WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fraunhofer Gesellschaft zur Förderung der angewandten Forschung e.V. München v. Asiafam, Shahriar Omidi
Case No. D2014-1969
1. The Parties
1.1 The Complainant is Fraunhofer Gesellschaft zur Förderung der angewandten Forschung e.V. München of München, Germany, represented by Härting Rechtsanwälte, Germany.
1.2 The Respondent is Asiafam, Shahriar Omidi of Tehran, the Islamic Republic of Iran, self-represented.
2. The Domain Name and Registrar
2.1 The disputed domain name <ormocer.com> (the "Domain Name") is registered with Tucows Inc. (the "Registrar").
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 6, 2014. On November 7, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 7, 2014, 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.
3.2 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").
3.3 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 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 7, 2014. The Response was filed with the Center on December 3, 2014.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on December 16, 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
4.1 The Complainant was founded in Germany in 1949 and is an "application-orientated" research organisation. It maintains 67 institutes and research units with 23,000 staff members and an annual research budget of 2 billion euros.
4.2 One of these institutes is the Fraunhofer Institut für Silikatforschung, which translates into English as the Fraunhofer Institute for Silicate Research ("Fraunhofer ISC"). Its activities have included the development of inorganic-organic hybrid polymers based on chemical nanotechnology, which it has given the name "Ormocer".
4.3 The Complainant is the owner of the following trade marks for "Ormocer" as a word mark:
(i) German registered trade mark No. DE 2023601 in classes 1, 2, and 42, filed on November 9, 1991 and with a registration date of November 2, 1992;
(ii) Community Trade Mark No. 002428357 in classes 1, 2, 5, 9, 10, 17 and 42 filed on October 26, 2001 and with a registration date of March 27, 2003; and
(iii) US registered trade mark No. 2831241 in classes 1, 2, 5, 9, 17 and 42 filed on November 20, 2001 and with a registration date of April 13, 2004.
The specifications for these marks cover various chemicals and materials having "hybrid organic and inorganic properties".
4.4 Fraunhofer ISC is also the registrant of the domain name <ormocer.de>, from which it operates a website with "Ormocer" related information.
4.5 The Domain Name was registered on February 9, 2011 and is registered in the name of the Respondent; i.e., "Shahriar Omidi" of "Asiafam". Exactly what legal form (if any) "Asiafam" takes is unclear, but Shahriar Omidi appears to be the name of an individual based in the Islamic Republic of Iran.
4.6 Currently the Domain Name is being used to redirect visitors to a website called "Nanofam", operating from the domain name <nanofam.com>. The website appears to be that of a business which declares its purpose to be to "present new technologies and expertise in the chemical, metallurgical, nanotechnological and medical fields". This website provides information related to nanothechnology related services and products.
4.7 At least since the time of the Complaint, the "product" page of the website has promoted a product under the name of Famosil, which is described as a nanotechnology based "impregnator, sealer and ager for all porus surfaces". The "services" page of the website has offered various services but also offered the following:
"Manufacturing organically modified ceramics (ormocer and ormosil)"
4.8 Somewhat bizarrely at the bottom of the "about us" page of this website was and remains a link with the text "best online pokies". Similarly at the bottom of the "products" page there was, and remains, a link with the text "casino online" and at the bottom of the "services" page a link with the text "casino online".
5. Parties' Contentions
A. Complainant
5.1 The Complainant describes its activities and refers to its registered trade marks in respect of the term "Ormocer". It claims that the Domain Name is identical to those marks.
5.2 It further contends that the Respondent is using the Domain Name to "attract internet users interested in ORMOCER or ORMOCER based products to visit the Respondent's website". This, it is said, does not confer any rights or legitimate interests in the Domain Name.
5.3 The Complainant claims that it has had trade mark rights in the term "Ormocer" for approximately 20 years. It further claims that the term subsequently became:
"nationally and internationally well known not only as a material type of inorganic-organic hybrid polymers based on chemical nanotechnology …. [but also] as a brand name for such material".
