WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Passion For Life Products Limited v. Med Gen Inc.

Case No. D2001-0365

 

1. The Parties

1.1 The Complainant is Passion for Life Products Limited, a British corporation with its principal place of business in London, United Kingdom.

1.2 The Respondent is Med Gen Inc., a Florida corporation, with its principal place of business in Boca Raton, Florida, United States.

 

2. The Domain Names and Registrar

2.1 The domain names upon which this complaint is based are <snoreeze.com>, <snoreeze.net> and <snoreeze.org>. The registrar of the domain name as at the date of the Complaint is Network Solutions, Inc ("NSI").

 

3. Procedural History

3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 (the "Policy") in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of

December 1, 1999 (the "Supplemental Rules").

3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email on March 14, 2001 and in hard copy by courier on

March 16, 2001. The fees prescribed under the Supplemental Rules were paid by bank transfer.

3.3 The Center sent the Complainant an Acknowledgment of Receipt of Complaint on March 16, 2001, by email .

3.4 The Center sent a Request for Registrar Verification to NSI on March 16, 2001 by email. NSI responded to the Centerís request by email on March 19, 2001 verifying (1) that NSI was the Registrar for the domain names in dispute, (2) that the Respondent was the current registrant of the domain names in dispute, and (3) that the domain names in dispute all had an Ďactiveí status.

3.5 Compliance with formal requirements having been satisfied on March 22, 2001, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding on March 22, 2001 to the Respondent by post/courier, facsimile and email, and to the Complainant by email.

3.6 The Center received the Response from the Respondent on March 26, 2001 (electronic copy) and March 28, 2001 (hardcopy). The Center sent an Acknowledgement of Receipt (Response) to both the Respondent and the Complainant on March 27, 2001 by email.

3.7 On April 4, 2001 the Center informed the Panel, by email, that it had received from the Complainant a two page reply to the Respondentís Response. The Center requested the Panel to advise it as to whether it wished to be sent this additional material. The Panel advised the Center on April 4, 2001, by email, that it would like to be sent the Complainantís additional filing in order to determine its admissibility in accordance with paragraph 10(d) of the Rules. The Panel received the "Supplemental Filing" (as it was titled) from the Center on April 5, 2001, by email.

3.8 On April 5, 2001 the Panel received from the Center, by email, a response by the Respondent to the Complainantís Supplemental Filing.

3.9 On April 10, 2001 the Panel received from the Center a further submission by the Complainant, by email, responding to the Respondentís response to the Complainantís Supplemental Filing.

3.10 On April 11, 2001, the Panel sent to the Center, by email, a request for further information from the Respondent in accordance with paragraph 12 of the Rules. The Panel received the requested information from the Respondent, via the Center, on April 18, by fax.

3.11 On April 23, 2001 the Panel sent to the Center a revised decision date, extending the time by which the Panel must submit its decision to the Center to

30 April, 2001. The Center communicated this revised decision date to the Complainant and the Respondent, by email, on the same date.

3.12 On April 27, 2001 the Panel received from the Complainant, by email via the Center, comments on the information and documents furnished by the Respondent on April 18.

3.13 All other procedural requirements appear to have been satisfied.

 

4. Factual background

4.1 Activities of the Complainant

Little information is given in the Complaint or any of the subsequent filings made by the Complainant regarding the general activities of the Complainant. However, it is apparent from the Complaint that the Complainant is a British Corporation that manufactures and distributes throughout Europe a product called "Snoreeze", an anti-snoring product. According to the Complainantís website dedicated to this product, Snoreeze "is an easy-to-use throat spray, made of natural oils and vitamins which stops the vibrations that cause snoring."

4.2 The Complainantís Trade Marks

The Complainant holds a trade mark registration for "Snoreeze" in the United Kingdom, details of which were contained in Annexure 4 to the Complaint. This mark ("Mark") is registered in class 05, which relates, amongst other things, to pharmaceutical, homeopathic and naturopathic preparations and substances.

The Complainant has also registered "Snoreeze", as standard characters, in the International Register of Marks maintained under the Madrid Agreement and Protocol. A copy of the Certificate of Registration issued by the World Intellectual Property Organization was attached as Annexure 5 to the Complaint.

