ADMINISTRATIVE PANEL DECISION

Under the ICANN Uniform Domain Name Dispute Resolution


 
Complainant: SULZER VASCUTEK LTD.
Respondent: ADAM POWER/MANTIS SURGICAL LTD.
Cases Numbers: AF-0271a;
AF-0271b;
AF-0271c
Contested Domain Names: AF-0271a: vascutek.com;
AF-0271b: vascutek.net;
AF-0271c: vascutek.org
Panel Member: Dana Haviland
 

 

1. Parties and Contested Domain Name

The Complainant is Sulzer Vascutek Ltd. Its postal address is Newmains Avenue, Inchinnan, Renfrewshire, PA4 9RR, Scotland. The Respondents are Adam Power and Mantis Surgical Ltd. Their postal address is 28 Kinfisher Court, Hambridge Road, Newbury, Berkshire, RG14 5SJ, England. The domain names at issue in this proceeding are vascutek.com, vascutek.net, and vascutek.org.

2. Procedural History

The electronic version of the Complaint was filed on-line with eResolution on June 29, 2000. The hard copy of the Complaint was received by eResolution on July 5, 2000. Payment was received on July 5, 2000.

Upon receiving all the required information, the Clerk's Office of eResolution proceeded to:

- confirm the identity of the Registrar for the contested Domain Name;

- verify the Registrar's Whois Database and confirm all the required contact information for Respondent;

- verify that the contested Domain Name resolved to an active Web page;

- verify that the Complaint was administratively compliant.

The inquiry led the Clerk's Office of eResolution to the following conclusions: the Registrar is Core Internet Council of Registrars, the Whois database contains all the required contact information, the contested Domain Names resolved to an active Web page, and the Complaint is administratively compliant.

An email was sent to the Registrar by the Clerk's Office to confirm the name of the billing contact and to obtain a copy of the Registration Agreement on June 29, 2000. The requested information was received on July 17, 2000.

The Clerk's Office then proceeded to send a copy of the Complaint Form and the required Cover Sheet to the Respondent, in accordance with paragraph 2 (a) of the ICANN Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules"), on July 25, 2000, which is the commencement date of the administrative proceeding. On July 25, 2000, the Clerk's Office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.

As of August 14, 2000, the deadline for a Response to the Complaint, the Respondent had failed to respond to the Complaint by any means of accepted communication (eResolution internet site, email, facsimile or postal mail).

On August 16, 2000, the Clerk's Office notified the Respondent and the Complainant of the failure of the Respondent to respond to the Complaint. It also informed the parties that according to Rule 5(e) of the Uniform Rules, "If a respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint."

On August 16, 2000 the Clerk's Office performed a tracking research through UPS website in order to check the status of delivery of hard copies of the complaint with its annexes and Official Notification of Commencement of Administrative Proceedings, which were sent to the Respondent on July 25, 2000. The UPS Tracking information confirmed that named documents were effectively delivered to Respondent's address on July 27, 2000 at 11:48hrs.

On August 17, 2000, the Clerk's Office contacted Ms. Dana Haviland, and requested that she act as Panelist in this case.

On August 21, 2000, Ms. Dana Haviland agreed to act as Panelist on this case. On August 22, 2000, Ms. Haviland filed the necessary Declaration of Independence and Impartiality.

On August 22, 2000, the Clerk's Office forwarded a user name and a password to Ms. Dana Haviland, allowing her to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.

On August 22, 2000, the parties were notified that Ms. Dana Haviland had been appointed and that a decision was to be, save exceptional circumstances, handed down on September 4, 2000.

The Panel allowed the filing of a late Response, which was received by the Clerk's office and filed on the eResolution web site on August 31, 2000. The projected decision date was thereafter extended until September 28, 2000.

3. Factual Background

Complainant Sulzer Vascutek Ltd. ("Complainant"), a company doing business in Scotland, has registered the following trademarks:

U.S. Trademark - VASCUTEK - Serial Number 591,449; issued on October 28, 1986;

U.K. Trademark - VASCUTEK - Number 1192446; issued on March 18, 1990.

For each mark the goods and services are: prostheses for surgical implantation.

Complaint, Annexes 1, 2, and 3.

Respondent, an individual residing in England, registered the Domain Names vascutek.com, vascutek.net, and vascutek.org and a fourth domain name vascutek.co.uk. In a letter dated January 27, 2000, the Respondent offered to sell the four domain names to Complainant for 10,000. Complaint, Annex 4.