5.4 The claim that this term became known as a "brand name" is said to be supported by material annexed to the Complaint. This material comprises:
(i) a print out of an article from Wikipedia in November 2014 headed "Conservation and restoration of metals". In the body of its Complaint the Complainant selectively quotes from this article, but the relevant text in full (as it appears in the annexed material) is as follows:
"Organically modified ceramic, also known as ORMOCER (ORganically MOdified CERamic) is a type of coating used in the conservation of metals. ORMOCER was originally developed by the Fraunhofer Society for the Advancement of Applied Research in Munich. While it is still in research phase, ORMOCER is essentially a heteropolysiloxane-based clear coat."
There appears to be nothing in this article to indicate that "Ormocer" is a brand name.
(ii) a copy of the Fraunhofer ISC Annual Report of 2000 and various brochures and website pages of the Complainant /Fraunhofer ISC in which references to "Ormocer" are followed by the ® symbol
(iii) copies of what appears to be the published dissertations of:
(a) Steffen Uhlig of Linköping University in Sweden in 2006 in relation to "ORMOCER Materials"; and
(b) Suresh Kumbar of the University of Bayreuth in 2010 in relation to "ORMOCER … Nanocomposites",
in both of which the numerous references to "Ormocer" are followed by the ® symbol.
(iii) copies of:
(a) a joint paper of various scientists at the Department of Materials Science and Engineering, of the Korea Advanced Institute of Science and Technology in the Republic of Korea and a scientist of Fraunhofer ISC, which appears to have been published online in "Wiley InterScience" in January 2004; and
(b) a paper of a scientist of Fraunhofer ISC published in the Journal of Sol-Gel Science and Technology in 1994;
(c) an article appearing in the online Eurasia Review in January 2011:
(d) an article appearing on "www.scienceblog.com" titled "Thinner thermal insulation";
(e) the programme of the IEE ISSNIP conference in Singapore in April 2014 at which one of the sessions involving scientists of the Fraunhofer ISC had ORMOCER as its subject matter;
(f) a brochure produced by micro resist technology GmbH in June 2008; and
(g) a REACH Regulation Safety data sheet in respect of "ORMOCER LV 23 Et".
In all of these documents references to "Ormocer" are followed by the ® symbol.
5.5 The Complainant also assert that "ORMOCER materials" are used as part of the dental products of the German based company VOCO and as a coating for the products of the German and Belgium based company FBGS. The sales of these products are said to be international and the Complainant annexes copies of brochures and other promotional materials for these companies in German and English. The references to "Ormocer" in these materials are generally followed by the ® symbol.
5.6 In light of that use and bearing in mind the areas in which the Respondent conducts its or his activities, it is claimed that "[t]he Respondent must have been aware of the trade mark protection of the term ORMOCER when he registered the Domain in 2011".
5.7 The Complainant also claims that Google searches against the term "Ormocer" would at that time have revealed links to the webpages of Fraunhofer. It incorporates screenshots of recent Google searches which show that the ® symbol appears next to the term "Ormocer" in the search results themselves. The Complainant contends that had similar searches been conducted in 2011, links to the webpages of Fraunhofer would also have appeared. However, it is unclear whether the Complainant is contending that search results at that time would also have displayed the ® symbol next to the term "Ormocer".
5.8 The Complainant further contends that even if the Respondent was not aware of the Complainant's trade mark, it should have been. In this respect it refers to the wording of paragraph 2 of the Policy. It also claims that the Respondent would have been aware of the Complainant's website by reason of a simple Google search and contends that a search should have been undertaken on the European or German trade mark registers.
B. Respondent
5.9 The Respondent identifies himself as "nanotech[no]logy manager" of "Asiafam Group Co"1.
5.10 He claims that he registered the Domain Name and the <ormosil.com> domain name at the same time and that they "are completely familiar for nanotech and chemistry based specialists" as the acronyms of "organically modified ceramic" and "organically modified silica (or silicate)". He claims that as such these terms are not trade marks.
5.11 The Respondent contends that at the time he registered these terms he had not heard of the Complainant or seen the website operating from the <ormocer.de> domain name. He also takes issue with the Complainant's use of a Wikipedia entry complaining that it is "not a reliable reference" because this is text that "everyone can write or change".
