WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Institut Straumann AG v. Core-Vent Corporation
Case No. D2000-0404
1. The Parties
The Complainant is Institut Straumann AG having an address at CH-4437 Waldeburg, Switzerland. The Respondent is Core-Vent Corporation having an address at 4630 S Arville, Las Vegas, NV 89103, USA.
2. The Domain Name(s) and Registrar(s)
This dispute concerns the domain name <straumann-clone.com>. The registrar with which the said domain name is registered is Network Solutions Inc., 505, Huntmar Park Drive, Herndon, VA 20170, USA (hereinafter "the Registrar").
3. Procedural History
On May 9, 2000 the Complainant filed the Complaint in these Administrative Proceedings in electronic form with the WIPO Arbitration and Mediation Center (hereinafter "the Center"). Said Complaint was filed pursuant to the Uniform Domain Name Dispute Resolution Policy (hereinafter "the Policy") adopted by the Internet Corporation for Assigned Names and Numbers (hereinafter "ICANN") on October 24, 1999.
On May 12, 2000 a hard copy of said Complaint was received by the Center and the Complainant stated therein that a copy of said Complaint had been sent to the Registrar.
On May 18, 2000 the Center sent an Acknowledgement of Receipt of the Complaint to the Complainant and on the same day sent a Request for Registrar Verification to the Registrar of the said domain name. On the same date a copy of the said acknowledgement was sent to the Respondent by post/courier and by e-mail.
On May 24, 2000 the Center received from the Registrar a Verification Response confirming inter alia that the Registrar had received the Complaint from the Complainant, that the Registrar is the registrar of the said domain name, that the Respondent is the current registrant of the said domain name, that the said domain name is in "active" status.
On May 25, 2000 having verified, in accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter "the Rules") and Paragraph 5 of the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter "the Supplemental Rules"), that the Complaint satisfied the formal requirements of the Policy, the Rules and the Supplemental Rules and the payment in the required amount had been made to the Center by the Complainant, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent. Said Notification was sent by the Center by post/courier with enclosures, by facsimile (without enclosures) and by e-mail without attachments. A copy of the said Notification was sent on the same date to the authorised representative of the Complainant by e-mail (without attachments). Further copies were sent by the Center (without attachments) to ICANN and to the Registrar.
On June 12, 2000 the Center received the Response from the Respondent in electronic form and on the same date the Center sent an Acknowledgement of Receipt of Response to the Respondent. A copy of the said acknowledgement was sent by the Center by e-mail to the Complainantís authorized representative at the same time.
On June 14, 2000 the Center received four hard copies of the said Response.
On June 19, 2000, having received a Statement of Acceptance and Declaration of Impartiality and Independence from James Bridgeman the Center proceeded to appoint this Administrative Panel and send a Notification of Appointment of Administrative Panel and Projected Decision Date to the authorised representative of the Complainant and to the Respondent. On the same date the case file was transmitted to this Administrative Panel.
Having reviewed the above correspondence and documentation, this Administrative Panel concludes that the proper procedures were followed and that this Administrative Panel was properly constituted.
4. Factual Background
Both the Complainant and the Respondent are competitors in the business of dental implants and are engaged in research and product development in this area. The Parties are well known to each other and their relationship has been and continues to be acrimonious resulting in litigation on a number of occasions.
According to the Respondentís www site it is now known as Paragon Implant Company.
The Complainant is the registered proprietor of the registered trademark <straumann> in numerous jurisdictions throughout the world and has furnished prima facie evidence of such registrations in a detailed print-out of said registrations including reference to International Trademark Registration number 610 756 in classes 6, 9, 10 and 14. The existence of these registrations has not been put in issue by the Respondent.
The Complainant has registered the domain name <straumann.com> and has established a www site at said address.
The Respondent has established a www site at the said <straumann-clone.com> domain name address and is using said www site to promote the sale of the Respondents dental implant products. In particular the Respondentís said www site compares the Complainantís synOcta dental implant product with the Respondentís similar SwissPlus product. The Respondent claims that its SwissPlus product is a "clone" of the Complainantís synOcta product.
