WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lohmann & Rauscher GmbH & Co. KG and Laboratoires Lohmann & Rauscher SAS v. zhengxiao xing (郑晓星), shen zhen shi wei li jian ke ji zhi pin you xian gong si (深圳市维力健科技制品有限公司), Shenzhen Weprotex Technology Product Co., Ltd
Case No. D2020-2491
1. The Parties
The Complainants are Lohmann & Rauscher GmbH & Co. KG (the “First Complainant”), Germany, and Laboratoires Lohmann & Rauscher SAS (the “Second Complainant”), France, both represented by Zeuner Summerer Stütz, Patent- und Rechtsanwälte, Part mbB, Germany.
The Respondent is zhengxiao xing (郑晓星), shen zhen shi wei li jian ke ji zhi pin you xian gong si (深圳市维力健科技制品有限公司), Shenzhen Weprotex Technology Product Co., Ltd, China, represented by Borsam Intellectual Property, China.
2. The Domain Name and Registrar
The disputed domain name <velpeau.com> is registered with Xin Net Technology Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2020. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 10, 2020, the Registrar transmitted by email to the Center its verification response 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 Complainants on October 23, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint in English on October 26, 2020.
On October 23, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainants confirmed their request that English be the language of the proceeding on October 26, 2020. The Respondent requested that Chinese be the language of the proceeding on October 27, 2020.
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 and 4, the Center formally notified the Respondent of the Complaint and amendment to the Complaint and the proceedings commenced on October 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2020. The Respondent submitted the Response in Chinese on November 17, 2020. The Center acknowledged receipt of the Response on the same day.
The Center appointed Matthew Kennedy as the sole panelist in this matter on December 9, 2020. 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 part of the Lohmann & Rauscher group, which develops, produces and sells medical devices and hygiene products. The First Complainant owns International trademark registration number 164460 for VELPEAU, registered on October 9, 1952, specifying objects for dressings, plasters, disinfectants in class 5; lingerie in class 24; and lingerie, hosiery, layette in class 25. At the time of its renewal in 2012, this registration designated France, Monaco, Morocco, and Switzerland. Subsequently, on June 24, 2014, the First Complainant designated the European Union, where the mark was accepted and published on August 17, 2015. In 2017, the First Complainant also designated Australia and New Zealand, where protection was partially refused in class 5 inter alia because “Velpeau” is a commonly used term to indicate a type or a style of bandage or dressing or the like.
The Second Complainant registered the domain name <velpeau.fr> on February 6, 2015. It announced a “new site” for Velpeau on December 18, 2015. The domain name has resolved, since at least February 1, 2016, to a website in French that provides information about the Second Complainant’s products, including orthopedic braces, compression bandages and products for treating wounds. The website prominently displays an LR logo and the VELPEAU mark. The Second Complainant also owns French trademark registrations for COTOACCESS PAR VELPEAU V, COTOACCESS PAR VELPEAU, COTOBIO PAR VELPEAU, COTODISQUES PAR VELPEAU, COTOTIGES PAR VELPEAU and COTOTIGES BB PAR VELPEAU. These marks were registered during the period from April 12, 2016 to October 29, 2018 and all specify goods in classes 3 and 5, while those registered on or after October 2, 2017 also specify goods in class 10.
The Respondent zhengxiao xing (郑晓星) is a Chinese individual and the legal representative of the Respondent shen zhen shi wei li jian ke ji zhi pin you xian gong si (深圳市维力健科技制品有限公司), a Chinese company known in English as Shenzhen Weprotex Technology Product Co., Ltd. The Respondent company develops, produces and sells medical devices, in particular, orthopedic articles and sports rehabilitation products. The Respondent company was established on December 24, 2014 and obtained authorizations from the Shenzhen government to produce knee immobilizers, limb immobilizers and ankle braces in December 2015. The Respondent company holds trademark registrations for VELPEAU or VELPEAU in a particular script in multiple jurisdictions, including Chinese trademark registration number 15592433, registered on December 14, 2015 (applied for on October 28, 2014), specifying various orthopedic articles, belts and bandages in class 10; Indian trademark registration number 3266420, registered from May 23, 2016, specifying goods in class 10; European Union trademark registration number 016433559, registered on August 28, 2018 (applied for March 6, 2017), specifying knee pads, head guards for sports, elbow and knee guards [sports articles] and other goods in classes 9 and 28; Japanese trademark registration number 6018827, registered on February 9, 2018 (applied for May 22, 2017), specifying goods in class 10; United Kingdom trademark registration number UK00003302288, registered from April 8, 2018, specifying goods in class 10; and Thailand trademark registration number 191121592, registered from June 27, 2018, specifying goods in class 10. The Respondent company also filed United States of America (“United States”) trademark application number 87046239 for VELPEAU on May 22, 2016, specifying goods in class 10, but this application was refused as the proposed mark was considered descriptive of the relevant goods.
