WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Molecular Devices, LLC v. Domains By Proxy, LLC and Redercih Corner

Case No. D2013-1413

1. The Parties

The Complainant is Molecular Devices, LLC of Sunnyvale, California, United States of America (“U.S.”), represented by DLA Piper US LLP, U.S.

The Respondents are Domains By Proxy, LLC of Scottsdale, Arizona, U.S. and Redercih corner of London, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name And Registrar

The disputed domain name <metafluor.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2013. On August 9, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 10, 2013, the Registrar transmitted its verification response to the Center by email 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 the Complainant on August 14, 2013 providing the registrant and contact information disclosed by the Registrar and invited the Complainant to submit an amendment to the Complaint. The Complainant filed an Amended Complaint on August 19, 2013.

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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on August 23, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was September 12, 2013. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on September 13, 2013.

The Center appointed Staniforth Ricketson as the sole panelist in this matter on September 18, 2013. 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.

4. Factual Background

According to the Amended Complaint, the Complainant in this administrative proceeding is a Delaware limited liability company with its principal place of business in Sunnyvale, California. Founded in 1983, the Complainant advances scientific instrumentation and software for a wide range of bioanalysis, focusing on the needs of life science and drug discovery researchers. As part of its mission to provide high-performance bioanalytical measurement systems, software and consumables for life science research, pharmaceutical and biotherapeutic development, the Complainant offers Fluorescence Ratio Imaging Software under its METAFLUOR brand. The MetaFluor software is designed for dual-wavelength intracellular ion measurements, and the Amended Complaint asserts that it is “the industry standard” for monitoring fluorescence ratio imaging applications, bringing microscopists closer to rapid cellular responses inherent to live cells. No further information is provided as to the scale and scope of the Complainant’s operations, but, as it is based in the U.S., it must be presumed that they occur in this market; there is no further information as to whether this extends overseas. However, as the Amended Complaint goes on to say, it has had an Internet presence for at least a decade, having been the registered owner of the disputed domain name, <metafluor.com>. This registration, however, expired on or around January 19, 2012, and the Respondents thereafter became the registered owner. No explanation for the lapse of the registration in the Complainant’s name is provided, other than the statement in the Amended Complaint that the Complainant, at some time after January 2012, “learned that its domain name registration for <metafluor.com> had unintentionally expired”.

Some further light on the registered ownership of the disputed domain name is provided by the lengthy printout of the WhoIs database search that appears in Annexes of the Amended Complaint; as supplemented by the Amended Complaint itself: it appears from this that the registration of the disputed domain name from January 19, 2000 to January 19, 2012 was in the name of the Complainant or of one of its related companies (MDS Analytical Technologies, MDS Inc., ABSCIEX ULC and ABSCIEX SALES LP). While no evidence as to the relationship of these companies to the Complainant is provided, it appears from the WhoIs printout that the address of each of these companies was the same as that of the Complainant. It is therefore reasonable to assume that, between these dates, the disputed domain was under the control of the Complainant. After January 19, 2012, there appears to be a break in the registration, consistent with the Complainant’s statement that the registration “unintentionally expired”, but a new registration is then recorded as having occurred on April 19, 2013 in the name of the proxy service, Domains by Proxy, LLC. From the Amended Complaint, it now appears that this is on behalf of Redercih Corner, the second Respondent.

As part of its Amended Complaint, the Complainant has furnished printouts from webpages associated with the disputed domain name that show advertising and links to third party providers of similar services and goods to those of the Complainant. In addition, the Complainant has furnished printouts of webpages from the same website showing the use of banners that are similar to those used by the Complainant on its own website “www.moleculardevices.com”.

5. Parties’ Contentions

A. Complainant

In keeping with the requirements of paragraph 4(a)(i) of the Policy, the Complainant submits that it has rights in a trade mark that is identical to the disputed domain name. In this regard, it refers to its U.S. registered mark METAFLUOR in class 9 for imaging software, and argues that, disregarding the “.com” suffix, the disputed domain name is identical to this mark.

As to paragraph 4(a)(ii) of the Policy (lack of rights or legitimate interests in the disputed domain name), the Complainant states that the Respondents have no relationship with it, or authorization from it to use the disputed domain name. It goes on to say that there is no evidence that the Respondents have filed any trade mark applications of their own for METAFLUOR anywhere or that the Respondents produce their own goods or services under that name or that they are offering any goods or services of their own under the disputed domain name. Finally, it asserts that the Respondents are not making any legitimate noncommercial or fair use of the disputed domain name.

As to paragraph 4(a)(iii) of the Policy (registration and use in bad faith), the Complainant asserts that the Respondents are using the disputed domain to attract Internet users to their website for the purposes of providing information originating from third-party websites, hosting advertisements of third parties, and providing links to third-party websites, and that this effectively amounts to trade mark infringement, causing confusion and damage to the Complainant.

B. Respondents

The Respondents did not reply to the Complainant’s contentions.

6. Discussion And Findings

Each of the requirements in paragraph 4(a) of the Policy needs to be considered in turn, noting that the Complainant must satisfy the Panel that each of them is present before an order for transfer or cancellation may be made.

Paragraph 5(e) of the Rules provides that, where no response is submitted, in the absence of exceptional circumstances, the Panel is to decide the dispute based upon the complaint. Such default on the part of the Respondents does not relieve the Complainant from being required to establish that each of the requirements of the Policy, in particular those under paragraph 4(a), is established. At the same time, it should be noted that paragraph 14(b) of the Rules provides that:

“if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.”

