WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Physio Control, Inc. v. Dynamed Pty Ltd, Phillip James Brumby
Case No. DAU2016-0018
1. The Parties
The Complainant is Physio Control, Inc. of Redmond, Washington, United States of America, represented by Williams + Hughes, Australia.
The Respondent is Dynamed Pty Ltd, Phillip James Brumby of Westbury, Tasmania, Australia, self-represented.
2. The Domain Name and Registrar
The disputed domain name <lifepakdefibrillators.com.au> is registered with NameScout Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2016. On April 13, 2016, the Center transmitted by email to NameScout Corp. a request for registrar verification in connection with the disputed domain name. On April 14, 2016, NameScout Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on April 25, 2016. In accordance with the Rules, paragraph 5(a), the due date for the Response was May 15, 2016. On May 15, the Respondent filed a request for an extension of the due date for the Response. The Center noted that an automatic extension is not applicable under the Policy, and that, if the Respondent filed a late Response, it would be at the sole discretion of the Panel whether to consider it. The Respondent filed a late Response on May 19, 2016.
The Center appointed James A. Barker as the sole panelist in this matter on May 28, 2016. 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 Complainant is a company incorporated in the United States of America. The Complainant designs and manufactures medical devices, particularly focusing on external defibrillators and monitors and emergency medical response products and services.
The Complainant is the registered owner of Australian trademarks for LIFEPAK and LIFEPAK EXPRESS. The first of these marks were registered with effect from October 1984. The Complainant, and those authorized by the Complainant, have registered a number of domain names incorporating the Complainant’s mark. The Complainant is also the owner of other registered trademarks around the world.
The Complainant was established in 1955. The Complainant says that it pioneered defibrillation technology in the late 1950s.
Since 2002, the Respondent sells emergency, medical and rescue products as both a reseller and retailer. The CEO of the Respondent (Phillip Brumby) has used the Complainant’s defibrillators as an ambulance paramedic since 1979, and since leaving the Tasmanian Ambulance Service in 1997 has worked on an occasional basis promoting sales of the Complainant’s products in Tasmania and Victoria.
The disputed domain name has been registered by the Respondent since December 8, 2011 (as confirmed by the Registrar).
The Panel conducted its own limited research and notes that the home page of the website at the disputed domain name includes the heading “Lifepak Defibrillators”. Under that heading, there is a photograph of one of the defibrillators being used on a prostrate man, under the heading “DEFIBRILLATORS.COM.AU”, and with a banner underneath the photo including links to various of the Complainant’s named products. The website appears to include lists and descriptions of various of the Complainant’s products, as well as other medical products, which appear to be from other manufacturers than the Complainant (although the Complainant itself provides no evidence on this point).
Additionally, neither the Complaint nor the Response gave any evidence of this other website <defibrillators.com.au>. At the date of this decision, that website appears to be generally the same as the website at the disputed domain name, although it does not include the prefatory heading “Lifepak Defibrillators” and also includes the statement “Defibrillators.com.au sells Lifepak® and LifePoint Defibrillators and monitors. We are not Physio Control”. Otherwise that website is prominently directed toward offering the Complainant’s products for sale.
5. Parties’ Contentions
In addition to pointing to its registered rights, the Complainant says that it has common law rights in its LIFEPAK marks as a result of its extensive use of them.
The Complainant says that the disputed domain name is identical or confusingly similar to its LIFEPAK mark. The addition of the word “defibrillators” is insufficient to differentiate the disputed domain name from the Complainant’s mark. That term is directly descriptive of the core offering of the Complainant’s goods, and works to strengthen the impression that the disputed domain name is connected to the Complainant. The Complainant cites previous panel decisions which ruled that the addition of descriptive terms did not sufficiently differentiate disputed domain names from complainants’ registered marks. The Complainant also points to previous panel decisions which found that the entire incorporation of a complainant’s trademark in a disputed domain name was sufficient to make a finding of confusing similarity.
Secondly, the Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant says that the Respondent has obtained the Complainant’s products indirectly, through the Complainant’s authorized distributors, and has offered them for sale to consumers. While the Complainant is not adverse to the Respondent selling its products, the Respondent’s use of the Complainant’s mark is such that it is falsely holding itself out as the Complainant.