The First Complainant filed an opposition in 2017 to the Respondent company’s European Union trademark application based on its prior trademark registration in classes 5, 24 and 25 (both described above), which led to the rejection of the Respondent company’s application as regards goods in class 10 but not as regards goods in classes 9 and 28: see EUIPO Opposition Division Decision on opposition number B 2 869 090 (May 23, 2018).
The disputed domain name was registered on August 1, 2014. It has resolved since at least July 1, 2016 to a website in Chinese and English that advertises orthopedic articles and bandages, braces and slings. It links to online marketplaces (such as Amazon and T-Mall) where Internet users can buy the Respondent’s products. The website prominently displays the VELPEAU mark.
The Merriam-Webster medical dictionary defines a “Velpeau bandage” as “a bandage used to support and immobilize the arm when the clavicle is fractured”. This term derives from the name of Dr. Alfred Velpeau, a French surgeon.
The Complainants’ legal representative sent a cease-and-desist letter, in English, to the Respondent on August 15, 2020 (a copy of which is not on record). The Respondent replied by letter, in English, on September 10, 2020, denying infringement and providing a copy of its United Kingdom trademark certificate for VELPEAU, a copy of a USPTO letter refusing its trademark application for VELPEAU on the ground that the mark was descriptive of its goods; and an extract from the WIPO Global Brands Database for the brand VELPEAU. The database extract showed inter alia that trademark registrations and applications for VELPEAU in classes 5, 24 and 25 were in the name of the Complainant, while those in class 10, plus one in classes 9 and 28, were in the name of the Respondent.
No reason was advanced for the six-year delay in bringing a Complaint under the Policy.
5. Parties’ Contentions
The disputed domain name is identical to the First Complainant’s VELPEAU trademark and confusingly similar to the Second Complainant’s trademarks, such as COTOBIO PAR VELPEAU.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not use the disputed domain name until July 1, 2016. The Respondent registered the trademark VELPEAU in the European Union, the United Kingdom and Malaysia to facilitate taking advantage of the Complainants’ previously existing rights in the same trademark. The Respondent is in the same line of business as the Complainants and was certainly aware of the Complainants’ widely-registered bandage and orthopedic products when it registered its trademarks. The Respondent registered the disputed domain name long before it filed its trademark applications. The Respondent does not use the trademark in relation to goods in classes 9 and 28 but solely those in class 10, for which its original European Union trademark application was refused after the First Complainant filed an opposition. This cannot qualify as bona fide use of the mark in the jurisdiction where it is registered. In order to circumvent the refusal in the European Union, the Respondent obtained trademark registrations in the United Kingdom and Malaysia in class 10. As neither of the Complainants owns rights in the United Kingdom or Malaysia, registration could not be prevented in those jurisdictions. These subsequent trademarks were registered in bad faith. The disputed domain name is not used in connection with a bona fide offering of goods and services. The Respondent has not been commonly known by the disputed domain name. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The disputed domain name was registered and is being used in bad faith. By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants’ VELPEAU mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product on the Respondent’s website or location. The disputed domain name is identical to the First Complainant’s VELPEAU trademark. The Respondent registered its mark over 60 years after the registration of the First Complainant’s VELPEAU mark and after the First Complainant’s widespread use of that mark in commerce. The Respondent’s website imitates the logotype and typeface that the Complainants use to display that trademark. The layout of the Respondent’s website clearly resembles the Complainants’ website and displays a similar photograph of medical professionals in white laboratory coats. The Respondent intends to earn profits from the confusion created with Internet users who believe to be accessing the Complainant’s website. The Respondent’s website sells products via a “buy online” button that links to the Amazon website.
