National Arbitration Forum

 

DECISION

 

SmartGene GmbH v. 4You Net Services

Claim Number: FA0610000820359

 

PARTIES

Complainant is SmartGene GmbH (“Complainant”), represented by Randall M. Whitmeyer, 5410 Trinity Road, Suite 400, Raleigh, NC 27607.  Respondent is 4You Net Services (“Respondent”), P.O. Box 770762, Lakewood, OH 44107.

 

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <smartgene.com>, registered with Bulkregister, Llc..

 

PANEL

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

 

Timothy D. O’Leary as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 17, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 23, 2006.

 

On October 18, 2006, Bulkregister, Llc. confirmed by e-mail to the National Arbitration Forum that the <smartgene.com> domain name is registered with Bulkregister, Llc. and that the Respondent is the current registrant of the name.  Bulkregister, Llc. has verified that Respondent is bound by the Bulkregister, Llc. 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 October 26, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 15, 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@smartgene.com by e-mail.

 

A timely Response was received and determined to be complete on November 15, 2006.

 

Complainant submitted a timely Additional Submission and determined to be complete on November 20, 2006.

 

Respondent submitted a timely Additional Submission and determined to be complete on November 22, 2006.

 

On November 22, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Timothy D. O’Leary as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

 

1.         The domain name of  <smartgene.com> is identical and/or confusingly similar to the SMARTGENE mark. 

 

2.         Respondent has no right to or legitimate interest in this domain name.

 

3.         The domain name is registered and being used in bad faith.

 

CONTENTION NO. 1

 

AS TO THE IDENTICAL OR CONFUSINGLY SIMILAR CONTENTION, COMPLAINANT STATES:

 

The domain name is identical to Complainant’s trademark/service mark, which is internationally known and which Complainant has been using since at least as early as 1998.  Complainant offers its goods and services worldwide, and has places of business in the cities of Zug and Lausanne, Switzerland, as well as in Raleigh, North Carolina, USA.  Further, Complainant or one of its principals owns numerous domain names containing Complainant’s trademark/service mark, including: <smartgene.org>, <smartgene.info>, <smartgene.biz>, <smartgene.us>, <smartgene.de>, <smartgene.ch>, <smartgeneinc.com>, <idns-smartgene.com>, <dns-smartgene.info>, <idns-smartgene.biz> and <idns-smartgene.org>.

 

RESPONSE OF RESPONDENT TO CONTENTION NO. 1:

 

Respondent concedes this point.

 

CONTENTION NO. 2:

 

AS TO THE RIGHTS AND LEGITIMATE INTERESTS CONTENTION, COMPLAINANT STATES:

 

Respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of this Complaint because:

 

Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services is non-existent.  Rather than devolving to a legitimate web site of Registrant, the domain name instead devolves to a web site indicating that the domain name is for sale;

 

Respondent has not been commonly known by the domain name. 

 

Respondent is not making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain.

 

RESPONSE OF RESPONDENT TO CONTENTION NO. 2:

 

Respondent states that the phrase “smart gene” is a common English language term that refers to DNA genes that affect the trait of intelligence.  The term is commonly used in the media to refer to hereditary traits of intelligence.  Thousands of web pages use the term “smart gene.”  A different more scientific definition of this term refers to a gene that allows for the conditional expression of the gene based on the specific conditions inside the cell.

 

Respondent argues that the term “smart gene” is not fanciful, unique or arbitrary and has other meaning which are more famous then the Complainants trademark.  Thus Complainant should not have exclusive rights to this term.

 

Respondent asserts that 4You Net Services is in the business of developing and operating Internet based services and registers domain names that may be used by these services.  Some web sites developed by 4You Net Services include: matrimonials.com and a1im.com.

