WIPO Arbitration and Mediation Zentrum
ADMINISTRATIVE PANEL DECISION
Peter Brasseler Holdings, LLC and Brasseler USA Medical, LLC v. C.J. Tamse (Coenraad Jan Tamse)
Case No. D2013-1928
1. The Parties
The Complainants are Peter Brasseler Holdings, LLC and Brasseler USA Medical, LLC of Savannah, Georgia, United States of America (U.S.), represented by Jones Day, United States of America.
The Respondent is C.J. Tamse (Coenraad Jan Tamse) of Amsterdam, Netherlands.
2. The Domain Name and Registrar
The disputed domain name <busasurgical.com> is registered with Ascio Technologies Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2013. On November 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 16, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amendment to the Complaint on November 25, 2013.
The Center verified that the Complaint together with the amendment to 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 27, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 17, 2013. The Response was filed with the Center on December 18, 2013.
The Complainants filed a supplemental communication on December 23, 2013.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on January 7, 2014. 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 Complainants are in the business of manufacturing, marketing and selling dental tools and surgical supplies in the U.S. and internationally.
The Complainants and their predecessors began selling their medical products in association with the trademarks TAVA and BRASSLER USA in 1999. Subsequently when Complainants began selling dental products in Europe, they adopted the trademark BUSA, beginning in October 2011. The BUSA trademark has been protected under Community Trademark Registration No. 1019881 (dated February 16, 2012) and Swiss Trademark Registration No. 644881 (dated June 7, 2013) for a wide variety of dental tools and equipment.
From August, 2002 to November 2011, the Complainants had a business relationship with Respondent Mr. Tamse. In November, 2011, the Complainants assigned its TAVA trademark to Mr. Tamse’s business, Kaliber, and became a contract manufacturer for Kaliber. That relationship ended on February 1, 2013. At that time, the Complainants advised European customers that it was resuming its direct sales of products in the European market under the name “BUSA Surgical Power & Accessories”. On February 11, 2013, Complainants registered the domain name <busamedical.com> and <busamedical.net>.
The disputed domain name <busasurgical.com> was registered by the Respondent on March 1, 2013. At present, the disputed domain name is linked or associated in some manner to a website at “www.swisssurgical.com”.
5. Parties’ Contentions
The Complainants submit that the disputed domain name <busasurgical.com> is virtually identical to the Complainants’ trademark BUSA and its business name “BUSA Surgical Power & Accessories”. The disputed domain name consists of the trademark BUSA as a first and dominant element combined with the word “surgical”. The addition of the descriptive word “surgical” does not diminish the identity between the domain name and the Complainants’ trademark.
The Respondent is not affiliated with the Complainants. The Complainants have not authorized or licensed the Respondent to use the Complainants’ registered trademark. The Complainants’ further submit that the Respondent is not using the disputed domain name in association with a bona fide offering of goods and/or services. The disputed domain name initially reverted to the Respondent’s website and then after receiving a cease and desist letter from the Complainants, the Respondent de-coupled the disputed domain name from its website. The disputed domain name is now linked to the website “www.swisssurgical.com” and this website does not appear to be active in any manner.
The Complainants contend that the Respondent registered the disputed domain name <busasurgical.com> with full knowledge of the Complainants’ trademark rights. The Complainants submit the Respondent registered the disputed domain name after it learned the Complainants had relaunched their business in Europe under the BUSA trademark and domain names <busamedical.com> and <busamedical.net>. The registration of the disputed domain name <busasurgical.com> was a deliberate attempt to interfere with and disrupt the business of the Complainants.
The Respondent submits that the disputed domain name was registered with the intention to use it to promote a “budget line” of surgical saw blades. The Respondent contends that the disputed domain name is a combination of “B” and “USA” from “BUDGET USA”, a mark that the Respondent subsequently applied to protect in the United States Patent and Trademarks Office (“USPTO”) in October, 2013 under serial No. 86/091,371.
C. Supplemental Filing
The Complainants seek leave to file a supplementary response, addressing alleged in accuracies in the Respondent’s description of its US trademark filing. Although it is rare that supplementary responses are accepted into filing, the Panel recognizes that it is appropriate to do so in this case, as the Respondent has inaccurately claimed to have filed an application to register the trademark BUDGET USA in the USPTO, when in fact it filed an application to register BUSA, the principal mark in question in this proceeding.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainants must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainants have rights;
(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 in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainants own registered trademark rights in the trademark BUSA by virtue of Community Trademark Registration No. 1019881 BUSA and Swiss Trademark Registration No. 644881 BUSA.
The Panel further finds that the disputed domain name <busasurgical.com> is confusingly similar with the Complainants’ registered trademark BUSA. The disputed domain name contains as a first and dominant element the Complainants’ trademark BUSA, which is a unique and coined word, combined with the descriptive word “surgical”, which relates to the products manufactured and sold by both the Complainants and the Respondent. The addition of the word “surgical” does not serve to distinguish the disputed domain name, and in fact, increases the likelihood of confusion.
Accordingly, the Panel finds that the Complainants have satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent’s explanation that the disputed domain name comprised of the elements “busa” and “surgical” was registered to promote a “budget line” of products under the trademark BUDGET USA is not credible. The disputed domain name <busasurgical.com> was registered shortly after the Complainants announced their re-entry into the European market under the “busa” name, using the combination “BUSA Surgical”, and 20 days after the Complainants registered the domain name <busamedical.com> and <busamedical.net> to support their direct sales to customers in Europe. The Panel finds that, under the circumstances, the Respondent’s trademark application for BUSA, filed after the receipt of the Complainants’ cease and desist letters, does not afford it with any rights or legitimate interests in the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.7). The Complainants state that the Respondent was not licensed or authorized to use the BUSA trademark, and the Respondent does not refute this fact in the Response. The Panel, upon review of the evidence filed, finds that the Respondent is not using the disputed domain name in association with a bona fide offering of goods and/or services.
Therefore, the Panel finds that the Complainants have satisfied the requirement under Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel notes that there was a long-standing relationship between the parties and that the Respondent must have been fully aware of the Complainants’ trademark BUSA when it registered the disputed domain name. The Respondent has attempted to use the disputed domain name to interfere with the Complainants’ business, particularly its launch of its distribution business in Europe under the “busa” name.
Therefore, the Panel finds that the Complainants have satisfied the requirement under Paragraph 4(a)(iii) of the Policy.
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 <busasurgical.com> be transferred to the Complainant.
Christopher J. Pibus
Date: January 21, 2013