The disputed domain name is not confusingly similar to a mark in which the Complainants have rights. First, the Complainants’ registered trademark rights are limited to jurisdictions where the disputed domain name will not cause confusion. The First Complainant’s International trademark registration for VELPEAU only covered France and nearby countries before the registration of the disputed domain name; it was extended to other jurisdictions later. The Second Complainant’s trademark registrations containing VELPEAU are all French and were registered after the disputed domain name. The products specified in the Complainants’ trademark registrations are different from the products sold in connection with the disputed domain name. Second, the Complainants’ trademark registrations specify goods different from those sold at the Respondent’s website, which will not cause confusion. The First Complainant’s International trademark registration specifies goods in classes 5, 24 and 25 whereas the Respondent’s main products are in class 10. Further, the First Complainant’s registration was restricted to class 5 in certain jurisdictions. Although the Complainants claim that they use their trademark with goods in class 10, they provide no evidence in support, and even if the Complainants did use their trademark with such goods, that does not demonstrate that they made such use prior to the time when the Respondent registered the disputed domain name or first used it in connection with such goods. It can be assumed that the Complainants did not use their mark in connection with goods in class 10 until they filed their own application in respect of such goods. Third, the territory where the disputed domain name is used is different from the area where the Complainants enjoy their trademark rights. Although the disputed domain name is registered in a generic Top-Level Domain (“gTLD”), the Respondent’s main markets are the United States, the United Kingdom, China and other jurisdictions where the Complainants have no trademark rights. There is no reason to claim that the disputed domain name will cause confusion.
The Respondent has rights or legitimate interests in respect of the disputed domain name. First, the Respondent lawfully acquired the disputed domain name in 2014 according to the principle of priority and it has made active use of the disputed domain name since 2016. The Complainants’ domain name was not registered until 2015 and not used until 2016. Second, the Respondent owns trademark registrations for VELPEAU in China and other jurisdictions (see Section 4 above). Third, the Complainants’ partially successful opposition to the Respondent’s European Union trademark application does not demonstrate that the Respondent lacks legal rights in the disputed domain name. The opposition was upheld in respect of goods in class 10 based on their similarity to goods in class 5, but the Respondent does not sell products in class 5. The determinations in that decision regarding similarity of goods and the distinctiveness and reputation of the Complainants’ mark warrant further consideration. In any event, the Respondent has enjoyed Chinese trademark protection since 2014. The Respondent also applied for its British and Malaysian trademark registrations in the normal course of business and not to circumvent the opposition decision in the European Union. The Respondent is very cautious when entering foreign markets and first obtains either a trademark registration or a decision rejecting its trademark application on the grounds that “Velpeau” is a generic term. The Respondent’s trademark strategy is reasonable. Fourth, the Respondent has made extensive commercial use of the disputed domain name and its trademark. Its products have been sold on Alibaba’s domestic and international websites since 2016 and on Amazon since 2017 and they have been promoted at trade fairs. The brand also sponsors local sporting events. The Shenzhen government tested a medical device product produced by the Respondent in 2016 and certified its regulatory compliance.
The disputed domain name has not been registered and is not being used in bad faith. First, the Complainants’ trademark lacks sufficient reputation to bring a complaint. The trademark is not internationally well known and the Complaint provides no evidence of reputation. The Complainants’ trademark registrations are not so widespread that the Respondent should have known of them. The Complainants have no Chinese subsidiary and make no sales in China, so there is no reason why the Respondent should have known of the Complainants’ prior registered trademarks. The Respondent’s products on Amazon appear among the top results of a Google search for “velpeau” whereas the Complainants appear lower down in the search results. Second, “velpeau” has a defined meaning and was not coined by the Complainants. The Respondent had a legitimate reason to register the disputed domain name. Dr. Alfred Velpeau was a French surgeon who invented a type of medical bandage that became known as the Velpeau bandage, which is now a generic term. A Google search shows that the term “velpeau” is not only used by the Parties to this dispute but also by third parties as a common name to describe their products.
La Fuye-Velpeau is also the name of a district in the French city of Tours. In 1963, the Canadian Medical Association Journal published an article on “The Velpeau Bandage”. “Velpeau” is defined in English dictionaries. Trademark applications for VELPEAU in Australia, New Zealand and the United States were rejected on the grounds that it was merely descriptive. Third, the Respondent uses the disputed domain name lawfully and independently of the Complainants. The Respondent’s website clearly identifies the Respondent as 深圳市维力健科技制品有限公司 and Shenzhen Weprotex Technology Product Co., Ltd, it describes its business, and provides contact information that all relates to China. The Respondent indeed knew of the Complainant’s prior trademark after the Complainant opposed the Respondent’s trademark application in the European Union but this does not mean that the Respondent’s subsequent applications for trademark registrations in other countries were made in bad faith. Trademark registration is based on the principles of priority and territoriality. It is unreasonable to require the Respondent to abandon its international trademark portfolio because the Complainants have obtained registration in certain other countries. The Parties’ respective websites are clearly different and will not confuse the public.