4. Parties' Contentions

The Complainant contends that the Domain Names registered by the Respondent are identical to Complainant's trademark VASCUTEK.

According to Complainant, "Vascutek" is a commonly used abbreviation for "Sulzer Vascutek." Prior to a corporate branding change in January 1997, the Complainant was registered and known as Vascutek Ltd.

Complainant contends that the domain name registrations in question are a clear attempt to "cybersquat," as the Respondent has no legitimate rights or interest in them. Complainant states that the Respondent has no trademark rights and is not a registered company using the name Vascutek.

Complainant further contends that the Respondent has registered and is using the Domain Names in bad faith, citing Paragraph 4(b)(i) of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), which sets forth examples of evidence of bad faith registration and use:

(i)Circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name... .

Complainant states that it has been approached by the Respondent for the sum of 10,000 in order to transfer the disputed Domain Names to Complainant, and that this amount is clearly in excess of the Respondent's "out of pocket expenses." Complaint, Annex 4.

The Respondent does not deny that the Domain Names are identical to the Complainant's trademark. Respondent asserts that he "legitimately purchased" rights to the Domain Names, just as he would have in purchasing a work of art. Respondent denies that he at any time acted in bad faith. Soon after obtaining the Domain Names, Respondent contacted Complainant, but did not demand payments. Complainant asked how much Respondent wanted for transfer of the Domain Name, and Respondent then suggested a sum of ten thousand pounds. Respondent contends that "under any normal commercial 'standards of practice,' if I have a product or item that somebody else wants, then they should pay for it."

5. Discussion and Findings

Under the terms of the Policy, the Complainant must prove three distinct elements in order to prevail on a claim for transfer of a domain name. These elements are set forth in Paragraph 4(a) of the Policy:

- that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

- that the respondent has no rights or legitimate interests in respect of the domain name; and

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

(a) Identity or confusing similarity of domain name and trademark

The evidence shows that the domain names and registered by the Respondent are identical to the Complainant's trademark VASCUTEK.

(b) No legitimate interest in domain name

Paragraph 4(c) of the Policy sets forth, without limitation, three examples whereby a domain name registrant may show a right or legitimate interest in a domain name:

(i) before any notice of the dispute to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services: or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Respondent admits that he has "no reason nor intention to keep these domain names."

Respondent has not shown any evidence supporting a right or interest in the Domain names under these three examples or otherwise. On the contrary, Respondent admits that he has "no reason nor intention to keep these domain names." He views his purchase of the Domain Name as comparable to the purchase of a work of art. This analogy ignores the Complainant's intellectual property rights in its trademark, which are not outweighed by the simple payment of a registration fee for a domain name. An independent right or interest in a domain name must be shown. Registering a domain for the sole purpose of selling it to the trademark owner for a profit is a clear case of cybersquatting, for which the Policy was designed to provide a remedy. Claimant has proved the second element of its claim, that respondent has no right or legitimate interest in the Domain Name.

(c) Bad faith registration and use of the domain name

Paragraph 4(b) of the Policy sets forth four examples of bad faith, which are not exclusive, but which "shall be evidence of registration and use of a domain name in bad faith":

- "(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

- (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

- (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

- (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your website or location."

Here, bad faith registration and use is evidenced by the Respondent's contacting the Complainant to commence negotiations for transfer of the Domain Names soon after their registration. Despite the Respondent's representations to the contrary, the obvious purpose of these registrations was to sell the name for valuable consideration in excess of the Respondent's out-of-pocket costs. See World Wrestling Federation, Inc. v. Bosman, ICANN Case No. D99-0001 (offer to sell constitutes bad faith use under the policy). See Bragg v. Condon FA0092528 (registration of two domain names using a competitor's trademark soon after learning of the competitor's confidential business strategy constitutes bad faith). The evidence also shows that Respondent registered the Domain Names to prevent the trademark owner from reflecting the mark in a corresponding domain name. The fact that the Respondent registered four names that are identical to the marks of the Complainant shows a pattern of such conduct. Complainant has shown bad faith registration and use of the Domain Names under Paragraph 4(b)(i) and (ii) of the Policy.

6. Conclusions

For all of the foregoing reasons, it is the decision of the Panel that the Complainant has satisfied its burden of proving the essential elements of a claim under Paragraph 4(a) of the Policy, and that the Complainant's claim for transfer of the Domain Names vascutek.com, vascutek.net, and vascutek.org is therefore granted.

Dated: September 28, 2000

(s) Dana Haviland

Presiding Panelist