WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Identigene, Inc. v. Genetest Laboratories

Case No. D2000-1100

 

1. The Parties

The Complainant is Identigene, Inc., a corporation organized under the laws of the State of Texas , United States of America, having its principal place of business at Houston, Texas, United States of America. The Respondent is Genetest Laboratories, an entity of form unknown, with an address in Mississauga, Ontario, Canada.

 

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

The domain name at issue is "identagene.com", which domain name is registered with Network Solutions Inc. ("NSI"), a registrar based in the State of Virginia, the United States of America.

 

3. Procedural History

A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on August 21, 2000, in the form of the signed original "hardcopy" together with four additional copies. The electronic version of the Complaint was submitted on August 24, 2000.

On September 20, 2000, a Request for Registrar Verification was transmitted to NSI requesting it to: (1) confirm that a copy of the Complaint was sent to NSI by the Complainant; (2) confirm that the domain name at in issue is registered with NSI; (3) confirm that the person identified as the Respondent is the current registrant of the domain name; (4) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrarís Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (5) confirm that the Uniform Domain Name Dispute Resolution Policy ("Policy") applies to the domain name at issue; and (6) indicate the current status of the domain name at issue.

In an email on September 24, 2000, NSI confirmed that the domain name is registered with NSI and that the Respondent, Genetest Laboratories, was the current registrant of the name. NSI also forwarded the requested Whois details, as well as confirming that: (1) NSI received a copy of the Complaint from the Complainant; (2) that NSI's Rev. 5.0. Service Agreement was in effect and was applicable to the domain name.

A Formal Requirements Compliance Checklist was initiated by the assigned WIPO Center Case Administrator and completed on September 20, 2000. The Panelist has independently reviewed the Requirements and agrees with the assessment of the WIPO Center Case Administrator that the Complaint is in formal compliance with the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "WIPO Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.

No formal deficiencies having been recorded, on October 5, 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 October 24, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in NSIís Whois confirmation, and by post/courier to the indicated postal address. Having reviewed the communications records in the case file, the Panelist finds that the WIPO Center has discharged its responsibility under Paragraph 2(a), Rules, "to employ reasonably available means calculated to achieve actual notice to Respondent."

On October 27, 2000, having received no Response from the designated Respondent, the WIPO Center transmitted to the parties a Notification of Respondent Default using the same contact details and methods as were used for the Commencement Notification.

On November 9, 2000, the WIPO Center invited Richard Allan Horning to serve as the Sole Panelist in Case No. D2000-1100, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence. Richard Allan Horningís Statement of Acceptance and Declaration of Impartiality and Independence was received on November 13, 2000. On November 16, 2000, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Richard Allan Horning was formally appointed as the Sole Panelist. The Projected Decision Date was November 30, 2000.

The Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Policy, Rules and WIPO Supplemental Rules.

The Panelist shall issue his Decision based on the Complaint, the Policy, the Rules, the WIPO Supplemental Rules, and without the benefit of any Response from Respondent.

 

4. Factual Background

Complainant is authorized to use and has used the Identigene trade and service marks in connection with its business of DNA-based human identification testing since February, 1995. Complaint, Paragraphs 6-10 and Annex B. The Complainant has provided evidence of the registration of the following marks which it has adopted and used in this regard:

 

  1. IDENTIGENE [Design plus Words]

i.

Registration Number:

Goods & Services:

First Use:

US PTO 2047250

Class 42, for inter alia DNA-based human identification testing, such as paternity testing.

February 12, 1995

ii.

Application Number:

Goods & Services:

Application Date:

CTM Application 1,548,981

Class 42, for inter alia DNA-based human identification testing, such as paternity testing.

March 3, 2000

iii.

Application Number:

Goods & Services:

Application Date:

Switzerland Application 2546

Class 42, for inter alia DNA-based human identification testing.

March 3, 2000

 

Complaint, Annexes B, C.

The Complainant registered the domain name "identigene.com" on March 26, 1996 (Complaint, Annex D).

The Respondent registered the domain name "identagene.com" on February 2, 2000, (Complaint, Annex A).

The Complainant sent a cease and desist letter to Respondent dated April 25, 2000, (Complaint, Annex E).

The Respondent used the name Identagene in connection with the offering of DNA paternity testing services on the Web, at "www.identagene.com" (Complaint, Annex E).

The Respondent replied to the cease and desist letter under cover of a letter dated May 17, 2000, (Complaint, Annex F). In that letter Respondent claimed that the subject matter "identagene.com" was removed from the web.

On July 27, 2000, Complainant sent a further cease and desist letter to Respondent (Complaint, Annex G). In that letter Complainant alleged that the domain name "identagene.com" was linked to Respondentís website at "genetest.com" in infringement of Complainantís rights.

On August 3, 2000, Respondent replied to the cease and desist letter (Complaint, Annex H). Respondent claimed ownership of the domain name "identagene.com" , and disclaimed any intent to confuse the public or imply an endorsement by or affiliation with Complainant. Respondent offered to settle the matter by transferring the domain name to Complainant in exchange for $32,500 USD and a full release.

 

5. Partiesí Contentions

A. Complainant

Complainant contends that Respondent has registered a domain name which is nearly identical to and confusingly similar to the service marks and trademarks registered and used by Complainant, that Respondent has no rights or legitimate interests in respect to the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.

B. Respondent

Respondent has not contested the allegations of the Complaint.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panelist as to the principles the Panelist is to use in determining the dispute: "A Panel 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:

1) 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,

2) that the Respondent has no legitimate interests in respect of the domain name; and,

3) that the domain name has been registered and used in bad faith.

The domain name at issue is either identical (Hewlett-Packard Company v. Cupcake City, NAF Case No. FA0002000093562; America Online, Inc.v. Avrasya Yayincilik Danismanlik Ltd., NAF Case No. FA0002000093679) or confusingly similar (Marriott International, Inc. v. John Marriot, NAF Case No. FA0002000094737) to Complainant's mark.

Complainant has alleged and Respondent has failed to deny that Respondent has no legitimate interests in respect of the domain name at issue. Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No. D2000-007; Bronson Plc v. Unimetal Sanayaive Tic. A.S., WIPO Case No. D2000-0011.

The question thus arises whether the domain name at issue has been registered and is being used in bad faith. Paragraph 4.b of the Policy sets forth "in particular but without limitation" circumstances which "shall be evidence of registration and use of a domain name in bad faith." Those circumstances are:

(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 website 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 website or location or of a product or service on your website or location.

The conduct of Respondent as alleged by Complainant, which is not refuted by Respondent, falls within the definition of bad faith set forth in Paragraph 4.b(iv) of the Policy. Complainant has alleged and the Panelist finds that Respondent's use of the domain name at issue to resolve to a website where services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site. This constitutes evidence of bad faith registration and use under the Policy. Policy, Paragraph 4(b)(iv). InfoSpace.com, Inc. v. Hari Prakash, WIPO Case No. D2000-0076; America Online Inc. v. Cyber Network LLP, WIPO Case No. D2000-0977.

 

7. Decision

For all of the foregoing reasons, the Panelist decides that the domain name registered by Respondent is identical or confusingly similar to the trademarks and service marks in which the Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondent's domain name has been registered and is being used in bad faith.

Accordingly, pursuant to Paragraph 4.i of the Policy, the Panelist requires that the registration of the domain name "identagene.com" be transferred to the Complainant.

 


 

Richard Allan Horning
Sole Panelist

Dated: November 30, 2000