The Complainants have attempted reverse domain name hijacking and abused this procedure. The Complainants have long known about the disputed domain name. When the Complainants registered the domain name <velpeau.fr> in 2015, they knew or should have known that the Respondent had already registered the disputed domain name <velpeau.com>. The Respondent has made extensive commercial use of the disputed domain name for over three years. The normal operation of the disputed domain name is crucial to the Respondent’s business. The Complainants initiated this proceeding in bad faith. Since February 6, 2015, the Complainants extended their International trademark registration to other jurisdictions and obtained trademark registrations in other jurisdictions and in respect of goods in other classes, all for the purpose of reverse domain name hijacking.
6. Discussion and Findings
6.1 Procedural Issues
A. Multiple Complainants
The Complaint was filed by two complainants, both members of the same corporate group and both subsidiaries of Lohmann & Rauscher International GmbH & Co. KG. The Complainants are both owners of trademarks that consist of, or contain, VELPEAU. The Panel finds that the Complainants have a common grievance against the Respondent and that it is efficient to permit the consolidation of their complaints. Therefore, the Complainants are referred to below collectively as “the Complainant” except as otherwise indicated.
B. Language of the Proceeding
Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that English be the language of the proceeding. Its main arguments are that the disputed domain name resolves to a website in both English and Chinese; the Parties corresponded in English prior to the commencement of this proceeding; and translation of the Complaint into Chinese would disadvantage the Complainant and lead to unwarranted delay.
The Respondent requests that Chinese be the language of the proceeding. Its main arguments are that the Registration Agreement is in Chinese, the Registrar is located in China, the Respondent itself is Chinese and has only a very limited level of English. The Respondent will require professional legal translation to understand the Complaint in Chinese and to translate its Response into English. Although the Respondent’s website includes an English page, that does not mean that the Respondent’s English is good enough to use in a legal proceeding. The Respondent had to use translation software to understand the Complainant’s correspondence in English. The Respondent’s lack of familiarity with the procedures, the short deadline for the Response, and the time required for translation will cause unfairness to the Respondent as well as additional costs.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.
The Panel observes that in this proceeding the Complaint and amendment to the Complaint were filed in English and the Response was filed in Chinese. The website to which the disputed domain name resolves has an English version and the parties corresponded prior to this dispute in English, which demonstrates that the Respondent is able to communicate in that language. The detailed Response confirms that the Respondent has indeed understood the Complaint, as amended. On the other hand, the Panel sees no evidence in the Response that the Complainant should not have been aware of, or reasonably anticipated, at the time of filing the amendment to the Complaint; in any event certain annexes regarding trademark rights and use are in English. The Panel understands both Parties’ submissions. Therefore, the Panel considers that requiring either Party to translate its submission would create an undue burden and delay, while it sees no reason why accepting the submissions as filed would cause unfairness to either Party.
Having considered all the circumstances, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. However, the Panel will accept all submissions as filed in their original language, without translation.
6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(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
Based on the evidence submitted, the Panel finds that the Complainant has rights in the VELPEAU mark. In view of the reasons below, it is unnecessary to consider the Second Complainant’s marks incorporating the word “Velpeau”.
The disputed domain name wholly incorporates the VELPEAU mark. The only additional element is a gTLD suffix, “.com”. As a technical requirement of registration, a gTLD suffix is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
The Respondent notes that the Complainant’s trademark rights arise from registrations in particular jurisdictions only and that those registrations are made with respect to particular goods only. The Respondent also refers to the goods with which the Complainant has or has not used its mark. However, the Panel does not consider any of these factors to be relevant to the first element in paragraph 4(a) of the Policy. Rather, the test of identity or confusing similarity typically involves a side-by-side comparison of a domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. See WIPO Overview 3.0, section 1.7.
Therefore, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel will assess the Respondent’s rights or legitimate interests for the purposes of the second element of the Policy as at the time of the filing of the Complaint. See WIPO Overview 3.0, section 2.11 and, for example, The Curators of the University of Missouri v. Pamela Holley, MU Healthcare Victims, WIPO Case No. D2020-2693. In this dispute, the Complaint was filed six years after the date of registration of the disputed domain name.
The Panel recalls that the burden of proof of this element, like the other elements of the Policy, is borne by the Complainant. The Panel also recalls that the second element does not call for a weighing and balancing of the parties’ respective rights and interests but, rather, an assessment as to whether the Respondent has any relevant rights or legitimate interests.
