Thermo Electron Corp. and Fisher Scientific Co. LLC and Fisher Scientific Int'l Inc. v. Charlie Xu
Claim Number: FA0605000713851
PARTIES
Complainants are Thermo Electron Corp. and Fisher Scientific Co. LLC and Fisher Scientific Int'l Inc. (collectively, “Complainant”), represented by Richard S. Stockton, of Banner & Witcoff, Ltd., Ten S. Wacker Dr. Ste. 3000, Chicago, IL 60606. Respondent is Charlie Xu (“Respondent”), Suite 705,No. 138Ext. 39,Dazha Road, Ningbo 315020, Zhejiang, China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <thermofisherscientific.com> and <fisherthermo.com>, registered with Hichina Web Solutions (Hong Kong) Limited.
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.
Jacques A. Léger, Q.C. as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically
on May 23, 2006; the National Arbitration Forum received a hard copy of the
Complaint on May 23, 2006.
On May 29, 2006, Hichina Web Solutions (Hong Kong) Limited confirmed by
e-mail to the National Arbitration Forum that the <thermofisherscientific.com> domain name is
registered with Hichina Web Solutions (Hong Kong) Limited and that the
Respondent is the current registrant of the name. Hichina Web Solutions (Hong Kong) Limited has verified that
Respondent is bound by the Hichina Web Solutions (Hong Kong) Limited
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 June 6, 2006, Hichina Web Solutions (Hong Kong) Limited confirmed by
e-mail to the National Arbitration Forum that the <fisherthermo.com> domain name is registered with Hichina Web
Solutions (Hong Kong) Limited and that the Respondent is the current registrant
of the name. Hichina Web Solutions
(Hong Kong) Limited has verified that Respondent is bound by the Hichina Web
Solutions (Hong Kong) Limited registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with the
Policy.
On June 7, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of June 27, 2006 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@thermofisherscientific.com and
postmaster@fisherthermo.com by e-mail.
A timely Response was received and determined to be complete on June
21, 2006.
A timely Additional Submission from Complainant was received on June
22, 2006 and determined to be complete according to the Forum’s Supplemental
Rule #7.
On June 28, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Jacques A. Léger, Q.C. as Panelist.
RELIEF SOUGHT
Complainants
request that the domain names be transferred from Respondent to Complainants.
PARTIES’ CONTENTIONS
A. Complainants
Complainants assert that on May 7, 2006, news leaked of a possible
merger between their respective companies, Thermo Electron Corp. (“Thermo”) and
Fisher Scientific Int’l Inc. (“Fisher Scientific”), as set forth in Exhibit
12(B) – an article from the New York Times. The following day, on May
8th, the two companies officially announced the merger, as shown in Exhibit
12(A).
On May 7, 2006, thus the same day news of the possible merger leaked,
Respondent registered the two disputed domain names, <thermofisherscientific.com>
and <fisherthermo.com>, as demonstrated in Exhibit 13, an extract
from the WHOIS records. Complainants contend that they tried to register the <thermofisherscientific.com>
domain name on May 8, 2006, but failed to do so as it was already registered in
the name of a third party, Respondent.
Complainants emailed Respondent to offer to buy the disputed domain
names for US$150.00.
Respondent’s reply to Complainants was a compromise price offer of
US$1,200, to which the Complainants agreed to after a series of emails, with
the condition that Respondent would not register any other domain names
containing the words “thermo” or “fisher.”
Respondent then withdrew its offer and raised the price to US$19,000, as
shown in Exhibit 12(C), for the reason that Complainants had “breached their
promise.”
Complainants further assert that both disputed domain names are
identical or confusingly similar to Complainants’ marks, “THERMO”, “THERMO
FISHER SCIENTIFIC”, “THERMO FISHER” and “FISHER SCIENTIFIC.” The domain name <thermofisherscientific.com>
is virtually identical to Complainants’ pending trademark application for
registration of “THERMO FISHER SCIENTIFIC”.
Complainants also contend that it is well-established that when two
parties contemplate a merger and a third party registers a domain name
incorporating the trademarks of the two others, the third party who registered
it for “opportunistic reasons” is not entitled to the domain name; Complainants
assert that the timing of registrations suggests that they were done for
“opportunistic reasons,” and accordingly Respondent is not entitled to these
domain names.
Furthermore, Complainants allege that Respondent had no rights or
legitimate interests in the disputed domain names, as Respondent claimed that
he “registered the domain name on May 7. Because I want to use it to sell
high-tech fishing tackle throughout the world for my company,” and never
mentioned any further information about his purported “company” or “high-tech
fishing tackle.”
