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Generic Top Level Domain Name (gTLD) Decisions |
Caliper Technologies Corp. v. NorChip AS
Claim Number: FA0204000110842
PARTIES
Complainant
is Stephen R. Flach d/b/a Caliper Technologies Corp., Mountain
View, CA, USA (“Complainant”). Respondent is Einar Morland NorChip AS, Klokkarstua, NORWAY (“Respondent”)
represented by Julius Stobbs, of Boult Wade Tennant.
The
domain name at issue is <LabChip.biz>,
registered with ASCIO Technologies, Inc.
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.
Clive
Elliott as Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual
Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel
and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 25, 2002; the Forum
received a hard copy of the Complaint on
April 26, 2002.
On
April 30, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 20,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance
with paragraph 2(a) of the Rules for
the Start-up Trademark Opposition Policy (the “STOP Rules”).
A
timely Response was received and determined to be complete on May 17, 2002.
On June 27, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Clive Elliott as
the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A. Complainant
LabChip
is a registered trademark of Caliper Technologies Corp., registered on February
22, 2000 under Registration Number 2,322,022
with the United States Patent and
Trademark Office. A copy of the
Certificate of Registration has been supplied.
Complainant states LabChip is used to
brand the microfluidic technology developed by it and for which it holds
patents on the design
and operation of these microfluidic chips. Complainant
states that it developed this technology in 1996 and has been selling these
chips since 1997.
LabChip
is currently used by Complainant to market existing products and is
described
in its technical literature as the core technology of its microfluidic
products.
Complainant
has also registered <LabChip.com>, <LabChip.net>,
<LabChip.tv>, <LabChip.org>, <LabChip.ws>,
<LabChip.cc>
and <LabChip.bz> domains for the purpose of directing interested parties
to its LabChip products.
It is asserted
that the use of <LabChip.biz>
by Respondent interferes with the dissemination of information about the
LabChip products made by the Complainant
It
is asserted that the products of Respondent are known by the names AutoChip,
IMRAMP, NASB and Molecular Beacons. It
is also asserted that the term LabChip is nowhere used to describe any of these
products.
Complainant
argues that Respondent has registered the domain <LabChip.biz> with no intention of using it to describe any
of their existing or future products or lines of business. Accordingly, it is submitted that, having no
use for the domain <LabChip.biz>,
the Respondent has registered it solely to prevent the Complainant from using
it as a domain name which describes the technology
and directs customers to a
site listing LabChip products.
B. Respondent
Respondent
admits that, according to the evidence submitted, that Complainant appears to
be the registered proprietor of the trade
mark LabChip registered in the United
States. The Respondent however states
that it was unaware of the existence of any proprietary right in the word
labchip and that it was unaware
of the existence of the Complainant's US
registration of the trade mark.
Although
the Complainant has set out details of the nature of the products and services
offered under the LabChip mark, no common-law
rights are claimed and the
Respondent makes no admission as to the existence of any such rights. The Complainant has not given details of the
geographical location of its use of the mark, which would be required to define
the existence
and scope of any such common-law trade mark
"right".
Respondent
also admits that it has not made any use of the domain name as yet as this has
been prevented by the STOP procedure.
Secondly, the Complainant's registration of several domain names
incorporating labchip grants no right to register the same name in
different
domains. Indeed, the fact that the
Complainant already has several domain names incorporating the word labchip
indicates that the Complainant
is already able to disseminate information about
its own products.
Respondent
points out that it registered the domain names <LabChip.no> and
<LabChip.info> as of 12 March 2001 and 20 September
2001respectively and
this was before notice of the commencement of this dispute. It is also
mentioned that both of these domain names
point to the Respondent's main site,
<norchip.com>.
Respondent
states that other parties unconnected with either the Complainant or Respondent
have also registered domain names consisting
of the word labchip and examples
were given.
Respondent
claims that many parties within this area of expertise use the generic term
labchip in a purely descriptive manner, to
describe a particular class of product
It also asserts Respondent has an entirely legitimate interest in using the
term this way,
either as a domain name to point to its own website, or to refer
to its own products which are described by the term.
Respondent
claims that it has used the word labchip as a generic term to describe some of
their own products and it commenced doing
so as early as June 1998. An extract from the Respondent's 1998
Business plan states:
"Norchip AS possesses highly
specialised know-how and experience related to bio-technology, bio-informatics,
molecular and genetic
biology, relational database software and software
development and project administration and organisation. On this basis, NorChip
AS intends to develop e.g. the following applications:
LabChip
is designed to break down, identify, concentrate and separate micro-organisms
in any sample media. The Labchip will be constructed as an
user-friendly, integrated and compact instrument for direct in-situ use." (Emphasis added)
Respondent
claims to have a legitimate interest in using what it and other parties
consider a generic term to refer to their own products.
In
its use of the domain names <LabChip.no> and <LabChip.info>, the
Respondent has made further use of names corresponding
to the domain name <LabChip.biz> in connection with
a bona fide offering of goods or services, as these names are used to point to
its main site <norchip.com>,
where details of its microfabricated fluidic
systems are available. On this basis it is submitted that Respondent has demonstrated
its legitimate interest in the domain name.
