WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Vanguard Medica Limited v. Theo McCormick

Case No. D2000-0067

 

1. The Parties

The Complainant is Vanguard Medica Limited, a corporation under the laws of England, having its principal place of business in Guilford, Surrey, England. Complainant is represented in this proceeding by Arne M. Olson, Esq., of Olson & Hierl, Ltd., 20 North Wacker Drive 36th Floor, Chicago, IL 60606. The Respondent is Theo McCormick, an individual appearing pro per whose most current address is at 548B Via de la Valle Road, Solano Beach, CA 92075.

 

2. The Domain Name(s) and Registrar(s)

The domain name at issue is <miguard.com>, which domain name is registered with Network Solutions, Inc. ("NSI"), Herndon, Virginia, United States of America.

 

3. Procedural History

A Complaint was filed with the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on February 14, 2000. No formal deficiencies to the Complaint were found, and on February 18, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of March 8, 2000, by which the Respondent could make a Response to the Complaint. On March 5, 2000, Respondent filed an official Response to the Complaint. On March 9, 2000, Complainant filed a Reply to Respondentís Response.

On March 21, 2000, a Notification of Appointment of Administrative Panel and Projected Decision Date designating Roderick M. Thompson as the single member, Sole Panelist for this dispute was sent to all parties. The Projected Decision Date was set as April 3, 2000. Also on March 21, 2000, a Transmission of Case File to Administrative Panel forwarding all case materials to the Panelist was copied to all parties via e-mail.

A Formal Requirements Compliance review was completed by the assigned WIPO Center Case Administrator. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999, (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999, (the "Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.

Having reviewed the communications records in the case file, this Sole Panelist shall proceed to a decision based on the statements and documents submitted and in accordance with the ICANN Rules and Policy, as well as all applicable "rules and principles of law" as directed by Paragraph 15(a) of the Policy.

 

4. Factual Background

The following facts are not in dispute.

The Complainant has provided evidence of the registration with the Patent Office Trademarks Registry, Registration No. 2136725, pursuant to the Trade Marks Act 1994 of Great Britain and Northern Ireland of the following marks:

1. Trademarks Ė MIGUARD and MIGARD, for pharmaceutical preparations and substances; pharmaceutical preparations and substances for the treatment of migraine, cluster headache and tension headache. Class 5, registered for a term of 10 years from June 24, 1997.

Complaint, Annex D.

Complainant also filed an application for registration of MIGUARD with the United States Patent and Trademark Office, Serial No. 75-516863 on July 10, 1998. Complainant plans to use MIGUARD and/or MIGARD for the sale of a product called "Frovatriptan," a pharmaceutical used for the treatment of headaches, which is currently pending approval from the US Food and Drug Administration. Complaint, Page 6, ∂∂ 1-3.

The Respondent is the current registrant of the domain name <miguard.com>. The WHOIS database shows that Respondent is also the Administrative Contact, Technical Contact and Zone Contact for the domain name <miguard.com>. Complaint, Annex A. The WHOIS record of the domain name MIGUARD was created on February 7, 1999, and last updated on August 2, 1999. Id. The Respondent is also the owner of several other domain names, including, <planRx.com> and <agendaRx.com>.

 

5. Partiesí Contentions

A. Complainant

Complainant contends; 1) the domain name <miguard.com> is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and 2) the Respondent has no rights or legitimate interests in respect of the domain name <miguard.com>; and 3) the domain name <miguard.com> was registered and is being used in bad faith.

On information and belief, Complainant alleges that;

1) Respondent registered the domain name <miguard.com> with NSI on February 7, 1999, immediately following Complainantís public announcement of its MIGUARD pharmaceutical product on February 1, 1999. To support this allegation, Complainant cites to various press releases and news articles announcing Complainantís drug MIGUARD which were published immediately prior to February 7, 1999. Complaint, Annexes F,G,H and I;

2) the domain name <miguard.com> is identical to Complainantís trademark MIGUARD and confusingly similar to Complainantís trademark MIGARD;

3) "miguard" is a coined word invented by Complainant and thus Respondent has no purpose or fair use of the term "miguard";

4) Respondent has not made good faith use of the domain name in connection with a bona fide offering of goods or services;

5) the domain name was acquired by Respondent primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant or to a competitor of the Complainant, for valuable consideration in excess of Respondentís out-of-pocket costs directly related to the domain name;

6) the domain name was registered in order to prevent Complainant from registering the mark in a corresponding domain name, and for the purpose of disrupting the business of Complainant;

7) Respondent has no common law rights in the domain name, having not been known as an individual, business or other organization by that name, and thus the registration was in bad faith.