 

Respondent contends that 4You Net Services registered the <smartgene.com> domain name on April 5, 1998 with the intention of developing an intelligence testing (IQ testing) website.  However, due to lack of funding to support the project the domain name has been dormant for a number of years.  Respondent has decided in 2006 to sell the unused domain through <sedo.com> since the domain is a generic English phrase and would be of use to others.  The domain was never offered for sale prior to 2006.

 

Respondent argues that by having owned the domain name for over eight years, the Respondent has acquired common law rights to the domain name.

 

COMPLAINANT’S ADDITIONAL SUBMISSION TO CONTENTION NO. 2:

 

Respondent argues in his Response that the phrase "smart gene" is a common English language term, is descriptive and that, therefore, Complainant should not have exclusive rights to the term. However, as Complainant has shown, Complainant holds an exclusive right to the mark SMARTGENE in a number of jurisdictions as detailed in the original Complaint.  Accordingly, Complainant respectfully maintains that the trademark is entitled to protection and, as evidenced by Complainant's registrations, is not a descriptive term.

 

Respondent's “evidence” that there is a single common understanding of the phrase consists only of a listing of websites that use the words “smart” and “gene” as separate words and not one word, and without regard for the specific nature of use. Complainant hereby offers as Exhibit A a listing from a search utilizing Google for the trademark SMARTGENE in which each of the top results refers back to Complainant or Complainant's products and services.

 

Complainant argues that it is well-established under trademark law that two common, or descriptive, terms may together create a protectable unique trademark, although the two words individually may be common English terms.

 

Further, Complainant notes that the domain name has not been used in connection with any bona fide offering of goods or services or any business connected with the phrase “smart gene.” Accordingly, Complainant maintains that Respondent has not shown any circumstances that would prove it has any legitimate interest in or to the domain name.

 

Complainant states that it has shown through its registrations that it has protectable interests in and to its trademark.  Complainant has also spent significant sums of money over the years to develop and market its services under its trademark and Complainant believes that the domain name is confusing its customers, who expect to find Complainant when entering its trademark as the domain name.

 

RESPONDENT’S ADDITIONAL RESPONSE TO CONTENTION NO. 2:

 

Respondent contends that Complainant’s trademark is specific to the fields of Medicine, Veterinary Medicine, Gene Technology and Molecular Biology.  Trademark registrations do not imply exclusive rights for the mark to all fields.  Thus it is possible for another company to register the same mark for a different field or to use the same mark without registration in a different field.  Therefore, any exclusive right Complainant has to the mark in this field does not diminish Respondents rights to use the mark for other fields.

 

CONTENTION NO. 3:

 

AS TO THE REGISTRATION AND USE IN BAD FAITH CONTENTION, COMPLAINANT STATES:

Complainant states that the domain name should be considered as having been registered and used in bad faith because:

 

Complainant maintains that upon information and belief, Respondent has never used the domain name for any legitimate purpose or commercial endeavor.  Complainant attempted but was unable to contact the owner of the domain name over the years because the contact addresses and phone numbers in the WHOIS database were not valid.  Currently, Respondent provides an obviously incorrect telephone number ((216) 555-1212) as its Administrative Contact in the Whois Database.  This number is for a national phone number directory service.

 

Complainant argues that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant, who is the owner of the trademark/service mark, or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented, out-of-pocket costs directly related to the domain name.  In this regard, Complainant notes that Respondent has made the domain name available for sale on its web site.  Complainant has made several bids for the domain name over the last year; its most recent bid, in the amount of $750, was met with a sole counter-bid of $55,000, to which Complainant responded with a $1,500 bid that expired without further word from Respondent.  The domain name remains for sale as of the date of this Complaint.  

 

RESPONSE OF RESPONDENT TO CONTENTION NO. 3:

 

Respondent states that it did not know about the Complainants trademark registration when the domain name was registered. This is evidenced by the fact that Respondent’s registration date of <smartgene.com> predates Complainant’s registration of the trademark.

