WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

CellControl Biomedical Laboratories GmbH v. Mike Flowers

Case No. D2000-1257

 

1. The Parties

The Complainant is CellControl Biomedical Laboratories GmbH, Am Klopferspitz 19, Martinsried/Munich, Germany, represented by Vossius & Partner, Munich, Germany ("Complainant").

The Respondent is Mr. Mike Flowers, Via Roma 23, Osmate, Italy, represented by G.E. Incorporation srl., Viale Europa 13, Verese, Italy ("Respondent").

 

2. The Domain Names and Registrar

The dispute concerns the domain names "cellcontrol.com", "cellcontrol.org" and "cellcontrol.net".

The Registrar is Network Solutions, Inc., Virginia, USA.

 

3. Procedural History

The WIPO Arbitration and Mediation Center ("the Center") received the Complainantís Complaint in electronic form on September 22, 2000, and in hard copy on September 25, 2000.

The Center verified that the complaint was filed in accordance with the requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for the Policy ("the Rules"), and the Supplemental Rules for the Policy ("the Supplemental Rules").

Complainant made the required payment to the Center.

On September 27, 2000, the Center transmitted via e-mail to the Registrar a request for registrar verification in connection with this case. On September 29, 2000, the Registrar transmitted via e-mail to the Center, the Registrarís Verification Response, confirming that (1) Network Solutions is the Registrar of the Domain Names, (2) Mike Flowers (the Respondent) is the registrant, (3) Mike Flowers is the Administrative, Technical, Zone and Billing Contact, (4) the Registrarís 5.0 Service Agreement is in effect with respect to the Domain Names, and (5) the Domain Names are in "Active" status.

The formal date of the commencement of this administrative proceeding is October 2, 2000.

On October 2, 2000, the Center transmitted Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint, to the Respondent via e-mail and via post/courier to the address identified in the Registrar verification response. The Center advised that (1) the Respondentís Response was due by October 21, 2000, (2) in the event of default the Center would still appoint a Panel to review the facts of the dispute and to decide the case, (3) the Panel may draw such inferences from the Respondentís default as it considers appropriate, (4) the Complainant had elected for the matter to be decided by a single panelist.

The Respondent communicated with the Center via e-mail on October 2 and October 5, 2000, and filed the Response on via e-mail and fax on October 18, 2000. A hardcopy of the Response was received by the Center on October 18, 2000.

On October 23, 2000, in view of the Complainantís designation of a single panelist the Center invited Mr. P-E Petter Rindforth to serve as a panelist.

Having received Mr. Rindforthís Statement of Acceptance and Declaration of Impartiality and Independence, the Center, on October 25, 2000, transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Rindforth was formally appointed as the sole Panelist. The Projected Decision Date was November 8, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.

However, having reviewed all formal documentation in the case, the Panel found that the registered holder of the Domain Names, Mr. Mike Flowers, had not filed any Response in his own name. Instead the Response was filed on October 18, 2000, by Mr. Luca Zanetti at a company G.E. Incorporation srl., claiming to be the Respondentís authorized representative as well as the right holders of the Domain Names. The Panel asked the Center to obtain documentation proving any link between Mr. Mike Flowers Ė Mr. Luca Zanetti Ė G.E. Incorporation srl. On October 27, 2000, the Center forwarded to the Panel a Respondent Amendment explaining the said link (however now stating Mr. Mike Flowers as the Respondentís authorized representative).

The Panel concludes that the Respondent has been able to sufficiently prove the link between Flowers/Zanetti/G.E. Incorporation srl.

Accordingly, the Administrative Panel shall issue its Decision based on the Complaint, the Response, the Respondent Amendment, the Policy, the Rules, and the Supplemental Rules. The case before the Panel was conducted in the English language.

 

4. Factual Background

Complainant is owner of German trademark 396 18 643 "CellControl Biomedical Laboratories GmbH", filed on April 19, 1996, and registered on May 10, 1997. Complainant has also applied for trademark protection for the term "CellControl" in the European Union (filed on April 7, 2000, filing number 1597533).

Furthermore, the Complainant has also applied for trademark protection for the term "CellControl" in the USA (filed on May 15, 2000, filing number 76/048,481). Moreover, the Complainant's company name is "CellControl Biomedical Laboratories GmbH" as of January 5, 1995. The Complainant is also the holder of the domain name "cellcontrol.de" since March 9, 1999.