8) Respondent is more knowledgeable in the pharmaceutical business than he has let on, proven by the fact that Respondent owns other domain names with pharmaceutical phrases (<planRx.com> and <agendaRx.com>) which lead one to believe the timing of Respondentís registration of <miguard.com> was more than coincidence.

B. Respondent

Respondent contests each of Complainantís allegations (except the last which was asserted for the first time in Complainantís reply) as follows:

1) Respondent has no knowledge of Complainantís public announcements, and publication of information related to MIGUARD does not support Complainantís assertion of predatory conduct;

2) Respondent acknowledges the similar elements between the domain name <miguard.com> and the trademarks MIGUARD and MIGARD, but points out that no trademarks have been registered for "MIGUARD.COM", and that the US Patent and Trademark Office has issued a Notice of Allowance of the Trademark MIGUARD to a company other than Complainant, Vanguard Medica Limited, which application was filed more than a year before Complainantís Response, Annex F;

3) Respondent argues that the term "Miguard" is the name of Respondentís mixed breed dog, who earned this moniker, "MiGuard," a derivative of the saying "My Guard (Dog)... as a result of the dogís tendency to bark at any noticeable event within sight or earshot";

4) Respondent believes he has the right to create a web site that offers bona fide goods and services, including an entertainment web site related to the Respondentís household guard dog, which is named MiGuard;

5) Respondent does not wish to sell, rent or otherwise transfer the domain name <miguard.com> to either MiCell Technologies (a company seeking a trademark on MIGUARD with the US Patent and Trademark Office) or to Complainant, Vanguard Medica Limited. Respondent notes that Complainant has made an offer of $1,000.00 to Respondent to transfer the domain name <miguard.com> to Complainant, but Respondent has refused the offer;

6) Respondent asserts that the primary purpose of registering the domain name was not for disrupting the business of a competitor or the Complainant, evidenced by the fact that Respondent is not employed or a competitor of any of the parties involved in this dispute;

7) Respondent argues that he does have rights to the domain name since the primary purpose of the domain name <miguard.com> is the development of a web site related to Respondentís household guard dog, which coincidentally is named MiGuard. Thus, the registration of <miguard.com> is not in bad faith;

8) Respondent asserts that he does not traffic in domain names as evidenced by the fact that he refused the offer of $1,000.00 from Complainant to obtain a transfer of <miguard.com> from Respondent. Response, Annex A. Respondent also asserts that the domain names <agendaRx.com> and <planRx.com> are for web based calendars, implying that the sites are service oriented and would therefore not be used for the direct sale of pharmaceutical drugs, and that Respondent as such is not a competitor of Complainant.

 

6. Discussion and Findings

A. Applicable Rules and Principles of Law.

Paragraph 15(a) of the Rules instructs this Panelist as to the principles the Panelist is to use in rendering its decision: "A Panelist shall 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 directs that the Complainant must prove each of the following:

(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark in which the complainant has rights; and,

(ii) that the respondent has no legitimate interests in respect of the domain name; and,

(iii) the domain name has been registered and used in bad faith.

B. Application of Paragraph 4(a) to the Facts.

Except for the suffix ".COM", the domain name <miguard.com> registered to Respondent is identical to the trademark registered by Complainant, MIGUARD. However, as noted in an earlier Administrative Panel Decision, the "term Ď.COMí...means Ďcommercial institutioní and is merely the classification of the purpose for which the domain name is being used." Digitronics Inventioneering Corporation v. @Six.Net Registered, Case No. D2000-0008, page 5. As such, the domain name is identical to one of Complainantís registered trademarks. Thus Complainant succeeds in satisfying Paragraph 4(a)(i).