Paragraph 4(c) of the Policy sets out certain circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. The first of these is as follows:
“(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services;”
The Parties agree that the Respondent is using the disputed domain name in connection with an offering of goods but they disagree as to whether that offering is bona fide within the terms of paragraph 4(c)(i). It is common ground that the Respondent is not affiliated with, nor authorized by, the Complainant in any way.
The Panel notes that the Respondent is the owner of multiple trademark registrations for VELPEAU that predate the filing of the Complaint. The Respondent’s VELPEAU trademark is identical to the disputed domain name, but for the gTLD suffix. Ordinarily, the prior registration of these trademarks supports a finding that the Respondent possesses rights or legitimate interests in respect of the disputed domain name for the purposes of the second element of the Policy. See WIPO Overview 3.0, section 2.12.1.
Nevertheless, the Complainant submits that the Respondent’s trademark registrations do not confer rights or legitimate interests in this dispute because they were obtained to facilitate taking advantage of the Complainant’s prior rights in the same trademark. As a matter of principle, the Panel agrees that a trademark registration does not automatically confer rights or legitimate interests on a respondent, depending on the overall circumstances. Therefore, the Panel will review the evidence to determine whether the Respondent obtained its trademark registrations for the purpose of making use of the mark in the jurisdictions where it is registered or, rather, primarily to circumvent the application of the Policy or otherwise prevent the Complainant’s exercise of its trademark rights. See WIPO Overview 3.0, section 2.12.2.
The Respondent has registered the VELPEAU trademark in several jurisdictions (China, India, the European Union, Japan, the United Kingdom, and Thailand). Each of these jurisdictions conducts a substantive examination of trademark applications prior to registration. The Respondent obtained its first trademark registration in the jurisdiction where it is established and carries on business (i.e., China). The evidence shows that the Respondent offers its goods for sale via an online platform in at least one of the other jurisdictions where it holds a trademark registration (i.e., the United Kingdom). All these trademark registrations but one (i.e., the European Union registration) specify goods of the type sold on the website associated with the disputed domain name (i.e., in class 10).
The Respondent did not file its first trademark application until October 2014, three months after it registered the disputed domain name, and it did not use the disputed domain name in connection with an active website until no later than July 2016, up to six months after it obtained its first trademark registration. The evidence shows that during this period the Respondent individual was establishing the Respondent company and obtaining regulatory approvals to produce medical devices.
The Respondent had made extensive use of the VELPEAU trademark in connection with its bandages, braces and other goods in class 10 for over four years prior to the filing of the Complaint, both on the website associated with the disputed domain name and on online platforms, including Alibaba and Amazon. Indeed, there is more evidence on the record of this proceeding of use of the VELPEAU trademark by the Respondent than by the Complainant. The evidence shows, for example, that the results of a Google search for that mark rank the Respondent more highly than the Complainant. There is also evidence that the Respondent has promoted its mark at trade fairs and sporting events.
In the Panel’s view, the above circumstances do not support the Complainant’s contention that the Respondent obtained its trademark registrations primarily to circumvent the application of the Policy.
The Complainant argues that the Respondent must have been aware of the Complainant’s prior trademarks and goods at the time that it registered its trademarks due to the Complainant’s prior trademark registrations and because the Parties were in the same line of business. The Panel recalls that the Respondent applied for its first trademark application in October 2014 and obtained its first trademark registration in December 2015. The Complainant provides only minimal evidence of use of its own mark in the form of screenshots of its own website in February 2016 and at the time of filing the Complaint in 2020. The Panel notes that the Respondent chose a trademark identical to the Complainant’s VELPEAU trademark. However, “Velpeau” and “Velpeau bandage” are considered descriptive of the Respondent’s goods in certain jurisdictions; the Respondent’s United States trademark application in class 10 was refused for this reason in 2016. The evidence shows that not only the Parties but also third parties use the word “Velpeau” to describe goods such as bandages, slings and immobilizers for human and veterinary use. Moreover, there is no evidence that the Complainant applied for a trademark in respect of goods of the type that the Respondent sells on its website (i.e., in class 10) until 2017, and the Complainant does not own a registration for the wordmark VELPEAU in that class even now. In these circumstances, the evidence does not demonstrate that the Respondent obtained its trademark registrations primarily to prevent the Complainant’s exercise of its trademark rights.
