Immuno-Biological Laboratories, Inc. v. Dirk Boettcher / IBL International GmbH
Claim Number: FA1503001611423
Complainant is Immuno-Biological Laboratories, Inc. (“Complainant”), represented by Z. Peter Sawicki of Westman, Champlin & Koehler, P.A., Minnesota, USA. Respondent is Dirk Boettcher / IBL International GmbH (“Respondent”), represented by Eric T. Fingerhut of Dykema Gossett PLLC, Washington, D.C., USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ibl-international.com>, registered with MESH DIGITAL LIMITED.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 25, 2015; the Forum received payment on March 25, 2015. The Complaint was received in both German and English.
On March 26, 2015, MESH DIGITAL LIMITED confirmed by e-mail to the Forum that the <ibl-international.com> domain name is registered with MESH DIGITAL LIMITED and that Respondent is the current registrant of the names. MESH DIGITAL LIMITED has verified that Respondent is bound by the MESH DIGITAL LIMITED 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 April 3, 2015, the Forum served the German language Complaint and all Annexes, including a German language Written Notice of the Complaint, setting a deadline of April 23, 2015 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@ibl-international.com. Also on April 3, 2015, the German Language Written Notice of the Complaint, notifying Respondent of the e-mail 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 complete on April 23, 2015.
Complainant submitted a timely additional submission, which was received on April 27, 2015.
Respondent submitted a timely additional submission, which was received on April 28, 2015.
On May 5, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the German language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant owns the IBL mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,688,490, first used in commerce July 7, 2003, filed Nov. 6, 2008, registered Sept. 29, 2009). Complainant also owns the IBL AMERICA mark through its registration with the USPTO (e.g. Reg. No. 3,365,887, first used in commerce July 7, 2003, filed Aug. 28, 2006, registered Jan. 8, 2008).
Complainant uses the IBL and IBL AMERICA marks in connection with its medical laboratories and laboratory research.
The <ibl-international.com> domain name is confusingly similar to the IBL and IBL AMERICA marks. The disputed domain name contains Complainant’s IBL mark in full, adds a hyphen followed by a geographic modifier, and inserts the generic top-level domain (“gTLD”) “.com” to the disputed domain name. Further, the disputed domain name contains a portion of Complainant’s IBL AMERICA mark, changes the geographic modifier from “America” to “International,” adds a hyphen, and inserts the gTLD “.com” to the disputed domain name.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name or by Complainant’s IBL marks. Complainant has never authorized Respondent’s use of its trademark, nor permitted Respondent to register the disputed domain name. Respondent’s lack of rights or legitimate interests in the disputed domain name is made further evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses Complainant’s trademark to tortiously interfere with Complainant’s business by trading off of the goodwill Complainant has established in the field of laboratory research and testing. Respondent uses the disputed domain name to offer products and services that are substantially the same as Complainant’s.
Respondent has engaged in bad faith registration and use of the <ibl-international.com> domain name. Respondent uses the disputed domain name to divert Complainant’s business to Respondent, resulting in a disruption of Complainant’s business. Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Respondent had actual and/or constructive knowledge of Complainant’s mark at the time of the domain registration, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
B. Respondent
Respondent contends as follows:
Respondent has conclusively established rights in the IBL mark. Respondent is the senior user and owner of the IBL INTERNATIONAL and IBL HAMBURG marks.
Respondent was issued European Community Trade Mark registration for the IBL mark many years before the subject UDRP complaint was filed by Complainant (e.g., Reg. No. 8,544,405, registered Aug. 3, 2010). Respondent has used the marks in its company name and the <ibl-hamburg.com> domain name many years before Complainant claimed to first register the IBL mark with the USPTO.
Respondent registered the disputed domain name on July 24, 2008. Respondent has rights and legitimate interests in the disputed domain name, given its longstanding use of the IBL mark as part of its company name and other domain names. Complainant cannot prove it has rights in the trademark IBL superior to those of Respondent. Respondent is the senior user in the IBL mark, whose use predates Complainant’s. Complainant’s past rights to use Respondent’s IBL mark stems from two distribution agreements between Complainant and Respondent. All distribution agreements have been terminated since 2006. Respondent has never assigned its trademark rights to Complainant, but rather issued trademark licenses through the prior distribution agreements. Without a current distribution agreement, Respondent owns all rights in the IBL mark, both internationally and in the United States.
Complainant has abused the UDRP process and is a reverse domain name hijacker who has misrepresented facts to the Panel. Complainant registered its domain names and USPTO trademarks with actual knowledge of Respondent’s rights in the IBL mark, as evidenced through the prior distribution agreement. Complainant has brought the UDRP Complaint now because it knows Respondent is ready to petition to cancel Complainant’s U.S. registrations on the ground they were fraudulently procured and maintained.
C. Additional Submissions
Complainant additionally contends as follows:
Respondent mischaracterizes the parties in this dispute, as no business relationship existed between Complainant and Respondent at the time of the disputed domain name registration.
This matter is properly within the scope of the Policy. The Respondent mischaracterizes the nature of this domain name dispute and confuses the disputed domain name, <ibl intemational.com> with a previous domain name, ibl-hamburg.com that has not been in use since at least a time prior to the registration of <ibl-intemational.com> in 2008. It is further noted that none of the agreements provided by Respondent relate to the issue at hand, <ibl-international.com>. Moreover, these potential agreements, between Ibl Hamburg and Complainant, were terminated by Ibl Hamburg shortly after execution by the parties in 2006. Complainant and Ibl-Hamburg's relationship was terminated in November 2006, almost two years prior to Respondent's registration of <ibl-international.com>.
