WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Netdoktor A/S v. Jens Nielsen
Case No. DBIZ2002-00109
1. The Parties
Complainant is Netdoktor A/S, represented by Maria Thestrup, Sandel Løje & Wallberg, Frederiksgate 7, DK-1265, Copenhagen K, Denmark, hereinafter the "Complainant".
Respondent is Jens Nielsen, Lille Colbjørnsensgade 9, 2 DK-1703, Copenhagen V, Denmark, hereinafter the "Respondent".
2. Domain Name and Registrar
The domain name in dispute is <netdoctor.biz>.
The registrar for the disputed domain name is CSL Computer Service Langenbach GmbH dba Joker.com, Rathausufer 16, 40213 Düsseldorf, Germany.
3. Procedural History
(a) Complainant initiated the proceeding by the filing of a Complaint, received by the WIPO Arbitration and Mediation Center ("the Center") on April 26, 2002, by electronic mail, and in hard copy on May 15, 2002. On May 2, 2002, the Center sent an Acknowledgement of Receipt of the Complaint to the Complainant.
(b) On May 15, 2002, the Center transmitted the Notification of STOP Complaint and Commencement of Administrative Proceeding to the Respondent, after having satisfied itself that the Complainant had complied with all formal requirements pursuant to the Start-up Trademark Opposition Policy for .BIZ ("STOP") adopted by NeuLevel Inc. and approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001, the Rules for Start-up Trademark Opposition Policy (the "STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ (the "WIPO Supplemental STOP Rules"). The Notification advised that the last day for the Respondent to send a Response to the Complaint, was June 4, 2002.
(c) On June 6, 2002, the Respondent filed a Response by electronic mail, the receipt of which was acknowledged by the Center on the same day. The Center also received the Response in hardcopy on June 10, 2002.
(d) The Center invited Mr. Peter Nitter to serve as a panelist. Having received his Statement of Acceptance and Declaration of Impartiality and Independence, the Center formally appointed him as Panelist on June 19, 2002.
(e) The Administrative Panel finds that it is properly constituted and appointed in accordance with the STOP and the STOP Supplemental Rules, and shall issue its Decision based on the STOP, the STOP Rules and the WIPO Supplemental STOP Rules. The proceedings have been conducted in English.
4. Factual Background
Complainant is a provider of information related to medical and health services on the Internet, and is the holder of the community trademark NETDOKTOR. Complainant has a pending trademark application in the United Kingdom for the trademark NETDOCTOR.CO.UK.
Respondent is a board member of The National Organization for Nature Health in Denmark. He has registered the domain name <netdoctor.biz>.
5. Parties’ Contentions
The Complainant asserts that:
The domain name at issue is identical to Complainant’s domain name <netdoctor.co.uk> and its United Kingdom trademark application for NETDOCTOR.CO.UK, and furthermore almost identical to Complainant’s company name ‘Netdoktor A/S’ and its community trademark NETDOKTOR.
The Respondent has no right or legitimate interest in respect of the domain name at issue. The Respondent did not file an IP Claim, which indicates that he does not have any rights in the name ‘netdoctor’. Nor has Respondent prior to any notice of this dispute used said domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services.
The Respondent has chosen to register the domain name in spite of Complainant’s IP Claim, and the registration has thus taken place with full knowledge of Complainant’s rights. As Respondent lacks any right or legitimate interest in respect of the domain name, the registration indicates that the domain name was registered in bad faith.
The Complainant requests the Administrative Panel issue a decision that the contested domain name must be transferred to the Complainant.
The Respondent filed its Response two days after the deadline established by the Center, and is thus in default. It is however in the Panel’s discretion to consider a late-filed Response, pursuant to the STOP Rules, Paragraph 14. The Respondent’s contentions will thus be taken into consideration by the Panel under these proceedings.
The Respondent asserts that:
Both ‘netdoctor’ and ‘netdoktor’ are descriptive in character, and must be considered as generic terms.
The Complainant’s trademark application for NETDOCOR.CO.UK is not identical to the domain name at issue.
The domain name was registered in good faith. The intention is to use the domain name in connection with an on-line sales and advisory service for alternative and conventional medicine. None of the circumstances listed in the STOP, Paragraph 4(b) are present.
6. Discussion and Findings
Paragraph 4(a) of the STOP lists three circumstances which the Complainant has the burden of proving are present in order to succeed with the administrative proceeding:
i. the domain name is identical to a trademark or service mark in which the complainant has rights; and
ii. the respondent has no rights or legitimate interests in respect of such domain name; and
iii. the domain name has been registered in bad faith or is being used in bad faith.
6.1 Identical to a trademark or a service mark
Pursuant to the STOP, Paragraph 4(a), only a domain name’s identity to trademarks and service marks are relevant to the STOP. The Complainant’s assertions with regard to its domain name <netdoctor.co.uk> and its company name ‘Netdoktor A/S’ are therefore not to be taken into consideration.
The Complainant’s assertion with regard to its pending trademark application for NETDOCTOR.CO.UK in the United Kingdom is also to be disregarded, as a trademark application does not give the applicant any trademark rights before a trademark registration is granted.
Irrespective of Complainant’s lacking trademark rights with regard to NETDOCTOR.CO.UK, this mark could not be deemed identical to the contested domain name pursuant to STOP, Paragraph 4(a). As opposed to the domain name registration system, the suffix ‘.CO.UK’ does not have any technical significance when registering a trademark, and is thus relevant in the evaluation of identity between the Complainant’s marks and the domain name in question.
The Complainant has not asserted, nor produced any evidence that its use of said domain name, company name or trade mark has resulted in any unregistered trademark rights.
The STOP, Paragraph 4(a)(i), requires that the domain name be identical to a mark in which the Complainant has rights. The wording of the STOP is clear, and dissimilarities between the domain name and the mark should therefore only be accepted to the extent that technical requirements of the domain name registration system render such dissimilarities necessary, see Fiat Auto S.p.A v. Italienska bil, WIPO Case No. DBIZ2001-00030.
The Complainant’s assertion that the domain name is almost identical to its community trademark NETDOKTOR can therefore not be deemed sufficient to sustain the Complaint.
The Panel therefore finds that the Complainant has failed to establish that the domain name at issue is identical to a trademark or service mark in which the complainant has rights.
6.2 Rights or legitimate interest in the domain name and registration or use in bad faith
Given the Panel’s finding that the Complainant has failed to prove the requirements of Paragraph 4(a)(i) of the STOP, it is unnecessary for the Panel to consider whether the two other requirements listed in STOP, Paragraph 4(a) is fulfilled.
The Complainant having failed to prove the requirements of Paragraph 4(a)(i) of the STOP, the Panel dismisses the Complaint.
Peter G. Nitter
Dated: July 3, 2002