Moreover, no website has been displayed at the <thermofisherscientific.com>
and <fisherthermo.com> domain names, and Respondent has not
indicated any preparations to use these domain names in any way, nor has any
information about Respondent’s purported “company” and/or “high-tech fishing
tackle” been found. Furthermore,
Respondent is not commonly known by the disputed domain names.
Complainants also assert that given the fact that the Respondent
registered the domain names the same days new as leaked of the merger of Thermo
and Fisher Scientific, and the fact that the words “THERMO” and “FISHER” are
derived from English and have no meaning in Chinese, Respondent should be
considered as having no rights nor legitimate interest in the disputed domain names.
Finally, Complainants contend that Respondent is using the domain name <thermofisherscientific.com>
in bad faith by offering it for sale first for US$1,200 and then for US$19,000,
in violation of ICANN Policy ¶ 4(b)(i). Moreover, Respondent is preventing
Complainants from using their marks in the <thermofisherscientific.com>
and <fisherthermo.com> domain names; Respondent has also
previously engaged in such conduct by registering other domain names
encompassing well-know trademarks such as <emi-warner.net>,
<softbankvodafone.com> and <softbank-vodafone.com>.
The fact that both disputed domain names were registered on the same
day that news leaked of the merger between Thermo and Fisher Scientific is
also, according to Complainants, indicative of bad faith; both are sufficiently
unique such that Respondent is unlikely to have coined these domain names.
B. Respondent
Respondent alleges that he did not know about Thermo Electron Corp.’s
merger before Complainants announced the merger on May 8, 2006.
Respondent contends that Complainants breached their promise on May 18,
2006, as they first “promised” to pay US$1,000 for the domain name <thermofisherscientific.com>,
without any preconditions, and subsequently promised US$1,200 for said domain
name, still without preconditions. On May 18, 2006, Respondent received an
email offering US$1,200, but imposing conditions, thus Complainants have,
according to Respondent, “breached their promise.”
Furthermore, Respondent brings up the fact that in the sale agreement,
a sentence reads “Seller agreed to language in the agreement that Seller would
not purchase another domain name with the words ‘Thermo’ or ‘Fisher,’” and that
it never agreed to include such a clause.
Respondent submits that Complainants’ representative is attempting to
mislead the Panel, as he “breached his promise” by imposing the conditions on
Respondent.
Respondent alleges that he did not receive the email imposing
preconditions to the sale, and that such an error, admitted by Complainants’
representative, who sent said email to himself, is “unbelievable” (sic); it
contends that it’s a simple mistake that cannot be made by an Associate General
Counsel, and makes the assumption that Complainant’s representative checks his
emails every morning, there were eight days between the first and last offer,
and thus he would have found out about the mistake. According to Respondent,
this is also indicative of the Complainants’ “intention” to mislead the Panel.
Moreover, Respondent contends that the fact that “THERMO” and “FISHER”
have no meaning in Chinese is not indicative that Respondent has no rights or
legitimate interests in the disputed domain names.
Respondent’s further contention is that the combination of the words
“thermo” and “fisher” is “so wonderful, you’ll find that we’ll associate the
combination with high-tech fishing, right?” (sic), and thus it has rights and
legitimate interests in the domain names in dispute. Both words are also Respondent’s favorites, and it wants to use
them to sell high-tech fishing tackle.
Regarding the discussion of the sale of the domain name <thermofisherscientific.com>,
Respondent asserts that it did not want to sell it, as “the gap between US and
China is narrowing! Since both country are becoming more friendly, you and me
are friends too! Since you also favor it, and we are all good friends”
(sic). Respondent asserts that it
agreed “reluctantly” to Complainants’ representative tentative offer. The US$19,000 price was not Respondent’s
genuine will, it was set up after preconditions were imposed, and the price,
according to Respondent, without said preconditions, should still be US$1,200.
Finally, Respondent contends that it had no constructive knowledge of
Complainants’ marks, as Thermo Electron Corp. China’s office was founded in
late 2005, and very little information was diffused by the media about it.
C. Additional Submissions
Complainants allege that Respondent’s statement that he could not have
known about the merger when he registered the disputed domain names is without
merit, as even if it was formally announced on May 8, 2006, the news leaked on
May 7, 2006, the same day the domain names were registered. It would be, according to Complainants, an
incredible coincidence that registration would be the same day the news leaked.
Complainants then assert that the several pages devoted by Respondent
to the alleged “breach of promise” are not the real issue, but rather the
wrongful registration of the disputed domain names and the attempts by
Respondent to sell domain names containing Complainants’ marks.
Furthermore, Complainants outline the raise of the proposed sale price
from US$1,200 to US$19,000 as indicative of bad faith.