5. Partiesí Contentions
The Complainant requests that this Administrative Panel should issue a decision that the said domain name be cancelled on the grounds that the said domain name is partially identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and the Respondent has no rights or legitimate interests in respect of the said domain name; and the said domain name was registered and is being used in bad faith.
In support of these claims the Complainant has argued that the main part of said domain name consists of a word <straumann> which is identical to the Complainantís trademark. The Complainant further submits that the addition of the word <clone> leads to the impression that the domain name relates to a "clone" of the Complainant company and that the domain name has some economic connection with the Complainant.
The Complainant submits that the Respondent is a competitor of the Complainant in the field of "dental and maxillo-cranio-facial implantology". The Complainant further submits that the Respondent does not own trademark rights in the name <straumann> nor is the word <straumann> included in the Respondentís company name. The Complainant states that the Respondent has been a competitor of the Complainant for many years and alleges that the Respondent has "interfered with [the Complainantís] rights previously in many other cases". It is alleged that the registration of the said domain name by the Respondent is unfair and illegal according to the Federal Act Against Unfair Competition of December 9, 1986.
The Complainant submits that the Respondent is explicitly offering copies of the Complainantís products using the goodwill of the Complainantís trademark <straumann> and is thereby exploiting the Complainantís reputation. It is alleged that the Respondentís use of the said domain name will deceive consumers by inducing them to purchase copies of the Complainantís products.
In a comprehensive Response, the Respondent points out that it had used the said domain name <straumann-clone.com> before it received any notification of the dispute which is the subject of these Administrative Proceedings. The Respondent established a very comprehensive www site with the said <straumann-clone.com> domain name as its address. Prior to the institution of these Administrative Proceedings, the Respondent sent an e-mail to the President of the Complainant and to the President of the Complainantís associated company in the USA inviting them to visit the Respondentís said www site and check the www site for accuracy. The Respondent states that it received no response to these e-mails and implies that these Administrative Proceedings were instituted in response to these communications.
By way of background, the Respondent refutes the Complainantís allegation that the Respondent had interfered with the Complainantís rights in other cases. The Respondent states that the parties have been involved in only two legal cases. In the first of these cases in 1993, it is alleged that the Complainant was found liable for infringement of one of the Respondentís patents, resulting in an award of damages in the sum of $500,000 against the Complainant and the Complainant was enjoined from selling infringing products for six months. Arising out of these proceedings it is alleged that the Parties hereto entered into a licence agreement whereby the Complainant agreed to pay to the Respondent the sum of $1,750,000 over a five year period. It is alleged that in 1999 the Respondent issued another set of proceedings for alleged infringement of another of the Respondentís patents and that the later proceedings are currently pending.
As regards the Complainantís claims that the said domain name is partially identical or confusingly similar to a trademark or service mark in which the Complainant has rights, the Respondent points out that the Complainant only claims that the domain name is "partially identical" to the Complainantís company name or any trademarks held by the Complainant. The Respondent submits that the term "partially identical" is an oxymoron.
The Respondent argues that the use of the words <straumann-clone> informs the internet user that the www site is not the Complainantís www site, nor is the Respondent selling or promoting the Complainantís products on the Respondentís said www site. The Respondent submits that the use of the word "clone" is common in the dental implant industry to signify the sale of similar, compatible or outright copies of another product.
As regards the Respondentís rights or legitimate interest in the domain name, the Respondent submits that the Complainant does not own any trademark <straumann-clone> not does the Complainant use any such trademark in commercial practice. The Respondent claims to have a legitimate interest in the domain name because it sells "clones" of the Complainantís products and is therefore entitled to describe its products as "straumann-clones" and to use the domain name <straumann-clone.com>to this end.
As regards the Complainants allegations that the Respondent has registered and is using the said domain name in bad faith, the Respondent submits that the Complainant has falsely claimed that the Respondent has "interfered with [the Complainantís] rights previously in many cases" and in fact claims that the Complainant has interfered with the Respondentís patent rights.
