Complainant is SHL Medical AG, Switzerland, internally represented.
Respondent is Jacobus Petrus Elisabeth Antonius Swalen, and Jacques Swalen, SHL Technologies, Hong Kong, China.
The disputed domain name <shl-technologies.com> is registered with Key-Systems GmbH (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2020. On September 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 9, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 10, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed the amended Complaint on September 14, 2020.
The Center verified that the Complaint together with the amended 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 the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 13, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 5, 2020.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on November 10, 2020. 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 the Rules, paragraph 7.
4. Preliminary Consideration on the Identity of Respondent
The original Complaint listed Respondent as Jacobus Petrus Elisabeth Swalen. Subsequently the Registrar disclosed the registrant as Jacques Swalen, SHL Technologies. Complainant thereafter filed an amended Complaint in which Complainant asserted that based on its own investigation, it believed Jacobus Petrus Elisabeth Antonius Swalen “is the full name of the Respondent” (who was listed in the Amended Complaint as Jacques Swalen). As there is no evidence showing otherwise, the Panel accepts that Jacobus Petrus Elisabeth Antonius Swalen and Jacques Swalen are one and the same individual and thus the same Respondent in this proceeding.
Complainant, SHL Medical AG, is a provider of drug delivery devices and systems and a contract manufacturer of complex medical and industrial products. Complainant uses the name and mark SHL Technologies in connection with some of its services. Complainant is the owner of trademark registrations for the SHL TECHNOLOGIES mark in the European Union and China, the earliest of which issued to registration on October 21, 2010 (European Union Trade Mark Registration No. 8847956). Complainant also owns and uses a number of domain names for websites that provide information regarding Complainant’s various companies, including <shlmedical.com>, <shl-healthcare.com> and <shl-group.com>. Complainant additionally owns the domain names <shl-tech.com>, <shltech.com> and <shltechnologies.com> which redirect to Complainant’s website at <shl-medical.com>.
Respondent is an individual based in Hong Kong, China. From the WhoIs records it appears that the disputed domain name was registered on September 1, 2017. However, in correspondence Respondent had with Complainant, following a July 22, 2020 communication from Complainant, Respondent maintained that he had registered the disputed domain name some 15 years previously for a company he owns by the name of SHL Technologies. In the communications between Respondent and Complainant in July and August 2020, Respondent advised in response to a request by Complainant that Respondent transfer the disputed domain name that “I have no principle problem in transferring the domain name, however we would have considerable costs to do so.” Respondent then specified that he would be willing to transfer the disputed domain name for the amount of EUR 42,500. Complainant rejected the offer and made a counter-offer of EUR 1,000, which was rejected by Respondent. No further communications between the parties occurred thereafter and this proceeding was initiated by Complainant on September 8, 2020.
The disputed domain name currently resolves to a parked page that simply advises that “[t]his domain name is reserved for one of our clients”.
Complainant contends that it has rights in the SHL TECHNOLOGIES mark by virtue of its trademark registrations for SHL TECHNOLOGIES and ownership of domain names based on the SHL TECHNOLOGIES mark.
Complainant asserts that the disputed domain name is identical to Complainant’s SHL TECHNOLOGIES mark as it fully and solely consists of the SHL TECHNOLOGIES mark.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as, based on searches by Complainant, there is no proof that Respondent has an active company called “SHL Technologies”, uses the trade name “SHL Technologies”, or owns a trademark registration for SHL TECHNOLOGIES. Complainant contends that Respondent is passively holding the disputed domain name, has made no use of such and thus has no basis for seeking EUR 42,500 for the transfer of disputed domain name.
Lastly, Complainant asserts that Respondent has registered and used the disputed domain name in bad faith as Respondent (i) registered the domain name after Respondent’s company went bankrupt and was dissolved, (ii) is not using the disputed domain name, (iii) has no active company by the name of “SHL Technologies”, (iv) requested EUR 42,500 for a transfer of the disputed domain name and refused a counter-offer from Complainant, and (v) renewed the registration of the disputed domain name because Respondent was aware of Complainant and thus maintained the disputed domain name for purposes of selling it to Complainant for profit.
Respondent did not reply to Complainant’s contentions in a formal Response.
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See Section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Complainant has provided evidence that it owns trademark registrations for the SHL TECHNOLOGIES mark in connection with its products and services.
With Complainant’s rights in the SHL TECHNOLOGIES mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally UDRP panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, for purposes of the first element the disputed domain name is almost identical to Complainant’s SHL TECHNOLOGIES mark as it consists fully of the SHL TECHNOLOGIES mark (with an added hyphen between “shl” and “technologies”). The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s SHL TECHNOLOGIES mark and in showing that the disputed domain name is identical or confusingly similar to that trademark.
Given that Complainant’s Complaint fails on the third element, as discussed below, the Panel does not need to address whether Respondent has rights or legitimate interests in the disputed domain name.
Under Paragraph 4(a)(iii) of the Policy, a complainant must establish the conjunctive requirement that the respondent registered and used a disputed domain name in bad faith. The assessment of whether a disputed domain name was registered in bad faith has to be assessed at the time of the registration of the disputed domain name.
