DECISION

Cygnus, Inc. v. Robert Schumacher c/o HandmadeSites

Claim Number: FA0210000128713

PARTIES

Complainant is Cygnus, Inc., Redwood City, CA (“Complainant”) represented by James R. Davis, II, of Arent Fox Kintner Plotkin & Kahn.  Respondent is Robert Schumacher c/o HandmadeSites, Beverly Hills, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <glucosewatch.com>, registered with Go Daddy Software, Inc.

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.

Alan L. Limbury as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 28, 2002; the Forum received a hard copy of the Complaint on October 28, 2002.

On October 28, 2002, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <glucosewatch.com> is registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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 31, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 20, 2002 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@glucosewatch.com by e-mail.

A timely Response was received and determined to be complete on November 19, 2002.

Complainant filed an Additional Submission on November 25, 2002. This was timely in accordance with the Forum’s Supplemental Rule 7.

On December 9, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant sells medical devices, including a non-invasive automatic glucose monitor called the GlucoWatch Biographer, which is worn on the wrist like a watch. It first used the trademark GLUCOWATCH in commerce in September 1997 and obtained Federal registration of that mark in the U.S. (No. 2,146,593) on March 24, 1998. It has since registered and made application to register that mark and designs that include the word ‘glucowatch’ in the U.S. and elsewhere.  Since 1997 it has promoted its products on its website <glucowatch.com>.

The disputed domain name was registered by Respondent on November 18, 1999.  It is identical or confusingly similar to Complainant’s GLUCOWATCH mark and was registered and is being used in bad faith, as is demonstrated by the following:

· it was registered with actual knowledge of Complainant’s trademark rights because Complainant had previously complained that Respondent was using Complainant’s GLUCOWATCH mark in a URL leading to Respondent’s medical products website;

· Respondent is using the disputed domain name to route Internauts to his <vmpc.com> website, which appears to sell diabetes-related medical products of the kind consumers expect to see at Complainant’s website;

· this is a second attempt to play off Complainant’s GLUCOWATCH mark, constituting a pattern of infringing conduct. This is supported by Respondent’s having also registered the domain names <shopintell.net> and <shopintell.org>, which play off the famous INTEL mark and the Intel Corporation website <shop-intel.com>;

· in an attempt to divert consumers to his site and to justify an improper use of the disputed domain name, Respondent’s website displays a photograph of a medical wristwatch product even though Respondent does not distribute or sell any such product and sold its patent rights in such a product to Bayer years ago;

· in a letter dated June 20, 2001, Respondent’s Counsel conceded that Complainant owns exclusive rights to the GLUCOWATCH mark and offered to sell the disputed domain name registration to Complainant.

Respondent has no rights or legitimate interests in the disputed domain name, based on Complainant’s prior registration of the GLUCOWATCH mark; the correspondence concerning Respondent’s earlier use of that mark in his URL; the offer to sell the disputed domain name registration to Complainant; the admission that any rights Respondent may have had in a wristwatch product were sold to Bayer and the use of the disputed domain name solely to redirect Internauts to Respondent’s pre-existing <vmpc.com> website.

B. Respondent

Respondent is an industrial designer and developer of medical devices and a graphic and website designer. Beginning in 1993, Respondent designed, developed and patented a glucose meter that could be worn on the wrist. Respondent was granted four U.S. patents describing this device, as well as throughout the world. The earliest was U.S. patent No. 5,536, 249 issued on July 16, 1996. The patent rights were subsequently sold to Bayer so the product could be commercialized. The name “glucosewatch” is used by Respondent to showcase one of Respondent’s medical devices successfully developed and licensed.

The disputed domain name is taken from two ordinary descriptive terms and is apt to describe a watch that measures blood glucose. Complainant’s trademark is a slight modification of the same words. Respondent is entitled to fair use of ordinary words to describe the product he developed. Respondent actually used the term ‘glucowatch’ in 1993 and until the patents were sold to Bayer.

In 1998 Complainant asked Respondent to remove “glucowatch” and metatags with “glucowatch” from his website and Respondent complied, since his main interest in having the device on the website was to showcase devices it licenses and sells to health care product manufacturers. Respondent subsequently acquired the disputed domain name to showcase a product on his <vmpc.com> website that hopefully will soon be on the market. The site shows a photograph of the product.

