Life Technologies Corporation v. ATZ Lab Solutions (India) Pvt. Ltd
Claim Number: FA1012001363891
Complainant is Life Technologies Corporation (“Complainant”), represented by Jayant Kumar of ALG India Law Offices, India. Respondent is ATZ Lab Solutions (India) Pvt. Ltd (“Respondent”), represented by Rajan Sahni of ATZ Lab Solutions (India) Pvt. Ltd, India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <invitrogenindia.com>, registered with TUCOWS, INC.
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.
Fernando Triana, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 16, 2010; the National Arbitration Forum received payment on December 16, 2010.
On December 16, 2010, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <invitrogenindia.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 22, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 11, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@invitrogenindia.com. Also on December 22, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on January 11, 2011.
On January 13, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Fernando Triana, Esq. as Panelist.
On January 16, 2011, Complainant filed an additional submission.
On January 24, the Respondent filed a response to the additional submission filed by the Complainant.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Life Technologies Corporation submitted the complaint on December 16, 2010.
The Complainant makes the following assertions:
1. The Domain Name fully incorporates and is confusingly similar to the trademark INVITROGEN registered in favor of the Complainant.
2. Complainant is the owner of internationally well known trademark INVITROGEN, also used as trade name since 1987. The INVITROGEN trademark is registered in various countries.
3. Through long years of marketing, advertising and promotion, INVITROGEN, which is an invented mark, has acquired distinctiveness as a trademark owned exclusively by the Complainant.
4. Complainant has subsidiaries world wide. Those subsidiaries use Complainant’s INVITROGEN trademark in their trade name. Complainant is doing business in India through its subsidiary Invitrogen Bioservices India Pvt. Ltd.
5. INVITROGEN is an invented trademark. The word INVITROGEN has no meaning in English and was first adopted by the Complainant.
6. Respondent’s <invitrogenindia.com> Domain Name is confusingly similar to Complainant’s INVITROGEN trademarks and it fully incorporates Complainant’s marks and merely adds the geographical location term “india” followed by the top level Domain Name extension “.com”, neither of which makes the Domain Name distinct.
7. There is no evidence of the Respondent’s use of or demonstrable preparations to use the Domain Name or a name corresponding thereto in connection to a bona fide offering of goods and services.
8. Respondent is precluded from claiming a right or legitimate interest in the Domain Name or in the Complainant’s trade mark INVITROGEN by the fact that as a former subsidiary of INVITROGEN CORP., it had notice of the existence of the INVITROGEN trademark before any use or demonstrable preparation to use the Domain Name.
9. AZT LAB SOLUTIONS (INDIA) PVT. ceased to be a subsidiary of the Complainant in December 2002, by the sale of shares in it by INVITROGEN CORP. to a company established and controlled by Rajan Sahni who himself is a former employee of AZT LAB SOLUTIONS (INDIA) PVT.
10. The Complainant has not authorized the Respondent to be the holder of the Domain Name. The Respondent is not authorized to use the mark INVITROGEN.
11. The WHOIS report of the disputed Domain, does not provide any evidence that the Respondent is commonly known by the Domain Name.
12. The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services and it not making any legitimate non commercial fair use of the Domain Name.
13. Bad faith is implicit in the registration of the Domain Name. The Respondent registered the Domain Name in issue on March 16, 2001, much after the time the Complainant had already earned reputation and goodwill under the mark INVITROGEN.
14. Given the Complainant’s numerous trademark registrations and its world wide reputation, it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the Domain Name INVITROGENINDIA.COM.
15. The Respondent’s blatant disregard for the fact that the Domain Name infringes the trademark rights of the Complainant, is evidence of bad faith.
16. There is no actual website hosted at the Domain Name and it’s a blank website. A blank website has been held to be evidence of bad faith.
B. Respondent makes the following responses:
1. The domain <invitrogenindia.com> was registered by the Indian subsidiary of INVITROGEN CORPORATION in March 2001. This Domain Name was for the official use of INVITROGEN INDIA PVT. LTD.
2. Since then several mails were exchanged with INVITROGEN CORPORATION through this Domain Name.
3. It is incorrect and false on the part of the Complainant to say today that the Domain was registered without their knowledge.
4. The name INVITROGEN (INDIA) PVT. LTD. was changed by the Complainant to AZT LAB SOLUTIONS (INDIA) PVT. on July 17, 2002 and the Complainant kept using the disputed Domain for communication purposes.
5. The Complainant sold its Indian subsidiary AZT LAB SOLUTIONS (INDIA) PVT. to LIFE TECHNOLOGIES (INDIA) PVT. LTD. through a share purchase agreement dated December 23, 2002 and closed their operations in India.