Furthermore the Respondent states that it has no intention or desire to sell, rent or otherwise transfer the said domain name to the Complainant. It points out that the Complainant would have no use for this domain name as it does not sell clones of its own products. The Respondent also states that it has never sold or offered for sale any of the many domain names it owns and its use of the said domain name does not preclude the Complainant from using the name <straumann> in a domain name. It points out that the Complainant currently owns and uses the said domain name <straumann.com>.
The Respondent denies that it registered the said domain name primarily for the purpose of disrupting the business of the Complainant being a competitor. It claims that it registered the said domain name in order to sell its "clones" of the Complainantís products.
The Respondent also denies that it has used the domain name to intentionally attempt to attract, for commercial gain, internet users to its www site or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of its www site or online location or of a product or service on its www site or on-line location. The Respondent argues that its www site clearly tells dentists seeking information on dental implants, that the Respondentís www site offers for sale a "clone" of the Complainantís product.
6. Discussion and Findings
Under paragraph 4(a) the Policy, the Complainant bears the burden of establishing:
(a) 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.
(b) That the Respondent has no rights or legitimate interests in respect of the domain name.
(c) The domain name has been registered and used in bad faith.
The Complainant has furnished sufficient prima facie evidence to satisfy this Administrative Panel that it is the owner of number of registrations throughout the world of the trademark <straumann>. The Respondent has not challenged this aspect of the Complainantís case and the Respondent acknowledges that the Complainant has a significant reputation in the field of dental implant products, although it refutes the Complainantís claim to be "a world leader in implant dentistry."
In deciding the whether the domain name in issue is identical or confusingly similar to the Complainants trademark, this Administrative Panel is conscious that the Parties are based in different jurisdictions and are engaged in trade throughout the world.
Rule 15(a) of the Rules provides that the Panel shall decide a complaint in accordance with the Policy, the Rules and "any rules and principles of law that it deems applicable". Since the Complainant has elected to refer any appeal from this Administrative Decision to the courts where the principal office of the Registrar is located, which is Herndon, VA 20170, USA and since the Respondent is based in the USA, it is perhaps appropriate that some reference should be made to USA law.
In referring to authorities, this Administrative Panel is also conscious that it is not necessarily appropriate to use the same criteria when comparing a domain name as are used when comparing two trademarks.
According to the USPTO Manual of Trademark Examining Procedures, section 1207 et seq. [http://www.uspto.gov/web/offices/tac/tmep/1200.htm], "[t]he points of comparison for a word mark are appearance, sound, and meaning or connotation. Similarity of the marks in one respect -- sight, sound or meaning -- will not automatically result in a finding of likelihood of confusion even if the goods are identical or closely related. Rather, the rule is that taking into account all of the relevant facts of a particular case, similarity as to one factor alone may be sufficient to support a holding that the marks are confusingly similar. In re Lamson Oil Co., 6 USPQ2d 1041, 1042 n.4 (TTAB 1987)."
The said Manual addresses the question of comparison in the following terms: "Similarity in appearance is one consideration in determining whether there is a likelihood of confusion between marks. Marks may be confusingly similar in appearance notwithstanding the addition, deletion or substitution of letters or wordÖ
It is a general rule that likelihood of confusion is not avoided between otherwise confusingly similar marks merely by adding or deleting a house mark or matter that is descriptive or suggestive of the named goods or services. Sometimes the rule is expressed in terms of the dominance of the common term. Thus, if the dominant portion of both marks is the same, then confusion may be likely notwithstanding peripheral differencesÖ
Exceptions to the above stated general rule regarding additions or deletions to marks may arise if: (1) the marks in their entireties convey significantly different commercial impressions, or (2) the matter common to the marks is not likely to be perceived by purchasers as distinguishing source due to its mere descriptiveness or the commonness of its use."
