WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Novartis AG v. Barry Shisgal

Case No. D2012-0420

1. The Parties

The Complainant is Novartis AG of Basel, Switzerland, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.

The Respondent is Barry Shisgal of Miami, Florida, United States of America.

2. The Domain Name and Registrar

The disputed domain names, <mineralice.com> (the “First Domain Name”) and <mineral-ice.com> (the “hyphenated Domain Name”) (together, the “Domain Names”), are registered with 1&1 Internet AG (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2012. On March 2, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the First Domain Name. On March 2, 2012, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2012. The Response was filed with the Center on March 9, 2012.

The Center appointed Tony Willoughby as the sole panelist in this matter on March 20, 2012. 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.

On March 20, 2012 the Complainant submitted a Supplemental Filing with the Center, together with an amended version of the original Complaint, the need for amendment stemming from the fact that on March 2, 2012 (the day following the filing of the original Complaint), the Respondent registered the hyphenated Domain Name. In addition to adding in the hyphenated Domain Name to this proceeding, the amended Complaint also responds to various matters raised in the Response.

On March 21, 2012, the Respondent emailed the Center objecting to the Complainant’s Supplemental Filing on the grounds that it constituted an irregular “unilateral communication” with the Panel, that it contains “numerous untrue and or misleading statements designed to bias the Panel” into favouring the Complainant and that there exists no procedure enabling the Respondent to respond to the Complainant’s Supplemental Filing. The Respondent asks the Center to dismiss the case and instruct the Complainant to file a new complaint to be put before a new panel. The Respondent’s expressed outrage is somewhat undermined by the fact that the Respondent was the first person to introduce the hyphenated Domain Name into the proceeding by including it with the First Domain Name in the heading of the Response.

On March 26, 2012, the Respondent filed a response to the Complainant’s Supplemental Filing.

On March 28, 2012, the Complainant’s representative filed application for suspension of the proceedings to enable the parties to discuss settlement. The Panel acceded to that request and granted a suspension until May 2, 2012.

On April 30, 2012, the Complainant’s representative requested that the proceedings be re-instated. The proceedings were re-instated as from May 2, 2012, and the date for a decision extended to May 12, 2012.

The Panel is in no doubt that it makes eminent sense for the Domain Names, which are substantially identical, to be dealt with together. The fact that the Respondent has responded in detail to the Complainant’s Supplemental Filing enables the Panel to admit into this administrative proceeding both parties’ further filings and to proceed to a decision. References to the Complaint are, where appropriate, references to the amended Complaint.

4. Factual Background

The Complainant is an internationally-known pharmaceutical company. One of its products is an analgesic mentholated gel, which has been sold in the United States of America for over 30 years under the brand name “Mineral Ice”. It is not in dispute that the Complainant’s sales of (and expenditure on advertising) “Mineral Ice” in the United States of America has been substantial.

The Complainant owns two United States (U.S.) registrations for its MINERAL ICE mark, both based on first use in 1979: U.S. Registration No. 1,575,972, issued in 1990 for the mark MINERAL ICE (stylized) for “pharmaceuticals, namely analgesic menthol gels for external application to the human body” in International Class 5; and U.S. Registration No. 3,958,823, issued in 2011 for the mark MINERAL ICE for “mentholated analgesic gel” in International Class 5.

The First Domain Name was registered on January 16, 2002. The date the Respondent first acquired the First Domain Name is not known to the Panel. The Registrar failed to provide that information when asked to do so by the Center. The Complainant has produced evidence to show that in September 2005 it was owned by another entity, Lakeside Provisions, which was a former business of the Respondent. However, somewhat puzzlingly, one of the Complainant’s exhibits (Exhibit O) is a print-up from the Registrar’s website dated “8/12/2011” stating “THIS DOMAIN HAS JUST BEEN REGISTERED FOR ONE OF OUR CUSTOMERS”. Nonetheless, for the purposes of this Decision, the Panel proposes to follow the lead of the parties and treat the First Domain Name as having been held at all material times by the Respondent or a business of the Respondent.

