National Arbitration Forum

 

DECISION

 

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.

 

Identical and/or Confusingly Similar

 

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.

 

Rights or Legitimate Interests

 

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.

 

Registration and Use in Bad Faith

 

Complainants allege that Respondent has made numerous offers to sell the disputed domain name registrations to Complainant for prices far in excess of the fair value of the disputed domain names.  After Complainant initiated contact with Respondent and offered Respondent US$150 for the transfer of the disputed domain name registrations, Respondent offered US$1,200 in return.  Upon Complainants’ acceptance of Respondent’s counteroffer, on the condition that Respondent would not register any more domain names containing Complainant’s THERMO, FISHER, or FISHER SCIENTIFIC marks, Respondent claimed that Complainants “breached their promise” by adding the condition. 

 

Complainants contend that Respondent then increased his offer to sell to US$19,000.  The Panel finds that Respondent’s offer to sell the disputed domain name registrations for an excessive price constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(i), following the decision Moynahan v. Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000), where it was found that the fact that the respondent offered to sell the Domain Name to the complainant for $10,000 when the respondent was contacted by the complainant was indicative of bad faith.

 

It is most of the time quite difficult, if not impossible, to actually show bad faith, at the time of registration and use, with concrete evidence.  While bad faith cannot be presumed, once Complainant has presented some evidence pointing in that direction, it is then incumbent upon Respondent to either respond or explain why its conduct should not be assimilated to bad faith.  The Panel’s understanding of the Policy is that although the initial burden to prove Respondent’s bad faith in the registration and the use of the disputed domain name relies squarely on the shoulders of Complainant, such obligation is only to make out a prima facie case, and once it has done so, it is then incumbent upon Respondent to either justify or explain its business conduct, if not to demonstrate the contrary.  As the panel stated in Old Sturbridge Inc. v. S.C.I. Management Inc., FA 96461 (March 1st, 2001), “The burden of proof is shifted to a Respondent only when the complaint and supporting evidence demonstrate to the Panel that Complainant is entitled to relief.  Failure to do so will, in some circumstances, enable the Panel to draw a negative inference.”

 

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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