In addition, the Complainant is currently in the process of applying to the European Union for the trade mark "Snoreeze". A copy of the application published in an issue of the official Community Trade Marks Bulletin No.002/2001 page 232-4 dated 02 January 2001 was contained in Annexure 6 to the Complaint.

4.3 Activities of the Respondent

The Respondent is a United States corporation that developed a natural health product to prevent snoring known as "Snorenz", which it sold in the United States. The Respondent holds a trade mark in the United States for "Snorenz".

4.4 Relationship of the parties

In 1998 the Respondent appointed the Complainant as the exclusive distributor of the "Snorenz" product in the United Kingdom. The Complainant marketed and distributed Snorenz in the United Kingdom for approximately 18 months, before the relationship between the parties soured. This occurred, it seems, due to the registration by the Complainant (without the knowledge of the Respondent) of ĎSnorenz" as a trade mark in the United Kingdom. Due to the deterioration of the relationship between the parties, the Complainant arranged for a similar product to be produced for it by a third party, and proceeded to begin selling that product under the name "Snoreeze". The Complainant acquired the trade mark for this name from an unrelated third party in order to overcome an objection by the Registrar to its application for "Snorenz" on the grounds of the existing trade mark for "Snoreeze" being too similar.

4.5 The Complainantís Contentions in the Complaint

Although not making specific reference to each of the elements in paragraph 4(a) of the Policy, the Complainant asserts that these elements have been satisfied.

In reference to the element in paragraph 4(a)(i)of the Policy, the Complainant asserts that the domain names in dispute "are identical to trademarks belonging to the Complainant".

In reference to the element in paragraph 4(a)(ii) of the Policy, the Complainant asserts that:

"At no time has the Respondent, or their products, been known by the domain names"

and that

"The Respondent is not making legitimate non-commercial or fair use of the domain names, but rather, intentionally, for commercial gain misleadingly diverting customers".

The above assertions are obviously made by reference to paragraphs 4(c)(ii) and (iii) of the Policy, therefore inviting the conclusion by the Panel that the Respondent has no rights or legitimate interest in respect of the domain names in dispute.

In reference to paragraph 4(a)(iii) of the Policy, the Complainant asserts that:

"The domain names have been registered primarily for the purpose of disrupting the business of the Complainant. The domain names divert potential customers searching under "Snoreeze" away from the Complainantís web site and takes them to the Respondentís own web site advertising Snorenze"

and

"The Respondent is financially benefiting by attracting Internet users to their web site, by creating a likelihood of confusion with the Complainantís mark as the source, sponsorship, affiliation, or endorsement of Snorenze on the Respondentís web site. The similarity of the products themselves as well as their names compounds the confusion."

Again, the above assertions are made by reference to paragraphs 4(b)(iii) and (iv) of the Policy, therefore asserting that the domain names in dispute have been registered and are being used in bad faith.

4.6 The Respondentís contentions

The Respondent defends its registration of the domain names in dispute on various grounds, although not generally by reference to principles provided in the Policy. These grounds include:

- "The Respondent has had to protect its USA Trademark Snorenze® which was filed on March 1, 1997 and granted in the United States on December 15,1998 No.2,210,381(see exhibit 1) against unfair use of a similar name and in fact, the Respondentís name in as much as the Respondent manufactured product sold under the name Snoreeze during late 1998 and 1999";

- "The Respondent has owned the formula for both Snorenz® and Snoreeze™ since it founded and invented the product in 1996. The Respondent has been granted its US Patent #6,187,318 B1 on February 13, 2001(see exhibit 2)";

- "The Respondent is a Publicly traded company on the US Over The Counter Bulletin Board (OTC-BB-MGNI) and must protect its shareholders rights against those trading on rights that were miss-appropriated";

- "The Respondent further contends that it has every legitimate right to protect its good name and Patent protected product that the Respondent introduced into the world markets against unfair predator companies whose sole intent were to steal the product and reverse engineer it for its sole benefit thereby committing commercial theft";

- "Snoreezeä is a trademark registered in the United States by the Respondent";

- "The Complainant has attempted to register the domain name Snoreeze™ to gain access to the US market and participate unfairly in Commerce and against the rights that the Respondent clearly and already owns in the United States and other countries"; and

- "The Respondent denies any allegation that it has disrupted in anyway the Claimants business and that the Respondent has every right to market products that it owns the rights to or that it manufactures through any legal means and counter claims that in fact it is the Claimant that is attempting to tortuously [sic] interfere with Respondents right to enjoy the freedom of commerce through the internet on products that it has invented, patented and owns trademarks in".

