WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Visiomed Group v. Joris Wille, Familyware, BeWell Innovations NV
Case No. D2017-0344
1. The Parties
The Complainant is Visiomed Group of Paris, France, represented by Coblence & Associés, France.
The Respondent is Joris Wille, Familyware, BeWell Innovations NV of Ranst, Belgium, represented by Arnold and Siedsma, Belgium.
2. The Domain Name and Registrar
The disputed domain name <bewellinnovations.com> is registered with Ascio Technologies Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 21, 2017. On February 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 22, 2017, 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.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2017. The Response was filed with the Center on March 29, 2017.
The Center appointed Adam Taylor as the sole panelist in this matter on April 26, 2017. 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 supplies "connected medical products", which are self-managed by customers. The Complainant launched its first product, a non-contact thermometer called "ThermoFlash", in 2007.
In 2014 the Complainant started offering "smart connected devices", including thermometers, blood pressure monitors and handheld electrocardiogram machines, under the name "Bewell Connect".
The Complainant owns an European Union and a French trade mark for the term "bewell", nos. 11585809 and 133984141 respectively, both filed February 19, 2013, in classes 9, 10, 35, 38, 41, 42 and 44.
The Complainant also owns a number of registered international, French and European Union trade marks for the term "bewell" in conjunction with the following descriptive terms "coach", "connect", "check-up" and "xpert". The earliest filing date is February 19, 2013.
The disputed domain name was registered on March 1, 2016.
On August 30, 2016, the Respondent, having been incorporated in Belgium in 2010, changed its name from "Familyware" to "Bewell Innovations".
On October 28, 2016, the Respondent filed an application to cancel the Complainant's European Union trade mark no. 11585809 on the grounds of non-distinctiveness.
On February 1, 2017, the Complainant sent a legal letter to the Respondent in relation to the disputed domain name and to the Respondent's use of the name "BeWell Innovations". The Complainant sent chasers on February 8 and 17, 2017.
The Respondent responded on February 17, 2017, referring to its cancellation action, asserting that the Complainant's marks were invalid and claiming a legitimate interest in the disputed domain name.
As of February 20, 2017, there was a website at the disputed domain name branded "Well@Home. Effortless remote patient monitoring." The site promoted the Respondent's "health tele-monitoring smartphone application", whereby patient health data was made available to physicians via the Respondent's web platform. The Respondent described itself on the site as "Bewell Innovations".
5. Parties' Contentions
A summary of the Complainant's contentions is as follows:
The Complainant is a very well-known company. Its BEWELL trade marks enjoy a considerable worldwide reputation.
The disputed domain name is confusingly similar to the Complainant's trade mark. It differs only by the addition of the generic word "innovations" and the domain name suffix, neither of which is sufficient to avoid confusing similarity.
The Respondent has neither rights nor legitimate interests in respect of the disputed domain name.
The Complainant has not authorised the Respondent to use or exploit its trade mark or to register the disputed domain name.
To the Complainant's knowledge, the Respondent has never registered "Bewell" or "Bewell Innovations" as a trade mark and it possesses no common law rights to such terms.
As the Complainant has not authorised the Respondent's use of the disputed domain name, this cannot constitute a bona fide offering of goods or services. By using the disputed domain name in connection with connected medical technology, the Respondent's purpose can only have been to attract the Complainant's customers.
The Complainant's change of name in August 2016 does not constitute a legitimate interest as the Respondent's only purpose was to confuse the public into thinking that the website at the disputed domain name was an official website of the Complainant.
By not updating the WhoIs with the correct registrant name, the Respondent has breached section 4 of the registration agreement for the disputed domain name.
When registering the disputed domain name, the Respondent must have been aware of the success and reputation arising from the Complainant's BEWELL trade marks. Therefore, the disputed domain name was registered in bad faith.
The Respondent's change of name is further evidence of bad faith, whereby the Respondent is incrementally creating a likelihood of confusion with the Complainant.
By using the disputed domain name for a medical purpose, the Respondent has intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with the Complainant's mark. The disputed domain name is used to promote the Respondent's activity, which involves the supply of connected medical technology for tele-monitoring and patient self-testing. Because the Respondent is offering the same kinds of goods and services as the Respondent, consumers may believe that the Complainant has created a Belgian subsidiary to distribute the Complainant's products. UDRP panels have regularly found that use of domain name to offer similar or complementary products to those of a complainant is a sign of bad faith use.
The Complainant was unpleasantly surprised to discover that the Complainant had booked a stand beside it at "Paris Healthcare Week", a specialist medical event in Paris.
A summary of the Respondent's contentions is as follows:
The expression "be well" is a common English expression, meaning "be healthy" or "feel good" and it is not possible to monopolise this term, particularly in the field of healthcare.
The term is in common use by healthcare companies.
There are third party registered trade marks for "bewell" or "be well" which co-exist on the French and European Union trade mark registers.
