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Purkinje, Inc. and Purkinje U.S.A., Inc. v. Purkinje Systems LLC [2005] GENDND 785 (12 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Purkinje, Inc. and Purkinje U.S.A., Inc. v. Purkinje Systems LLC

Case No. D2005-0265

1. The Parties

The Complainants are Purkinje, Inc., Montreal, Quebec, Canada and Purkinje U.S.A., Inc., San Antonio, Texas, United States of America, represented by Hinckley, Allen & Snyder, LLP, United States of America.

The Respondent is Purkinje Systems LLC, Richmond, Virginia, United States of America, represented by McGuire Woods LLP, United States of America.

2. The Domain Names and Registrar

The disputed domain names are <purkinje.net>, <purkinjesystems.com> and <purkinjesystems.net> (hereafter “the domain names”) and are registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2005. On March 15, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain names at issue. On March 16, 2005, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the ”Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 21, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 10, 2005. The Response was filed with the Center on April 8, 2005.

The Center appointed Dan Hunter as the sole panelist in this matter on April 28, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

A. The Complainant and its Mark

The first-named Complainant is a Canadian corporation with its principal place of business in Montreal, Canada; and the second-named Complainant is its U.S. subsidiary incorporated in Texas, having a place of business in San Antonio, Texas. These companies provide software services and systems to healthcare organizations in the United States and Canada.

The first-named Complainant has two Canadian trademark registrations, and the second-named Complainant has one US trademark registration, for the mark “PURKINJE” in respect of various computer software and services in their respective countries. These marks were registered between March and May of 2000. The term “Purkinje” is not the name of any of the principals of the Complainants, nor is it an invented word. The term is derived from the name of the Czech anatomical physiologist Jan Evangelista Purkinje (1787-1869), who was renowned for his many medical discoveries, including the discovery of the cerebellar and cardiac structures that allow for the transmission and processing of neural impulses, and which now bear his name.

The Complainants registered the domain name <purkinje.com> in 1997, and have operated a web site at that URL since that time. They use this site to promote their medical technology products and services and electronic medical records products and services, as well as to provide information to their partners and customers.

B. The Respondent

The Respondent is an American company, with its principal place of business in Richmond, Virginia. It operates an information technology consulting business.

The Respondent registered the domain names in issue with Network Solutions LLC between 2001 and 2004. It registered <purkinjesystems.net> on June 22, 2001, <purkinjesystems.com> on June 5, 2003, and <purkinje.net> on March 13, 2004. The domain names resolve to a site which provides promotional and explanatory information material about the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainants assert that the Respondent’s domain name is identical or confusingly similar to the Complainant’s mark. Specifically, the Complainants assert:

(1) the Respondent’s <purkinje.net>, <purkinjesystems.com> and <purkinjesystems.net> domain names all encompass Complainants’ entire distinctive PURKINJE registered mark. A domain name is similar to a trademark for purposes of the first factor of the Policy if it incorporates Complainant’s mark in its entirety. Wal-Mart Stores, Inc. v. MacLeod, WIPO Case No. D2000-0662 (September 19, 2000); see also Broadcom Corp. v. Myers & Myers, NAF Claim No. 100136 (October 24, 2001) (finding the domain name <broadcomusa.com> is confusingly similar to Complainant’s BRADCOM mark).

The Complainants assert that the Respondent has no legitimate interests or rights in the domain name. Specifically, the Complainants assert (in pertinent part):

(1) Respondent did not prior to this dispute use the <purkinje.net>, <purkinjesystems.com> and <purkinjesystems.net> domain names, or a trademark corresponding to such domain names, in connection with a bona fide offering of goods or services nor has Respondent made a legitimate non-commercial or fair use of such domain names.

(2) Purkinje’s United States registration further provides “constructive notice” to Respondent and all others of Purkinje’s trademark rights in PURKINJE. Biogen, Inc. v. Kel Ellis, WIPO Case No. D2002-0679 (September 10, 2000) (finding that United States registration of the mark AVONEX constitutes constructive notice of the Complainant’s rights in such mark); Staples, inc. et al. v. John Morgan, WIPO Case No. D2004-0537 (September 20, 2004) (applying the principal of constructive notice of Complainant’s trademark registrations). Therefore, Respondent cannot claim that it had no knowledge of Purkinje’s rights in the PURKINJE registered mark when it registered the subject domain names.

The Complainants assert that the Respondent registered the domain name and is using it in bad faith. Specifically, the Complainants assert (in pertinent part):

(1) Respondent registered and is using the <purkinje.net>, <purkinjesystems.com> and <purkinjesystems.net> domain names in bad faith primarily for the purpose of intentionally attracting for commercial gain Internet users to Respondent’s competing website where it advertises and promotes its competing medical technology products and services by creating a likelihood of confusion with the Complainants’ registered marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of a product or service on Respondent’s website.

