WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nanosonics Limited v. An Nguyen-Dinh, Vermon S.A.
Case No. D2015-0681
1. The Parties
The Complainant is Nanosonics Limited of Alexandria, New South Wales, Australia, represented by Shelston IP Lawyers, Australia.
The Respondent is An Nguyen-Dinh, Vermon S.A. of Tours, France, represented by Stites & Harbison PLLC, United States of America (“USA”).
2. The Domain Name and Registrar
The disputed domain name <nanosonics.com> (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2015. The Center transmitted its request for registrar verification to the Registrar the same day. The Registrar replied the same day, confirming that it had received a copy of the Complaint, that the Domain Name was registered with it, that the Respondent was the current registrant, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied, that the Domain Name would expire on May 3, 2015, that it had been placed and would remain during this proceeding on Registrar Lock, and that the Registration Agreement was in English. The Registrar also provided the full contact details held on its WhoIs database in respect of the Domain Name.
The Center verified that the Complaint satisfied the formal requirements of the 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 Respondent of the Complaint, and the proceeding commenced on April 21, 2015. The Respondent confirmed on April 22, 2015 that it had renewed the Domain Name. In accordance with paragraph 5(a) of the Rules, the due date for Response was May 11, 2015. The Response was filed with the Center on May 10, 2015.
The Center appointed Jonathan Turner as the sole panelist in this matter on May 14, 2015. 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. Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly served on the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant supplies infection control and disinfectant products and services for medical apparatus, particularly ultrasound probes for medical use, under the trademark NANOSONICS. The Complainant is based in Sydney, Australia, and has affiliates in the USA and Europe. It also works with various other service providers around the world, including GE Healthcare in France and other countries, Miele Professional in a number of European countries, Ava Medica in the Russian Federation and Toshiba Medical Systems in the United Kingdom of Great Britain and Northern Ireland.
The Complainant registered NANOSONICS as a trademark in Australia by an application in May 2000 and in the European Union, Japan, New Zealand, the Russian Federation, Switzerland and the USA pursuant to applications in 2006. The Complainant has also registered a number of domain names with “nanosonics” as the second-level domain (“SLD”).
The Complainant has obtained patents relating to its products and methods in a large number of countries, including France and other European countries.
The Respondent manufactures and sells piezoelectric transducers, particularly for ultrasound diagnostics. It was founded in 1984 and is based in Tours, France. It focuses on designing and producing innovative ultrasound diagnostic products, involving research in the field of nanotechnology.
The Respondent registered the Domain Name in 2002 but has not so far used it or a corresponding name in relation to its products. Since at least 2008, the Domain Name has been directed to a parking page provided by an Internet Service Provider (“ISP”), neoDomaine, which describes itself by the caption “Le service integrale de noms de domaines internet”. The page continues with the words:
“neoDomaine : dépôt, transfert et redirection de nom de domaine.
Parking et redirection de votre site web, redirection mail, hébergement de page d’accueil.
Le nom de domaine www.nanosonics.com est actuellement en parking chez neoDomaine. Si vous êtes administrateur de ce nom de domaine et que vous souhaitez en paramétrer la redirection ou l’hébergement, rendez-vous sur notre site, rubrique neoGestion.”
In about September 2013, an investigator instructed by the Complainant sent an email to the Respondent enquiring whether the Respondent would be willing to sell the Domain Name. The Respondent did not reply to this email or to further emails seeking to follow it up. The Complainant’s investigator sent a copy of the initial email by courier to the Respondent in about December 2013. The Respondent did not reply.
The Complainant’s investigator subsequently made telephone contact in December 2013 with An Nguyen-Dinh, the technical director of the Respondent, who is identified as the contact in the WhoIs record for the Domain Name. Ms Nguyen-Dinh told the investigator that she would discuss the investigator’s query regarding a possible sale of the Domain Name with the Respondent’s management personnel. In a further telephone conversation in January 2014, Ms. Nguyen-Dinh informed the Complainant’s investigator that the Respondent’s management would only be prepared to discuss the matter if the investigator first made a payment of EUR 5,000 to the Respondent. The Complainant was not willing to proceed on this basis.