But Complainant does not succeed in carrying the burden of proving that Respondent has no legitimate interests in the domain name as required by Paragraph 4(a)(ii). In response to Complainantís allegations that Respondent has no legitimate interests in respect of the domain name, Respondent asserts that the term "Miguard" is the name of his pet dog. Respondent contends that he is the owner of a mixed breed dog who earned the nickname "MiGuard," a derivative of the saying "My Guard (Dog)." With this explanation, Respondent asserts that he has the right to create an entertainment web site related to the Respondentís household guard dog, named MiGuard.

On this record, and since the site for the domain name <miguard.com> has been "on hold" pending the outcome of this decision, there is no way to prove, or to disprove, Respondentís stated intention not to use <miguard.com> as anything more than a web site devoted to his household dog. The Sole Panelist finds no basis in the record to discredit Respondentís statements, while cognizant that Complainant has no present ability to attempt to disprove these statements. It is perhaps ironic that the site was placed on "hold" by NSI at Complainantís request. The nature of this proceeding does not allow Complainant to cross-examine Respondent or to otherwise test his assertions.

Similarly, in regard to Paragraph 4(a)(iii) of the Policy, although Complainant alleges that the domain name has been registered and used in bad faith and offers evidence which raises a suspicion as to the true intentions of Respondent. Again, the panelist has no basis in the record to disregard the detailed factual assertions made by Respondent, including the claim that the primary purpose of using the domain name <miguard.com> is the development of a web site related to Respondentís household guard dog, named MiGuard.

Complainant points out the suspicious timing of Respondentsí registration of <miguard> only a few days after the public announcements of Complainantís product of the same name, arguing that it must be "more than a coincidence" in timing and constitutes predatory conduct. The panelist agrees that the timing raises an issue and notes that although Respondent denies "knowledge of the Complainantís public announcements," he does not deny knowing of the MIGUARD product. In its reply, Complainant points to an Internet news item identifying a man then living in Maryland with the same name as Respondent as working for a "pharmaceutical firm." The panelist notes that Respondent apparently once lived in Maryland (where he found the dog later named Miguard) and has only recently relocated to California. In sum, there is indeed reason to be suspicious of Respondentsí detailed, point-by-point benign explanation of his intentions for use of the <miguard.com> domain name. Suspicion alone, however, cannot suffice to prove that Respondent is acting in bad faith.

In this proceeding the focus of inquiry is narrow. Paragraph 4(a) specifically states that "complainant must prove that each of these three elements are present." (emphasis added). Since the evidence submitted by Complainant does not create more than a suspicion as to Respondentís intentions, and since the assertions made by both sides are in conflict, the Sole Panelist must conclude that Complainant has failed to carry its burden of proof. The following summary from an earlier Panel decision aptly summarizes the situation here:

While Complainant satisfies the first requirement, the same cannot be said of the second and third requirements of Paragraph 4(a). As to both, significant factual issues remain, resolution of which are beyond the scope of the Panelís jurisdiction...Under these circumstances and on this record, it cannot be concluded the Respondent has no "rights or legitimate interests" in the domain as is required under the Policy.

Adaptive Molecular Technologies, Inc. v. Priscilla Woodward & Charles R. Thorton, d/b/a Machines & More, Case No. D2000-0006, page 3.

As listed in his specific defenses above, Respondent has responded to each of the allegations proffered by Complainant and has succeeded in calling into doubt the factual support for the allegations of the complaint. There are significant factual issues in dispute, most centrally, Respondentís true purpose and intent in registering the domain name. Complainant has failed to satisfy its burden of proving two of the three required elements in Paragraph 4(a).

In light of the significant unresolved factual issues that cannot be verified or resolved in this proceeding, both parties are reminded of Paragraph 4(k) of the Policy, which advises that the "mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent [either party] from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded."

 

7. Decision

For all of the foregoing reasons, this Panelist decides that Complainant has failed to prove that Respondent registered or is using the domain name <miguard.com> in bad faith or that Respondent has no right or legitimate interest in respect of that domain name. Accordingly, pursuant to Paragraph 4(c)(iii) of the Policy, this Panelist decides that the domain name <miguard.com> shall remain registered to Respondent.

 


 

Roderick Thompson
Panelist

Dated: April 3, 2000