rights or legitimate interest in the domain name in dispute. Accordingly, the Panel dismisses the Complaint and determines that subsequent challenges to this domain name, as against Respondent under the STOP Policy shall not be permitted against this domain name.
While the Complainant only need establish that either the registration or use was in bad faith, this issue is not determinative in this particular case. That is, as it has been found that Complainant fails to establish the above ground.
Notwithstanding this, for the sake of completeness, it is found that for much the same reasons as expressed above, neither the registration nor use was/is in bad faith. Obviously, there has been no use of the domain name, allegedly because of the STOP procedure. But if there had been use the Panel would have found such use acceptable and not in bad faith.
Insofar as registration is concerned, Respondent notes that Complainant does not allege or rely upon a common law reputation. Further, apart from the trade mark registration little evidence was given as to the scope and extent of any possible reputation in the LabChip trade mark/name. Accordingly, when Respondent says that it had no knowledge of Complainant's trade mark registration at the material date there is no compelling evidentiary basis for doubting that assertion.
Accordingly, the only real basis upon which such assertion could be challenged would be constructive knowledge of Complainant's USA trade mark registration. However, for the reasons given above and in particular given the descriptive and/or generic nature of the term labchip/lab chip, it is felt that constructive knowledge should not be imputed to the Respondent.
In view of the above the Complaint is dismissed. Further challenges against this domain name under the STOP Policy shall not be permitted.
Clive Elliott, Panelist
Dated: 10 July 2002
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