On July 22, 2014, the Complainant’s manager in France contacted the Respondent’s sales and marketing director to inquire whether the Respondent would be willing to transfer the Domain Name to the Complainant. The Respondent’s sales and marketing director advised the Complainant’s manager in France to call again in September 2014. The Complainant’s manager in France called again in September 2014. The Respondent’s sales and marketing director told him that the Respondent required another six months to decide whether it was going to use the Domain Name.
On November 3, 2014, the Complainant’s attorneys sent a letter by courier to the Respondent, drawing attention to the Complainant’s use and registrations of the trademark NANOSONICS and asking the Respondent to state whether it was carrying on any business under this name and whether it would be willing to transfer the Domain Name to the Complainant. The letter offered to meet any reasonable costs associated with the transfer of the Domain Name. The Respondent did not reply to this letter or to a further letter enclosing a copy of it sent on December 9, 2014.
5. Parties’ Contentions
The Complainant contends that it has registered and unregistered rights in the trademark NANOSONICS. It points out that the trademark was registered in Australia on May 3, 2000 and states that it has used the mark since at least then, which was prior to the Respondent’s registration of the Domain Name in 2002. The Complainant adds that it was established in 2001. However, in a later part of the Complaint, the Complainant states that it was established in 2000 and has used the name “Nanosonics” since at least 2001.
The Complainant further contends that the Domain Name is identical or confusingly similar to its mark NANOSONICS, observing that it is well established that the addition of the “.com” generic Top-Level Domain (“gTLD”) suffix is without significance.
With regard to whether the Respondent has rights or legitimate interests in respect of the Domain Name, the Complainant notes that it suffices to make a prima facie case and that the burden then shifts to the Respondent. The Complainant further points out that it has asserted its rights in correspondence and the Respondent has not replied identifying any rights that it claims in respect of the Domain Name.
The Complainant provides evidence that the Domain Name has not resolved to any active website, but rather is parked with neoDomaine, which the Complainant describes as a reseller of domain names. According to the Complainant the purpose of directing the Domain Name to this page is to enable its resale to a third party.
The Complainant emphasizes that the Respondent has made no attempt to use the Domain Name for any legitimate purpose despite having registered it more than 12 years ago. The Complainant adds that there is no evidence that the Respondent is commonly known by the Domain Name or that it has used the name “nanosonics” for any goods or services or otherwise.
The Complainant confirms that it does not have any connection or affiliation with the Respondent and has not granted the Respondent any licence or authorization to use the name “Nanosonics”. The Complainant also notes that the Respondent is not making any legitimate noncommercial or fair use of the Domain Name. The Complainant considers that the Respondent’s registration of the Domain Name could only be for the purpose of capitalizing on the Complainant’s goodwill, and that it could be used at any time in the future for an infringing website.
The Complainant alleges that the Domain Name was registered and is being used in bad faith. In support of this allegation, the Complainant refers to the absence of any demonstrable plan of the Respondent to use the Domain Name for any bona fide purpose prior to its registration and the lack of any such use since then; the Respondent’s actual or constructive notice of the Complainant’s rights prior to registration of the Domain Name; the Respondent’s soliciting of valuable consideration merely as a condition for discussing a possible transfer of the Domain Name to the Complainant; and the fact that registration of the Domain Name prevents the Complainant from having a domain name corresponding to its trademark and company names.
The Complainant further points out that both it and the Respondent operate in the same industry, with the Respondent manufacturing the very products to which the Complainant’s products and services are applied. The Complainant notes that “nanosonics” is not an ordinary descriptive or generic terms and submits that it is not a name that other traders would legitimately choose unless they were seeking to create an impression of association with the Complainant or its products and services.
The Complainant draws attention to UDRP decisions which have recognized that consumers expect to find a trademark owner’s website on the Internet at a domain name which comprises its company name or mark. The Complainant contends that consumers would be likely to be misled or confused if the Respondent were to offer its products and services via a website located by the Domain Name.
The Complainant infers that the Respondent’s selection of the Domain Name cannot have been a coincidence and that the Respondent must have registered it with knowledge of the Complainant and its rights in the mark NANOSONICS with the intention of appropriating the Complainant’s goodwill or creating an impression of association with the Complainant.