About a year later Respondent received a letter from Complainant’s lawyers and had to retain an attorney to respond. Respondent made a good faith offer to sell the disputed domain name to Complainant but received no reply before this Complaint was filed.

Respondent has as much right to its domain <glucosewatch.com> as Complainant does to <glucowatch.com>. Respondent is making legitimate fair use of the disputed domain name, without intent for commercial gain, and is not misleadingly diverting consumers or tarnishing Complainant’s mark. In the rare circumstances (the most being 5 per month) in which it receives an inquiry about the Glucowatch, Respondent provides Complainant’s <glucowatch.com> URL and explains that Respondent designed and licensed a different watch to another company that is not yet on the market.

Respondent offered to sell the disputed domain name registration to Complainant for $1,000 when this Complaint was received. This was not in bad faith but was an attempt to resolve this matter amicably and fairly.

Respondent, as a website designer, registered <shopintell.com> [sic] for a client, Michaelson and Associates, which has a division called ShopIntell and a company called ShowIntell, neither of which have anything to do with INTEL Corporation.

C. Additional Submissions

Supplementary Rule 7 does not require the Panel to have regard to additional submissions.  Complainant’s additional submission was not sought by the Panel under paragraph 12 of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) nor does the Response raise any issues that Complainant could not reasonably have anticipated. The Panel therefore declines to have regard to it.

FINDINGS

Complainant has not established all the elements required to entitle it to relief.

DISCUSSION

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 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

Essential or virtual identity is sufficient for the purposes of the Policy. See The Stanley Works and Stanley Logistics, Inc v. Camp Creek. Co., Inc., D2000-0113 (WIPO April 13, 2000); see also Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corp. v. S&S Enters. Ltd., D2000-0802 (WIPO Sept. 9, 2000); Nokia Corp. v. Nokiagirls.com a/k/a IBCC, D2000-0102 (WIPO April 18, 2000); Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO April 27, 2000). 

The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the other marketing and use factors, such as the “Sleekcraft factors” – AMF Inc. v. Sleekcraft Boats, [1979] USCA9 691; 599 F.2d 341,346 (9^th Cir. 1979), usually considered in trademark infringement or unfair competition cases. See  BWT Brands, Inc. and British Am. Tobacco (Brands), Inc v. NABR, D2001-1480 (WIPO March 26, 2002); Koninklijke Philips Elecs. N.V. v. In Seo Kim, D2001-1195 (WIPO Nov. 12, 2001); Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001); Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, Inc., D2001-1121 (WIPO Nov. 7, 2001) and the cases there cited. See also the similar approach adopted by the U.S. Federal court in N. Light Tech., Inc. v. N. Lights Club 2000 U.S. Dist. LEXIS 4732 (D. Mass. Mar 31, 2000).

Here the disputed domain name differs from Complainant’s mark only in that it contains the additional letters “se” immediately before the word “watch” (the gTLD being inconsequential). These letters give precision to the concepts of “glucose” and “watch” that are less clearly conveyed by the mark GLUCOWATCH.  The Panel finds the disputed domain name is virtually identical and confusingly similar to Complainant’s mark.

Complainant has established this element of its case.

Rights or Legitimate Interests

The Panel infers that Complainant has not authorized nor licensed Respondent to use its trademark GLUCOWATCH nor to register the disputed domain name. However, the trademark is clearly a contraction of the descriptive words “glucose watch” and is used in relation to glucose watches. It is clearly a weak mark in relation to such goods. No doubt an application to register GLUCOSEWATCH as a trademark in relation to glucose watches would fail for descriptiveness. To prevent accurate descriptive use of the words “glucose watch” in these circumstances would be akin to giving “to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.” See Hornsby Building Info. Centre Pty. Ltd. v. Sydney Building Info. Centre Ltd., [1978] HCA 11; 140 CLR 216 at 229 (1978).

