Covidien AG v. zhaozhongli zhaozhongli c/o zhaozhongli
Claim Number: FA0810001231649
Complainant is Covidien AG (“Complainant”), represented by James
R. Menker, of Holley & Menker, P.A.,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <covidien-china.com>, <covidien-china.net> and <covidien-china.org>, registered with Web Commerce Communications Limited d/b/a Webnic.cc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
David S. Safran, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 29, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 30, 2008.
On October 31, 2008, Web Commerce Communications Limited d/b/a Webnic.cc confirmed by e-mail to the National Arbitration Forum that the <covidien-china.com>, <covidien-china.net> and <covidien-china.org> domain names are registered with Web Commerce Communications Limited d/b/a Webnic.cc and that the Respondent is the current registrant of the names. Web Commerce Communications Limited d/b/a Webnic.cc has verified that Respondent is bound by the Web Commerce Communications Limited d/b/a Webnic.cc registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 10, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 1, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com, firstname.lastname@example.org and email@example.com by e-mail.
A Response was received in electronic format only and not in hard copy on December 1, 2008. The Response is therefore considered incomplete under ICANN Supplemental Rule 5(b).
On December 8, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David S. Safran as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant has contended that it
currently uses the mark COVIDIEN in connection with a wide-range of medical and
health-care related products and services, that it owns numerous Swiss
trademark registrations, has filed numerous Chinese trademark applications and
has filed numerous U.S. and Hong Kong trademark applications, a number of which
have matured into registrations and all of which contain the word COVIDIEN as
all or part of the mark. Complainant
also contends that “Covidien” is a coined term and is an inherently distinctive
mark as applied to the Complainant’s goods and services, that “Covidien” is not
a term that can be found in any dictionary in any language, and that
Complainant’s COVIDIEN mark is confusingly similar to the second level domain
name in the disputed domain names <covidien-china.com>, <covidien-china.net> and <covidien-china.org>.
Complainant states that the only difference between the COVIDIEN mark and the
disputed domain names are the inclusion of the geographic identifier “
Complainant also asserts that Respondent has no rights or legitimate interests to the <covidien-china.com>, <covidien-china.net> and <covidien-china.org> domain names, that Respondent’s use of, or demonstrable preparations to use, the domain names or any name corresponding to the domain names does not constitute a bona fide offering of goods or services. Complainant also contends that Respondent does not own any trademark rights in the subject domain names and is not commonly known by the subject domain name, and is not making legitimate noncommercial or fair use of the domain names, the domain names being used for commercial gain by attempting to mislead Complainant’s customers and potential customers into believing that Respondent is affiliated with Complainant and/or that he is authorized to sell Complainant’s products, some of which are being sold at the websites maintained at the <covidien-china.com>, <covidien-china.net> and <covidien-china.org> domain names.
Complainant also contends that Respondent has registered and used the subject domain name in bad faith because the domain names <covidien-china.com>, <covidien-china.net> and <covidien-china.org> were registered on November 28, 2007, after the Complainant began commercially using the COVIDIEN mark in connection with medical and health care related products and services, after Complainant had been granted trademark registrations for its mark in over eleven countries and in Hong Kong and after Complainant had filed applications in dozens more countries including China so that Respondent either knew or should have known (by reason of the Complainant’s numerous registered trademarks and constructive notice thereof) that its registration and use of the disputed domain would be infringing upon Complainant’s trademark.
Complainant also asserts that Respondent’s use of the <covidien-china.com>, <covidien-china.net> and <covidien-china.org> domain names is likely to create confusion among customers and potential customers in China and elsewhere who are searching for Complainant’s business or its products and that Respondent’s manner of use of the disputed domain names will likely lead to confusion among Internet users as to Complainant’s sponsorship of or affiliation with the resulting website and disputed domain names.