The Complainant argues that the Respondent cannot rely on its European Union trademark registration to establish rights or legitimate interests because that registration specifies goods in classes 9 and 28 that are not sold on the Respondent’s website. However, it is unnecessary for the Panel to consider this question because the Respondent has obtained trademark registrations in other jurisdictions with respect to goods in class 10 that are in fact sold on its website. The Complainant argues that the Respondent cannot rely on its United Kingdom registration (or an alleged Malaysian registration) in class 10 because this circumvented the European Union’s refusal of protection with respect to that class of goods. The Panel rejects this argument because the evidence shows that the Respondent uses its mark to offer for sale the relevant goods in the United Kingdom, which indicates that it had a legitimate commercial reason to seek registration in that jurisdiction. Further, the EUIPO partially refused registration based on a low degree of similarity between the Respondent’s bandages and other goods in class 10, and the Complainant’s objects for dressing in class 5, but it acknowledged that evidence of the descriptive nature of the Complainant’s mark could not be considered in an opposition proceeding: see EUIPO Opposition Division Decision supra, page 4. Elsewhere, in application proceedings in Australia and New Zealand, the Complainant’s trademark was considered descriptive of objects for dressing in class 5 and refused protection for them (which the Complaint omitted to mention). In any case, the Respondent applied for and obtained other trademark registrations in class 10 before the partial refusal in the European Union.
The Complainant also referred to the content of the Respondent’s website, alleging that this imitated the Complainant’s mark and website. The Panel has taken note that the VELPEAU trademark is displayed in the same font on the Parties’ respective websites. However, the evidence does not allow the Panel to determine who was the original user of the mark in that font. The Complainant provided two archived screenshots showing that the mark was displayed in that font on its website in February 2016, four months before it appeared in the same font on the Respondent’s website. However, the Respondent had already applied for its Chinese trademark registration in that particular font in 2014. Although the Complainant’s mark had been registered for over 60 years by that time, the Complainant provided no evidence whatsoever showing how its mark had been used prior to the launch of its new website in an archived screenshot from February 2016. The Complainant also argues that the layout of the Respondent’s website clearly resembles the Complainant’s website and displays a similar photograph. The Panel has reviewed the evidence and considers that the similarity between the sites derives from their display of the same mark and products of the same type. The layout seems quite standard and a photograph of people in white laboratory coats may be considered typical of medical-related websites without any relationship to the Complainant.
In view of the overall circumstances set out above, the Panel finds that the Complainant has failed to demonstrate that the Respondent obtained its trademark rights primarily to circumvent the application of the Policy or otherwise prevent the Complainant’s exercise of its trademark rights.
Given that the Respondent possesses rights in respect of the disputed domain name on the basis of its trademark registrations, it is unnecessary for the Panel to consider additional legitimate interests that the Respondent may have in the disputed domain name on the basis of an English dictionary meaning.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has rights or legitimate interests in respect of the disputed domain name. The Complainant has failed to satisfy the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Given the findings in Section 6.2B above, it is unnecessary for the Panel to consider the third element in paragraph 4(a) of the Policy.
D. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules, provides that if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. “Reverse Domain Name Hijacking” is defined in paragraph 1 of the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
The Respondent alleges that the Complainant has engaged in reverse domain name hijacking.
The Panel recalls that the Complainant has legal representation in this proceeding and that the Respondent through its legal representative provided a robust defence of its position in pre-Complaint correspondence. The Complainant was on notice that the Respondent held multiple trademark registrations for a mark identical to the operative element of the disputed domain name. The Complaint acknowledged that the Respondent had used the disputed domain name for four years in connection with an offering of goods. The Complaint acknowledged that the Respondent’s trademark registrations specified the class of goods sold on the website associated with the disputed domain name, which the Complainant’s prior trademark registrations do not. Faced with these obstacles, the Complaint relied heavily on its partially successful opposition to the Respondent’s trademark application in one jurisdiction. The Complainant also appears to have attached much importance to the dates on which the Parties’ respective websites went live.
The Complainant evidently feels aggrieved by the Respondent’s business but that is not sufficient grounds to file a Complaint under the Policy. The Complainant may have believed that it could succeed in its Complaint. Therefore, the Panel declines to find that the Complaint was brought in bad faith or that it constitutes an abuse of procedure.
For the foregoing reasons, the Complaint is denied.
This Decision is made without prejudice to any claims of trademark infringement that either Party may bring against the other before a court of competent jurisdiction.
Date: December 23, 2020