Respondent has shown that, before Complainant first used the trademark GLUCOWATCH in commerce in the U.S. in 1997, Respondent invented and patented a medical device accurately described in ordinary language as a glucose watch, which then and since he has depicted, with other devices, on his <vmpc.com> website. The patent rights have been sold but Respondent has continued to “showcase” the device, using the disputed domain name to lead Internauts to his site. The home page exhibited in the Response shows that VMPC stands for Visionary Medical Products Corporation and contains the statement:

Visionary Medical Products Corporation (VMPC) provides leading edge medical devices for safe drug delivery, as well as the design of diabetes care products.  Many of its medical device patents and technologies are licensed by, or available for license to medical product manufacturers and pharmaceutical companies. In addition, VMPC provides contact design services.

Shown below are just a few of VPMC’s innovative products.

There follow depictions of several products, including one described as a “Glucose Watch”.

The Panel does not accept Complainant’s contention that because Respondent has sold the patent rights to his glucose watch, he has no legitimate interest in using the disputed domain name to lead Internauts to a website showcasing the glucose watch he invented.  The successful sale of those rights adds credibility to the enterprise being promoted. The site does not appear to be offering for sale all the products depicted and clearly indicates that rights in one or more of them may have been sold. Further, it appears aimed at product manufacturers and pharmaceutical companies, rather than at patients or health care professionals, to whom Complainant’s business appears to be directed.

Respondent initially used the word “glucowatch” on his website and in the metatags associated with it. He removed these when requested to do so by Complainant. There is no evidence that Respondent was previously aware of Complainant or its mark.  Some 10 months later, Respondent registered the disputed domain name. Respondent was thus fully aware, when he registered the disputed domain name, of Complainant’s mark. That knowledge does not necessarily lead to the conclusion that Respondent has no legitimate interest in the disputed domain name.

So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of
the public will be confused whatever the differentiating words may be. Office Cleaning Servs. Ltd. v. Westminster Window and Gen. Cleaners Ltd.,  63 RPC 39, at p 43, (1946) (per Lord Simonds). 

The Panel finds that Respondent was entitled to use the descriptive words “glucose watch” in a domain name to direct Internauts to his website where he described accurately as a glucose watch the device he invented, knowing that Complainant’s mark GLUCOWATCH identifies its particular brand of glucose watch. Despite Respondent’s knowledge that, at the rate of up to 5 per month, consumers looking for Complainant’s website arrive at Respondent’s website, the Panel finds Respondent is making fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish Complainant’s mark.

Complainant has failed to establish this element of its case.

Registration and Use in Bad Faith

Respondent was entitled to take advantage of the distinction between Complainant’s registered trademark and the descriptive words “glucose watch” in registering the disputed domain name, despite Respondent’s knowledge of Complainant’s trademark rights in GLUCOWATCH. The suggestion that Respondent would be prepared to sell the disputed domain name registration to Complainant, first made by Respondent’s attorney over 18 months after registration of the disputed domain name, does not satisfy the Panel that sale at a profit to Complainant was Respondent’s primary purpose in registering the domain name, as required to establish bad faith registration and use under Policy ¶ 4(b)(i).

As to Policy ¶ 4(b)(ii), it follows from the difference between the disputed domain name and Complainant’s trademark and from the Panel’s finding as to the purpose of Respondent in registering the disputed domain name that the Panel does not accept that Respondent did so in order to prevent Complainant from reflecting its mark in a corresponding domain name.  The registration in Respondent’s name of the domain names <shopintell.net> and <shopintell.org> is therefore irrelevant.

As to Policy ¶ 4(b)(iii), it does not appear that the parties are competitors but even if they are, the Panel does not find that Respondent’s primary purpose in registering the disputed domain name was to disrupt Complainant’s business.

As to Policy ¶ 4(b)(iv), Respondent is using the disputed domain name in order to showcase his products, not to attract Internauts to his website by creating the likelihood of confusion with Complainant’s mark. This is so even though the domain name and the mark are confusingly similar and even though Respondent was aware of Complainant’s mark before he registered the disputed domain name. Confusion of this kind is inevitable where a trademark comprises descriptive words and the domain name is used accurately and descriptively. In such cases, the purpose of the domain name holder and the finding on the issue of legitimacy will have a significant bearing on the issue of bad faith. 

Complainant has not established this element of its case.

DECISION

Pursuant to paragraphs 4(a) of the Policy and 15(e) of the Rules, the Panel concludes that this dispute is not within the scope of the Policy. The Complaint is therefore DISMISSED.

Alan L. Limbury,  Panelist
Dated: December 17, 2002

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