On rights or legitimate interests in the disputed domain names,
Complainants contend that:
·
Respondent has
failed to display any content at the domain names in dispute, nor has it
demonstrated any preparation to use the domain names, other that the attempted
sale;
·
Complainants,
after researching Respondent’s purported “company” and “high-tech fishing
tackle,” have found nothing about it;
·
Respondent is
not commonly known by the domain names in dispute, to the best of Complainants’
knowledge; and
·
Respondent is
not authorized by Complainants to use these domain names.
The showing above, according to Complainants, is sufficient to
establish a prima facie case that Respondent has no rights or legitimate
interests in the disputed domain names, and consequently, the burden shifts to
Respondent.
Finally, Complainants assert that Respondent has constructive knowledge
of Complainants’ mark, by virtue of the fact that said marks are registered and
well-known throughout the world.
FINDINGS
Complainants are
the owners of registered trademarks FISHER SCIENTIFIC (Reg. No. 2,211,933
issued December 15, 1998; Reg. No. 2,150,026 issued April 14, 1998; Reg. No.
2,249,882 issued June 1, 1999; Reg. No. 2,124,212 issued December 23, 1997;
Reg. No. 2,076,381 issued July 1, 1997) and FISHER (Reg. No. 2,743,292 issued
July 29, 2003). Complainants also provided
evidence of a trademark registration for the THERMO mark with the Benelux
trademark authority (Reg. No. 780,250 issued November 29, 2005). Furthermore,
Complainants have demonstrated evidence that they have filed trademark
registration applications for the THERMO FISHER SCIENTIFIC (Serial No.
78/879,737 filed May 9, 2006) and THERMO FISHER (Serial No. 78/879,708 filed
May 9, 2006) marks with the USPTO. The disputed domain names, <thermofisherscientific.com>
and
<fisherthermo.com>, registered on May 7, 2006,
are confusingly similar with said
trademarks.
Complainants and Respondent are not
affiliated; Respondent does not have Complainants’ authorization to use the
disputed domain names, is not currently using or preparing the domain names in
dispute for use, and the willingness to sell said domain names is pointing away
from Respondent having rights or legitimate interests in the domain names in
dispute.
The registration and use of the domain name
by Respondent leads, for reasons stated below, with respect to evidence adduced
and all surrounding circumstances, to an indication of 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.
Complainants have provided evidence that they have registered the following marks with the United States Patent and Trademark Office (“USPTO”): FISHER SCIENTIFIC (Reg. No. 2,211,933 issued December 15, 1998; Reg. No. 2,150,026 issued April 14, 1998; Reg. No. 2,249,882 issued June 1, 1999; Reg. No. 2,124,212 issued December 23, 1997; Reg. No. 2,076,381 issued July 1, 1997) and FISHER (Reg. No. 2,743,292 issued July 29, 2003). Complainants also provided evidence of a trademark registration for the THERMO mark with the Benelux trademark authority (Reg. No. 780,250 issued November 29, 2005). Furthermore, Complainants have demonstrated evidence that they have filed trademark registration applications for the THERMO FISHER SCIENTIFIC (Serial No. 78/879,737 filed May 9, 2006) and THERMO FISHER (Serial No. 78/879,708 filed May 9, 2006) marks with the USPTO.
Per these registrations and trademarks registration applications, Complainants have established rights in the marks pursuant to Policy ¶ 4(a)(i). As the panel in Morgan Stanley v. Fitz-James (CT2341-RSC) Cititrust Grp. Ltd., FA 571918 (Nat. Arb. Forum Nov. 29, 2005) stated, “The Panel finds from a preponderance of the evidence that Complainant has registered its mark with national trademark authorities. The Panel has determined that such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”
The Panel agrees with this decision. The issuance of a Registration certificate
by the empowered authorities on trademarks matters is a scheme to regulate
trade and commerce in relation to trademarks, and unless registration is shown
invalid, it gives its owner the exclusive right to the use of said trademarks
in respect to those wares or services for which it is registered.
Complainants assert that the disputed domain names, <thermofisherscientific.com> and <fisherthermo.com>, are identical or confusingly similar to their registered and pending registration trademarks; furthermore, Complainants argue that Respondent registered the disputed domain names on May 7, 2006, the day before Complainants formally announced the merger, and that Respondent registered the disputed domain names in contemplation of said proposed merger. Respondent has not contested the issue of identical or confusingly similar domain names.
Therefore, the
Panel finds that Respondent’s combination of Complainant’s marks in the
disputed domain names renders the domain names confusingly similar to the
THERMO, FISHER and FISHER SCIENTIFIC marks under Policy ¶ 4(a)(i). See Seagate Tech. LLC v. Zhanfeng, FA 635276 (Nat. Arb. Forum Mar. 10, 2006) (finding that the
<seagate-maxtor.com> domain name was confusingly similar to the
complainant’s SEAGATE mark where the respondent registered the domain name on
the same day the complainant announced a merger with a company operating under
the MAXTOR mark).
