WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gen-Probe Incorporated v. Tigris Medical Company/ Dr. Loay H. Al-Fahad/ Ahmad Alazawi, Alsadeer
Case No. D2014-0236
1. The Parties
Complainant is Gen-Probe Incorporated of San Diego, California, United States of America, represented by Higgs Fletcher & Mack LLP, United States of America.
Respondents are Tigris Medical Company of Baghdad, Iraq, Dr. Loay H. Al-Fahad of Baghdad, Iraq, Ahmad Alazawi, Alsadeer of Woodland Park, New Jersey, United States of America.
2. The Domain Name and Registrar
The disputed domain name <tigrismed.com> is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2014. On February 14, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 14, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent Ahmad Alazawi, Alsadeer 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 18, 2014.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on March 20, 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
Complainant is the owner of registrations for the word trademark TIGRIS on the Principal Register of the United States Patent and Trademark Office (USPTO), specifically registration number 2,780,355, registration dated November 4, 2003, in international classes (ICs) 1, 5, 9 and 10, covering, inter alia, chemical reagents and buffers for use in various testing of biological/genetic specimens and equipment associated with such testing, and; registration number 3,452,428, registration dated June 24, 2008, in IC 9, covering computer software used in medical diagnostics as further specified. Complainant is the owner of the registration for the Community Trade Mark (CTM) TIGRIS, registration number 000692582, registration dated April 21, 1999, in ICs 5, 9 and 10, covering products substantially similar to those covered by the USPTO in corresponding classes. Complainant has provided evidence of registration of the TIGRIS trademark in a number of countries/regions other than the United States and the European Union, including Australia, Canada, China, Hong Kong, China, Japan, Norway, South Africa, South Korea, Switzerland and Taiwan, Province of China.
Complainant markets and sells medical products and services in a number of countries around the world, including in the Middle East region (according to Complainant, Israel, Qatar, Saudi Arabia and possibly in Iran). Complainant markets and sells TIGRIS-branded products in the Middle East region, Complainant specifically markets an automatic diagnostic testing system which it refers to as the “TIGRIS DTS System” or “TIGRIS System”.
According to the Registrar’s verification, Respondent Ahmad Alazawi (registrant name) Alsadeer (registrant organization), with an address in Woodland Park, New Jersey, is the registrant of the disputed domain name. According to that verification, the creation date of the disputed domain name was September 11, 2009, and the disputed domain name was registered to this registrant on September 7, 2009. Complainant submitted evidence in the form of printouts from the website associated with the disputed domain name, as well as from various social and business media websites, showing that Dr. Loay H. Al-Fahad is owner and managing director of Tigris Medical Company. Dr. Al-Fahad responded to a cease-and-desist and transfer demand from Complainant. Complainant has argued that Dr. Al-Fahad is the registrant-in-fact of the disputed domain name by virtue of his ownership and control of Tigris Medical Company, which is making use of the disputed domain name. As noted in paragraph 4.9 of the WIPO Overview 2.0,1 the UDRP Rules “define the respondent as the holder of a domain name registration against which a complaint is initiated. The UDRP Rules also give the panel power to conduct proceedings in such manner as it considers appropriate in accordance with such Rules and the UDRP.” The Panel is satisfied that Dr. Al-Fahad and Tigris Medical Company are registrants-in-fact of the disputed domain name and includes them as Respondents. The three named respondents are collectively referred to herein as “Respondent” unless otherwise expressly indicated.
Respondent directs the disputed domain name to a website displaying the name “Tigris Medical Company”, “IRAQ-USA”, “TMC”. The home page of the website states, inter alia:
“Who We Are?
TIGRIS MED was Established in 2009, with headquarter in
IRAQ – Baghdad and a logistic office in TEXAS-IRVING USA.
TMC is one of the leading suppliers of medical equipments in
the Middle East.
TMC mission is to build up, modernize and engineer medical and clinical facilities by providing the best quality medical equipments and instruments, supplied by the best leading medical equipment manufacturers worldwide.”
Under the “Contact Us” tab, the website lists “General Manager, Dr. Loay H. Al-Fahad”.
A number of the internal links on aforesaid website are nonfunctional.2
On one of its business media webpages (Globial), Respondent states regarding Tigris Medical “We are medical supplier company, representing many USA and EU medical manufacturer.”
Complainant transmitted cease-and-desist and transfer demands to Respondent. There was a single reply from Dr. Al-Fahad dated October 24, 2013, reading:
“Please note that our name is TIGRISMED not TIGRIS, we are medical supplier not a manufacturer, I’m surprised from what you are talking about.”
Complainant has provided printouts from social and business media websites regarding Dr. Al-Fahad that indicate he is a graduate of Jordan Medical School, and that Tigris Medical Company has a logistics office in Irving, Texas, USA.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges ownership of trademark rights in the term TIGRIS as evidenced by registration in the United States, the European Union and other countries and has used that trademark in commerce, including the Middle East region.