The Complainant reiterates that the Domain Name has not been directed to any active website and claims that the evidence demonstrates that the Respondent’s intention at all material times has been to resell the Domain Name to interested third parties. The Complainant observes that it is very unlikely that the Respondent could make good faith use of the Domain Name.
The Complainant requests a decision that the Domain Name be transferred to it.
The Respondent does not dispute that the Domain Name is identical to a trademark registered by the Complainant. The Respondent observes, however, that it registered the Domain Name years before the Complainant registered the trademark in question in the European market where the Respondent is based.
The Respondent points out that the application for the Complainant’s Australian registered trademark for NANOSONICS was filed in 2000 and granted in 2001, and that this registration was assigned from a company called Novapharm Research (Australia) Pty Ltd to the Complainant in 2005, three years after the Respondent registered the Domain Name.
The Respondent states that its goods and services are different from those of the Complainant: the Respondent designs and manufactures transducer products, while the Complainant develops technology for infection control. The Respondent observes that the Complainant’s website indicates that its technology is applicable to a broad spectrum of industries, not just medical equipment. The Respondent also notes that the Complainant’s International Trademark Registration was amended to delete ultra-sound equipment (the equipment which the Respondent makes and sells) from the goods specification before the application was accepted.
The Respondent asserts that it registered the Domain Name with a bona fide intent to use it in connection with its technology and maintains that intent. It states that the term “nanosonics” stems from the fields or research in which it is engaged, namely nanotechnology and ultrasound. The Respondent maintains that it is not improper to register and maintain a domain name for some time before using it.
The Respondent points out that it did not reply to the Complainant’s repeated requests to sell the Domain Name, and only offered to enter into negotiations after the Complainant badgered it. It states that it had no actual knowledge of the Complainant or the Complainant’s alleged use of the trademark when it registered the Domain Name. The Respondent denies that it registered the Domain Name with intent to sell it to the Complainant and contends that the history detailed by the Complainant shows that it was reluctant even to respond to the Complainant’s demands.
The Respondent submits that the theory of constructive notice developed under US trademark law has generally been rejected by panels in proceedings under the UDRP and should not be applied in this case, especially as neither party is subject to US law.
The Respondent contends that the Complainant has not provided any evidence that it had actual knowledge of the Complainant’s mark or any material from which this could be inferred. It states that the Complainant’s mark is not now well-known or in wide use on the Internet and that the Respondent has not suggested that the mark was well-known and in wide use when it registered the Domain Name. The Respondent adds that the Complainant has not demonstrated any business activities in Europe at this date.
The Respondent points out that the Complainant has not shown any facts indicative of cybersquatting, such as acquisition of multiple domains through automated processes. The Respondent also notes that it is not monetizing the Domain Name by posting pay-per-click advertisements and that the indication on the website that the Domain Name was for sale was selected by the Registrar.
The Respondent reiterates its reluctance to discuss sale of the Domain Name to the Complainant and that it only indicated a willingness to discuss the issue after repeated badgering and on condition that the Complainant deposited funds to show good faith. The Respondent submits that a willingness on the part of a bona fide registrant of a domain name to sell it at a premium to a party that has asked to buy it does not necessarily amount to bad faith.
The Respondent’s main factual assertions, including its lack of knowledge of the Respondent when it registered the Domain Name and its bona fide intent, are substantiated by a separate, signed declaration of its technical director, Ms Nguyen-Dinh.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove: (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. It is appropriate to consider each of these requirements in turn.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered and unregistered rights in the mark NANOSONICS. The Panel further finds that the Domain Name is effectively identical to this mark, from which it differs only in the addition of the gTLD suffix. As has been observed in many UDRP decisions, this suffix should normally be discounted when making the comparison required by the first element of the UDRP. Furthermore, the Respondent has realistically accepted that the Domain Name is identical to the Complainant’s trademark for this purpose. The first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
The Panel finds on the evidence that the Respondent has not so far used or made demonstrable preparations to use the Domain Name or any corresponding name for a bona fide offering of goods or services. Nor is the Respondent making a legitimate noncommercial or fair use of the Domain Name within the meaning of paragraph 4(c)(iii) of the UDRP. The Panel considers that this refers to some form of active use of a domain name; the Respondent is not making any such use. The Respondent is not commonly known by the Domain Name.