At one time (2003 to 2005) the Domain Name was connected to the Lakeside Provisions website which appeared to be offering for sale drinks and supplements described as “health provisions”. One of the products illustrated was “Mineral Ice”. The Respondent asserts that this was merely a draft site and that no sales (apart from sales of a pasta) were in fact made. The pages exhibited as Exhibit K to the Complaint bear a copyright notice reading “© 2000-2001 Lakeside Provisions, Inc. All rights reserved”.

On September 2, 2011, the Complainant’s representative wrote to the Respondent drawing the latter’s attention to the Complainant’s rights and seeking inter alia transfer of the First Domain Name.

On September 3, 2011, the Respondent emailed the Complainant referring to receipt of the letter from the Complainant’s representative and claiming that (a) he registered the First Domain Name in 2002 and (b) had never used it in any way that might have infringed the Complainant’s registered trade marks. He went on to say that he would not surrender that Domain Name and intended to use it and the brand name “Mineral Ice” in a manner wholly unrelated to the Complainant’s trade marks.

On March 2, 2012, the Respondent registered the hyphenated Domain Name, <mineral-ice.com>.

On March 6, 2012, the Respondent filed application with the United States Patent and Trade Mark Office for registration of the mark MINERAL ICE in International class 32 for “Mineral and aerated water”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Names are identical or confusingly similar to the Complainant’s MINERAL ICE trade mark.

The Complainant further contends that the Respondent has no rights or legitimate interest in respect of the Domain Names.

Finally, the Complainant contends that the Respondent registered and is using the Domain Names in bad faith.

The Complainant contends that the Respondent registered the Domain Names with knowledge of the Complainant’s trade mark rights and with the intention of either selling the Domain Names to the Complainant or another interested party at a profit or with a view to exploiting them commercially on the back of the goodwill associated with the Complainant’s trade marks. The facts and matters upon which the Complainant relies in support of these contentions are dealt with in section 6 below.

B. Respondent

The Respondent denies the Complainant’s contentions.

As to the claim that the Domain Names are identical or confusingly similar to the Complainant’s trade marks, the Respondent does not deny the existence of the Complainant’s trade mark rights, but denies that the protection afforded by those rights extends to the soft drink, which the Respondent is planning to sell under the “Mineral Ice” name.

The Respondent contends that he registered the Domain Names as part and parcel of his plan to use the “Mineral Ice” name for his planned soft drink and produces various documents, which he put to The Coca-Cola Company and others in 2001/2002, featuring illustrations of inter alia a “Mineral Ice” bottle.

The Respondent states that he has not yet used the Domain Names for the purpose for which he registered them because he hasn’t yet been able to raise the finance.

The Respondent states that he registered the hyphenated Domain Name on the day (or the day following) the Complaint, because he was concerned that his plans for the “Mineral Ice” name would now become public and he wished to strengthen protection of the name against third parties, the hyphenated version of the name being substantially identical to the unhyphenated version. For the same reason he applied for trade mark protection.

For these reasons the Respondent contends that he has rights or legitimate interests in respect of the Domain Names and has not registered and is not using the Domain Names in bad faith.

The Respondent contends that the true position was clear to the Complainant prior to launch of the Complaint and that the Complainant is guilty of Reverse Domain Name Hijacking.

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:

(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii) The Domain Names have been registered and are being used in bad faith.

If the Complaint fails, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:

“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 Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.

B. Identical or Confusingly Similar

The Domain Names each feature the words “mineral” and “ice” along with the generic “.com” domain suffix. The hyphenated Domain Name also incorporates a hyphen between “mineral” and “ice”.

In assessing identity and confusing similarity for the purposes of paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore hyphens and domain suffixes in the Domain Names and it is also permissible for the Panel to ignore any spaces in the Complainant’s trade mark.

The Respondent argues that the purpose for which the Respondent has all along proposed to use the “Mineral Ice” name is outwith the scope of the Complainant’s trade mark registrations and that in any event there is no risk of any confusion. While that may have a part to play in the Panel’s consideration of the next two elements of the Policy, it is irrelevant to the Panel’s assessment under this, the first element, which merely involves a domain name/trade mark comparison.

The Panel finds that the Domain Names are identical to the MINERAL ICE trade mark in which the Complainant has rights.