Complainant contends that the disputed domain name is confusingly similar to its trademark in that it incorporates Complainant’s entire trademark, adding only the term “med” that is a short form reference to “medical”, is generic and has little commercial significance.
Complainant argues that because Respondent is doing business in the medical products and services sector, including in the United States, it must have been aware of Complainant’s trademark when it registered the disputed domain name.
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent is not a licensee or affiliated with Complainant and has not been authorized to use Complainant’s TIGRIS trademark or any variation thereof; (2) Respondent was not commonly known as “Tigris” when it registered the disputed domain name; (3) Respondent is not offering legitimate goods or services under the TIGRIS name in any jurisdiction where Complainant does not have prior rights; (4) Respondent is not making a legitimate noncommercial or fair use of the disputed domain name because it intends to commercially gain from misleadingly diverting consumers or tarnishing Complainant’s trademark, and; (5) since Complainant is continuously monitoring its trademark around the world, Respondent would never be able to register “Tigrismed” or “Tigris Medical” for use with medical goods/services.
Complainant states that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent registered the disputed domain name deliberately to take advantage of Complainant’s goodwill because “It is simply not plausible that respondents came up with the TIGRIS name for use with medical products and services by happenstance. Tigris is arbitrary and distinctive when used with medical products and services…”; (2) Respondent registered the disputed domain name after Complainant adopted and used its mark with medical products and services; (3) Respondent’s WhoIs data appears to be false, constituting evidence of bad faith registration; (4) by supplying medical products under the disputed domain name Respondent is using Complainant’s well-known trademark to sell goods in competition with Complainant or potentially in competition with Complainant, and; (5) Respondent is infringing Complainant’s trademark and damaging Complainant’s reputation.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the e-mail and physical addresses provided in its record of registration. Respondent did not reply to e-mail notification. The express courier delivery service engaged by the Center reported that the Notice of Complaint was successfully delivered to Respondent’s Woodland Park, New Jersey, location indicated in its registration (including signed acknowledgment of delivery), although the courier could not locate the address indicated for Respondent in Baghdad, Iraq. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps satisfy the Policy’s notice requirements. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has furnished evidence of its registration of the word trademark TIGRIS on the Principal Register of the USPTO and of its use of that trademark in commerce in the United States. Registration at the USPTO establishes a presumption of ownership of rights in the trademark, and Respondent has not attempted to rebut that presumption. Complainant has also furnished evidence of registration of the word trademark TIGRIS as a CTM in the European Union, and Respondent has not challenged the validity of such registration. The Panel determines that Complainant has rights in the trademark TIGRIS in the United States and European Union.3
The disputed domain name, <tigrismed.com>, directly incorporates Complainant’s trademark, and adds the term “med”, which is a well-recognized short form English-language reference to “medical” (as in “med school”) or “medicine” (as in “take your med”).4 Complainant’s trademark is registered and used in connection with medical products and devices. From the standpoint of potential consumer/Internet user confusion, Respondent’s combination of Complainant’s trademark with a commonly used short form reference for the type of products Complainant offers and sells does not serve to distinguish the disputed domain name from Complainant’s trademark. The Panel determines that the disputed domain name is confusingly similar to Complainant’s trademark.5
The Panel determines that Complainant has rights in the trademark TIGRIS in the United States and European Union, and that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“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 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.” (Policy, paragraph 4(c)).
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not replied to the Complaint and has not attempted to rebut Complainant’s prima facie showing.
Nonetheless, the Panel takes Administrative Notice that the term “Tigris” refers to an important and well-known river in the Middle East region that flows from southeastern Turkey through Iraq.6 Complainant makes an indirect reference, at most, to this factual element in its Complaint when it says that “Tigris is arbitrary and distinctive when used with medical products and services ….”7 Complainant does not explicitly acknowledge or address that “Tigris” is a well-known geographic identifier. Respondent claims to be doing business in Iraq, through which the Tigris River flows. There is some logical basis for it to have chosen to name itself “Tigris Medical Company” and to have registered <tigrismed.com> as its Internet address (i.e. in the disputed domain name).
However, the present context of Respondent’s use of the disputed domain name presents a problem regarding a potential (though unarticulated) claim that it is making fair use of a geographic term in its domain name. Respondent claims to be doing business in the United States. Notice of the Complaint was successfully delivered to Respondent in the United States. The USPTO has granted trademark rights to Complainant in connection with certain types of medical products, and Respondent is trading in medical products, though perhaps in a more general way than Complainant (in the sense that Respondent’s website does not refer to specific types of medical products). From the standpoint of doing business in the United States, because Complainant has been granted rights in the TIGRIS trademark with respect to medical products, and because Respondent is offering to sell medical products under the TIGRIS trademark, there is a significant possibility (though not a certainty) that Respondent would be found to be infringing Complainant’s trademark in the United States.