The possibility that the Respondent registered and has retained the Domain Name in good faith, which is discussed below, does not in itself suffice to confer a right or legitimate interest in the Domain Name. As paragraph 4(c)(i) of the UDRP implies, mere good faith registration of a domain name is not normally enough to confer a right or legitimate interest for the purpose of paragraph 4(a)(ii), in the absence of demonstrable preparations to use it for a bona fide offering of goods or services, or some other factor conferring a right or legitimate interest.
In the circumstances, the Panel might be inclined to find that the Respondent does not have any rights or legitimate interests in respect of the Domain Name. However, it is not necessary to reach a conclusion on this point in view of the Panel’s findings on bad faith, below.
C. Registered and Used in Bad Faith
It is clear from the wording of paragraph 4(a)(iii) of the UDRP and has been affirmed by many UDRP decisions that the two conditions of the third requirement, registration in bad faith and use in bad faith, are cumulative. Both must be satisfied, although use in bad faith can be evidence of registration in bad faith, and vice versa.
In this case, the Panel is not satisfied on the evidence that the Respondent knew of the rights now asserted by the Complainant when it registered the Domain Name in 2002. There is in fact no evidence as to the existence, nature or extent of any use of the NANOSONICS trademark at this date. The most that can be said on the evidence provided as to the position at that date is that a predecessor of the Complainant, called Novapharm Research (Australia) Pty Ltd, had registered NANOSONICS as a trademark in Australia. In the Panel’s view, it cannot be inferred that the Respondent in France knew or should have known of this trademark registration at that date.
While the word “nanosonics” is made up, it does consist of descriptive elements, namely “nano” which is widely used in relation to nanotechnology, and “sonics” which is widely used to refer to equipment which emits or detects sounds. It is therefore not inherently improbable that two or more different companies might have independently had the same idea of combining these elements into a name.
Furthermore, even if the Respondent had known of the Australian trademark registration when it registered the Domain Name in 2002, it cannot be inferred based on the limited record before the Panel that it must have had a bad faith intention to use it to infringe the Complainant’s trademark or to trade off or appropriate goodwill associated with it. Without more evidence as to the use (if any) that had been made by the Complainant’s predecessor of the trademark NANOSONICS, it cannot be presumed that any use that might have been made by the Respondent of the Domain Name would have necessarily been objectionable.
The fact that the Respondent does not appear to have had any concrete plans to use the Domain Name and, indeed, has not used it in the 13 years since registering it does not mean that the Respondent necessarily registered it in bad faith. It is in principle legitimate for businesses to register domain names which they reckon they might want to use in good faith, even if this eventuality does not come to pass.
Nor can it be inferred from the evidence provided that the Respondent registered the Domain Name with a view to selling it at a profit to the Complainant’s predecessor or a competitor. In fact, somewhat unusually, the parking page to which the Domain Name has resolved for the last seven years has not presented any offer for sale of the Domain Name. Although the Response seems to accept the Complainant’s allegation to the contrary, the actual text on the page, set out above in the original French, contains no present indication that the Domain Name is for sale.
The website of the ISP, neoDomaine, is not in evidence, but on a limited viewing the Panel did not see any resale service being promoted alongside the services offered of registration, hosting, email redirection, and the like.
There is no evidence of the Respondent making any attempt to solicit a sale of the Domain Name. If its original registration was in good faith, the Respondent would have been entitled to respond to the Complainant’s entreaties years later to sell the domain name. However, the evidence shows that the Respondent ignored numerous invitations from the Complainant to sell the Domain Name and eventually sought a substantial payment before it would begin to discuss the matter. In the Panel’s view, it cannot be inferred from this that the Respondent registered the Domain Name with a view to selling it to the Complainant or the Complainant’s predecessor.
The Panel is also not satisfied that the Respondent is using the Domain Name in bad faith. It is true that passive holding of a domain name can be in bad faith, but it does not follow that all passive holding of a domain name is in bad faith. Merely retaining a domain name which could be used improperly, but without any attempt or intent actually to use it improperly, does not constitute use in bad faith.
In all the circumstances, the Panel concludes that the Complainant has not proved the third requirement of the UDRP. The Complaint must therefore be rejected.
For the foregoing reasons, the Complaint is denied.
Date: May 23, 2015