Here, based on the evidence before the Panel there is an issue regarding the actual date of registration of the disputed domain name. The current WhoIs record for the disputed domain name suggests a registration date of September 1, 2017. In communications between Respondent and Complainant concerning the disputed domain name, however, Respondent claims to have owned the disputed domain name for the past 15 years and to have registered it for his company SHL Technologies. Respondent sent an undated brochure to Complainant regarding Respondent’s alleged SHL Technologies company. The brochure provides information concerning the company, its history and products and services, and contains entries that suggest the brochure was created at some point after 2012. The brochure also makes references to a website at the disputed domain name and at the domain name <shl-consultancy.com>.
In addition, Complainant has submitted evidence showing that Respondent was a director at some point of a company by the name of SHL Consultancy & Trading B.V. that was registered on November 1, 1998 in the Netherlands, which used several trading names, including “SHL Technologies”, and had Internet addresses at the disputed domain name and “www.shl-consultancy”. The company was apparently dissolved on or about December 20, 2016.
There is thus on its face an issue as to whether Respondent is a new party who owns the disputed domain name, as of September 2017, or the same owner who owned the disputed domain name in the past and merely switched registrars in 2017. Put another way, the question is whether Respondent has exercised continuous control over the disputed domain name for the past 15 years.
Because the evidence before the Panel is inconclusive and, in fact, tends to suggest that Respondent may have owned the disputed domain name before Complainant obtained trademark rights in SHL TECHNOLOGIES, the Panel in its discretion under its general powers pursuant to paragraphs 10 and 12 of the UDRP Rules has for the benefit of the Parties reviewed archival website pages for the <shl-technologies.com> disputed domain name which are available through the Internet Archive at <archive.org> and archival WhoIs records available through “Domaintools.com”. WIPO Overview 3.0 at section 4.8. The Panel has confirmed that the disputed domain name was in use with an active website for a company called “SHL Technologies Group”, that was related to SHL Consultancy, did business in China and which designed and supplied custom made molded products, from at least as early as October 2009 through March 2016. The archival WhoIs records show that “SHL Consultancy & Trading B.V.” was the registrant organization and J.P.E.A. Swalen the registrant name for the disputed domain name from October 2009 through at least May 2017. It appears that the disputed domain name may have expired in August 2017 and was re-registered under the name Jacques Swalen, SHL Technologies on September 1, 2017.
The archival records thus confirm that there was, as Complainant has established through the evidence Complainant submitted, a company called “SHL Consultancy & Trading B.V.” that operated a website at the disputed domain name using the name “SHL Technologies Group” before Complainant acquired trademark rights in SHL TECHNOLOGIES. The question that remains is whether Respondent can claim a continuous line of control on a domain name that was previously registered using a registrant name and organization that appears to be connected to the current Respondent. J.P.E.A. Swalen likely stands for Jacobus Petrus Elisabeth Antonius Swalen, which Complainant has maintained is the same person as Jacques Swalen, the individual currently listed as the registrant of the disputed domain name, and the SHL Technologies name appears to be related to SHL Consultancy & Trading BV. Simply put, on its face it looks like Respondent has controlled the disputed domain name since before Complainant established trademark rights in SHL TECHNOLOGIES.
That being said, Complainant does maintain that Respondent registered, renewed and maintains the disputed domain name in bad faith in order to sell it to Complainant for a profit. The problem with that argument is that Complainant has provided no evidence that Respondent re-registered the disputed domain name in September 2017 to take advantage of any rights Complainant can claim in the SHL TECHNOLOGIES mark. The demand by Respondent for payment of EUR 42,500 to transfer the disputed domain name to Complainant was made after Complainant contacted Respondent in July 2020. The fact that Respondent re-registered a domain name that Respondent was associated with for at least eight years, and did so less than a month after it expired, does not in itself mean that Respondent registered the disputed domain name to take advantage of Complainant’s rights in SHL TECHNOLOGIES mark. What is lacking is evidence that establishes that Respondent specifically targeted Complainant as opposed to merely registering a domain name that Respondent had owned and used for many years and which was likely re-registered after it lapsed.
Of course, the Panel is mindful that it is entirely possible that Respondent allowed the disputed domain name to lapse and then shortly thereafter became aware of Complainant’s use of the name and mark SHL TECHNOLOGIES and re-registered the disputed domain name in bad faith for profit. Such evidence, though, has not been presented in this matter. Consequently, this case more properly belongs in another forum where additional evidence can be obtained and where the credibility of witnesses through cross-examination can more easily be assessed.
In sum, the evidence before the Panel does not make it more likely than not that Respondent registered the disputed domain name in bad faith and to exploit rights that Complainant enjoys in the SHL TECHNOLOGIES mark. While Respondent may be acting in bad faith now by attempting to profit from a domain name it no longer uses for a company that appears to have been dissolved, it is hard for the Panel to conclude that the original registration of the disputed domain name was in bad faith.
Accordingly, the Panel concludes that Complainant’s Complaint fails under the third element.
For the foregoing reasons, the Complaint is denied.
Date: November 24, 2020