The company name and especially the term "CellControl" has been intensively used by the Complainant for years in Germany and other countries, and is mentioned in a number of brochures and articles, such as:

h Brochure: "Patienteninformation Ė ChemoSelect"

h Journal Of The Society For In Vitro Biology, Vol. 34, no. 9, October 1998, reporting on the 1998, Meeting of the Society for In Vitro Biology in Las Vegas, Nevada, U.S.A.

h Paper on the HUG (Hepatocyte User Group) meeting 1998 Ė Bristol

h Article "ChemoSelect: Ein prätherapeutisches Diagnostikum für die individualisierte Chemotherapie" in Euromed 2/98

h Article "Ein neuer Chemosensibilitätstest für biomedizinische Anwendungen" in GIT LaborMedizin 4/96.

The German trademark 396 18 643 owned by the Complainant is a combined trademark "CellControl Biomedical Laboratories GmbH". However, the word "CellControl" in its graphic form very much dominates the overall impression of the trademark.

Finally, Complainant will soon change its legal form and will become CellControl AG.

On June 20, 2000, the Complainant sent an informal letter by facsimile and e-mail to the Respondent, asking for a transfer of the "cellcontrol.com" domain to the Complainant along with the offer to refund the accumulated costs. The Respondent (here: Mr. Mike Flowers) did not reply.

On August 24, 2000, the representative of the Complainant sent a warning letter to the Respondent (Mr. Mike Flowers) asking to seize and desist from using the domain name "cellcontrol.com", and to transfer this domain name to the Complainant. In this letter reference was made to the trademark, the trademark applications and the company name of the Complainant. The term for Respondent's reply was set for September 14, 2000. Respondent did not reply.

The website under the domain name "cellcontrol.com" as viewed on September 14, 2000, displayed the following announcement: "CellControl; GSM-UMTS Intelligent Control Systems; comeing soon".

The Respondent states that Mr. Mike Flowers is the internet technician of G.E. incorporation srl and the address registered with Network Solutions is related to Mike Flowersí home where he has a monitoring station to alert if one of the Respondentís servers are down. The domain names are property of G.E. incorporation srl.

G.E. Incorporation SRL, is commonly known since 1979, as TIESSECI.

The Respondent is the owner of the Italian Trademark " Tiesseci ", a company specialized in telecommunication software development since 1980. According to the Respondent, G.E. Incorporation is the main company, Tiesseci the main trademark of that company, Mr. Mike Flowers is the technician in charge and Mr. Luca Zanetti is the CEO of G.E. Incorporation.

CellControl is a new Tiesseci project, already developed, intended to remote-control
home-devices via GSM ( and umts in the future ). Respondant has called this software CELL ular phone CONTROL. CELLCONTROL is therefore an intuitive way to focus what the software is intended for.

Respondant has registered CELLCONTROL ENTIRE PROJECT at SIAE ( The Authorís Rights Association ).

On June 27, 2000, the Respondent (represented by Mr Luca Zanetti of G.E. incorporation srl.) sent the answer to the Complainant letter by facsimile and e-mail saying that there where no interest or intention to cease the Domain Names as they were already assigned to a precise software product under final testing at that time.

On September 12, 2000, the Respondent sent the answer to the Complainant representative letter by facsimile and e-mail, once again pointing out that there where no interest or intention to cease the Domain Names.

The domain name "cellcontrol.com" is of fundamental interest for the Respondentís software-business goals, "cellcontrol.net" will be the support site for the product, and "cellcontrol.org" will be the open-source development to interface the CELLCONTROL software with domestic electric devices.

The Respondent (G.E. incorporation srl) is a software supplier for more than 2500 major customers such as RAI radio televisione Italiana, ABC American broadcastinc corp, IBC Icelandic Broadcasting Corporation, RTHK radio television Hong Kong, Harley Davidson radio network of America, RTSI radio televisione Svizzera Italiana, PSB pusan broadcasting corporation of Korea, and NBC national broadcasting corporation of America.

 

5. Partiesí Contentions

A. Complainant

The Complainant contends that the Domain Names are clearly confusingly similar to trademark of the Complainant, and are identical to the Complainantís trademark applications filed for the European Union and the U.S.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names, as the Respondent is neither licensed nor authorized in any other way to use the trademark or trademark applications of the Complainant. The Respondent is not an owner of any trademark with a name identical or similar to that of the Domain Names in question. Moreover, the domain name registrant, i.e. the Respondent Mike Flowers is clearly not commonly known by the domain name "CellControl".