C. Rights or Legitimate Interests

In light of the Panel’s finding under section D below, it is unnecessary for the Panel to address this issue.

D. Registered and Used in Bad Faith

The Complainant’s allegations as to bad faith on the part of the Respondent are based to varying degrees upon 10 different facts/matters. On the basis of its submissions on these topics, the Complainant asserts both that the Respondent registered the Domain Names with a view to selling them at a profit (paragraph 4(b)(i) of the Policy) and that “The Respondent’s bad faith registration and use under Paragraph 4(b)(iv) of the Policy could hardly be more clear.”

The Panel will now address each of these topics in turn:

1. The Complainant’s MINERAL ICE trade mark will have been well-known to the Respondent when he registered the Domain Names.

The Respondent has not denied knowledge of the Complainant’s “Mineral Ice” product at the time when he registered the First Domain Name and the Panel believes it very likely that he was aware of the Complainant’s product at that time. However, knowledge of a prior trade mark used in a different field will not necessarily, of itself, amount to evidence of bad faith. Are the parties’ products in different fields?

2. The product for which the Respondent proposes to use the “Mineral Ice” name is, like the Complainant’s “Mineral Ice” product, a “consumer health product”.

The Panel accepts that both the Complainant’s product and the Respondent’s proposed product fall within the broad description “consumer health product”. However, in the view of the Panel the two products are towards the opposite ends of the category, the former being an analgesic gel to be applied externally and the latter being a health drink to be ingested.

The Complainant asserts that the Respondent’s plans to launch his mineral water under the “Mineral Ice” name and his registration of the Domain Names constitutes trade mark infringement. Such an issue can only be resolved by a United States court. It is not within the Panel’s remit (still less his competence) to address that issue here. The Panel is solely concerned with the issue of bad faith.

Is it reasonable to suppose that the Respondent, with knowledge of the Complainant’s “Mineral Ice” pain-killing gel, could have selected that brand name for his health drink, honestly and reasonably believing that there was no serious risk of him violating the Complainant’s rights?

The Panel believes that the question should be answered in the affirmative. At all events, for the question to be answered in the negative the Panel would require considerably more supporting evidence of bad faith than is currently before the Panel. In coming to that conclusion, the Panel observes that there is nothing before him to suggest that the Complainant’s brand is anywhere near the level of recognition and distinctiveness of brands such as COCA-COLA and KODAK. Moreover, it is not unheard of for differing parties to own identical trade marks in broadly related fields (e.g. BLACK LABEL whisky, Champagne and beer, all being alcoholic drinks sold in the same or similar outlets).

3. On the Respondent’s evidence he has made no active use of the First Domain Name in the nearly 10 years that he (or his business) has held it.

There is no dispute between the parties that the Respondent has never used the First Domain Name to connect to an active trading site. The Complainant regards this as evidence of the fact that the Respondent never had any intention of making serious use of it and registered it with a view to exploiting it for profit on the back of the fame of the Complainant’s brand. The Respondent contends that he registered it solely for the purpose of his “Mineral Ice” health drink, which in the event never saw the light of day, because he was unable to raise funding for the project. He says that he now has plans for the product on a more modest scale. He also vehemently objects to the Complainant’s assertions that he has not actively used the First Domain Name.

The Complainant rightly criticizes the Respondent for his lack of specificity in relation to his evidence in support of his contentions. However, belatedly, in his response to the Complainant’s Supplemental Filing he has produced some emails pre-dating registration of the First Domain Name apparently indicating a genuine interest in launching a range of health drinks. They include emails seeking information on bottlers and emails seeking investment. One of the emails, an email exchange with the “Minute Maid” division of The Coca-Cola Company, includes illustrations of mock-ups of the beverages and other products the Respondent is proposing to introduce through his company, Lakeside Provisions. One of the products illustrated is “Mineral Ice”.

While the matter is not entirely free from doubt, the Panel finds the Respondent’s explanation to be a plausible one.

4. Nor has the Respondent ever marketed any product under the “Mineral Ice” name.

This is true, but see point 3. above.

5. The Respondent’s registration of the hyphenated Domain Name and the subsequent application for trade mark registration of the “Mineral Ice” name.

