DECISION

 

Picoliter Inc. v. Andrew Sauter

Claim Number: FA0208000122205

 

PARTIES

Complainant is Picoliter Inc., Mountain View, CA (“Complainant”) represented by Karen Canaan, of Reed & Associates.  Respondent is Andrew Sauter, Las Vegas, NV (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <picoliter.com>, registered with Register.com.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 21, 2002; the Forum received a hard copy of the Complaint on August 23, 2002.

 

On August 22, 2002, Register.com confirmed by e-mail to the Forum that the domain name <picoliter.com> is registered with Register.com and that the Respondent is the current registrant of the name.  Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On August 27, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 16, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@picoliter.com by e-mail.

 

A timely Response was received and determined to be complete on September 16, 2002.

 

On October 2, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant (Picoliter Inc.), established business on May 4, 2000, by filing articles of incorporation in the State of Delaware.

Complainant is in the business of microarrays and automation equipment relating to genetic research and analysis.

Complainant filed for a trademark application with the United States Patent and Trademark Office for the word “Picoliter” on May 11, 2000 showing first use in commerce as August 9, 2001.  The mark was registered on July 30, 2002.

Complainant created its first website at <picoliterinc.com> on February 20, 2001.

Respondent is president and founder of a company called “Nanoliter.”  Like Complainant, Respondent is involved in the development and manufacture of microfluidic devices.

Respondent registered the domain name, <picoliter.com>.

The domain name, <picoliter.com>, is identical or confusingly similar to Complainant’s mark, PICOLITER.

Respondent has no rights or legitimate interests in the domain name.

Respondent registered the domain name in bad faith.

 

B. Respondent

Respondent is Andrew D. Sauter, Jr. of Henderson, Nevada.

Respondent filed, as inventor, for a United States Patent under Application Number 447670, dated November 23, 1999, for a “Precise electrokinetic delivery of minute volumes of liquid(s)” being more fully described in the Application.  This invention had many other areas of application across wide liquid flow range rates including picoliters/sec flow rates.  This is stated in the patent application.  Respondent was subsequently awarded the patent as number 6,149,815.

Respondent registered the domain name, <picoliter.com>, on March 19, 2000, and <nanoliter.com> on September 21, 1999.

In related but importantly different scientific literature, such technically different but volumetrically similar picoliter capabilities have been known for decades.  Respondent’s capabilities were unique and stated as early as March 1997 to third parties.

Respondent registered the domain name, <picoliter.com>, prior to the existence of Complainant, or its trademark in any legal or physical sense.  Respondent had no knowledge of “them”, that is, the Complainant, as they didn’t exist by their own record submitted in this proceeding.

Both the Complainant and its counsel knew Respondent owned intellectual property in the picoliter domain.  They knew that the dates preceded their company’s existence, and had not corresponded with Respondent for two years before bringing this action.

 

C. Additional Submissions

None.

 

FINDINGS

1.      Complainant was incorporated on May 4, 2000 under the name Picoliter, Inc. to engage in the business of manufacturing devices for use in medical research.

2.      Respondent is an inventor whose business is not stated in the Response but who operates a website at <picoliter.com> which states in part “Developing New Fluidic Devices & IP In the Electrokinetic, Manual & Other Regimes.”  The website mentions  “Picoliter, nanoliter and microliter volumes.”  The website refers the user for more information to <nanoliter.com>. This website illustrates a configuration of the prototype of the Nanoliter, a patented device that can dispose nanoliters, picoliters and microliters onto media or into holders for many purposes.  The inference is made that Respondent provides and sells the Nanoliter, a device used in medical research.

3.      Respondent registered the domain name, <picoliter.com>, on March 19, 2000. 

4.      Complainant, according to the United States Patent and Trademark Office information provided by Complainant, first used the term PICOLITER August 9, 2001.  The filing date of the Application is stated as May 11, 2000.

5.      Respondent registered the domain name prior to Complainant being incorporated, prior to Complainant’s filing for a trademark, and prior to Complainant’s first use of the word.

6.      No evidence is presented to prove that Respondent had either actual or constructive notice of any rights Complainant may have had in the word, picoliter, on the date of registration by Respondent of the domain name, <picoliter.com>.