Accordingly, the Panel proceeds to deal with each of the matters required to be satisfied under paragraph 4(a) of the Policy, noting that it is necessary for the Complainant to satisfy each one if it is to succeed in its Complaint.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires that the Complainant establish that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”. There are therefore two limbs of paragraph 4(a)(i) that the Complainant must satisfy: first, that it has “rights in a trade or service mark” (this need not be a registered mark), and, secondly, that the disputed domain name is “identical or confusingly similar” to that mark.

The first of these requirements is readily established: the Complainant has been the owner of U.S. trade mark number 2172960, for the mark METAFLUOR registered July 14, 1998, for goods in class 9 (imaging software). Clearly, this meets the requirement that the Complainant has “rights in a trademark”. The second requirement is also readily made out: the disputed domain name is exactly the same, and, in this regard, the “.com” suffix of the disputed domain name is to be disregarded.

Accordingly, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy are satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant is required to show that the Respondents have “no rights or legitimate interests in respect of the domain name”. Further assistance as to the meaning of this requirement is given in paragraph 4(c) of the Policy, which provides that:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your [the Respondents’] rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(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.”

Essentially, these are matters for a respondent to put forward for the panel’s consideration, as they are often difficult for a complainant to disprove directly. In the present case, there is nothing on the record to suggest that the circumstances of paragraph 4(c) of the Policy are present. In particular, there is no evidence that the Complainant has licensed or otherwise permitted the Respondents to use its METAFLUOR mark in the disputed domain name (the Complainant certainly denies this); nor is there anything to suggest that the Respondents were commonly known by the name “Metafluor” prior to registration of the disputed domain name – indeed, the Complainant’s evidence indicates that it had been registered as the owner of the disputed domain name for the preceding 12 years. Further, there is nothing on the printouts of the website linked to the disputed domain name to indicate that this is a “legitimate noncommercial or fair use” of the disputed domain name, for example, as part of a criticism or “gripe site”.

It should be noted that paragraph 4(c) of the Policy is not an exhaustive statement of relevant circumstances for the purposes of paragraph 4(a)(ii), and, in this regard, it is also relevant to note the use of banners on the Respondents’ website that are similar to those previously used by the Complainant, suggesting therefore some link or association with the Complainant that is not correct (the Panel notes that it was unable to view the webpage when it sought to visit it on October 7, 2013).

In the absence of any explanation from the Respondents, and in light of the matters above, the Panel concludes that there is a lack of rights or legitimate interests on the part of the Respondents, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore made out.

C. Registered and Used in Bad Faith

The matters discussed in relation to paragraph 4(a)(ii) of the Policy are also relevant to paragraph 4(a)(iii), which requires the Complainant to show that the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy then provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that you [the Respondents] have registered or you have 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you [the Respondents] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you [the Respondents] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you [the Respondents] have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

It will be noted that, under paragraph 4(a)(iii) of the Policy, both registration and use of the disputed domain name in bad faith are required. Of the factors listed in paragraph 4(b) above, (i)-(iii) relate specifically to registration of the disputed domain name, while (iv) relates to use following registration. However, in view of the fact that these factors are stated to be non-exclusive, it follows that there may be other factors that can be relied upon to point to bad faith, both in registration and in use. In this regard, it is worth noting an early decision of a UDRP panel to the effect that registration in bad faith, followed by a passive holding of a domain name when there is no way in which it could be used legitimately, can also amount to use in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In addition, it would be both mistaken and artificial to confine sub-paragraphs (i)-(iii) solely to the time of registration; presumably, the sub-paragraphs would also apply to a bad faith use of a disputed domain name after registration, with one of the purposes outlined in those paragraphs. Support for this view is to be found in several UDRP decisions (see, for example, Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869; and E. & J. Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615).

In the present proceeding, there has been no explanation from the Respondents as to why the disputed domain name was chosen. However, the following matters are relevant to the question of whether the registration in 2013 was made in bad faith:

1. The extensive WhoIs database search which indicates that the disputed domain name had been long held by the Complainant or its related companies. It cannot be supposed that the Respondents’ registration of the disputed domain name was made in ignorance of this history, even if the reason for the lapsing of the registration was unclear.

2. The registration of the U.S. trade mark for METAFLUOR also was something of which the Respondents should have been aware, quite apart from the consideration that the Complainant appears have a considerable market presence in relation to imaging technologies (although more evidence as to this from the Complainant would have been helpful).

3. Coupled further with knowledge of the U.S. trade mark registration is the strong possibility that any use of the disputed domain in relation to the offering of goods of the kind covered by the registration in class 9 would amount to infringement of that mark under U.S. law.

The above considerations therefore provide a basis for concluding that the registration of the disputed domain name could only have been made in bad faith. Likewise, the evidence of the advertising of similar goods of third parties and the offering of links to these providers on the website at the disputed domain name provides a basis for concluding that the circumstances referred to in paragraph 4(b)(iv) of the Policy arise and that there has been use in bad faith of the disputed domain name. As noted above, absence of a response from the Respondents makes this inference easier to draw.

Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are made out.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <metafluor.com> be transferred to the Complainant.

Staniforth Ricketson
Sole Panelist
Date: October 7, 2013