Similarly, Respondent claims to be doing business representing medical manufacturers from the European Union. Complainant registered TIGRIS as a CTM in the European Union in 1999. This gives rise to the likelihood that purchasers of medical equipment within or from the EU may be confused as to whether Respondent is acting as authorized supplier of products of Complainant. There is a significant possibility (though not a certainty) that Respondent would be found to be infringing Complainant’s trademark in the European Union.
In allowing registration of Complainant’s TIGRIS trademark, the administrative authorities of the United States and European Union (i.e. the USPTO and OHIM) determined that the trademark was distinctive when used in connection with various medical products. Complainant is presumed to enjoy rights in its distinctive trademark as used in connection with the products for which it is registered. The trademark authorities have effectively determined that when the term TIGRIS is used in connection with medical products it is not functioning as a geographic identifier. In the absence of argumentation from Respondent, the Panel will not “self-initiate” a challenge to the presumption of trademark rights on behalf of Complainant established by registration in the United States and the European Union.
Because Respondent is using the disputed domain name incorporating Complainant’s registered trademark to offer products in the same field as Complainant in and from the United States and European Union, the Panel is unable to conclude without any evidence offered by Respondent that Respondent is making a legitimate fair use of Complainant’s trademark as a geographic identifier as to those countries. Because Respondent is involved in the medical field, and should have conducted at least a cursory search of potentially conflicting trademarks when it registered the disputed domain name, the Panel is also unable to determine that Respondent has made bona fide use of the disputed domain name prior to notice of this dispute.8
The Panel is unable to determine based on the limited evidence before it that Respondent would be considered to be making a legitimate commercial or fair use of the disputed domain name in the Middle East region such as to establish rights or legitimate interests in it. Just as the authorities of the United States and European Union, the trademark law and authorities of the relevant Middle East countries might (or might not) allow TIGRIS to serve as a distinctive identifier when used in connection with medical products and services.
The Panel presumes that there is legal precedent in the Middle East region addressing whether and/or under what conditions TIGRIS may serve as a distinctive trademark. Complainant has argued extensively that Respondent’s use of its TIGRIS trademark in the disputed domain name, including in the Middle East, does not establish rights or legitimate interests, and has made a prima facie case. Respondent has not rebutted that case.
Even if Respondent, hypothetically, might be able to show that its use of Complainant’s trademark constituted legitimate or fair use in the Middle East region, on the record before it the Panel is unable to conclude that Respondent is making fair use of a geographic term from the standpoint of the United States and European Union. Respondent specifically claims to be doing business in the United States and European Union. On the record before it the Panel is unable to infer that use of the disputed domain name by Respondent is sufficiently geographically isolated (e.g., directed solely at the Middle East), such that it might have established rights or legitimate interests (e.g., fair use) based on its specific geographic use of the disputed domain name.
To be clear, the Panel accepts the fact that “Tigris” is a geographic identifier when associated with a river in the Middle East. There are certainly ways in which parties other than Complainant may use the term “Tigris”, including in a domain name, without infringing or acting unfairly in respect to Complainant. Complainant does not hold a monopoly on use of the term “Tigris”. Here, however, Respondent is using TIGRIS in substantially the same way that Complainant has been using it in connection with the marketing and sale of medical products in countries/regions where Complainant is doing business and holds trademarks.
In the absence of a rebuttal by Respondent, the Panel determines that Complainant has demonstrated that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of Paragraph 4(a)(iii), 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.” Among those circumstances are: “(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site 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] web site or location or of a product or service on [the respondent’s] web site or location.”
Respondent registered the disputed domain name incorporating Complainant’s trademark for the purpose of directing Internet users to a website offering products that are competitive or potentially competitive with those of Complainant. The Panel determines that Respondent is using the disputed domain name to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion as to Complainant acting as source, sponsor, affiliate or endorser of Respondent’s website.
The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) 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 <tigrismed.com> be transferred to the Complainant.
Frederick M. Abbott
Date: April 1, 2014
1 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition.
2 Panel visit of March 30, 2014.
3 Complainant has further provided evidence of registration of the word trademark TIGRIS in countries other than the United States and in the European Union. For purposes of this proceeding, it is not necessary for the Panel to make any determination regarding those under registrations, without prejudice to Complainant.
4 See, e.g., “http://www.thefreedictionary.com/med”, referencing Random House Kernerman Webster's College Dictionary (2010).
5 In the present context, addition of the generic top-level domain “.com” does not affect analysis of confusing similarity.
6 See Wikipedia entry at “http://en.wikipedia.org/wiki/Tigris”. Panel visit of March 30, 2014.
7 The Panel notes that Complainant may have used the term TIGRIS to identify its genetic analysis equipment because of the suggestive association with the biblical geographic origin of life. The term TIGRIS presumably was not selected "out of thin air".
8 In addition, Respondent’s website is constructed in a rudimentary way, and a number of its tabs and links are inoperative. This raises some question whether Respondent is in fact making use of the disputed domain name in connection with a functioning enterprise, adding that the courier engaged by the Center was unable to locate the address which is designated in Iraq for its business.