 

Respondent contends that it did not register <smartgene.com> with the intention to sell it to Complainant or to benefit from Complainant’s trademark.  Respondent states that it has never solicited the Complainant to sell the domain.  Rather, Complainant solicited Respondent and offered to buy the domain.  Respondent now views this as a bad faith offer by the Complainant. This is also evidenced by the fact that Respondent has not used the domain name in any way that would appear to be confusing with Complainant’s trademark.

 

Respondent maintains that the decision to now sell the unused domain does not imply that the domain name was originally registered to resell the domain to the trademark owner or its competitors for a profit.  This is evidenced by the fact that Respondent’s registration predates Complainant’s trademark date.  This is also evidenced by the fact that Respondent has never offered the domain name for sale prior to 2006.

 

Further, Respondent asserts it is not using the domain name in a manner that infringes on the trademark rights of the Complainant.

 

COMPLAINANT’S ADDITIONAL SUBMISSION UNDER CONTENTION NO. 3:

Complainant notes that Respondent alleges that he did not register and is not using the domain name in bad faith.  Respondent provided in its registration for the domain name at issue Use contact information (216-555-1212 (national phone directory service number)) which false information Complainant believes evidences bad faith.  Respondent has also never used the domain name in connection with any legitimate purpose or commercial enterprise.  Rather, Respondent has squirreled away the domain name and is now offering it for sale, including to Complainant, at a highly-inflated price.

 

Complainant states that Respondent argues that Complainant has never notified Respondent previously about the domain name and infringement of its trademark.  However, as noted above, Respondent did not provide true or accurate contact information for any inquiries relating to the domain name.  Complainant asserts it has tried over the years to contact the owner of the domain name, but has previously been unable to do so because of the misinformation provided by Respondent.

 

RESPONDENT’S ADDITIONAL RESPONSE UNDER CONTENTION NO. 3:

 

Respondent maintains that it has always provided a valid and working email address and mailing address with the domain registration record.  Respondent chose not to disclose a telephone number to avoid getting unsolicited sales calls.  It is well known that the domain name records are used by marketing companies to make unsolicited advertisement calls.  The phone number provided was that of a directory service in the local area so that a party who is really interested in contacting Respondent by phone could query the number from the directory service and would still be able to reach Respondent with a little more effort.

 

Respondent states that it has never before received any communication from Complainant via email or postal mail regarding the domain even though these addresses were provided. Although Complainant claims to have tried contacting the Respondent, no proof is provided to support this claim.

FINDINGS

Identical and Confusingly Similar:  Policy 4(a)(i).

I find the issues on this element in favor of Complainant. 

Complainant asserts and submits extrinsic evidence to support that it has established rights in the SMARTGENE mark through registration of the mark with numerous trademark authorities, including the Swiss Federal Institute of Intellectual Property (Reg. No. 45,9436 issued January 20, 1999), the World Intellectual Property Organization (“WIPO”) (Reg. No. 715,730 issued May 28, 1999) and the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,718,871 issued May 27, 2003).  I find that Complainant has established rights in the SMARTGENE mark through its valid trademark registrations with the above-stated authorities.  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).

It should be noted that Respondent registered the domain name on April 5, 1998, which is slightly over one year prior to Complainant’s earliest registration of the SMARTGENE mark.  Policy ¶ 4(a)(i) requires, “[the] domain name [to be] identical or confusingly similar to a trademark or service mark in which the complainant has rights.”  In this passage, there is no requirement that the registration of the trademark predates the registration of the domain name; rather, it merely requires Complainant to have rights in the mark.  Accordingly, I choose to apply the literal language of Policy ¶ 4(a)(i) as a threshold issue whereby it analyzes the identical or confusingly similar nature of the trademark and the disputed domain name independent of any relevant registration dates.  See TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16 2002) (finding that, in order to bring a claim under the Policy, Complainant must first provide proof of 'valid, subsisting rights in a mark that is [confusingly] similar or identical to the domain name in question'); see also Hexagon AB, et al v. Xspect Solutions Inc., D2005-0472 (WIPO June 22, 2005) (finding that the possession of registered trademark rights “meets the threshold requirements of possessing trademark rights sufficient to satisfy ¶ 4(a)(i) of the Policy.”).

