WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Neocutis S.A., DBA Neocutis v. Rajeev Singla / Prudent IT Services Pvt. Ltd.
Case No. D2011-1040
1. The Parties
The Complainant is Neocutis S.A., DBA Neocutis, of Pully, Switzerland, represented by Digital Luxury Group, DLG SA, Switzerland.
The Respondent is Rajeev Singla / Prudent IT Services Pvt. Ltd. of New Delhi, India.
2. The Domain Name and Registrar
The disputed domain name <neogyn.com> (the “Disputed Domain Name”) is registered with Net 4 India Limited.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2011. On June 20, 2011, the Center transmitted by email to Net 4 India Limited a request for registrar verification in connection with the Disputed Domain Name. On June 22, 2011, Net 4 India Limited transmitted by email to the Center its verification response disclosing additional registrant and contact information for the Disputed Domain Name. The Center sent an email communication to the Complainant on June 23, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 23, 2011. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 19, 2011. The Response was filed with the Center on July 19, 2011.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on August 1, 2011. 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. Factual Background
The Complainant is a Swiss-based bio-pharmaceutical company founded in 2003 that produces wound healing, dermatology and skin care products. The Complainant sells skin cream bearing the trade mark NEOGYN and applied for registration of this trade mark in the United States on November 25, 2008. The trade mark proceeded to registration on March 29, 2011. The Complainant markets its products via its website hosted at the <neogyn.us> domain name.
The Respondent is an individual residing in India. The Disputed Domain Name <neogyn.com> was registered on December 9, 2000. The Disputed Domain Name currently resolves to a website operated by "Neogyn Software Consulting" purporting to advertise information technology, web development and data entry services (the "Website"). The Panel notes that the Website is rather basic, consisting of only two pages with navigation that does not function.
In February 2011, a representative of the Complainant contacted the Respondent offering to purchase the Disputed Domain Name for USD 400.00. The Respondent indicated that it would consider selling the Disputed Domain Name if they offered a substantial amount (such as USD 20,000.00). The Complainant's representative declined to make such an offer stating that the most that they could offer is USD 1,200.00. The Respondent did not agree to sell the Disputed Domain Name for this amount.
5. Parties’ Contentions
The Complainant’s contentions can be summarised as follows:
(a) The Disputed Domain Name is identical to the Complainant’s registered NEOGYN trade mark;
(b) The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has been holding the Disputed Domain Name for 10 years during which time it resolved to a parking page, and only after being contacted by the Complainant (on February 10, 2011) was the Website updated to a website with very limited content and navigation that does not work;
(c) The Respondent does not own any registrations for the NEOGYN mark in India;
(d) There is no clear link between the Respondent and the company “Neogyn Software Consulting”. Company records in India indicate that Neogyn Software Consulting Private Limited is a dormant company; and
(e) The Respondent registered and is using the Disputed Domain Name in bad faith. The Website has been parked for 10 years and the Respondent updated it only after having been contacted by the Complainant. The Respondent registered the Disputed Domain Name with the objective of selling it for financial gain. After being contacted by the Complainant, the Respondent showed interest in selling the Disputed Domain Name. However, the Respondent was not satisfied with the offer made by the Complainant (USD 1,200.00) and consequently, the sale did not take place.
The Respondent’s contentions can be summarised as follows:
(a) The Complainant did not have trade mark rights in the NEOGYN mark at the time that the Respondent registered the Disputed Domain Name. The Complainant’s parent company was not even established at the time that the Disputed Domain Name was registered, and they only obtained trade mark rights when they filed an application for registration of the NEOGYN mark in the United States on November 25, 2008;
(b) The Respondent, while acknowledging that the Disputed Domain Name is identical to the Complainant’s trade mark asserts that it has held the Disputed Domain Name for over 10 years, a long time before the Complainant or its parent company was established and before the product for which the Complainant holds a registered trade mark was marketed by the Complainant. In addition, there is no likelihood of confusion between the Complainant’s NEOGYN trade mark and the Disputed Domain name because the parties operate in different, unrelated fields;
(c) The Complainant was aware of the fact that the Disputed Domain Name was not available when it filed its application for the NEOGYN trade mark in 2008. As the Complainant allowed 10 years to pass from the registration of the Disputed Domain Name before filing the Complaint, the equitable defence of laches applies;
(d) The Respondent has used the Disputed Domain Name to host various websites since 2001;
(e) The Disputed Domain Name has been used by the Respondent to carry on its business. The Respondent is a director and shareholder of "Neogyn Software Consulting Pvt. Ltd", the company that operates the Website. Hence, the Respondent has a direct, clear and legitimate business interest in "Neogyn Software Consulting Pvt. Ltd" and in the Disputed Domain Name;
(f) The Respondent did not register the Disputed Domain Name with the objective of selling it or of making financial gain. The Respondent registered the Disputed Domain Name in 2000 in order to conduct business in the field of information technology, software development and offshore outsourcing. The Respondent never listed the Disputed Domain Name for sale. The Respondent never made any commitment to sell the Disputed Domain Name, the Respondent just wanted to know the market value of the Disputed Domain Name; and
(g) The Complainant's conduct could be considered as reverse domain name hijacking or an attempt to coerce the Respondent to sell/transfer the Disputed Domain Name to the Complainant.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the 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 by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant presently has rights in the NEOGYN trade mark due to its United States (“U.S.”) registration for the trade mark dated March 29, 2011, and its use of this mark prior to this time. While the Complainant did not have any registrations for the NEOGYN trade mark at the time that the Disputed Domain Name was registered, paragraph 4(a)(i) of the Policy does not require that the Complainant show that it had rights in the trade mark at the time that the Disputed Domain Name was registered, but rather it merely requires that such right exists at the time of filing the Complaint (see for example Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827; and Esquire Innovations, Inc. v. Iscrub.com c/o Whois Identity Shield; and Vertical Axis, Inc, Domain Administrator, WIPO Case No. D2007-0856).