4.7 Other contentions of the parties

As described in section 3 "Procedural History" above, both the Complainant and the Respondent submitted a number of other communications to the Panel containing additional arguments. Some of these arguments, to the extent that the Panel considered them relevant, are considered below.

 

5. Discussion and Panel Findings

This section is structured by reference to the elements required by paragraph 4(a) of the Policy.

5.1 Domain Names identical or confusingly similar to Complainantís Marks

The domain names in dispute are <snoreeze.com>, <snoreeze.net> and <snoreeze.org>. The Mark owned by the Complainant is "Snoreeze". It is clear that the domain names in dispute are identical to the Complainantís Mark since the generic top level domain suffixes serve no relevant distinguishing purpose.

5.2 The Respondent has no rights or legitimate interests in the domain names

The Respondent has made a number of assertions which are significant in regards to this requirement of the Policy. These will be dealt with in turn.

The Respondent claimed in its Response that "Snoreeze" is a trade mark registered in the United States by the Respondent. No evidence was attached to the Response to support this. The Respondent altered that claim in its supplemental filing received by the Panel on April 5, 2001, in which it was claimed that the Respondent has applied for a registered trade mark for Snoreeze. In the context of the claim it would appear that the Respondents were referring to an application for a United States trade mark. Again, however, there was no evidence provided to support this.

In order to clarify the position, the Panel, on April 11, 2001, requested evidence from the Respondent to support either of these assertions. In response the Panel received from the Respondent a copy of an extract from the United States trade mark office register for the name "Snoreeze".

It is clear that the Respondent does not hold a United States trade mark for Snoreeze. In relation to the application, a claim to a right or legitimate interest on this basis is not, in the opinion of the Panel, justified. The trade mark was not applied for until March 28, 2001. The application was therefore filed six days after the Center sent the Respondent the Notification of Complaint and Commencement of Administrative Proceeding (sent on March 22, 2001), and two days after the Respondent submitted its Response to the Center. In the opinion of the Panel, the application for a United States trade mark for "Snoreeze" was most likely made in response to the Complaint.

An important submission made by the Respondent asserting a right or legitimate interest in the domain names in dispute was not included in the Response, but was found in Respondentís supplemental filing received by the Panel on

April 5, 2001. In this communication the Respondent claimed that:

"Med Gen Inc, has shipped product in the US under the name Snoreeze and intends to continue shipping under this Brand . . . ."

Accordingly the Panel requested, on April 11, 2001, supporting evidence from the Respondent. In response to this request the Respondent submitted to the Panel three invoices relating to the shipping of goods. All three invoices refer to a product called "Snoreeze 2 oz. Bottles". These invoices related to shipments of that product to Switzerland (2 shipments) and Miami (1 shipment). The dates of the invoices were October 19, 1999, November 5, 1999 and November 6, 1999. Interestingly, the date of first use cited in the March 28, 2001 trade mark application is November 10, 1999.

The dates of the invoices are of key significance. The Complainant stated in its second supplemental filing (received by the Panel on April 10) that:

"A wholly separate product was obtained by the Complainant from a different supplier in May 2000; it was this product that was sold by the Complainant as Snoreeze."