Accordingly, the Complainants submit that the Panel should order that the domain name be transferred to the Complainant.

B. Respondent

The Respondent does not specifically reject the Complainants’ assertion that the Respondent’s domain name is identical or confusingly similar to the Complainant’s mark, but demands that the Complainants be put to a strict proof of their assertions.

The Respondent denies the Complainants’ assertion that the Respondent has no legitimate interests or rights in the domain name. Specifically, the Respondent asserts:

(1) The Respondent has used the domain names in promoting its business prior to the initiation of this dispute. The Respondent provides technology consulting services, including project management, network security, and general technology management services. The Respondent has been offering such services under the name “Purkinje Systems” since December 2002.

(2) Notwithstanding the Complainants’ assertions to the contrary, the Respondent was unaware of the Complainants’ trademark registrations.

(3) Related to this, most of the Center’s panels have declined to introduce the concept of “constructive notice” in decisions under the Policy.

The Respondent rejects the Complainants’ assertion that the Respondent registered the domain name and is using it in bad faith. Specifically, the Respondent asserts (in pertinent part):

(1) The Respondent registered and is using the domain names for the purposes of promoting its own business.

(1) The Complainants failed to provide any compelling evidence that the Respondent registered or is using the domain names in bad faith.

Accordingly, the Respondent submits that the Panel should decline to order that the domain name be transferred to the Complainants.

6. Discussion and Findings

The Policy, adopted by the Internet Corporation for Assigned Names and Numbers on August 26, 1999, applies to domain name registrations made in the <.net> and <.org> namespaces. Paragraph 4(a). of the Policy requires a Complainant to make out three elements to succeed in an administrative proceeding initiated under the Policy:

1. The Complainant has rights in a trade or service mark, with which Respondent’s domain name is identical or confusingly similar (Paragraph 4(a)(i)); and

2. The Respondent has no rights or legitimate interests in respect of the domain name (Paragraph 4(a)(ii)); and

3. The Respondent registered and is using the domain name in bad faith (Paragraph 4(a)(iii)).

1. The Complainants have Rights in a Trade or Service Mark, with which Respondent’s Domain Names are Identical or Confusingly Similar

There are two requirements that a Complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain names are identical or confusingly similar to the marks.

The Complainants have provided the registration documents for its various “PURKINJE” marks registered in Canada and the United States. The Panel concludes that the Complainants, as registered owners of those marks, have established rights in a trademark, sufficient for the purposes of paragraph 4(a)(i).

The second requirement is that the domain name be identical or confusingly similar to the mark. The <purkinje.net> domain name is identical to the registered marks, together with the <.net> top level domain signifier. By now it is well established that the TLD signifier does not change the meaning of the name, and hence the Panel concludes that the domain name is, for the purposes of the Policy, identical to the Complainants’ marks.

The domain names, <purkinjesystems.com> and <purkinjesystems.net> are simply the Complainants’ word mark, together with the generic computing term “systems” and the appropriate top level domain signifier. The additional suffix “systems” does not change the user-understanding of the domain name, and hence the Panel concludes that these domain names are, for the purposes of the Policy, confusingly similar to the Complainants’ marks.

The Complainants have therefore shown that they have the appropriate rights in a trademark, and that the domain names are identical or confusingly similar to this mark. The Panel concludes therefore that the Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy.

2. The Respondent has no Rights or Legitimate Interests in Respect of the Domain Names

The Complainants assert that the Respondent has no rights or legitimate interests in the domain names, as required under paragraph 4(a)(ii) of the Policy. They make a number of assertions as to this point, most notably that the Respondent is making no bona fide offering of goods or services, and that their trademark registrations provide the Respondent constructive knowledge of their trademark and so any use of the term “PURKINJE” is forbidden.

The Respondent rejects these assertions, and provides evidence of the goods and services it provides at the domain names.

The Panel notes, based on the case file, that it seems more likely that the Respondent registered the disputed domain names to promote its own business without prior knowledge of Complainants’ trademark. The Respondent has demonstrated a legitimate interest in the name, and it maintains a good faith business at the domain names. The similarity in the domain names can be attributed to the independent use of a famous physician’s name. Since the Complainants cannot demonstrate that the Respondent has no right to the disputed domain names, the Panel concludes that the Complaint fails. Moreover, the Panel declines to apply the concept of constructive knowledge in this case. As mentioned above, the reason for registering the domain names seems to have been to promote the Respondent’s own business, not to freeride on the Complainant’s goodwill in its trademark.

The Complainants have therefore failed to satisfy the requirements of paragraph 4(a)(ii) of the Policy.

3. The Respondent Registered and is using the Domain Name in Bad Faith

Since the requirements of the Policy are conjunctive, there is no need for the Panel to conclude on this point.

7. Decision

For the foregoing reasons, the Complaint is denied.

Dan Hunter
Sole Panelist

Dated: May 12, 2005