The Complainant further contends that the Domain Names were registered and are being used in bad faith.

By the time of the Complainantís first letter to the Respondent, the domain "cellcontrol.com" had no web content, and it was not clear to the Complainant whether the Respondent was at all interested in building up a website under this domain.

The Respondent, i.e. the person responsible for the content of the website especially under the domain name "cellcontrol.com" had been well aware of the Complainant, and the fact that the registrant's website did not comprise any content until the second letter was sent to him is clear indication that the Respondent did not use or even make preparations to use the domain name in connection with a bona fide offering of goods or services before any notice to the Respondent. As decided in case No D2000-0112, inaction is clearly within the concept of "being used in bad faith". The Respondent was not only inactive upon registration of the Domain Names at issue and did not respond to all attempts to contact the Respondent, but only upon contacting the Respondent some "content" was made available under said Domain Names. This does however not render the Respondent's behavior "active" in the sense that "being used in bad faith" can be excluded. The Respondentís domain name must still be considered inactive.

The link between the Respondent's person (Mike Flowers, Italy), the "G.E. inc technology, and "Gsm/Umts telecommunication, seems to be quite dubious and does not indicate that there is any reasonable active use of the domain names intended.

Finally, the Complainant contends that by registering the Domain Names, the Respondent is making it difficult for Complainant's customers and the general public to contact the Complainant via the Internet, thereby disrupting Complainant's business, and the recent activation of the Domain Names at creates a likelihood of confusion to Internet users.

B. Respondent

The Respondent states that all activities regarding the Domain Names have been conducted in good faith, that Domain Names were registered with the only intention to use them to demonstrate and sell a software called CELLCONTROL, produced directly by the Respondent and intended for consumer remote control of Home Devices via GSM and UMTS mobile phone devices.

The Respondent further states that they have no intention to sell the Domain Names.

The Respondent contends that they have never heard of a company/trademark CellControl Biomedical Laboratories, and the Respondent points out the differences between the business activities of the Complainant and the Respondent.

The CellControl word is understood from the most part of the population as " a thing that have something to do with cellular phones .." and certainly not " a biomedical thing Ö ". Further, the Respondent states that Cellcontrol is a generic word that can only obtain distinctiveness when used in different markets: "in broadcast / consumer electronics it means Ďthe control via cellular phonesí, and in biomedics it has a completely different meaning ".

Regarding the non-use of the Domain Names, the Respondent points out that developing a new software is time-consuming and that it is normal that the connected website is lacking content during the developing period.

The Respondent claims to have fully answered the Complainantís letters.

Finally, the Respondent suggests that the Complainantís claims is a case of reverse domain name hijacking.

 

6. Discussion and Findings

According to Paragraph 4 (a) of the Policy, the Complainant must prove each of the following:

(i) that the Respondentís Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

The Respondent registered the Domain Names on November 18, 1999. At that time (according to the complaint) the Complainant had only one trademark registration, namely the German national trademark registration No 396 18 643 "CELLCONTROL Biomedical Laboratories GmbH" Logo, for pharmaceutical and medical laboratory related goods and services in intl. classes 5, 9 and 42. The Community Trademark application as well as the US trademark application (covering also goods and services related to the activities of the Respondent, such as: apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers; data processing equipment and computers; computer software, Class 9; computer programming, Class 42 Ė although specifically in relation to the field of bio-technology, etc) were filed on April 7, 2000, and May 15, 2000.

As established by case law (WIPO case No D2000-0235: jeanettewinterson.com /.net / .org), common law trademark rights Ė at least in some jurisdictions - are sufficient to prove that a complainant has prior trademark rights. The Complainant has used the CellControl part of its company name as a trademark or trade name at least since 1996, in Germany and it has also been used as such in different papers regarding in vitro biology and published in the US and UK since 1998. However, the Complainant has not proved that CellControl is established as a commonly known trademark outside Germany. The use of CellControl in other countries seems to be limited to the bio-medical community, and the evidence of such use as submitted by the Complainant is rather limited. Further, the Complainant has not claimed any use, application or registration of CellControl in Italy, prior to the Respondents registration of the Domain Names. Therefore, the Panel is in doubt whether the Complainant has proved any common law trademark rights to CellControl.

The Complainants future plans to change its legal form and company name to CellControl AG can not be considered in this case.

Accordingly, the consideration whether the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights, will have to be based mainly on the existing trademark registration in Germany.