Accordingly, the term is or has become non-distinctive. The addition of descriptive words by the Complainant does not render the mark distinctive.
The Complainant has no registration for "Bewell Innovations". The word "innovations" is visually, orally and conceptually dissimilar to the Complainant's marks as a whole.
If a word element of a trade mark is not inherently distinctive, UDRP panels place an onus on the complainant to provide compelling evidence of secondary meaning but no such evidence has been supplied in this case.
Given the non-distinctiveness of the term "be well", the addition of the term "innovations" is sufficient to render the Complainant's marks dissimilar to the disputed domain name.
The Complainant was well aware of the Respondent's common law rights in the term "Bewell Innovations" as the Complaint makes specific reference to the Respondent's change of name on August 30, 2016. The Respondent has been trading under the name "BeWell Innovations" since that date and before having notice of this dispute.
From November 2012, the Respondent began collaborating with a company called MSD in relation to a pilot project for the development of 20 self-testing health kiosks to be placed in 20 Belgian pharmacies. A contract was signed on January 20, 2013. Leaflets for pharmacies show that the kiosks were known as "BeWell Points". The Respondent registered the domain names <bewellpoint.be> and <bewellpoint.com> on December 13, 2013. The Respondent's own website as of December 30, 2013, refers to "BeWell point".
On December 5, 2014, the parties agreed to terminate what was described as "the 'Pharmacy Plus' project also known as the 'Be Well Point' project".
In mid-2013, the Respondent participated in a patient self-testing project with the University of Antwerp and around the end of 2013 the Respondent launched its "BeWell@home" software for self-testing.
The Respondent decided to register the disputed domain name in relation to the innovative "BeWell" products which the Respondent had been using since 2012. In line with this, the Respondent decided to rename its company as "BeWell Innovations" in August 2016. In October 2016, the Respondent renamed its products "WellPoint" and "Well@Home" to comply with its contract with MSD but retained its business / trading name.
Accordingly, the Respondent has been preparing to use the sign "BeWell" since October 2012, before the Complainant started using the name in 2014 and also before the Complainant had filed any trade mark applications for the term. The first "BeWell" kiosk was delivered on February 21, 2013, two days after the Complainant's first trade mark filings. Taking into account the installation and preparation works, the Respondent used the sign "BeWell" before becoming aware of any of the Complainant's trade mark registrations. The Respondent has used a name corresponding to the disputed domain name for a bona fide offering of goods or services.
The Respondent was unaware of the Complainant's business when it registered the disputed domain name, which was not intended to target any of the Complainant's trade mark rights. The disputed domain name does not correspond to any of the Complainant's registered trade marks. The Respondent registered the disputed domain name in line with its previous use of the name "BeWell".
The Respondent's website does not duplicate the look and feel of the Complainant's brand and prominently identifies itself with the Respondent's own products. So there is no likelihood of confusion.
The Respondent requests a finding of reverse domain name hijacking.
The Complainant omitted to mention that one of its trade marks was subject to a cancellation action, which had been referred to in the Respondent's letter of February 17, 2017.
The Complainant knew before filing the Complaint that the Respondent had legitimate rights to the disputed domain name arising from the Respondent's company name, yet the Complainant claimed that it was not aware of any common law rights.
The Complainant filed an extension of time in the cancellation proceedings in order to defer a decision by the registry until after this case.
The Complainant harassed the Respondent by threatening to initiate court proceedings but instead filed this case.
The Complainant is using this procedure to harass the Respondent and to replace a court proceeding, partly because the Respondent is attending the forthcoming medical fair to promote its "WellPoint" and "Well@Home" products.
6. Discussion and Findings
A. Identical or Confusingly Similar
As mentioned in section 4 above, the Complainant owns both an European Union and a French registered trade mark for the term "bewell".
The Respondent disputes the validity of these marks on the basis they reflect a common English expression, "be well", and are therefore non-distinctive. Indeed, the Respondent has applied to invalidate the Complainant's European Union trade mark. However, unless and until the registered trade marks are invalidated by a trade mark registry or court, the Panel proceeds on the assumption that they are valid, without any need for the Complainant to provide "compelling evidence of secondary meaning", as the Respondent suggests.
Paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") makes clear that the threshold test for confusing similarity under the UDRP involves a comparison between the trade mark and the disputed domain name to determine likelihood of Internet user confusion and that, in order to satisfy this test, the relevant trade mark would generally need to be recognisable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. See also paragraph 1.9 of WIPO Overview 2.0.
Here, the Complainant's trade mark BEWELL is plainly recognisable within the disputed domain name and, in the Panel's view, the term "innovations" is insufficient to prevent threshold confusing similarity, notwithstanding the Respondent's assertion to the contrary based on the alleged weakness of the Complainant's trade mark.
For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
It is unnecessary to consider this element in light of the Panel's conclusion below under the third element.
