national arbitration forum

 

DECISION

 

Life Technologies Corporation v. ATZ Lab Solutions (India) Pvt. Ltd

 

Claim Number: FA1012001363893

 

PARTIES

Complainant is Life Technologies Corporation (“Complainant”), represented by Jayant Kumar of ALG India Law Offices, California, USA.  Respondent is ATZ Lab Solutions (India) Pvt. Ltd (“Respondent”), represented by Abhishek Saket of INFINI JURIDIQUE, India.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <gibcobrlindia.com>, registered with TUCOWS, INC.

 

PANEL

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.

 

Dennis A. Foster as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 16, 2010; the National Arbitration Forum received payment on January 21, 2011.

 

On January 24, 2011, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <gibcobrlindia.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name.  TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On January 25, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 14, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@gibcobrlindia.com.  Also on January 25, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be deficient on February 14, 2011.

 

Complainant’s Additional Submission was received on February 22, 2010 in compliance with paragraph 7(a) of the Forum’s Supplemental Rules.  The Panel has considered that Additional Submission in rendering the decision below.  The Respondent’s Response to the Complainant’s Additional Submission was received on February 28, 2010, and this, too, has been taken into consideration.

 

On February 18, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dennis A. Foster as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

- Complainant’s predecessor began the manufacture of cell culture media, sera and reagents in 1962.  That company marketed its products under the trademark GIBCO.  In 1983, said company merged with another and began also to sell products under the mark GIBCO BRL.

 

- Complainant owns multiple trademark registrations for the marks GIBCO and GIBCO BRL with various national authorities. Through long years of marketing, advertisement and promotion, the marks have acquired distinctiveness as being associated exclusively with Complainant as well as international fame and recognition. 

 

- In 2009 Complainant had revenues of USD$427 Million in the United States and USD$2.7 Million in India, where Respondent is domiciled.  As a result, Complainant’s GIBCO mark is well known in India and to Respondent.

 

- The disputed domain name, <gibcobrlindia.com>, incorporates in full both of Complainant’s marks, GIBCO and GIBRO BRL, and is therefore confusingly similar to those marks.  The addition of the geographical location, India, to the name is insufficient to distinguish that name from the marks.  Such an addition serves only to confuse internet users into believing that the disputed domain name is related to an Indian affiliate of the trademark holder.

 

- Respondent was initially incorporated in 1997 as a subsidiary of Complainant’s predecessor.  As Complainant’s subsidiary, Respondent enjoyed a general license to use Complainant’s trademark in commerce and was authorized to register the disputed domain name, which was registered on November 27, 1998.

 

- In 2001, Complainant’s predecessor decided to operate in India under a different distributor and by contract transferred the rights to use the above-referenced trademarks and the disputed domain name to that distributor.  Said predecessor thereafter sold its shares in Respondent to said distributor, Respondent becoming only a nominal registrant of the disputed domain name. 

 

- In 2004, Complainant’s predecessor established still another subsidiary to handle commerce in India, thereby terminating its distribution agreement with the preceding distributor referred to above.  From then on, neither that distributor nor Respondent had any rights from Complainant’s predecessor to use the GIBCO or GIBCO BRL trademarks or maintain any ownership of the disputed domain name.

 

- In line with the above contentions, Respondent has no rights or legitimate interests in the disputed domain name.

 

- There is no evidence that Respondent is commonly known as the disputed domain name.  The disputed domain name hosts a blank web page, which is  inconsistent with a bona fide offering of goods or services and inconsistent with legitimate noncommercial or fair use of the name.

 

- The disputed domain name was registered and is being used in bad faith.  Respondent conducts no legitimate commercial or noncommercial business in connection with that name. 

 

- Respondent was authorized to register and use the disputed domain name in 1988, but the authorization to use the name was withdrawn by contractual agreement in 2005.  Respondent’s continued re-registration of the name after 2005 and refusal to transfer the name to Complainant upon its request are evidence of bad faith registration and use of said name.

 

- Respondent’s attempt to conceal its identity on the appropriate registration forms constitutes further evidence of bad faith registration and use.  Moreover, Respondent’s disregard for its infringement of Complainant’s trademarks in the use of the disputed domain name, is still more evidence of bad faith registration and use of that name.

 

B. Respondent

 

- This case is identical to a prior case between Complainant and Respondent over a different domain name in dispute.  In that prior case, the complaint was dismissed for various reasons, including that the case was outside the purview of the Policy.  The present case should be dismissed for similar reasons.

 

- This dispute is based on the contractual relationship between the parties stemming from the 2002 Share Purchase Agreement into which they entered.  As such, the only authority competent to adjudicate the dispute is the Indian court system.

 

- Rights in the disputed domain name vested originally in Respondent and the Share Purchase Agreement made no attempt to transfer those rights to Complainant.  At the time of sale, Respondent was a “going concern” and as such retained all rights that it held previously unless specifically noted otherwise.

 

- For eight years, there was no objection from Complainant as to ownership of the disputed domain name.  Complainant and Respondent exchanged hundreds of communications through that name during that period.

 

- Under Indian law, Complainant is limited to three years after the cause of action in which to bring a claim, which means in this case that Complainant was barred after 2005 from claiming to have gained ownership of the disputed domain name.

 

- The disputed domain name was registered by Respondent’s predecessor in good faith prior to the Share Purchase Agreement.

 

- Complainant has no trademark registrations in India and never used the GIBCOBRL mark in Indian commerce after 2001.   Complainant’s marks are not well known in India or globally.

