WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
JDS Pharmaceuticals, LLC (JDS) v. hebron systems
Case No. D2007-0254
1. The Parties
Complainant is JDS Pharmaceuticals, LLC, New York, New York, United States of America, represented by the law firm Guzov Ofsink, LLC United States of America.
Respondent is hebron systems, Des Moines, Iowa, United States of America, represented by the law firm Sullivan & Ward, P.C. West Des Moines, Iowa, United States of America.
2. The Domain Name and Registrar
The disputed domain name <lithobid.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2007. On February 23, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue, and eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing contact details. In response to notification from the Center that the Complaint was deficient, Complainant filed an Amended Complaint on March 6, 2007.
The Center verified that the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 7, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2007. The Response was filed with the Center on March 27, 2007.
The Center appointed Richard G. Lyon as the sole panelist in this matter on April 5, 2007. The Panel finds that it was properly constituted. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant owns a trademark, registered on the principal register of the United States Patent and Trademark Office (USPTO), in class 5 for the word LITHOBID. The USPTO records submitted with the Complaint indicate that a company named Rowell Laboratories, Inc. filed for this registration in June 1979, that the USPTO granted the application in November 1980, and that the mark was subsequently assigned to (among others) Solvay Pharmaceuticals in 1995 and by Solvay to Complainant in 2004. Complainant, without any evidentiary support, alleges that it or prior owners of the mark has used “continuously used the mark in commerce and has invested considerable time, money, and effort in marketing the mark”. (Complaint, paragraph 16). Again without evidentiary support, Complainant alleges that it uses the mark “in connection with ‘psychopharmacological agent’ goods”. (Id. paragraph 14).
Respondent hebron systems and its principal, Ron Davis, are involved in the printing industry. Both have an address in Des Moines, Iowa. Respondent registered the disputed domain name in 1998. According to Respondent’s counsel, Mr. Davis selected the name on behalf of Respondent without any knowledge of Complainant or its mark, and chose the word LITHOBID because that term is common jargon in the printing industry; it refers to obtaining estimates of printing costs. (Lithography is a common form of commercial printing.) Respondent supports these assertions with copies of search engine printouts that indicate that the word LITHOBID is in fact commonly used for this purpose in the printing industry. The wayback machine1 indicates that Respondent made limited use of the disputed domain name for website soliciting or tracking printing bids in 2001.2 Again according to the wayback machine, any use ceased late in 2001. Respondent alleges, without supporting evidence, that it has spent approximately $80,000 in preparation for an active website at the disputed domain name.
In April and May 2000 counsel for Solvay, then the mark owner, contacted Respondent regarding the disputed domain name. Through counsel Respondent replied to Solvay’s approach by asserting Respondent’s rights to the disputed domain name, making most of the arguments that Respondent advances in this proceeding. This reply is included as an annex to the Response.
Respondent alleges, without evidentiary support, that Complainant contacted Respondent by telephone in 2005, “offering to purchase” the disputed domain name, and that Respondent “declined the amount offered by Complainant but said it would sell the disputed domain name for $80,000”, the approximate amount of investment [Respondent] has invested in its business model which incorporates” the disputed domain name.
5. Parties’ Contentions
Complainant contends as follows:
Rights in a Mark. The disputed domain name is identical to Complainant’s registered trademark, LITHOBID. Because the mark has been on the principal register of the USPTO for five years, it has become incontestable.
Rights or Legitimate Interests. Complainant has not authorized Respondent to use its mark. There are no grounds from which a license or other permission to use it may be inferred. Although Respondent registered the disputed domain name nine years ago, it has never used the disputed domain name for any purpose, legitimate or otherwise. The word “lithobid” does not appear in Respondent’s name.
Bad Faith. There is no separate heading in the Complaint addressing this Policy element, though Complainant does allege that “There can be no doubt that Respondent registered the disputed domain name . . . without an intention of using [it] for a legitimate purpose”. Complainant intimates that Respondent’s offer to sell the disputed domain name for a sum far in excess of its costs of registration is evidence of bad faith.
Respondent contends as follows:
Rights in a Mark. While acknowledging that the disputed domain name is identical to Complainant’s mark, Respondent asserts that there is no likelihood of confusion because the parties do business in different and completely unrelated fields, Complainant for medication and Respondent for commercial printing. Respondent cites the eight factor test for evaluating confusion in United States trademark law articulated in AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir. 1979), as the standard for judging confusing similarity and asserts that under this test “no confusion is possible as the parties operate in two distinct markets . . . with no likelihood that either company will expand into the other’s area of expertise”.
Rights or Legitimate Interests. Respondent registered the disputed domain name without knowledge of Complainant or its predecessors or any trademark owned by any of them. It selected the word “lithobid” for its domain name because of that term’s common use and meaning in the printing industry. Because this word has two distinct meanings and the parties act in different and non-overlapping fields of endeavor, no confusion is likely. Because the term “lithobid” is common in the printing industry, Respondent had a right to select it for its website.