C. Registered and Used in Bad Faith
The Complainant first used the term "bewell" in 2014 in connection with the sale of patient self-testing smart devices under the name "Bewell Connect". The Complainant filed its first trade mark applications for that term on February 19, 2013.
On the face of it therefore, the registration of the disputed domain name in March 2016, and its use for a website promoting a patient self-testing smartphone application, appear suspicious.
However, the Respondent has produced evidence that its association with the term "bewell" goes back some years earlier. In particular, from about October 2012, the Respondent collaborated with a company called MSD in a pilot project to develop self-testing health kiosks in Belgian pharmacies, to be known as "BeWell Points". The documents do not establish the date when that name was actually adopted but the Respondent can be definitively associated with the name by no later than December 13, 2013, when the Respondent registered the domain names <bewellpoint.be> and <bewellpoint.com>. The Respondent's own website referred to "BeWell point" by December 30, 2013.
Importantly, this activity pre-dates the Complainant's own use of the name "Bewell" in 2014. While the Complainant had already applied for its trade mark by December 2013, the Complainant has provided no reason to think that the Respondent was likely to have been aware of the Complainant's intended use of the name. Indeed, the Complainant has provided virtually no evidence in support of its claim that its BEWELL trade marks have at any stage (including at the time of registration of the disputed domain name) enjoyed "a considerable worldwide reputation"; it has produced only two 2016 press cuttings in French, which the Panel has in any case disregarded as English is the language of the proceeding.
Furthermore, the Respondent has established that, as one might expect, the term "be well", and variations, is in relatively common use by a range of suppliers of medical goods and services.
In those circumstances, the Respondent's claim that it registered the disputed domain name independently of the Complainant appears credible to the Panel. Notwithstanding that the Respondent and the Complainant appear to operate in a very similar marketplace, the Panel concludes on balance, based on the evidence before it, that the Respondent's selection of the disputed domain name (and subsequent company name change) was motivated by, and in line with, its prior use of the term "bewell" and not by the Complainant's intended or actual use of the term.
The Respondent's failure to update the WhoIs records with its new company name does not assist the Complainant as there is nothing to indicate that this was anything other than an oversight.
For the above reasons, the Panel finds that the Complainant has failed to establish registration of the disputed domain name in bad faith. The Complainant has therefore failed to establish the third element under the Policy, which requires the Complainant to prove both registration and use in bad faith.
The Panel would add that the UDRP is a limited proceeding, with no "discovery" of documents, examination of witness etc. The Panel makes its best assessment based on the evidence before it. The outcome of this case does not of course prevent the Complainant from pursuing a court case for infringement of its intellectual property rights if it considers that it has grounds to do so.
D. Reverse Domain Name Hijacking ("RDNH")
The Respondent argues that the Complainant has been guilty of RDNH.
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". RDNH is defined under the Rules as "using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name".
In the Panel's view, none of the matters raised by the Respondent warrant a finding of RDNH in this case.
While it would have been preferable if the Complainant had mentioned the Respondent's pending application to cancel the Complainant's EU trade mark, the Panel does not consider that that proceeding is material to this case for reasons explained above.
Nor does the Panel consider that the Complainant sought to conceal the fact that the Respondent was trading under its new name. In fact, the Complainant argued that the adoption of this name was part of a campaign by the Respondent to target the Complainant's trade mark. If the Complainant had been right, then such trading activity would hardly have sufficed to generate legitimate rights in the disputed domain name. While the Panel has disagreed that the Respondent's change of name was illicit, the Panel does not consider that this was an unreasonable argument for the Complainant to put forward.
The Panel is not a position to assess whether the Complainant's extension of time in the cancellation action was designed to defer a decision by the registry until after this case, as the Respondent has claimed. Even if that had been the Complainant's motive, the Panel does not consider that it warrants a finding of RDNH.
Nor does the Panel consider it significant that the Complainant threatened court but filed this proceeding instead. While the Respondent may feel harassed as result, the Panel does not consider that such a change of direction signifies that this proceeding was brought in bad faith.
The one matter which gave the Panel pause for thought was the Complainant's failure to exhibit, or even mention, the Respondent's letter of February 17, 2017, in response to the Complainant's cease-and-desist letter. If that letter had explained the Respondent's prior connection with the name "Bewell" and yet the Complainant had ploughed on with this case regardless, suppressing the letter and failing to address the issues raised, that would most likely have led to a finding of RDNH on the basis that the Complainant would probably have known that it could not prove at least one the essential UDRP elements. But the Respondent has since produced the letter and, in fact, it does not give any detail about the Respondent's prior use of the name, merely asserting without detail that the Respondent possessed legitimate interests in the disputed domain name. In the Panel's view, while the Complainant should have produced the letter in order to provide a complete picture to the Panel, the letter did not give the Complainant reason to think that its case was likely to fail and its omission does not justify a finding of RDNH.
For the foregoing reasons, the Complaint is denied.
Date: May 10, 2017