Furthermore, the importance of the first word or syllable in a trademark is well established in jurisdictions throughout the world. For example the primary English authority on the subject, Kerlyís Law of Trade Marks and Trade Names (12th ed.) at pp. 445 states:
"It has been accepted in several reported cases that the first syllable of a word mark is generally the most important. It has been observed in many cases that there is a Ďtendency of persons using the English language to slur the termination wordsí"
Having considered the submissions of the Parties and the applying the above principles of law, this Administrative Panel is satisfied that the principal and dominant element of the said domain name viz the word <straumann> is identical to the Complainantís trademarks and that overall the said domain name is confusingly similar to the Complainantís trademarks.
As to the Complainantís claim that the Respondent has no rights or legitimate interest in the said domain name, this Administrative Panel has considered the Respondentís arguments that it is entitled to use a descriptive term <straumann-clone> to describe its products, and consequently to register and use this descriptive domain name. This Administrative Panel concludes that the Respondent has chosen to confuse a number of separate concepts. Firstly this Administrative Panel accepts that subject to any patent or registered design or similar rights which the Complainant may have, the Respondent is entitled make and market products which are identical or similar to the Complainantís products. Secondly this Administrative Panel also accepts that the Respondent may well be entitled to describe its products as being "clones" of the Complainantís products. However it does not follow that the Respondent may make the leap of logic and claim that the Respondent is therefore entitled to use the Complainantís trademark as the Respondents domain name.
The Respondent has decided to market a product SwissPlus which it claims to be a "clone" of the Complainantís synOcta dental implant product. Whatever argument the Respondent may put, and it is unlikely to succeed, that it is entitled to market its product as a "synOcta clone", in the view of this Administrative Panel it cannot succeed in its argument that it is entitled to market its product as a "straumann clone" and thereby establish that it has a right or legitimate interest in the domain name
<straumann-clone.com> as a consequence.
This Administrative Panel is therefore satisfied that the Respondent has no rights or legitimate interests in the said domain name, the principal and dominant element of which is the company name and trademark of its largest competitor.
As regards the Complainants allegation that the Respondent has registered and is using the said domain name <straumann-clone.com> in bad faith, it is common cause that the Respondent is using the Complainantís trademark to attract consumers to the Respondentís site for the purposes of selling a product which is similar or identical to one of the Complainantís products. Any search on the internet by a consumer using the Complainantís trademark or company name as a catchword, to find the Complainantís site would be likely to generate a link to the Respondentís site because of the inclusion of the word <straumann> as the first, principal and dominant element in the said domain name.
This Administrative Panel has carefully considered the Respondentís claims that the subject matter of the Respondentís www site explicitly compares the competing products and clearly promotes the Respondentís products, It would be beyond the jurisdiction of this Administrative Panel to consider whether the Respondentís use of the said domain name is an infringement of the Complainantís trademarks as alleged by the Complainant. Similarly it would be beyond the jurisdiction of this Administrative Panel to consider the extent of the rights claimed by the Respondent to engage in comparative advertising.
This Administrative Panel accepts that subject to any patent rights or registered design or similar rights the Complainant may have, the Respondent is obviously entitled to advertise its competing products on its www site. Furthermore this Administrative Panel accepts that the subject matter of the Respondentís said www site is clearly concerned with the promotion of the Respondentís products. Nonetheless this Administrative Panel concludes that the Respondent registered the said domain name primarily for the purpose of intercepting consumers who are searching for the Complainantís www site and thereby disrupting the business of the Complainant being a competitor.
It seems also clear to this Administrative Panel that the primary purpose for which the Respondent has registered and is using the said domain name is to create an initial interest confusion among prospective visitors to the Complainants www site. This Administrative Panel therefore must conclude that the Respondent has registered and is using the said domain name intentionally to attempt to attract, for commercial gain, internet users to its www site by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of its www site or of a product or service on its www site.
With reference to Paragraphs 4(i) of the Policy and 15 of the Rules, this Administrative Panel finds that the said domain name should be cancelled as requested by the Complainant.
Dated: July 1, 2000