The Respondent registered the hyphenated Domain Name immediately upon receipt of the original Complaint and applied for registration of MINERAL ICE as a trade mark for “mineral and aerated water” a few days later. The Complainant regards it as suspicious that the Respondent registered the hyphenated Domain Name, since the Respondent’s purported plan is to use the name in unhyphenated form. The Complainant regards the timing of all this as being indicative of bad faith on the part of the Respondent, seeking to establish non-existent “rights or legitimate interests” solely to defeat the Complaint.

The Respondent’s explanation for registering the hyphenated form of the Domain Name is simply that if one has a brand name comprising two words, inserting a hyphen between those words is a common practice when adopting domain names. The Respondent contends that in so doing he is merely strengthening his ambit of protection of the unhyphenated name. He states that he is not seeking to use this post-Complaint activity to strengthen his position in this proceeding and has made no reference to it in his submissions for that purpose. His explanation for the timing of all this is that he was concerned that the Complaint would put the dispute into the public domain and he did not want third parties to seek to take advantage of advance notice of his plans.

What the Respondent has not explained is his reason for not having sought trade mark protection for “his” brand before now. It may be that this dispute, which only arose for the first time some 9 years after he registered the First Domain Name, has provoked him to speed up his plans. The Panel simply does not know.

6. The Respondent’s inconsistency over the planned use of the hyphen.

Assuming for the moment that the Respondent’s plans to use “Mineral Ice” have been genuine plans, it is plain from what the Respondent has put before the Panel that he has never intended to use it in unhyphenated form. The depiction of a “Mineral Ice” bottle of mineral water (see point 3. above) is labeled “Mineral Ice”. However, the Panel accepts that it is a sensible, prudent course to take to register hyphenated forms of such names as domain names to prevent others getting too close.

The Panel does not see the inconsistencies to which the Complainant draws attention as being evidence of bad faith.

7. The Respondent’s assertion of Reverse Domain Name Hijacking.

In support of his allegation of reverse domain name hijacking, the Respondent points to the financial muscle of the Complainant as compared to his limited means. The Complainant contends that in representing himself to be “an entrepreneur with limited funds”, thereby seeking to elicit sympathy from the Panel, yet at the same time finding sufficient funds to purchase a domain name and file a trade mark application, the Respondent is being in some way duplicitous, thereby providing “further support for a finding of bad faith registration and use of the [Domain Names].”

While the Panel dismisses the reverse domain name hijacking claim (see below), the Panel is not persuaded that the making of the claim or anything said in support of the claim is evidence of bad faith registration and use of the Domain Names.

8. The Respondent’s characterization in the Response of his MINERAL ICE trade mark application as “Other Legal Proceedings”.

It is true that the Respondent in his Response identifies his trade mark application as a legal proceeding. The Complainant’s case on this is set out in a footnote to its Supplemental Filing, which reads:

“Paragraph 5(b)(vi) of the UDRP Rules, cited by the Respondent, provides only for disclosure of ‘any other legal proceedings that have been commenced or terminated in connection with or relating to any of the domain name(s) that are the subject of the complaint.’ There are no proceedings pending with respect to Respondent’s trademark application, which was only filed on March 6, 2012, two days before the Response was submitted.”

If the Respondent had sought to make anything out of the existence of a concurrent proceeding, the Panel could have understood where the Complainant was coming from. However, there is nothing before the Panel of that kind. Perhaps, the Respondent was merely seeking to ensure that he made full disclosure.

9. The provision on the homepage connected to the First Domain Name and posted by the Registrar of a link for visitors to pursue acquisition of that Domain Name.

The Complainant acknowledges that this page was a page posted by the Registrar, not the Respondent, albeit within the control of the Respondent. However, the link is not specific to the First Domain Name. The accompanying text is in general terms and addressed to those who are interested in purchasing a domain name, which is already registered. There is nothing before the Panel to suggest that the Respondent ever expressed a willingness to sell the Domain Names or either of them. The Panel agrees with the Respondent that the manner in which this allegation was expressed was unjustified. The Panel is surprised that this allegation was made.

10. The Respondent’s omission of the words “or any other interested party” when quoting from paragraph 37 of the Complaint and denying a passage alleging that the Respondent offered to sell the First Domain Name “to Complainant or any other interested party”.