Whether the Complainant had rights in the trade mark at the time of registration of the Disputed Domain Name may be relevant to the consideration of bad faith under Paragraph 4(a)(iii) of the Policy, but it is not relevant for the purposes of determining whether the Disputed Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the domain extension, in this case “.com” should be disregarded (Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762). When the domain extension is disregarded, the Disputed Domain Name is identical to the Complainant's NEOGYN trade mark.
The Panel accordingly finds that the Disputed Domain Name is identical to the NEOGYN trade mark in which the Complainant has rights, and that element 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Policy states that a respondent may demonstrate its rights or legitimate interests in a domain name for purposes of Paragraph 4(a)(ii) by proving any of the following:
"(i) 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The Complainant alleged that the Disputed Domain Name was parked by the Respondent for 10 years following registration, and was only used to host the Website after the Complainant had made contact with the Respondent. However, the Respondent argues that it has used the Disputed Domain Name to host various websites since 2001, which is supported by archived snapshots of the Website available at <archive.org>. From these archived pages, it can be seen that the Disputed Domain Name has been used for approximately 10 years to host various websites offering information technology and multimedia-related service to the public on behalf of Neogyn Software Consulting Pvt. Ltd, which is some 2 years prior to the Complainant's company being established, and some 7 years prior to the Complainant filing an application to register the NEOGYN trade mark.
Given this, the Panel finds that the Respondent has demonstrated that before notice of the dispute it made use of the Disputed Domain Name in connection with a bona fide offering of services. Accordingly, the Panel finds that the Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Name.
C. Registered and Used in Bad Faith
As the Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy, the Complaint thus fails and the Panel finds that it does not need to consider the third requirement under paragraph 4(a)(iii) of the Policy.
The Respondent argues that as the Complainant filed the Complaint 10 years after the Disputed Domain Name was registered, the equitable defence of laches should apply. As the Complainant failed to satisfy paragraph 4(a)(ii) of the Policy, the Complaint thus fails and the Panel finds that it does not need to consider whether the defence of laches applies.
8. Reverse Domain Name Hijacking
Reverse Domain Name Hijacking is defined in the Rules as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name". The body of UDRP decisions indicates that in order to make out a claim for reverse domain name hijacking, the Respondent must show that the Complainant had knowledge of the Respondent's right or legitimate interest in the domain name, as well as proving the Complainant subjected the Respondent to harassment in the face of such knowledge (see Sydney Opera House Trust v. Trilynx Pty Ltd, WIPO Case No. D2000-1224).
The Complainant was aware at the time of filing the Complaint that Disputed Domain Name had been registered for a period of 10 years. Therefore, the Complainant must have been aware of the fact that the Disputed Domain Name was registered many years before the Complainant was established and before it acquired any trade mark rights in the NEOGYN trade mark. Therefore, the Panel finds that Complainant filed the Complaint being aware that it was not able to prove that the Respondent registered the Disputed Domain Name in bad faith.
According to the Complainant's own submissions, it filed the Complaint because it wanted the Disputed Domain Name to enhance its presence for the marketing of its new product. While these are legitimate aspirations, they cannot be achieved through illegitimate means, such as filing a meritless Complaint under the Policy, which has accomplished nothing more than wasting time and resources of both parties (see Trailblazer Learning, Inc. dba Trailblazer Enterprises, WIPO Case No. D2006-0875).
Despite this, the Panel is of the opinion that Complainant's case was at least arguable. The Respondent's website is rather unsophisticated (particularly for a company in the information technology field), with only two pages operational and some of the navigation not functioning. Moreover, there is evidence that the Respondent was, at least considering, to sell the Disputed Domain Name to the Complainant for an amount in excess of its reasonable expenses in registering and maintaining the Disputed Domain Name.
Accordingly, the Panel does not find that the Complaint was frivolous or that it was filed merely to harass the Respondent. Accordingly, the Panel does not find that the Complainant engaged in reverse domain name hijacking.
For the foregoing reasons, the Complaint is denied.
Dated: August 10, 2011