Bad Faith. Because Respondent registered the disputed domain name without knowledge of Complainant’s mark, there was no registration in bad faith. Similarly, use of the disputed domain name is entirely appropriate and not in bad faith. Respondent has made no attempt to sell the disputed domain name to Complainant; the $80,000 offer was merely in response to communications initiated by Complainant.
Laches. Again invoking trademark law, Respondent asserts that allowing nine years to pass from its registration of the disputed domain name to commencement of this proceeding provides an equitable defense of laches.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must establish each of the following with proof (not merely allegations):
(1) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants has rights; and
(2) that the Respondent has no rights or legitimate interest in respect to the disputed domain name; and
(3) that the disputed domain name has been registered and is being used in bad faith.
Complainant bears the burden of proof on each element. Failure to establish any one of these elements by competent evidence results in a denial of the Complaint. Both parties’ reliance on the strength of their respective counsel’s allegations on matters for which the Policy requires “evidence” has complicated the Panel’s analysis somewhat.
A. Identical or Confusingly Similar. Complainant has established this element of the Policy. It holds an incontestable federally-registered United States trademark for LITHOBID, and the disputed domain name is identical to that mark except for the top-level domain designation. Unlike analysis under United States trademark law, under the Policy “confusing similarity” is presumed from a domain name identical to complainant’s mark. See Sharman License Holdings, Limited v. Gregg Smitherman, WIPO Case No. D2004-0375 (“Confusing similarity turns on the similarity in sound, appearance and idea suggested by the mark and the domain name among other factors.”).3
Rights or Legitimate Interests Registered and Used in Bad Faith. Under accepted procedures, Complainant bears the burden of establishing a prima facie case under Paragraph 4(a)(ii) of the Policy. If it does so, the burden of persuasion shifts to Respondent to establish rights or legitimate interests.
By virtue of Respondent’s failure to deny Complainant’s allegation that Complainant has not authorized Respondent’s use of its mark, Complainant has made a sufficient, if only barely, showing that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not provided proof (as opposed to allegations) that it comes within any of the safe harbors in paragraph 4(c) of the Policy. The word “lithobid” does not appear in the name of either Respondent or its principal, Mr. Davis, so clause (ii) is unavailing. Respondent did use the disputed domain name briefly for a single web page during 2001 for its business, but for the past six years has not used it at all. Respondent has provided not a shred of evidence to support its allegation that it has laid out $80,000 in preparation for use of the disputed domain name for an active website, so clause (i) is unavailing. The Panel is not prepared to hold on the basis of this that Respondent has shown “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”. (Policy, paragraph 4(c)(i). Respondent does not claim that its limited use was or intended use will not be non-commercial, rendering clause (iii) unavailable. Whether selecting a common term from printing jargon provides Respondent a right or legitimate interest is an issue the Panel need not decide in this proceeding, because Complainant has not presented any evidence that would permit the Panel to infer that Respondent registered the disputed domain name in bad faith.
Respondent registered the disputed domain name in 1998, selecting a common printing term for a website that was owned and to be used by a printing company. There is no allegation, and no proof, that Respondent did so to take advantage of any good will attaching to the mark then owned by one of Complainant’s predecessors or that Respondent even knew of this trademark. Unlike United States of America trademark law, panels in proceedings under the Policy only selectively employ the doctrine of “constructive notice” under which any resident of the United States of America is presumed to be aware of a federally-registered trademark. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.4. Even though both parties to this proceeding are United States entities, this does not appear to be a case of obvious cybersquatting, so the Panel cannot impute to Respondent any knowledge of Complainant’s mark on that basis. Nor does this appear to be a case involving a domain name aggregator on which the Panel might place a duty of inquiry. Compare American Appraisal Associates Inc. v. R Hagar, Kinja LLC, WIPO Case No. D2006-1556, with Mobile Communication Service Inc. v. Webreg, RN, WIPO Case No. D2005-1304. Here the parties carry on their respective businesses in entirely differentlines of commerce and the word Respondent selected for its website was related to and common in its business.4
The Panel finds that Complainant, which bears the burden of proof, has not established that Respondent registered the disputed domain name in bad faith. Paragraph 4(a)(iii) of the Policy is conjunctive. -Both registration and use in bad faith must be proven, so the Panel need not address whether Respondent’s offer to sell the disputed domain name to the mark owner for $80,000 constitutes use in bad faith. The Panel also need not address Respondent’s laches defense, noting however that this defense is generally not recognized under the Policy. See, e.g., Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091.
For all the foregoing reasons, the Complaint is denied.
Richard G. Lyon
Dated: April 19, 2007
1 The wayback machine is an Internet archive located at “www.archive.org” that permits a user to view the content of a website at particular points in time.
2 Respondent includes a printout from the wayback machine of this one-page content with its Response.
3 The most obvious reason why the more detailed confusion analysis under trademark law is unsuitable for UDRP proceedings is the simple fact that while identical trademarks – Delta Airlines and Delta Faucets, for example – can co-exist peacefully without confusion because of different fields of endeavor, different designs, different logos, different countries, and the like, because Internet addresses consist only of words only one mark owner may hold a domain name in each TLD.
4 Complainant does claim that its mark is “famous”, but as with almost all of its other allegations provides no proof of this highly dubious assertion.