Thermo Electron Corp., Fisher Scientific Co. LLC, and Fisher Scientific Int'l Inc. v. YonSei
Claim Number: FA0605000705266
Complainants are Thermo Electron Corp., Fisher Scientific Co. LLC, and Fisher Scientific Int'l Inc. represented by Helen Hill Minsker, of Banner & Witcoff Ltd., 1001 G Street NW, Suite 1100, Washington, DC 20001. Respondent is YonSei (“Respondent”), 39-B.D 6F PI Hankangno 3ka, Yongsanku, Seoul.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <thermofisher.com>, registered with Hangang Systems, Inc. d/b/a Doregi.com.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 12, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 12, 2006. The Complaint was submitted in both Korean and English.
On May 15, 2006, Hangang Systems, Inc. d/b/a Doregi.com confirmed by e-mail to the National Arbitration Forum that the <thermofisher.com> domain name is registered with Hangang Systems, Inc. d/b/a Doregi.com and that Respondent is the current registrant of the name. Hangang Systems, Inc. d/b/a Doregi.com has verified that Respondent is bound by the Hangang Systems, Inc. d/b/a Doregi.com 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 May 22, 2006, a Korean language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 12, 2006 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 postmaster@thermofisher.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 20, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Korean 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 makes the following assertions:
1. Respondent’s <thermofisher.com> domain name is confusingly similar to Complainant’s THERMO and FISHER marks.
2. Respondent does not have any rights or legitimate interests in the <thermofisher.com> domain name.
3. Respondent registered and used the <thermofisher.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant Thermo Electron Corp. (“Thermo”) provides analytical products and services to the scientific community. Founded over fifty years ago, Thermo is a publicly-traded corporation with over 11,000 employees and has $2.6 billion in annual revenues. In connection with its analytical product and services, Thermo holds numerous trademark registrations throughout the world, including the THERMO mark with the Benelux Trademark Office (“BTO”) (Reg. No. 0780250 issued November 29, 2005).
Complainant Fisher Scientific Int’l Inc. (“Fisher International”) also provides analytical products and services to the scientific community. Fisher International is a publicly-traded company with annual revenues of $5.6 billion. Fisher International also holds several trademark registrations for use with the provision of these products including the FISHER mark, which is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,743,292 issued July 29, 2003). Fisher Scientific Co. LLC is a subsidiary of Fisher International.
Furthermore, Complainants Thermo and Complainant Fisher International have entered into an agreement to merge, which was announced on May 8, 2006. Complainants together are currently awaiting shareholder and regulatory approval.
Respondent registered the <thermofisher.com> domain name on May 8, 2006. Respondent’s disputed domain name resolves to a web page indicating that the site is “under construction.”
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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainants have established rights in both the THERMO mark through registration with the BTO and the FISHER mark through registration with the USPTO. See Luxilon Sports NV v. Agilibus Tenis Servicios Deportivos SL, FA 477930 (Nat. Arb. Forum July 13, 2005) (finding that the complainant established rights in the LUXILON mark through registration with the Benelux Trademark Office); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).
Complainants contend that Respondent’s <thermofisher.com> domain name is confusingly similar to Complainants’ marks. Respondent’s disputed domain name features the combination of two established trademarks and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the combination of marks, especially those that are connected through either competition or other business arrangement, fails to sufficiently distinguish Respondent’s domain name from Complainants’ marks pursuant to Policy ¶ 4(a)(i). See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (holding the domain name to be confusingly similar where <e-viagra-xenical-celebrex-propecia.com> merely includes the addition of related industry-specific words, namely, the marks of the complainant’s competitors).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainants have alleged that Respondent does not have rights or legitimate interests in the <thermofisher.com> domain name. Once a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Respondent’s failure to respond to the Complaint presents a rebuttable presumption that Respondent lacks rights or legitimate interests in the disputed domain name. Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). However, the Panel chooses to consider whether the evidence supports rights or legitimate interests under Policy ¶ 4(c).
Complainants contend that Respondent’s <thermofisher.com> domain name resolves to a web page indicating that the site is under construction. Complainants further contend that Respondent has failed to show that it has made demonstrable preparations to use the disputed domain name in connection with either a bona fide offering of goods or services or a legitimate non-commercial or fair use. As such, the Panel finds that Respondent has failed to bring forth evidence of rights or legitimate interests pursuant to Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the respondent has advanced no basis on which the panel could conclude that it has a right or legitimate interest in the domain names, and no commercial use of the domain names has been established).
Furthermore, Complainants assert that Respondent is neither commonly known by the disputed domain name nor licensed to register a domain name featuring either of the THERMO or FISHER marks and that Respondent took advantage of and opportunistically registered the disputed domain name. Without evidence suggesting otherwise, the Panel finds Respondent is not commonly known by the disputed domain name for purposes of Policy ¶ 4(c)(ii). Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Finally, Complainants assert that Respondent’s opportunistic registration of the <thermofisher.com> domain name on the day of Complainants’ announcement of their intent to merge is evidence of bad faith registration. Moreover, Complainants assert that Respondent’s lack of use of the disputed domain name is further evidence of its bad faith. As a result, the Panel finds that Respondent’s conduct amounts to bad faith registration and use pursuant to policy ¶ 4(a)(iii). See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”); see also Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thermofisher.com> domain name be TRANSFERRED from Respondent to Complainants.
Bruce E. Meyerson, Panelist
Dated: June 27, 2006
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