The Complainant’s contention appears to be that in omitting the words “or any other interested party” from his denial, the Respondent was in some way admitting that his plan was to sell the First Domain Name to another interested party. This was, in the view of the Panel, a particularly surprising allegation to have made, given the fact that paragraph C2 of the Response reads: “Respondent never intended nor attempted to sell, rent or transfer the domains to any party for any reason.” At all events, the Panel is not satisfied that this is sufficient to support a finding of bad faith registration and use under the Policy.

Much of the Complainant’s contentions as to the Respondent’s bad faith necessarily relate to his behaviour following registration of the First Domain Name. The Complainant seeks to draw adverse inferences from that post-registration behaviour.

However, there is actual evidence from the Respondent in support of his contention as to his good faith intent at time of registration of the First Domain Name, namely the documentation referred to in point 3. above, one of which, featuring an illustration of the Respondent’s proposed “Mineral Ice” product, bears a copyright notice reading “© 2000-2001 Lakeside Provisions, Inc. All rights reserved”.

One way of dealing with that evidence would be to adduce evidence that the documentation was forged, but there is nothing before the Panel entitling the Panel to make any such finding.

Another way of dealing with it would be to adduce evidence suggesting that while the documentation was not forged, it was all part and parcel of a sophisticated scam designed to mislead the Complainant and others into believing that the Respondent had a genuine business plan for his “Mineral Ice” product, when in fact he had no such plan and his sole objective was to exploit the First Domain Name on the back of the fame of the Complainant’s brand, probably by sale. The only evidence that the Complainant has adduced along those lines has been the failure of the Respondent to make any use of the “Mineral Ice” name as planned and the Registrar’s webpage suggesting that the Domain Names might be for sale. For the reasons given in points 3. and 9. above, the Panel is unable to conclude on the evidence before him that the pre-registration documentation was anything other than what it purports to be, namely a genuine plan to market a “Mineral Ice” health drink.

In the Panel’s assessment this leaves only one possible route to a finding of bad faith registration and use under paragraph 4(a)(iii) of the Policy, namely that the Respondent’s plan, while genuine in the sense that the Respondent’s intentions were bona fide, was so obviously likely to lead to deception of Internet users to the commercial benefit of the Respondent that it would be unconscionable for the Panel to come to any other conclusion. Such a finding would involve deeming bad faith. While it may be that there are circumstances where such a finding would be appropriate, for the reasons given in point 2. above, the Panel is not prepared to make such a finding here.

The Panel is not persuaded that the Domain Names were registered and are being used in bad faith.

D. Reverse Domain Name Hijacking

The Respondent bases his claim on the fact that the Complainant knew when it launched this Complaint that the Respondent had at one time (between 2003 and 2005) a “Mineral Ice” health drink. The Complainant, in its original Complaint, did not assert that the offering for sale in 2003-2005 of the Respondent’s brand was a pretence of any kind. Indeed, the claim at that stage (paragraph 21 of the original Complaint) was that it was a commercial exercise in violation of the Complainant’s trade mark rights.

The document, which the Complainant exhibited in support of this contention, bore a copyright notice dating back to 2000-2001. The First Domain Name was registered in September 2002.

Subsequently, it emerged that in fact no sales of the Respondent’s product had ever been made. Indeed, the product has never got beyond the planning stage. However, the Respondent contends that the Complainant should have known when filing the Complaint that it had no chance of success, given what it knew of the Respondent’s product.

The Panel has considered the matter in some detail and has concluded that while the Complaint has failed and while some of the allegations leveled at the Respondent should in the Panel’s view never have been made (see, for example, points 9. and 10. in section C above), there are enough areas of doubt surrounding the Respondent’s plans to have warranted the making of a complaint and much of the hard evidence emanating from the Respondent came very late in the day.

The Panel is of the view that the Complainant’s aim was primarily to recover the Domain Names, which it believed were registered with the Complainant’s trade mark in mind, and not to harass the Respondent.

7. Decision

For all the foregoing reasons, the Complaint is denied and the allegation of reverse domain name hijacking is dismissed.

Tony Willoughby
Sole Panelist
Dated: May 9, 2012