5.12 In support of his contention that the term is a descriptive one the Respondent provides copies of what appear to be the following:
(i) A scanned page available on Google Books from the "Concise Encyclopedia of Composite Materials", which contains the following text:
"4. New Technology
In 1998, the first restorative material based on the ormocer technology (Definite [Degussa Agn, Hanau, Germany]) was marketed. Multifunction urethane and tioether(meth)acrylate alkoxysilanes as sol-gel precursors have been developed for synthesis of inorganic-organic copolymer ormocer composites as the dental restorative materials. Ormocers (acronym for organically modified ceramics) are characterized by novel inorganic-organic copolymers in the forumulation that allow the modification of mechanical parameters in a wide range (Hickel el al. 1998, Manhart et al. 2000). According to Xu et al. (1999), contact damage resistance of resin composites can be substantially improved by reinforcement by ceramic whiskers fused with silica glass particles. Rudell et al. (2002) investigated the use of prepolymerized fused-fiber filler modified composite particles (PP-FFMC). They found that these PP-FFMC particles were better incorporated and resistant to plucking-out of the surface. A current trend in composite technology is toward the use of homogeneously distributed nanoparticles with approved resin matrix protection and reduced surface friction."
(ii) A listing from the "Free Patents Online" database that lists three patents with the term "Ormocer" in the title.
(iii) An entry in a digital copy of "Ullmann's Encyclopedia of Industrial Chemistry" Sixth Edition 2002, under the heading "Dental Materials – Synthetic Resins" which reads as follows:
"5.6.3. Ormocer-Based Filling Materials
In this new type of polymer-based filling material, the main component of the monomer matrix is an organically-modified-ceramic (ormocer). This is a cross-linked silicone oligomer bearing methacrylate groups. Dimethacrylates are used as diluents. Initiators and fillers are as in the light-cured polymers (Section 5.6.2. Light-Cured Polymers). Advantages of this type of material are:
- Lower polymerization shrinkage because of the size of the oligomer molecule
- Lower dissolution rate of residual monomers because of the hydrophobic nature of the molecule and a higher probability of each monomer molecule being incorporated in the polymer network because of the multifunctionality
- Higher abrasion resistance compared to materials with the same type and size of filler particles
Trade names Definite (Degussa-Htils, Germany); Admira (Voco, Germany)."
5.13 The Respondent also claims that there are a large number of businesses using "ormocer technologies in international chemical markets and also in Iran". In this respect the Respondent refers to a list of companies and provides details of their websites, but does not provide copies of any page which might be said to support his contention (if that is his contention) that these companies use the term "Ormocer" in a descriptive sense. The Panel has briefly viewed these websites but no use of the term "Ormocer" is readily apparent.
6. Discussion and Findings
6.1 It is incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (Policy, paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (Policy, paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
6.2 The Panel will consider each aspect of the Policy in turn.
A. Identical or Confusingly Similar
6.3 The Panel accepts that the only sensible reading of the Domain Name is as the term "Ormocer" in combination with the ".com" top level domain. The Panel also accepts that the Complainant has three trade marks for the term "Ormocer" as a word mark in respect of a broad range of goods and services. In the circumstances, the Panel holds that the Domain Name is at least confusingly similar to a trade mark in which the Complainant has rights. As to whether the Domain Name and trade mark are strictly "identical", see the Panel's comments in Philip Morris USA Inc. v. Marlboro Beverages / Vivek Singh, WIPO Case No. D2014-1398. However, confusing similarity is sufficient.
6.4 Accordingly, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.5 As has already been recorded earlier on in this decision, there are a number of strange features of the website to which the Domain Name redirects traffic and the website of "Asiafam Group Co"2 . Nevertheless, the Complainant does not contend that the Respondent is not genuinely engaged in some form of nanotechnology related business in the Islamic Republic of Iran. Indeed, it positively contends this to be the case in support of its claim that the Respondent must have been aware of the Complainant's mark at the time that the Domain Name was registered. Accordingly, the Panel proceeds on that basis.