7.      The domain name and trademark are identical.

8.      Complainant fails to prove that Respondent has no rights or legitimate interests in the domain name.

9.      Complainant fails to prove that Respondent registered the domain name in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

 

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

This issue requires Complainant to show a trademark or service mark in which it has rights.  This element requires present rights in a mark.  Complainant has rights in the word mark, PICOLITER, as a result of the trademark registration dated July 30, 2002.  The trademark, PICOLITER, is identical to the domain name, <picoliter.com>, registered to Respondent.  The generic top-level domain (“gTLD”) “com” after the domain name is not relevant. See Pomellato S.P.A. v. Tonetti, D2000-0493 (WIPO July 7, 2000); Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000).  But see PRGRS, Inc. v. Pamela Pak, D2002-0077 (WIPO April 24, 2002) holding that under facts similar to the ones presented in this case that a Complainant who could not prove a valid trademark at the time of registration of the domain name could not show rights under Policy¶4(a)(i). The Panel concurs with the ultimate result reached in PRGRS, Inc. v. Pamela Pak, but chooses to deal with the issue of Complainant’s lack of a trademark at the time of domain name registration elsewhere in this decision.

The requirements of Policy¶4(a)(i) have been satisfied.

 

Rights or Legitimate Interests

Complainant bears the burden of proof on this issue. If Complainant can illustrate a prima facie case on this point, the burden will shift to Respondent to prove his rights or legitimate interests. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000). Complainant contends Respondent has no rights or legitimate interests in the domain name for two reasons.  The first is that Respondent has never been known or identifiable by the <picoliter.com> domain name.  Complainant contends that Respondent is president and founder of a company called Nanoliter.  “The picoliter.com domain name does not contain either Mr. Sauter’s name or the Nanoliter name.  Accordingly, Mr. Sauter has no property or trademark rights in the word ‘picoliter’.”  Complainant’s second contention is that Respondent has never used or shown demonstrable preparations to use the domain name for a bona fide offering of goods and services. See Policy¶4(c)(ii).  This is shown, Complainant contends, by the fact that Respondent’s only use of the domain name has always been and remains the single webpage used solely as a portal to direct Internet traffic to the Nanoliter website.  This contention requires the Panel to examine the web page shown at <picoliter.com>, as illustrated by a copy of the web page attached to the Complainant. 

The web page is not merely a reference portal to another site, as alleged by Complainant.  It contains substantial content regarding Respondent’s process including its purpose, its merits and possibilities along with articles for review and reference.  It does link this site to the Nanoliter.com website as a contact and for more information.  The web page contains the following paragraph:  “Pico and Nanoliter-sicles are frozen charges or uncharged spheres of liquid which can range from picoliter, nanoliter to even microliter volumes.  This form of ‘liquid’, is made by our patented process to exacting tolerances.  It is a new way to form, store, transport, manipulate and ‘package’ rare, valuable, toxic or other chemicals and products in the lab and elsewhere. Such ‘containers’ when charges are actually electrically ‘functionialized’ and can be moved with fields, overcoming adhesion…”  The Panel infers from this that the word “picoliter” is a technical term understood by those with scientific training as having a specific meaning in the measurement of liquids.  The Panel finds that the web page at <picoliter.com> does offer Respondent’s products and services by explaining the process and extolling its virtues.  The web page ends with the words “Nanoliter, 217 Garfield Drive, Henderson, NV 89074, 702-896-5413, 712-896-5948, asauter@aol.com, Drew Sauter, President & Founder.”  Thus, the web page explains the process, provides reviews of the process, and gives the Internet user the address, telephone number and e-mail address to use to obtain the products and services offered by Respondent.  The fact that a link is provided to another web site offering additional information about the process, does not, in itself, make the web site at <picoliter.com> a mere conduit.  Complainant does not specify the exact reasons why the content of the web page does not constitute a bona fide offering of goods or services.  The Panel finds further that since the word, picoliter, is one associated with the products and services promoted by Respondent, the choice of the word as a domain name is a reasonable choice to lead Internet users to a process involving picoliter measurements and processes. 

Complainant admits that Respondent registered the domain name prior to its incorporation and first use of the trademark in commerce.  Complainant thus admits that Respondent used the domain name  “before any notice…of the dispute.” See Policy¶4(c)(i).  The only question remaining is whether the domain name is being used “in connection with a bona fide offering of goods or services.” The content of the web page copy attached to the Complaint is taken as “concrete evidence” of a bona fide offering of goods and services by Respondent. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).  Complainant has not addressed the content of the web page with specific arguments that would adequately prove that the content is not a bona fide offering of goods and services.  Complainant has not presented the type of evidence necessary to prevail under this section.  See Do The Hustle, LLC v. Tropic Web, ibid.