I find the <smartgene.com> domain name to be identical to Complainant’s SMARTGENE mark because it contains the mark in its entirety and merely affixes “.com,” a generic top-level domain (“gTLD”).  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to the complainant’s TERMQUOTE mark).

Rights and Legitimate Interests: Policy ¶ 4(a)(ii).

 

I find the issues in favor of Complainant. 

I note that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interest in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to Respondent to show that it does have rights or legitimate interests.  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests).

Complainant alleges that Respondent is not commonly known by the disputed domain name.  According to the WHOIS registry, Respondent registered the disputed domain name as “4You Net Services.”  In its Response, Respondent suggests that it originally registered the disputed domain name with the intention of developing an intelligence testing website; however, Respondent has failed to support this allegation with any evidentiary submissions.  Due to the lack of evidentiary support as to Respondent’s purported business plan, I find that Respondent is not commonly known by the disputed domain name. See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected). 

Complainant contends that the disputed domain name resolves to a website that offers the domain name for sale.  Respondent claims that the disputed domain name, since registration, was “dormant” due to a lack of funding to support its planned development and that it was only recently that the disputed domain name was offered for sale.  I find that Respondent’s lack of rights and legitimate interests in the disputed domain name is evidenced by the fact Respondent has not made an active use or come forward with any evidence of preparatory actions for any active use of the disputed domain name for over eight years.  See SFX Entm’t., Inc. v. Cushway, D2000-0356 (WIPO July 10, 2000) (finding that the respondent had rights and legitimate interests in the domain name where he began demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services); see also Genting Berhad v. Tan Kim Sin, FA 94735 (Nat. Arb. Forum June 28, 2000) (finding that the respondent had legitimate interests in the domain name where the respondent had made preparations to use the domain for his newly formed business).

Additionally, Respondent demonstrated a willingness to dispose of its ownership of the disputed domain name by offering it for sale through <sedo.com>, a third-party website that offers a secondary market domain names.  I interpret Respondent’s willingness to sell the disputed domain name as a suggestion that it lacks rights and legitimate interests pursuant to Policy ¶ 4(c).  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); see also Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark). 

Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).

 

I find this issue in favor of Complainant. 

I find that Respondent’s lack of an active use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii).  I find that further evidence of a lack of good faith registration and use is demonstrated by Respondent’s possession of the disputed domain name for at least eight years without making active use of the disputed domain name.  See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith); see also Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).

Additionally, Complainant asserts that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the domain name to Complainant.  I find that Respondent’s counter-offer of $55,000, an amount in great excess of its out-of-pocket expenses, for the disputed domain name evidences Respondent’s bad faith registration of the disputed domain name for the purposes of selling it to Complainant.  See Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”); see also Moynahan v. Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000) (finding bad faith where the respondent offered to sell the Domain Name to the complainant for $10,000 when the respondent was contacted by the complainant).

I find that Complainant’s arguments regarding Respondent’s potentially falsified contact information in the WHOIS registry are significant.  This conduct supports an inference that the misleading or false contact information is evidence of bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(a)(iii).  See Visit Am., Inc. v. Visit Am., FA 95093 (Nat. Arb. Forum Aug. 14, 2000) (“Evidence that a domain name owner provided incorrect information to a domain name registrar supports a finding of bad faith registration.”); see also 3636275 Canada v. eResolution.com, D2000-0110 (WIPO Apr. 10, 2000) (finding that use of false registration information constitutes bad faith).

DECISION

 

Having established all three elements required under the ICANN Policy, I conclude that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <smartgene.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Timothy D. O’Leary, Panelist
Dated:  December 6, 2006