6.6 Given this, the case essentially turns upon the extent to which at the relevant times the term "Ormocer" was or is generally understood to be a descriptive one or as a brand name of the Complainant. In the context of the second limb of the Policy, the question becomes one of whether the term "Ormocer" in the Domain Name had by at least the time of the Complaint a descriptive meaning. If it had, then the fact that it is being used in a manner that takes advantage of its descriptive meaning is likely to provide the Respondent with a legitimate interest for the purposes of the Policy; see paragraph 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
6.7 The Complainant has put forward a great deal of material that shows the use of that term as either a trade mark or being recognised as a trade mark. Most of that material appears to have been either generated by the Complainant itself or by persons or companies connected with it. If, as the Complainant contends the mark is non-descriptive, the fact that the Complainant's evidence takes this form is unsurprising.
6.8 However, if a term is indeed descriptive, the fact that a complainant brings forward extensive evidence that it has sought to use that term in a trade mark sense in respect of goods or services described by that term may be far less compelling. To take an obvious and slightly ridiculous example, no amount of evidence that a complaint has used the word "banana" as a trade mark for bananas, is likely to persuade a panel that "banana" is non-descriptive. There is not even a need for a respondent to put in evidence in this respect as "banana" is an ordinary English word.
6.9 So far as "Ormocer" is concerned, it is obviously not an ordinary English word, and therefore the Panel would need evidence as to how it is understood by the relevant public (presumably those familiar with the field of nontechnology) to support a claim of descriptiveness. Further, given that the Complainant has brought forward extensive evidence of its use as a trade mark, the burden of proof of showing that it nevertheless has a descriptive meaning must as a practical matter then pass to the Respondent.
6.10 Turning to the evidence in this case, the Complainant relies upon certain scientific papers and the Respondent relied in part upon references in three patents. Ultimately, the Panel has not found the evidence of either party to be particularly illuminating. So far as the Complainant's materials are concerned, many of these (if not perhaps all) appear to have been written in part by the Complainant's own scientists or by individuals who may have had dealings with such persons who in turn may have had an influence over the content of the paper3 . Accordingly, the fact that these papers extensively identify ORMOCER as a trade mark is far from conclusive as to how the term is generally perceived by those in the relevant field. The Respondent refers to a list of three patents. However, no explanation is provided as to what search terms were used to identify these three patents and it is also difficult to form any view as to how this informs the question of how the term "ormocer" is understood, without further explanation and/or copies of the same (none of which is provided).
6.9 The various definitions identified in the papers are potentially more promising.
6.10 First, there is the passage in Wikipedia. Although the Respondent claims that the Panel should not rely on this passage, ironically it actually supports the Respondent's position. In it the term "ORMOCER" is simply identified as an acronym for "ORganically MOdified CERamic". The passage claims that "ORMCER was original developed" by the Complainant (and it may be this statement with which the Respondent takes issue), but it does not automatically follow from the fact that someone developed or even named a material, that the name given to it has some trade mark significance.
6.13 Second, there is the passage from the "Concise Encyclopedia of Composite Materials". In this passage "Ocmocers" are simply referred to an "acronym for organically modified ceramics" and there is nothing in this passage to suggest that this is a term that has independent trade mark significance.
6.14 Third, there is the entry in "Ullmann's Encyclopedia of Industrial Chemistry". Once again the term "ocemer" is used (this time without capitalisation) as referring to "organically-modified-ceramic". In this case there is also the fact that certain trade names are identified as being associated with this substance and "Ormocer" is not one of them.
6.15 Nevertheless questions arise in respect of all of this material. So far as the Wikipedia entry is concerned, the Panel bears in mind the Respondent's own criticism that Wikipedia entries can be created and changed by anyone and therefore great care needs to be taken, in treating such a statement as authoritative.
6.16 So far as the "Concise Encyclopedia of Composite Materials" is concerned, it is unclear when this was published and how authoritative is the publication and passage that is relied upon. In the case of the "Ullmann's Encyclopedia of Industrial Chemistry" there does appear to be a date associated with the entry; i.e. 2002. This was so long prior to the registration of the Domain Name and the filling of the Complaint, the Panel is not convinced that it provides authorative guidance as to how the term was understood at those times.
6.17 Given this, although the Panel accepts that this material is at least suggestive of the term being at least at some point being understood by some people as descriptive, the Panel is of the view that it would be dangerous to place any significant reliance on this material without at least giving the Complainant a chance to comment on the same. If necessary, the Panel would have issued a Procedural Order in this respect pursuant to paragraph 12 of the Rules.