It
is argued that, even if Respondent had not used the term at all, this would not
affect its legitimate interest to do so: use of
a generic, descriptive term in
reference to the products it describes is inherently legitimate. It is
submitted that it is for this
reason, coupled with its own unhindered use of
the term for some four years, that the Registrant chose the domain name and
that it
had a legitimate interest in doing so.
Further,
it is suggested that even if Respondent had made no use of the term labchip,
its belief that the term is generic and its
awareness of various parties' use
of the term in a generic way would lead to an entirely legitimate interest in
the domain name to
allow Internet users to identify its own products.
Respondent
contends that even if it were established that the term labchip were not
generic, Respondent cannot be considered to have
acted in bad faith in
registering the domain name given nearly four years unhindered use and
Respondents reasonable expectation that
it could continue such use. However, it submits that the evidence
showing various parties' use of the term, labchip as a descriptive and/or
generic term referring
to a particular kind of product, strongly supports the
Respondents belief that the term is indeed generic.
Finally,
Respondent asserts that the Complainant has not been able to provide any
evidence to indicate that any of the circumstances
indicating bad-faith
registration as set out in paragraph 4(b) of the STOP Policy are present.
For the reasons set out below it is found
that Complainant has failed to satisfy the requirements of paragraph 4 (a) of
the STOP Policy
and accordingly the Complaint is dismissed.
Paragraph 15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order
that a domain name should be
transferred:
(1) the domain name
is identical to a trademark or service mark in which the Complainant has rights;
and
(2) the Respondent has
no rights or legitimate interests in respect of the domain name; and
(3)
the domain name has been registered or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these
STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service
mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service mark
in which
a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (gTLD) in the
disputed domain name is not a factor for purposes of determining
that a
disputed domain name is not identical to the mark in which the Complainant
asserts rights.
Complainant
has a registration for the trade mark LabChip in the USA in relation to various
scientific apparatus. The registration
is dated February 22, 2000 and covers a relatively restrictive category of
goods. Respondent does not dispute the
registration as such. Leaving aside the
descriptive element "biz", it is clear that the registered trade mark
and disputed domain name are identical.
Accordingly,
it is possible to conclude without difficulty, that the domain name is
identical to a trade mark in which Complainant
has rights. Accordingly, the first ground is made out by
the Complainant.
While
Respondent accepts Complainant has rights in the USA by way of a trade mark
registration, it asserts it was unaware of such
trade mark registration. It also asserts that labchip is both
descriptive and generic of a particular scientific process.
A
reasonable body of evidence has been lodged, illustrating that the term labchip
is indeed descriptive of the process as described
by the Respondent. Accordingly, there is merit in Respondent's
contention that it was both a reasonable and legitimate belief that the term
was generic
and that it would therefore be an appropriate term to use in a
domain name to allow Internet users to identify Respondent's own products.
While
Complainant asserts that Respondent has used other names to identify its
products and it had no real intention of using the
disputed domain name to
describe existing or future products, this assertion ignores the fact that
others in the industry have used
the term labchip/lab chip to refer to the
relevant process. Further, it does not
address Respondent's primary argument, namely that it had used the term
labchip/lab chip as a generic term to
describe some of its own products as
early as June 1998. In this regard,
reference is made to Respondent's business plan.
The
question therefore becomes whether the registration of Complainant's mark in
the USA should prevent an entity in another country
from using a descriptive
and/or generic term and one which it itself had used before the relevant
registration date. More appropriately,
within the context of this particular inquiry, the question is whether this
situation points towards or away from
a right or legitimate interest?
In
the Panel's view it points towards a legitimate interest. Further, there is no compelling evidence to
suggest that the conclusion should be otherwise.
Accordingly,
it is found that Respondent has rights or legitimate interest in the domain
name in dispute. Accordingly, the Panel dismisses
the Complaint and determines
that subsequent challenges to this domain name, as against Respondent under the
STOP Policy shall not
be permitted against this domain name.
While the Complainant only need establish
that either the registration or use was in bad faith, this issue is not
determinative in this particular case.
That is, as it has been found that Complainant fails to establish the
above ground.
Notwithstanding this, for the sake of
completeness, it is found that for much the same reasons as expressed above,
neither the registration
nor use was/is in bad faith. Obviously, there has been no use of the domain name, allegedly
because of the STOP procedure. But if
there had been use the Panel would have found such use acceptable and not in
bad faith.
Insofar as registration is concerned,
Respondent notes that Complainant does not allege or rely upon a common law
reputation. Further, apart from the
trade mark registration little evidence was given as to the scope and extent of
any possible reputation in
the LabChip trade mark/name. Accordingly, when Respondent says that it
had no knowledge of Complainant's trade mark registration at the material date
there is
no compelling evidentiary basis for doubting that assertion.
Accordingly, the only real basis upon
which such assertion could be challenged would be constructive knowledge of
Complainant's USA
trade mark registration.
However, for the reasons given above and in particular given the
descriptive and/or generic nature of the term labchip/lab chip, it
is felt that
constructive knowledge should not be imputed to the Respondent.
DECISION
In
view of the above the Complaint is dismissed. Further challenges against this domain name under the STOP Policy
shall not be permitted.
Clive Elliott, Panelist
Dated: 10 July 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/1098.html