The Respondent is not commonly known by the disputed domain name, and so may not claim any rights established by common usage. The Respondent’s name is Dynamed Pty Ltd. The name of the Respondent is entirely unrelated to the disputed domain name. The Respondent has no licence to use the Complainant’s marks or hold itself out as affiliated with, sponsored or endorsed by the Complainant.
The Complainant says that its marks have no value apart from their association with the Complainant. The Respondent’s continued use of the disputed domain name is an attempt to take unfair advantage of the Complainant’s reputation and goodwill.
In August 2015, the Complainant sent a “cease and desist” letter to the Respondent. (The Complainant does not indicate whether the Respondent replied to that letter.)
Thirdly, the Complainant says that the disputed domain name was registered and has been used in bad faith. The disputed domain name is obviously connected with the Complainant and the Respondent has no connection with the Complainant other than as an arm’s length reseller of its products. The Respondent’s registration and use of the disputed domain name creates a false, dishonest and illegal association with the Complainant. Further, in July 2015, the Respondent registered the business name “Lifepak Defibrillators”. The registration of that name in conjunction with the registration and use of the disputed domain name indicates the Respondent’s bad faith intention to use the Complainant’s marks.
The Respondent says that it has sold the Complainant’s Lifepak Defibrillators as a reseller of “Physio Control Australia”, which the Respondent says was “a division of Medtronic Australia when Medtronic owned the Lifepak brand”. The Respondent further states that, when Physio Control was sold by Medtronic Australia the Respondent continued selling Lifepak Debfibrillators sourced from Physio Control resellers. For all of the period from 2002 to late 2015 there has been a relationship based on good faith between the distributors of Lifepak Defibrillators in Australia and the Respondent. The Respondent provides evidence of emails it says demonstrates the good faith relationship with the Complainant.
The Respondent says that its promotion of the Complainant’s Lifepak Defibrillators became more prominent after it acquired the domain name <defibrillators.com.au>, which for most of the time has been exclusively used for the promotion of Lifepak Defibrillators. At the same time as registering that domain name, “Lifepak Defibrillator domains were registered [presumably by the Respondent] in a number of jurisdictions”. The Respondent says that, for all but the last 10 months, the relationship between the Respondent and Physio Control has been based on cooperation and reasonableness. The relationship only started to falter when the CEO of Physio Control Australia in a private meeting with the Respondent said that the Lifepak Defibrillators Facebook page and <lifepakdefibrillators.net> domain name that the Respondent operated, be taken down. The Respondent refused.
The Respondent says that it has never represented itself as the Physio Control Corporation. It did for a period have the icon “Physio Control authorized reseller” on its quotations, until it was asked to remove that icon from a number of quotes by the CEO of Physio Control Australia.
The Respondent states that it is rightfully entitled to own and operate the disputed domain name, as all defibrillators it sells are genuine Lifepak products.
In relation to the three elements of the Policy, the Respondent firstly denies that the disputed domain name is confusingly similar to the Complainant’s mark, and says that the addition of the word “defibrillators” is sufficient to avoid confusion.
The Respondent refers to “the case of Pressure guage maker ITT v Dougles Nicoll. (The Response includes no clear citation for this case, however the Panel has treated it as a reference to ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc., WIPO Case No. D2008-0936 (“ITT Manufacturing Enterprises, Inc.”). The Panel has referred to this case further below.)
Secondly, the Respondent says that it has rights or legitimate interests in the disputed domain name. The Respondent says that it has had a long term commercial relationship since 2006 with the national distributors of the Complainant’s Lifepak Defibrillators. The Respondent states that it is rightfully entitled to own and operate the disputed domain name as it is used exclusively to sell genuine Lifepak products. The Respondent refers to other cases under the UDRP, although the Panel has not further discussed them in this decision, as the Panel does not see the principles in those cases as relevant to the issues at hand.
Thirdly, the Respondent denies that it has registered or used the disputed domain name in bad faith. The Respondent says that “Australia has not yet committed itself to a definitive principle of good faith in contract law. Unlike the legal systems in Europe or the United States, Australia does not demand an explicit legal prerequisite of good faith to form a contract. (John Adams, Roger Brownsword, Key Issues in Contract (1st ed, 1995) p.198)”. The Respondent refers to some other apparent authorities in relation to the formation of contracts, and says that it has established the principles which constitute good faith as regards its previous relationship with Medtronic and Physio Control as distributors of Lifepak Defibrillators since 2006. The Respondent denies that any of the illustrative circumstances of bad faith set out in paragraph 4(b) of the Policy are present in this case.