6. Since the Domain Name <invitrogenindia.com> was owned by AZT LAB SOLUTIONS (INDIA) PVT. before the sale of the subsidiary, it obviously remained with AZT LAB SOLUTIONS (INDIA) PVT. even after the sale. Officials of the Complainant kept on communicating on said Domain.
7. A Domain Name that was acceptable to the Complainant even in 2004, cannot become objectionable now.
C. Additional Submissions
On January 16, 2011, Complainant filed an additional submission in reply to Respondent’s Response.
The Complainant makes the following assertions:
1. The Respondent was incorporated in 1997 as a subsidiary of the Complainant and was therefore entitled to use the Complainant’s various trademarks in India. In 2000, the Respondent was given a license to use the mark INVITROGEN by the Complainant. As a part of and within this license, the Respondent was authorized to register the Domain Name. The registration of the Domain Name by the Respondent was under authorization from and on behalf of the Complainant. The Respondent was mere WHOIS registrant nomine of the Complainant.
2. By the end 2001, the Complainant decided to establish and appoint a preferred distributor company in India. The Complainant therefore incorporated the company LIFE TECHNOLOGIES (INDIA) PVT. LTD. under shareholding and control of Mr. RAJAN SAHNI, who was also the manager of the Respondent at that time. The Complainant entered into a Distribution Agreement with LIFE TECHNOLOGIES (INDIA) PVT. LTD. in April 2002. This Agreement granted a limited license to use the Complainant’s trademarks, including the INVITROGEN mark.
3. The Respondent ceased to be a subsidiary of the Complainant on December 23, 2002. When Respondent ceased to be a subsidiary of the Complainant, the previously subsisting general license in its favor came to an end.
4. Even if the Respondent was not a subsidiary of the Complainant, he continued to be its licensee. In fact, in late 2001, the Complainant incorporated the company LIFE TECHNOLOGIES PVT. LTD., in which the Respondent was a shareholder and also the controller.
5. In November 2004, the Complainant entered into a fresh Distribution Agreement with its preferred distributor LIFE TECHNOLOGIES PVT. LTD. This agreement made it clear that the preferred distributor has not been granted any rights in any intellectual property.
6. On December 28, 2004, the Complainant incorporated a new subsidiary in India under the name INVITROGEN BIOSERVICES INDIA PVT. LTD. which has been active in India since then.
7. On June 27, 2005, the Complainant terminated the distribution agreement with LIFE TECHNOLOGIES PVT. LTD. With this termination, the authorization to the Respondent to maintain the Domain Name came to an end.
8. Complainant never closed its operations in India.
On January 24, 2011, the Respondent filed an additional submission in response to Complainant’s additional submission.
The Respondent makes the following assertions:
1. The present matter arises out of a dispute related to a Share Purchase Agreement and to what should be considered as the company ATZ LAB SOLUTIONS INDIA PVT LTD.’s assets at the time of the mentioned agreement and for such dispute, only Indian courts have jurisdiction.
2. The Complainant has been withholding information and manipulating the facts.
3. INVITROGEN MAURITIUS and INVITROGEN CORPORATION were holding companies of GIBCO BRL. INDIA PVT. LTD. was incorporated on August 11, 1997 and renamed INVITROGEN INDIA PVT. TD. on June 2, 2001, later renamed as ATZ LAB SOLUTIONS INDIA PVT. LTD. on July 19, 2002.
4. Mr. Rajan Sahni incorporated LIFE TECHNOLOGIES INDIA PVT. LTD. on January 22, 2002 as an independent company having no ownership links with INVITROGEN USA or INVITROGEN MAURITIUS.
5. In the year 2002 INVITROGEN USA and INVITROGEN MAURITIUS decided to close its Indian operations and negotiated with Mr. Sahni to sell their subsidiary company in India AZT LAB SOLUTIONS INDIA PVT. LTD. along with all its assets and liabilities as well as its business operations by way of a Share Purchase Agreement executed on December 23, 2002.
6. At the time of the sale, the Complainant was not known as LIFE TECHNOLOGIES CORPORATION as it was stated by the Complainant. The buyer company, on the other hand, was indeed known as LIFE TECHNOLOGIES INDIA PVT. LTD.
7. The domain name <invitrogenindia.com> was registered in the name of AZT LAB SOLUTIONS INDIA PVT. LTD. and remained property of and asset of the mentioned company.
8. According to the Share Purchase Agreement, the seller was INVITROGEN MAURITIUS while the donor was INVITROGEN CORPORATION. The domain name in dispute was neither the property of INVITROGEN MAURITIUS or INVITROGEN CORPORATION and was the sole property of ATZ LAB SOLUTIONS INDIA PVT. LTD.