Respondent contends that when Covidien was a subsidiary of Tyco, it was
to be the Tyco product sales representative of Covidien. Respondent also contends that the domain
names <covidien-china.com>, <covidien-china.net>
are different from the COVIDIEN trademark which was not officially registered in the
Preliminary Issue – INCOMPLETE Response
The Response is considered deficient because it was not received by the National Arbitration Forum in hard copy pursuant to ICANN Supplemental Rule 5(b). Nonetheless, the Panel is free to consider the Response. See, Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Feb. 28, 2007) (deciding to consider the respondent’s response even though it was deficient because it provided useful information to the panel in making its decision); see also Mattel, Inc. v. Yoon, FA 967843 (Nat. Arb. Forum June 4, 2007) (deciding to consider a deficient response because of the need to resolve the dispute between the parties, and because ruling the response inadmissible due to formal deficiencies would not be consistent with the basic foundations of due process). Thus, the Panel has decided to consider the Response in formulation of its decision.
The Panel finds that the domain names registered by Respondent are confusingly similar to trademarks in which Complainant has rights. The Panel also finds that, as the sales representative for China of Tyco (the Response is unclear as to whether Tyco International or Tyco Healthcare), Respondent would have/must of had knowledge of the divestiture of Tyco Healthcare by Tyco International and the change of its name to Covidien prior to Respondent having registered the domain names <covidien-china.com>, <covidien-china.net> and <covidien-china.org> and any trademark rights based on sales by Respondent of Complainant’s goods would have inured to the benefit of Complainant and would not have given Respondent any rights in the COVIDIEN trademarks.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “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 Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has provided evidence of trademark registrations for the COVIDIEN mark with numerous jurisdiction across the world, including with the Swiss Federal Institute of Intellectual Property (“SFIIP”) (Reg. No. 555,921 issued January 23, 2007), the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,361,986 issued January 1, 2008, filed April 18, 2007), and with the Hong Kong Special Administrative Region Trade Marks Registry (hereinafter “Hong Kong trademark authority”) (Reg. No. 300,844,786 issued August 29, 2007). The Panel finds these trademark registrations establish Complainant’s rights in the COVIDIEN mark pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
The <covidien-china.com>, <covidien-china.net>
domain names each contain
Complainant’s COVIDIEN mark followed by a hyphen, the geographic term “china,”
and the generic top-level domain (“gTLD”) “.com,” “.net” or “.org.” First, the
incorporation of a gTLD is generally considered irrelevant to a Policy ¶
4(a)(i) analysis. Second, the use of a hyphen does not sufficiently distinguish
a disputed domain name. And third, the addition of the term “china” to the
COVIDIEN mark, which describes the area in which Complainant is located and
conducts its business, does not differentiate the disputed domain names.
Complainant operates its business world-wide, including in
Initially, the Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent does not own any trademark rights in the disputed domain names and is not commonly known by the disputed domain name. The WHOIS information identifies Respondent as “zhaozhongli zhaozhongli c/o zhaozhongli” and Respondent does not discernibly deny or confirm Complainant’s assertions in its Response, but does indicate that it had been acting as a representative of, presumably, the former parent of Complainant’s predecessor company. Without any further information in the record, the Panel finds that Respondent is not commonly known by any of the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
The disputed domain names resolve to a website that Complainant asserts, “offers Complainant’s products as well as those of others for sale.” Additionally, Complainant contends that there are a variety of links to other websites registered to Complainant and some registered to direct competitors of Complainant. Complainant argues that Respondent is not authorized to sell Complainant’s products or otherwise market its goods. Upon all of these grounds, the Panel finds that Respondent is making neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) with either the <covidien-china.com>, <covidien-china.net> or <covidien-china.org> domain names. See, Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (the panel found that the respondent’s appropriation of complainant’s marks to sell complainant’s and complainant’s competitors’ goods was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii)).
Complainant argues that Respondent
is using the disputed domain names in an attempt capitalize off of the good
will associated with Complainant’s COVIDIEN mark because (1) the disputed
domain names contain Complainant’s mark in its entirety and (2) they also
contain the geographic locator “china.”
Complainant asserts that the
disputed domain names were registered almost a year after Complainant had
registered the related COVIDIEN mark with the SFIIP and
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <covidien-china.com>, <covidien-china.net> and <covidien-china.org> domain names be TRANSFERRED from Respondent to Complainant.
David S. Safran, Panelist
Dated: December 22, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration ForuM