6.18 Ultimately, however, the Panel has concluded that it is not necessary to do this. The reason is that there is also the fact that the Complainant possesses three trade marks for the term "Ormocer". These are all word marks that would have been subject to substantive examination and yet proceeded to grant with specifications that would appear to cover at least certain organically modified ceramics. Although in each case the assessment took place many years ago, this is a factor that the Panel considers it is entitled to take into account when it comes to assessing the alleged descriptive nature of the term. Further, any conclusion by the Panel that as at the date of this Complaint the term is or has become descriptive would be tantamount to a determination that many if not all of the marks are at least in part invalid. However, the marks have all been registered for well over 10 years and appear to have been unchallenged. Although this is not determinative (there may be other reasons why there has been no challenge), again it is a factor that the Panel believes it is entitled to take into account when it comes to assessing whether the term is descriptive.
6.19 The Panel is of course aware that the relevant marks only cover Europe and United States. Nevertheless, it is the Respondent's case that "Ormocer" is a generally understood scientific term. There is no real suggestion (or evidence to back up such a suggestion) that the term is understood differently in different parts of the world.
6.20 Given this, the Panel concludes that the Complainant has prima facie shown the term to be understood as a brand and that the Respondent has failed to bring forward sufficiently compelling evidence to show that it is descriptive.
6.21 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.22 Given the finding above that the term "Ormocer" is not descriptive it effectively follows that the Domain Name is being used and was registered in bad faith. The Domain Name is clearly being used to divert Internet users to a website, which at least on its face appears to offer goods and services in competition to those of the Complainant. As such there is use that falls within the scope of the example of bad faith use set out in paragraph 4(b)(iv) of the Policy.
6.23 Further, although under the Policy it is necessary to show not only that the Domain Name was used in bad faith but was also registered in bad faith, there is no evidence before the Panel which would justify any finding that the general understanding of the term "Ormocer" was materially different in 2011 when the Domain Name was registered, than it is now. Given this it follows that the registration was in bad faith.
6.24 It is perhaps important to note in this regard, that in finding bad faith registration and bad faith use the Panel is making no determination that the Respondent deliberately sought to take advantage of the trade mark meaning of the term "Ormocer". Although the words "bad faith" might be thought to suggest some conscious wrongdoing on the part of a registrant (and in most cases that is indeed what is alleged), in the context of the UDRP the meaning of these words are somewhat more flexible. In the opinion of the Panel both paragraph 4(b)(iv) of the Policy and the concept of bad faith is able to encompass a situation where a party deliberately chooses a term that it honestly yet wrongly believes to be descriptive when it is not, with a view to attracting Internet users to its website.
6.25 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
6.26 For the sake of completeness the Panel would add that it rejects the Complainant contentions so far as paragraph 2 of the Policy is concerned. In the Panel's opinion this and similar arguments based upon this paragraph seek to elevate a provision designed to give contractual protection to registrars to a degree of importance in the general operation of the Policy that is unjustified. Further, even those who have sought to rely upon this provision to justify the imposition upon certain registrants of an obligation to perform a search at the time of registration have not attempted to argue that it extends to the sort of registrant that is the Respondent in this case (see the discussion of "Willful Blindness" in paragraph 3.4 of the WIPO Overview 2.0). However, given the findings of the Panel in this case, it is not necessary to explore these issues further in this decision.
7. Decision
7.1 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 <ormocer.com> be transferred to the Complainant.
Matthew S. Harris
Sole Panelist
Date: December 19, 2014
1 The Respondent provides a web address in respect of this entity, but at the time of this decision the webpage operating from that address consisted of a combination of Arabic or Perso-Arabic text combined with "lorem ipsum" / "lipsum" placeholder text.
2 See the comments at paragraph 4.8 and in footnote 1 above.
3 By way of example, the dissertation referred to in paragraph 5.4 (iii)(a) of the Factual Background section of this decision contains an acknowledgment and thank you in German to staff of the Fraunhofer ISC for their assistance to the author in connection with the paper.