9. The Complainant is barred to raise any dispute for the disputed domain name not only on the ground that the domain name was a part of the business transfer agreement dated December 23, 2002, but also on the ground of Estoppel as well as Law of Limitation in India.
10. The complete case of the Complainant is false and based in manipulated facts. The Complainant failed to establish that the Respondent lacks of legitimate interest in the dispute domain name.
11. The domain name in dispute was not registered in bad faith.
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 and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Likewise, paragraph 10 (d) of “The Rules”, provides that: “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence.”
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
In the present case, this Panel will start by analyzing the scope of the Dispute and if the same may be submitted to UDRP.
Preliminary Issue: Scope of the UDRP
The Uniform Domain Name Dispute Resolution Policy, is not aimed to resolve disputes between parties who might each have legitimate rights in a domain name. The main purpose of the mentioned Policy is the protection of trademark owners from third parties acting without a legitimate interest and in bad faith.
As it was stated in the Final Report of the WIPO Internet Domain Name Process dated April 30, 1999[1], which formed the basis for the ICANN Policy, the scope of the procedure is limited so that it is available only in respect of deliberate, bad faith, abusive, domain name registrations or “cybersquatting” and is not applicable to disputes between parties with competing rights acting in good faith.
The same Report[2], when referring to the above mentioned limitation, is clear when stating that the first limitation would confine the availability of the procedure to cases of deliberate, bad faith abusive registrations.
Other Panelists have followed this interpretation and considered that the Policy is deliberately limited in scope and, accordingly, unable to address all instances of domain name misuse.[3]
This orientation that was proposed in the mentioned Report has been adopted by the UDRP itself and also by several Panelists within UDRP cases.
The Panelists within the Case Number FA0703000944826, Courtney Love v. Brooke Barnett considered that:
“Thus, according to the majority, a dispute, such as the present one, between parties who each have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy.”
In the same Case, the Panel concluded that:
“The two parties present very different accounts of the facts, and use those accounts to support their claims for common law trademark rights in the disputed domain names. The written evidence submitted by the parties is inconclusive.
“When the parties differ markedly with respect to the basic facts, and there is no clear and conclusive written evidence, it is difficult for a Panel operating under the Rules to determine which presentation of the facts is more credible. National courts are better equipped to take evidence and to evaluate its credibility”.
The above mentioned decision is applicable to the present case as discussed below:
Even if it is true that the Complainant has a valid trademark registration and that the disputed domain name <invitrogenindia.com> reproduces the Complainant’s trademark, this Panel wants to stress that the Complaint filed by the Complainant was not clear enough and the facts presented therein were somewhat confusing.
Later on, after the Respondent filed its Response, the Complainant attempted to provide the Panel with more accurate explanations about the factual background of the case. All the explanations provided by the Complainant in its additional submission dated January 17, 2011, have been challenged and rebutted by the Respondent in its submission dated January 24, 2011.
It is evident that both parties have a different interpretation and understanding of the facts surrounding the present dispute, making it impossible for this Panel to come to an effective conclusion based only in the evidence provided by the parties.
From the two different visions presented by the parties, this Panel may conclude that the present dispute, is mostly a commercial or civil dispute between the parties and most important, out of the scope of the UDRP.
Even if the Complainant succeeded to prove that it has a valid trademark registration and that the disputed domain name is confusingly similar to its registered trademark, it failed to prove that he has legitimate interests in the domain name and that the Respondent’s lack of such interest. Moreover, from the evidence that was filed by the parties and from these pleadings, this Panel is forced to conclude that both parties have a prima facie case supporting their legitimate interest on the disputed domain name.
A final conclusion on this point as to which one of the parties should be considered as having the legitimate interest in the disputed domain, cannot be reached with the evidence that is available.
Finally, the Complainant does not prove that the domain name was registered and is being used in bad faith. On the other side, the Respondent claims that the registration of the disputed domain was in good faith.
At this point, both parties presented their divergent positions making it clear for this Panel that the present dispute involves matters out of the scope of the Policy.
For the reasons stated above, this Panel decides to dismiss the Complaint, considering that the same is out of the scope of the UDRP Policy.
Fernando Triana, Esq. Panelist
Dated: January 31, 2010
[1] 30 April 1999 Final Report of the WIPO Internet Domain Name Process, available online at: http://www.wipo.int/amc/en/processes/process1/report/index.html, Para 135.
[2] 30 April 1999 Final Report of the WIPO Internet Domain Name Process, available online at: http://www.wipo.int/amc/en/processes/process1/report/index.html, Para 166.
[3] Camon S.p.A. v. Intelli-Pet, LLC., (WIPO Case No. D2009-1716), March 12, 2010.
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