In a recent decision of the High Court of Justice in the United Kingdom, in which the court had to decide which of Complaint and the Respondent owned the goodwill in "Snorenz" in the United Kingdom (MedGen Inc v. Passion for Life Products Limited Case No. HC 00 2048), the court noted the following:

"By the autumn of 1999, it was becoming clear to PfL (the Complainant in this proceeding) that the continued supply of Snorenz from MedGen (the Respondent in this proceeding) could no longer be guaranteed. It therefore set about arranging for a similar product to be made by another manufacturer, and having that product tested. All this was kept secret from MedGen. The last order for Snorenz was given on 4 November 1999 and delivered on 24 December 1999. PfL was ready to launch its new product on 1 May 2000 which it did under the name "Snoreeze", this being the trade mark it had purchased in 1998."

The invoices purport to evidence shipments of a product called "Snoreeze" from the Respondent prior to the release of the Complainantís product, under the same name, to the market. As the above quote from the High Court states, the activities of the Complainants of having another product manufactured was kept secret from the Respondent. As a result, the Respondent would not have known (and there appears to be no evidence to the contrary) that the Complainant intended to sell an alternative product under the Snoreeze name until that product appeared in May 2000. Shipments of product by the Respondent under the name Snoreeze in late 1999 could not therefore be seen as a deliberate reaction to the sale by the Complainant of goods which the Respondent felt misappropriated its rights.

Paragraph 4(c)(i) of the Policy clearly states that the following circumstances, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights and legitimate interest in the domain names:

"before any notice 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 (emphasis added)"

The invoices provided by the Respondent (and the date of first use cited in its US trade mark application) evidence activity which clearly satisfies this paragraph, and as a result the Panel is of the opinion that the Respondent has been able to show that it has rights or a legitimate interest in the domain names. It follows therefore that the Complainant has failed to prove the requirements of paragraph 4(a)(ii) of the Policy.

The only difficulty that the Panel has with this conclusion relates to the requirement that the offering of goods and services be "bona fide". This would certainly have been a significant issue had there been evidence to show that the Respondent was aware of the Complainantís intention to sell goods under the name "Snoreeze" before it shipped goods under this name itself. However, the evidence does not reveal such knowledge.

The Panel has to observe that the argument that the Respondent had shipped goods under the "Snoreeze" name was not submitted by the Respondent in the Response, but was rather asserted in the Respondentís supplemental filing received by the Panel on April 5, 2001. This would seem unusual, as it was the only argument put forward by the Respondent that had any weight in respect of the requirements of the Policy. One would think that such an argument would be in the first submission made by the Respondent to the Panel. However, the Panel is not in a position, nor does it have the power, to test the validity and authenticity of all evidence provided by the parties. Such an appraisal is only to be found in the jurisdiction of courts. Neither is the Panel in the business of "punishing" parties for badly prepared submissions. Under the Rules the Panel must make a decision on the available evidence, and in this case the evidence supports a finding that paragraph 4(c)(i) of the Policy is applicable, despite the Panel having some misgivings about the authenticity of the invoices given the date cited in the recent trade mark application.

If the Respondent bona fide sells a product called "Snoreeze", it seems odd that the domain names in dispute resolve to the "Snorenz" product website. The meta-tag keywords on the "Snorenz" website also include "Snoreeze". Again, however, the Panel is not in a position to speculate on why the Respondent chooses to behave in a certain way, as puzzling as that behaviour may seem. The Panel must focus on the provisions of the Policy.

The Panel notes that the dispute between the Complainant and Respondent is not one for which the Policy was designed, and despite the Complainantís attempt to create a case for invoking the Policy, it is plain from the judgment of the UK High Court that the current proceedings are but a part of a larger global play in which the Policy is sought to be invoked as a tool. The parties have a great deal of history and have found themselves in a complicated situation. Resolution of disputes with backgrounds such as this should be sought in an alternative forum.

5.3 The Domain Names have been registered and are being used in bad faith

Given the findings of the Panel in section 5.2 above, the Panel does not need to consider the requirements of paragraph 4(a)(iii) of the Policy. However, were it necessary to do so, the Panel inclines to the view that the paragraph is satisfied by reason of the Respondentís conduct appearing to be "retaliatory".

 

6. Decision

The Complainant having failed to prove all of the requirements of paragraph 4(a) of the Policy, the Panel dismisses the Complaint.

 


 

Philip N. Argy
Sole Panelist

Dated: April 30, 2001