6. Discussion and Findings
For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a name, 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 was registered in bad faith or subsequently used in bad faith.
The onus is on the Complainant to establish each of the above circumstances. The Panel notes that the Policy is, with some exceptions discussed below, substantially similar to the UDRP and, as such, the Panel has drawn on authority concerning the UDRP, in relation to similar terms of the Policy.
The Panel also notes that, in the interests of fairness to the Respondent, it has accepted the Response, although filed late.
A. Identical or Confusingly Similar
There is no dispute that the Complainant has rights in its LIFEPAK mark, and uses that mark in relation to its defibrillator products.
The Panel also finds that the disputed domain name is confusingly similar to the Complainant’s mark. It is well-established under the Policy that the entire incorporation of mark in a domain name is generally sufficient, on its own, for a finding of confusing similarity.
The addition of the term “defibrillators” only serves to reinforce that confusion. The Respondent’s claim to the contrary is without merit, and is contrary to past panel decisions on this particular issue. As noted in paragraph 1.9 of the auDA Overview of Panel Views on Selected auDRP Questions First Edition, (“auDA auDRP Overview 1.0”):
“The addition of merely generic, descriptive, or geographical wording to a trademark or name in a domain name would normally be insufficient, of itself, to avoid a finding of confusing similarity under the first element of the auDRP. In such a situation, panels have usually found the incorporated trademark or name to constitute the dominant or principal component of the domain name. However, in certain cases panels have come to a different conclusion, where a trademark or name (especially one that is of a descriptive nature) is incorporated or subsumed within other words or textual elements of the domain name so that the trademark or name is not clearly the dominant component of the domain name.”
This is not a case where the Complainant’s mark is subsumed within other words or textual elements of the disputed domain name. The Complainant’s mark is clearly distinguishable in the disputed domain name. To anyone familiar with the Complainant, the mark also has a close association with the descriptive term “defibrillators” which is appended to it. The Respondent no doubt chose that term for this very reason.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
In essence, the Respondent claims that it has rights or legitimate interests because it has used the disputed domain name as a reseller of the Complainant’s products, and has operated in good faith in relation to Physio Control Australia, from which it obtained the Complainant’s products.
The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name because the Respondent was not authorized to use the Complainant’s mark. On the Respondent’s own evidence, the Respondent was asked by the CEO of Physio Control Australia (apparently in 2015) to cease using another domain name incorporating the Complainant’s mark. The Respondent provided no evidence that it was authorized to use the Complainant’s mark in the disputed domain name, or that this registration itself was sanctioned by either the Complainant or one of its authorized resellers. The Complainant also sent a “cease and desist” letter to the Respondent in August 2015.
It is common ground that the Respondent is a reseller of the Complainant’s products. The Respondent is not authorized directly by the Complainant to sell its products, although the Complaint notes that the Complainant is not adverse to the Respondent selling its products.
Under the Policy, the majority panel position on the issue of whether a reseller might have a right or legitimate interest in registering a domain name which incorporates a trademark is set out in paragraph 2.2. of the auDA auDRP Overview 1.0 which states that:
“The more recent decisions of auDRP panels have adopted the principles set out in the UDRP case Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (the “Oki Data principles”) – although at least one panel has expressed doubt that these principles should be accepted verbatim, especially the requirement that there be disclosure of the registrant’s relationship with the trademark owner… These principles have been applied by auDRP panels to a reseller that is unauthorised, as well as to one that is authorised, to use the trademark by the trademark owner.”
The Oki Data principles are that the use of a manufacturer’s trademark as a domain name, by a dealer or reseller, may be regarded as a bona fide offering of goods or services within the meaning of paragraph 4(c)(iii) of the Policy if the following conditions are satisfied:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and
- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
These principles have been referred to as “minimum” requirements in other decisions under the Policy: see e.g.Terra Plana International Ltd. v. The Summer House Australia Pty Ltd / Tanya Greenwood, WIPO Case No. DAU2012-0025. That is, there may be other factors that are relevant.