 

- Complainant never had a dealership or distribution contract with Respondent, and any prior relationship between the two parties was superseded by the Share Purchase Agreement.

 

- Respondent registered the disputed domain name well before 2009, and is not using the name to trade off the good will of Complainant.  Nonuse of the name is not evidence of bad faith, as Respondent is entitled to use or not use the name as it determines.

 

C. Complainant’s Additional Submission

- Respondent has not submitted evidence that hundreds of email communications passed between it and Complainant over the eight years prior to the filing of the Complaint.  All of the twenty such emails presented by Respondent occurred before June 2005, which is when Complainant terminated its distributorship with Respondent’s then owner.  It was only in 2008 that Complainant discovered and realized that Respondent still possessed the infringing disputed domain name.

 

- Respondent’s claim to have acquired rights in the disputed domain name through the 2002 Share Purchase Agreement is incorrect.  Respondent acquired those rights through its status as a subsidiary of Complainant under an implied grant of authorization beginning in 1998, when Respondent registered the name.  As is customary between multinational companies and their country specific subsidiaries, there was no separate license/agreement addressing such rights – in fact said authorization must be presumed.

 

- Respondent has interpreted the Share Purchase Agreement incorrectly, and asserts the retention of trademark and domain name rights that it never had.

 

- The abandonment of trademark applications in India by Complainant did not represent Complainant’s abandonment of its trademark rights in India.  Complainant did not terminate its business operations in India.

 

- Complainant disagrees that this dispute is beyond the scope of a UDRP proceeding, that only Indian law may be applied and that, in any event, Complainant is barred by application of estoppel or laches because of delayed filing.   Moreover, the decision in the prior dispute between the parties should not prevent a ruling on this dispute based solely on the merits at hand.

 

FINDINGS

Complainant’s predecessor is an American company that has marketed cell culture media, sera and reagents since1962.  Created as the result of a merger with another American company, Complainant has continued business in the same field, utilizing valid trademark registrations for its marks, GIBCO (e.g., United States Patent and Trademark Office Registration No. 2,694,749; issued March 11, 2003) and GIBCO BRL (e.g., Argentina National Institute of Industrial Property Registration No. 1705017; issued November 18, 1998).

 

Respondent is an Indian company that owns the registration for the disputed domain name, <gibcobrlindia.com>.  The date of creation for that registration is November 27, 1998.  Respondent was formed as a subsidiary of Complainant in 1997 and authorized by Complainant to register and use the disputed domain name for at least a number of years after said creation.

 

DISCUSSION

Paragraph 15(a) of 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 Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

Respondent has no rights or legitimate interests in respect of the domain name; and

the domain name has been registered and is being used in bad faith.

 

Preliminary Issue: Deficient Response

Though the Response is deficient due to its length (31 pages as opposed to a maximum of 15 pages allowable per paragraph 5(a) of the Forum’s Supplemental Rules), the Panel, under its discretion pursuant to paragraph 10(b) of the Rules, will consider the Response in this decision in order to permit each party “a fair opportunity to present its case.”  See Victoria’s Secret Stores Brand Management, Inc. v. AJ LaFond, FA 1362225 (Nat. Arb. Forum Jan. 7, 2011); and Süd-Chemie AG v. tonsil.com, D2000-0376 (WIPO July 3, 2000).

 

Preliminary Issue: Dispute Outside the Scope of the UDRP

Both Complainant and Respondent concede in their submissions to the Panel that they have a relationship dating back to 1997.  The record indicates that, at that time, Respondent was formed as a subsidiary of Complainant.  Shortly thereafter, the disputed domain name was registered by Respondent with Complainant’s permission.

 

Complainant and Respondent did business together in India, utilizing the disputed domain name to some extent.  Subsequently, Complainant entered into a number of contractual arrangements that altered its product distribution pattern in India.  These arrangements also altered its relationship with Respondent.

 

In the Panel’s view, Complainant and Respondent disagree fundamentally as to how these various contracts should be interpreted, whether Indian law should control and what should be the effect upon possession of the disputed domain name.  Thus, the Panel finds that the instant case is a contractual dispute between two companies that each has at least some arguable claim to legitimate rights or interests in the disputed domain name.

 

The Panel believes that the Policy is not designed to allow the Panel the leeway to analyze relatively complex contractual disputes and certainly does not provide for the comprehensive application of Indian law.  The Policy is designed primarily to address the internet phenomenon of cybersquatting, whereby entities deliberately infringe upon the rights of established trademark holders through the bad faith registration and use of identical or confusingly similar domain names. See Jason Crouch and Virginia McNeill v. Clement Stein, D2005-1201 (WIPO Jan. 31, 2006) (“The Policy was adopted to deal as is with the problem of cybersquatting, the registration of domain names consisting of, including, or confusingly similar to marks belonging to another for the purpose of profiting from the goodwill associated with said marks.”); and Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005) (“The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”).  Consequently, the Policy is not meant to ferret out every circumstance of wrongful domain name registration and use, but should be applied only to those cases that can be decided based upon a relatively brief examination of limited evidence, without conducting hearings to establish degrees of credibility. See, Jason Crouch, supra (“The questions under the Policy to be addressed by the Panel are relatively simple and straightforward.  The proceeding is a summary one, without the benefit of confrontation of the witnesses, or even of a hearing.”).

 

Given the nature of the contractual and business issues presented, the Panel determines that this dispute fails to fall within that realm of straightforward cases and thus is unsuitable for a decision under the Policy.

 

 

DECISION

Accordingly, it is Ordered that the Complaint be dismissed.

 

 

Dennis A. Foster, Panelist

Dated:  March 4, 2011