The Complainant is Novo Nordisk A/S of Bagsvaerd, Denmark, represented internally.
The Respondent is Andrew Melcher of La Jolla, California, United States of America, appearing pro se.
The disputed domain name <flextouch.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2010. On January 21, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On January 25, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 1, 2010. In accordance with paragraph 5(a) of the Rules, the due date for Response was February 21, 2010. The Response was filed with the Center on February 21, 2010.
The Center appointed Brigitte Joppich as the sole panelist in this matter on March 5, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
The Complainant is a health care provider.
The Complainant is the proprietor of the following trademark registrations including the term “flextouch”, which the Complainant intends to use for pharmaceutical preparations for the treatment of diabetes as well as pharmaceutical apparatus for injecting said drugs (hereinafter referred to as the “FLEXTOUCH Marks”):
- United States trademark registration No. 3,737,161 FLEXTOUCH, filed on January 13, 2009 and registered on January 12, 2010 for pharmaceutical preparations in class 5; and
- Community trademark registration No. 007476039 FLEXTOUCH, filed on December 18, 2008 and registered on June 10, 2009 for pharmaceutical preparations in class 5.
The disputed domain name was first registered on June 4, 2003 and was acquired by the Respondent between June 7, 2009 and August 22, 2009. The Respondent is using the disputed domain name in connection with a parking website showing links for various products, inter alia, software and switches.
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The domain name is identical to the FLEXTOUCH Marks as it solely consists of the word “flextouch”.
(2) The Respondent has no rights or legitimate interests in the disputed domain name as there is no contractual or other agreement between the parties and the Respondent has not been authorized to use the trademark in any way, as the Respondent is not making a noncommercial or fair use of the domain name, which is used in connection with a pay-per-click landing page, and as the domain name is not being used in connection with a bona fide offering of goods and services.
(3) The Complainant finally contends that the Respondent has acquired the disputed domain name in bad faith following the registration of the FLEXTOUCH Marks by the Complainant, that the Respondent owns more than 6,700 domain names and – as a professional domainer – should have properly investigated whether or not the disputed domain name is infringing existing trademarks and by failing to do so acted in bad faith, and that the Respondent is intentionally attempting to attract for commercial gain Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trademark to the extent that the Respondent's website is somehow associated with the Complainant.
The Respondent denies the Complainant's allegations.
The Respondent accepts that the disputed domain name is identical to the Complainant's FLEXTOUCH Marks. However, the Respondent claims that the word “flextouch” is a descriptive term which is used by a multitude of third parties to describe various products. In support of this allegation the Respondent cites many websites using the words “flexible touch” and “flex touch” in a descriptive way, inter alia as follows: “flexible touch screen displays”, “flex touch point of sale system”, “flexible touch sensor system”, “flexible touch laptops”, “flexible touch switch panel”, “flexible touch phone”, and “flexible touch panels for data input”, and that the Complainant only has the exclusive right to use the word “flextouch” in connection with diabetic medication for which “flextouch” is “semi-descriptive and mildly surprising”.
Furthermore, the Respondent contends that he never used the domain name in connection with a parking website containing ads violating the Complainant's FLEXTOUCH Marks, that there is no evidence that any links on the Respondent's website redirected Internet users to any pages in violation of the Complainant's FLEXTOUCH Marks, and that the use of “flextouch” must be considered as fair use as long as no pharmaceutical products are offered.
With regard to bad faith registration and use, the Respondent contends that the Complainant has not submitted any evidence with regard to paragraphs 4(a)(iii) and 4(b) of the Policy.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant's trademark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The disputed domain name fully incorporates the Complainant's FLEXTOUCH Marks.
It is well established that the specific top level domain name generally is not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant's trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
Therefore, the Panel finds that the disputed domain name is identical to the Complainant's FLEXTOUCH Marks and that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
In the light of the Panel's finding under the head of “Bad Faith” (cf. 6.C. below) it is not necessary for the Panel to come to a decision in this regard.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent's website or location or of a product or service on its website or location.
The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive. The Complainant must show that the domain name was registered in bad faith and is being used in bad faith (cf. Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Telstra Corporation Limited v. Adult Web Development and Telstraexposed, WIPO Case No. D2002-0952; Prada S.A. v. Mr. Chuan Sheng Wang, WIPO Case No. D2003-0758).
With regard to bad faith registration, the Complainant alleges that the Respondent has acquired the domain name in bad faith following the registration of the FLEXTOUCH Marks by the Complainant, that the Respondent owns more than 6,700 domain names and - as a professional domainer - should have properly investigated whether or not a particular domain name is infringing existing trademarks.
Having carefully considered the facts presented in the case file, on the balance of evidence, the Panel is not satisfied that the Respondent registered the disputed domain name in bad faith for the following reasons:
The Complainant did not provide any evidence that the Respondent registered the disputed domain name with knowledge of the Complainant's rights in the term “flextouch”. The Complainant itself submits that it has not used its FLEXTOUCH Marks actively in commerce so far, but merely intends to use the FLEXTOUCH Marks for pharmaceutical preparations for the treatment of diabetes. The Complainant neither provided any evidence that it promoted its FLEXTOUCH product in any way nor listed any other circumstances supporting the assumption that the Respondent must have been aware of the Complainant and its rights in the term “flextouch” at the time of the registration of the disputed domain name. The Respondent, in turn, provided evidence of substantial third parties' use of the terms “flex touch” and “flexible touch” in connection with various products. As far as this Panel is aware, he has not been found to infringe the Policy in an earlier proceeding.
As a result, no compelling evidence has been submitted to the Panel in support of the assumption that the public identifies the term “flextouch” with the Complainant, apart from the registration of the FLEXTOUCH Marks, which have, however, not been actively used so far. This Panel therefore cannot refute the Respondent's contention that he did not violate the UDRP, as the disputed domain name has a generic meaning and/or due to the substantial third party use of the term “flextouch”.
The fact that the Respondent is a professional domainer does not automatically lead to the assumption that the disputed domain name was registered in bad faith either. At least some evidence supporting bad faith is required, and the standard tends to be somewhat higher in cases involving geographical identifiers and marks that are less distinctive. There are cases where a finding of bad faith registration can indeed be confirmed by the specific circumstances of a respondent's so-called “willful blindness”, even if the respondent did not specifically know of the complainant or of its trademark rights when it registered the disputed domain name (see Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448; Balglow Finance S.A., Fortuna Comércio e Franquias Ltda. v. Name Administration Inc. (BVI), WIPO Case No. D2008-1216). However, these decisions must be distinguished from cases like the present, where the disputed domain name is to be regarded as a generic term (at least in connection with some products) and where the complainant's trademark rights are on the weaker end of the spectrum, in particular as they are neither internationally known nor appear as result of a Google search (see Leyton & Associés (SAS), Thésée (SAS), Leyton Consulting UK and Ireland Limited, Leyton Maroc, Leyton Belgium, Leyton UK Limited v. Drela Mateusz, Elephant Orchestra, WIPO Case No. D2009-1589 with further references; Mahindra & Mahindra Limited v. Portfolio Brains LLC, WIPO Case No. D2009-0209). After all, the registration of domain names because of their attraction as generic terms is a business model permitted under the Policy, and there is no general obligation under the Policy to conduct searches in order to find out whether a domain name might infringe third parties' rights.
Accordingly, the Panel concludes that the first condition of the third requirement of the Policy has not been established. This Complaint must therefore fail.
For all the foregoing reasons, the Complaint is denied.
Date: March 19, 2010