The Domain Names are not identical to the registered trademark "CELLCONTROL Biomedical Laboratories GmbH" as shown in Annex 2 to the Complaint. However, the CellControl part of the trademark dominates the visual and overall impression of the mark. This fact, together with the Complainantís use since 1996, of CellControl alone in certain bio-medical papers and articles, shows that the Domain Names are confusingly similar to the Complainantís trademark.

The Respondent has no rights to use the Complainantís trademarks, and is not an authorized agent or licensee of the Complainantís products, services or trademarks.

The registrant of the Domain Names is a Mr. Mike Flowers. According to the Respondent, Mr. Flowers is the Internet technician of the Italian based software supplier G.E. incorporation srl. The Panel concludes that Mr. Flowers has registered the Domain Names in his capacity of an employee of G.E. incorporation, with a special responsibility to maintain the Internet server functions at the said company. Although it is more common to have the intended end user of a domain name as the registered holder of the same, there may be practical, technical or even economical reasons to place an employee as the holder. The specific reasons to let the Domain Names be registered in the name of an employee instead of the company G.E. incorporation srl. is not a subject to be further investigated by the Panel within the scope of the Policy. In any way, the Respondent has been able to prove the link between Mr. Flowers, G.E. incorporation srl. and Mr. Luca Zanetti (the CEO of G.E. incorporation). The Respondent has proved that CellControl is a business project, registered at Societaí Italiana degli Autori ed Editori (SIAE) on January 28, 2000, (Annex 3 of the Response). The Respondent has presented a business plan for its CellControl project. In light of the Respondentís activities in the software and telecommunication field since at least 1980, the Panel finds it likely that the Respondent has legitimate interests in respect of the Domain Names.

Considering the above, the Panel also finds that the Domain Names have been registered in good faith.

There are no obvious circumstances to prove that the Respondent has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names to the Complainant, or to a competitor of the Complainant, for a valuable consideration in excess of documented out-of-pocket costs directly related to the Domain Names, or to prevent the Complainant from reflecting the mark CellControl in a corresponding domain name, or has registered the Domain Names primarily for the purpose of disrupting the business of a competitor, or has intentionally attempted to attract (for commercial gain), Internet users to the corresponding websites by creating a likelihood of confusion with the Complainantís trademark.

The Respondent has expressly stated in the communications with the Complainant that the Domain Names are not for sale and the partiesí business activities are in completely different areas Ė the Respondent is not, and is not likely to be, a competitor of the Complainant.

Nor can it be said that the Domain Names have been used in bad faith, considering the fact that the Respondent seems to have a serious business plan for the use of all three Domain Names.

As mentioned above, paragraph 4 (a) of the Policy calls for the Complainant to prove (among other things) that the Respondent has no rights or legitimate interests in respect of the Domain Names, and that the Domain Names have been registered and is being used in bad faith. The Panel concludes that the Complainant has not been able to prove these circumstances.

The Respondent suggests that the Complainant is guilty of reverse domain name hijacking. Reverse domain name hijacking is defined in paragraph 15 (e) of the Rules as filing the complaint "in bad faith, for example in an attempt to harass the domain-name holder". Given the circumstances in this case, especially the fact that the Domain Names from the registrarís Whois-database seemed to be held by a private person (Mr. Mike Flowers) and that the Complainantís communication to that specific person was not replied by himself, makes the actions by the Complainant - even considering the fact that the Complainant has only communicated with the Respondent regarding one of the disputed Domain Names ("cellcontrol.com") - understandable and acceptable within the scope of the Policy and Rules. The Panel therefore states that this is not a case of reverse domain name hijacking.

 

7. Decision

In light of the foregoing, the Panel concludes (a) that the Domain Names "cellcontrol.com", "cellcontrol.net" and "cellcontrol.org" are at least confusingly similar to the Complainantís registered trademark CELLCONTROL Biomedical Laboratories GmbH" and the short form "CellControl" as used by the Complainant, (b) that the Complainant has failed to prove that the Respondent has no rights or legitimate interest in the Domain Names, and (c) that the Complainant has failed to prove that the Respondent has registered and used the Domain Names in bad faith.

Therefore, pursuant to paragraphs 4 of the Policy and 15 of the Rules, the Panel denies the Complainantís request to transfer the disputed Domain Names to the Complainant CellControl Biomedical Laboratories GmbH.

 

 


 

 

P-E Petter Rindforth
Sole Panelist

Dated: November 6, 2000