Respondent knew that Complainant was known as IBL and IBL AMERICA and that no relationship, sponsorship or affiliation between the parties existed after November 2006. The disputed domain name was registered on July 24, 2008. At the time of registration, July 24, 2008, Respondent had actual knowledge of Complainant and Complainant's rights in the IBL and IBL AMERICA marks. Respondent had actual knowledge at the time of registration of the disputed domain name that no business relationship existed between Complainant and Respondent. At the time of the registration of the disputed domain name, Respondent selected a domain name confusingly similar to Complainant's marks to sell the same or similar products as Complainant. Respondent's registration was in bad faith and continues to be in bad faith as the domain name is being used to directly interfere with Complainant's legitimate use of its marks.
Respondent additionally contends as follows:
Complainant does not: (1) deny that Respondent has used “IBL” as a trademark and trade name continuously from a time prior to Complainant’s first use of IBL as a service mark, trade name, or part of a domain name; (2) deny the existence or validity of Respondent’s two Community Trade Mark Registrations for the IBL mark, with an effective date of September 11, 2009; (3) deny that Respondent legitimately has used and traded under the “IBL International” designation since prior to the filing date of Complainant’s U.S. application for “IBL”; (4) deny that Respondent has the right to use “IBL”, “IBL Hamburg” or “IBL International” outside of the United States; and/or (5) claim any rights in, and/or to use, the “IBL” designation anywhere in the world outside of the United States. Indeed, Complainant’s Additional Written Statements make it clear that prior to filing the instant complaint, Complainant was well aware of Respondent’s prior and continuing legitimate use of IBL (and IBL Hamburg and ibl-hamburg-com) – and that Complainant’s prior relationship with Respondent was the genesis for Complainant seeking to use and/or register IBL AMERICA in the United States. Thus, Complainant’s Additional Written Statements only serve to confirm that Respondent has a legitimate interest in “IBL,” “IBL International,” and <ibl-international.com>; that the registration in 2008 (and Respondent’s continuous use since then) of the <ibl-internationl.com> domain name was not (and is not) undertaken in bad faith; and that Complainant’s pursuit of this complaint is in bad faith.
Complainant has rights in the IBL mark through its registration of such mark with the USPTO.
Respondent has rights in the IBL mark through its registration of such mark within the European Community.
Respondent uses the at-issue domain name to address its immunoassays for research and specialty diagnostics related business website.
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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for the IBL trademark demonstrates its rights in such mark for the purposes of Policy ¶4(a)(i). Complainant’s rights exist notwithstanding that Respondent may operate outside the jurisdiction of the trademark’s registrar. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also, Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
In forming the at-issue domain name Respondent adds a hyphen and the term “international” to the IBL mark and then appends the top-level domain name “.com” to the resulting string. These alterations to the IBL mark are insufficient to distinguish the at-issue domain name from the mark for the purposes of the Policy. Therefore, the Panel finds that the <ibl-international.com> domain name is confusingly similar to the IBL mark. See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); see also, Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Here, Complainant meets its slight initial burden by asserting that it has never authorized Respondent to use its trademark and by further alleging that Respondent is not known by the domain name and has neither used the domain name in connection with a bona fide offering of goods or services nor made a legitimate non-commercial or fair use of the domain name. However, WHOIS information for the at-issue domain name lists “Dirk Boettcher / IBL International GmbH” as the domain name’s registrant. Additionally, Respondent asserts and Complainant does not deny that IBL has been the dominant portion of Respondent’s company name since March of 1983. See Am. Credit Union Buyers Ass’n v. Acuba Ltd., FA 164306 (Nat. Arb. Forum July 16, 2003) (finding that complainant’s allegations that “[n]o evidence indicates that Respondent has been known . . . by the Domain Name” did not acknowledge or address evidence that respondent was known by the disputed domain name, having registered <acuba.com> under the name Acuba Limited, and, therefore, were not a prima facie showing under Policy ¶ 4(a)(ii)). Respondent’s papers offer extensive documentation showing its use of IBL in conjunction with its long standing business. Importantly, Respondent owns trademark registrations for IBL and IBL & Design in the European Community. As Respondent’s use of the IBL mark predates that of Complainant’s, Respondent establishes its bona fide offering of goods or services in connection with the at-issue domain name in accord with Policy ¶ 4(c)(i). See Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (finding that the respondent’s operation of a bona fide business of online prop rentals for over two years was evidence that the respondent had rights or legitimate interests in the disputed domain name).
Given the foregoing, the Panel concludes that Respondent has rights and/or interests in the <ibl-international.com> domain name pursuant to Policy ¶ 4(c)(ii).
Since Complainant fails to show Respondent lacks rights and interests in respect of the domain name, the Panel need not consider Respondent’s bad faith under Policy ¶4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Respondent requests that the Panel hold that Complainant has acted in bad faith in bringing its complainant and has engaged in reverse domain name hijacking. However, even though Complainant fails to satisfy its burden under the Policy, a finding of reverse domain name hijacking does not necessarily follow. See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”). Complainant succeeds under Policy ¶4(a)(i) and it is not apparent from the record that Complainant knew or should have known to a reasonable certainty that its complaint would fail under either Policy ¶(a)(ii) or ¶(a)(iii). On balance the Panel concludes that Complainant did not engage in reverse domain name hijacking. See Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <ibl-international.com> domain name REMAIN WITH Respondent.
Paul M. DeCicco, Panelist
Dated: May 12, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page