On that basis, Complainants have satisfied
their burden, and consequently, the Panel finds in favor of Complainants on the
first element.
As to the second element, Complainants must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.
Complainants allege that Respondent has no rights or legitimate
interests in the disputed domain names, as it claimed that it “registered
the domain name on May 7. Because I want to use it to sell high-tech fishing
tackle throughout the world for my company,” and never mentioned any
further information about his purported “company” or “high-tech fishing
tackle”.
Moreover, Complainants have maintained that no website has been
displayed at the <thermofisherscientific.com> and <fisherthermo.com>
domain names, and that Respondent has not indicated any preparations to use these
domain names in any way, nor has any information about Respondent’s purported
“company” and/or “high-tech fishing tackle” been found, pursuant to
Complainants’ research.
Respondent has asserted that it was planning to use the disputed domain names for selling “high-tech fishing tackle;” no evidence has been shown that Respondent actually has a company, or is preparing a commercial activity. The Panel finds that Respondent’s non-use constitutes passive holding and thus Respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). As the panel in Household Int’l, Inc. v. Cyntom Enters., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) stated, “vague and unsupported assertion of ‘plans to sell household goods, supplies and appliances over the Internet’” is insufficient to be considered proof of a legitimate business plan.
The Panel also finds that Respondent is not commonly known by the
disputed domain names pursuant to Policy ¶ 4(c)(ii).
Complainants also assert that given the fact that the words “THERMO”
and “FISHER” are derived from English and have no meaning in Chinese,
Respondent should be considered as having no rights or legitimate interests in
the disputed domain names. In the
Panel’s view, this is not an argument that can support such an assumption. However, the argument upheld by Respondent
that the “combination of the words ‘thermo’ and ‘fisher’ is so wonderful,
you’ll find that we’ll associate the combination with high-tech fishing,
right?” (sic) is certainly not evidence of rights or legitimate interests, nor
is the argument that “thermo” and “fisher” are Respondent’s favorite words.
The exchange back and forth of emails between Complainants and Respondent regarding the sale of the disputed domain names puts into perspective Respondent’s willingness to dispose of said domains; this is indicative of Respondent’s lack of rights or legitimate interests. See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
In conclusion, on balance, the Panel finds that Complainants have satisfactorily met their burden on the second element, and finds that Respondent has no rights or legitimate interests in the domain names in dispute.
Complainants further assert that
Respondent opportunistically engaged in bad faith registration and use by
registering the <thermofisherscientific.com> and <fisherthermo.com>
domain names on the eve of Complainant’s formal announcement of a merger. In
its Response, Respondent contends that
it did not want to sell it, as “the gap between US and China is narrowing!
Since both country are becoming more friendly, you and me are friends too!
Since you also favor it, and we are all good friends” (sic). Respondent alleges that it agreed
“reluctantly” to Complainants’ representative’s tentative offer to buy the
domain names. and that the US$19,000 price was not Respondent’s genuine will,
for it was set up after preconditions were imposed, and the price, according to
Respondent, without said preconditions, should still be US$1,200.
From Respondent’s own admission, the price “should still be
US$1,200.” In the Panel’s view, it
appears that the intention to sell the domain names in dispute is indicative of
registration in bad faith, especially because Respondent raised the price to
US$19,000, making the price over fifteen times its initial amount.
If there had been any doubt as to bad faith, the fact that registration
was on the same day the news leaked about the merger, which was put in
evidence, is a compelling indication of bad faith that Respondent has to refute
and which he has failed to do. The
Panel finds a negative inference from this.
Furthermore, Complainants assert that Respondent is passively holding the <thermofisherscientific.com> and <fisherthermo.com> domain names, because the disputed domain names have not resolved to any content since Respondent registered them in May of 2006. The Panel finds that Respondent’s non-use of the disputed domain names for over a month constitutes bad faith use pursuant to Policy ¶ 4(a)(iii). See Cruzeiro Licenciamentos Ltda. v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (“Mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale, thus contravening to ICANN Policy ¶ 4(b)(i).”).
In light
of these conclusions, the Panel finds that, on balance, Complainants have met
their initial burden in regards to the third element, and that Respondent has
failed to adequately rebut it, as the nature of its usage points out to bad
faith use. The Panel finds that based
on the totality of circumstances and evidence submitted, Respondent’s
registration and use of the disputed domain name is indicative of bad faith
under ICANN Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thermofisherscientific.com>
and <fisherthermo.com> domain names be TRANSFERRED from
Respondent to Complainants.
Jacques A. Léger, Q.C., Panelist
Dated: July 12, 2006
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