Complainant argues at length as to e-mail correspondence between the parties as evidence that should be taken as admissions by Respondent that he had no rights or interests in the domain name.  The content of the e-mails does not contain the admissions contended by Complainant nor can the inferences be made that Complainant argues could be made from the e-mails.

The requirements of Policy¶4(a)(ii) have not been proved.

 

Registration and Use in Bad Faith

In order to prevail, Complainant must show that Respondent registered and is using the domain name in bad faith.  Complainant contends that “Mr. Sauter is using the ‘picoliter.com’ domain name to mislead consumers by diverting them from Picoliter’s website to his own Nanoliter website” and “Mr. Sauter has been using and continues to use the ‘picoliter.com’ domain name in bad faith by creating a likelihood of confusion as to the source, origin, affiliation, and sponsorship of the Nanoliter website with Picoliter Inc., and in the process, is intentionally trading on and benefiting from the goodwill established by Picoliter Inc. in the microfluidics industry.”

Neither of these contentions alleges that Respondent registered the domain name in bad faith. 

Complainant admits that Respondent registered the domain name, <picoliter.com>, prior to Complainant’s corporate formation and prior to Complainant’s first use of the mark, PICOLITER Complainant does not contend that Respondent knew, at the time of registration, that Complainant would later begin using the name PICOLITER and register the trademark.  Complainant argues that even though Respondent registered the domain name without knowledge of Complainant’s future acts, that once Complainant did register the trademark and open a web site, that this created a duty on Respondent to either sell the domain name to Complainant or cease using the name because the earlier domain name conflicts with the later trademark and web site. 

That argument is untenable.  See Cognigen Networks, Inc. v. Pharmaceutical Outcomes Research a/k/a Cognigen Corporation, D2001-1094 (WIPO Dec. 18, 2001) which held that Respondent who held prior rights in a trademark, but did not use the trademark in the corporate name or in a domain name, and later changed its corporate name to one using the trademark and began using a domain name corresponding to its new corporate name, which domain name was identical to a trademark which was being used by Complainant, thus causing confusion of identity between the two on the Internet, could not be prevented from using the new domain name even though it caused such confusion.

Policy¶4(b)(i) requires proof that the Complainant is the owner of a trademark at the time Respondent registers the infringing domain name.  That is admittedly not the case here.  Complainant cannot prevail under this Paragraph.

Policy¶4(b)(ii) requires Complainant to own a trademark at the time Respondent registers the infringing domain name.  Complainant did not own a trademark at that time and cannot prevail under this paragraph.

Policy¶4(b)(iii) requires the Complainant to be a competitor of Respondent at the time of registration.  Complainant was not in existence at the time of domain name registration.  It could not be a competitor.  Complainant cannot prevail under this paragraph.

Policy¶4(b)(iv) relates to circumstances of use of the domain name to attract for commercial gain, Internet users to a web site by creating a likelihood of confusion with the complainant’s mark. Complainant argues at length that confusion does exist between the domain name and trademark.  Even if Complainant could prove such intentional use of the domain name for this purpose, that does not eliminate Complainant’s requirement to prove that the domain name was initially registered in bad faith.  There is no evidence to suggest that Respondent registered the domain name in bad faith.  The Panel adopts the reasoning set out in PRGRS, Inc. v. Pamela Pak, supra, to the effect that a Complainant who cannot show a trademark to be in existence at the time of domain registration by Respondent cannot, as a general rule, prevail in a domain name dispute proceeding.  The Panel elects to apply this reasoning on the issue of bad faith registration.

The requirements of Policy¶4(a)(iii) have not been proved.

 

Reverse Domain Name Hijacking

Respondent complains that, by this proceeding, he is being harassed by the Complainant.  The Panel takes this as an allegation of Reverse Domain Name Hijacking.  The Panel finds that Complainant who began using a name and obtaining a trademark for the name after the registration by Respondent of the exact word as a domain name that Complainant later began using, is now attempting to take the domain name from Respondent, who holds the domain name properly under the Policy and Rules, for Complainant’s own profit and use, in bad faith.

 

DECISION

                  It is the decision of the Panel that the Complaint be DISMISSED and

                  Complainant’s demand to transfer of the domain name, <picoliter.com>,

                  is DENIED.

 

 

 

 

Tyrus R. Atkinson, Jr., Panelist
Dated: October 23, 2002

 

 

 

 

 

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