As far as the Panel can determine, the Respondent has not made out the second and third of the “minimum” Oki Data principles. While the Respondent states that all of the defibrillators that it sells are genuine products of the Complainant, as far as the Panel can tell, the Respondent’s website appears to include other products. (The Panel has made its best judgment on the basis of evidence in the case file and its own visit to the website at the disputed domain name, as neither the Complainant nor the Respondent explicitly addressed this issue.)
Neither does the Respondent’s website appear to accurately disclose its relationship with the trademark owner. The Respondent’s company name appears nowhere on the Respondent’s homepage. Rather, the website appears under the heading “Lifepak Defibrillators”. The website’s homepage does not appear to include any reference to the nature of the Respondent or its relationship with the Complainant.
As noted above, the Respondent refers for support to ITT Manufacturing Enterprises, Inc. That case was one where the panel considered the Oki Data principles and found against the complainant in the circumstances of that case. The panel in that case found that the then respondents offered devices that were originally sold and labeled as those of the complainant − ITT or ITT Barton products − and had done so since 2000, before the domain names then in dispute were registered. The respondents’ website accurately disclosed in its heading the name of the company offering those products (DPI) and included a home-page disclaimer of affiliation with the then complainants. The website also included a more detailed explanation, on a page linked from the home page, of how the respondents purchased and stocked “new surplus” ITT Barton devices for resale. The respondents had not attempted to “corner the market” in relevant domain names. The complainants had scores of domain names incorporating the ITT mark, as well as the domain name <itt.com>. Moreover, the complainants themselves had not evinced an interest in perpetuating the “ITT Barton” name or product lines.
The ITT Manufacturing Enterprises, Inc. case appears relevantly different from this one. In that case, the respondent was able to satisfy the panel on the second and third of the Oki Data principles. But this is not the case here. Further, the Complainant directly, through its “cease and desist” letter, and through its Australian arm that dealt with the Respondent, had explicitly asked the Respondent to stop using its trademark in domain names.
For completeness, the Panel also notes that Note 2 to the Policy, states that “For the purposes of this policy, auDA has determined that ‘rights or legitimate interests in respect of the domain name’ are not established merely by a registrar’s determination that the respondent satisfied the relevant eligibility criteria for the domain name at the time of registration.” To the extent that the Respondent’s registration of the business name “Lifepak Defibrillators” in 2015 was a basis for meeting the eligibility criteria, it is not relevant.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
C. Registered or Subsequently Used in Bad Faith
The Policy provides that the Complainant can establish its case by showing that the disputed domain name was registered or used in bad faith.
The disputed domain name in this case was registered in 2011, and the Panel considers that the evidence is equivocal as to whether the disputed domain name was registered in bad faith. However, the Panel considers that there is evidence that the disputed domain name has at least been used in bad faith, for the following reasons.
Firstly, there is no evidence that the Respondent was authorized, explicitly or implicitly, to use the Complainant’s mark in a domain name. While the Respondent provides some evidence of its relationship with the Complainant (primarily emails which merely sought to purchase products), the Respondent gave no evidence that it was authorized to use the disputed domain name, or that the Complainant was aware of this use, for any substantial period before the filing of the Complaint.
Secondly, there is evidence that the Complainant explicitly prohibited the Respondent from using its mark, in at least its “cease and desist” letter sent in 2015.
Thirdly, paragraph 4(b)(iv) of the Policy states that evidence of the registration and use of the domain name in bad faith includes the respondent using the domain name to intentionally attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant’s mark or name as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service thereon.
As noted in the auDA auDRP Overview 1.0, where a domain name is identical or confusingly similar to a trademark or name in which the complainant has rights, auDRP panels typically find that use of the domain name by the respondent to resolve to a website – whether of the respondent or some third party – is use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. The Respondent has registered such a domain name in this case, and intentionally did so to attract Internet users to its website.
The Respondent’s references to some principles on the formation of contracts and good faith are not relevant to this issue. The only contract relevant to these proceedings is between the Respondent and the Registrar, by which the Policy is incorporated. Whether there is bad faith for the purpose of the Policy can only be determined in accordance with the Policy and the Rules, elaborated by previous panel decisions on this issue.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(iii) of the Policy.
For all 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, <lifepakdefibrillators.com.au>, be transferred to the Complainant.
James A. Barker
Date: June 13, 2016