cytospin.com

WIPO Arbitration and Mediation Center

The Complainant is Thermo Electron Corporationof 81, Wyman Street, Waltham, Massachusetts, United States of America, represented by Douglas N. Masters Esq., and Gary A. Pearson II, Esq., of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson of Chicago.

The Respondents are Sven Camrath and Joachim Camrath, both of Platanenring 134, 61352 Bad Homburg, Germany.

The disputed domain name is <cytospin.com>.

The Registrar is Schlund + Partner AG of Karlsruhe, Germany.

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").

The Complaint was received by the Center by email on August 8, 2001, and in hard copy on August 10, 2001. On August 9, 2001, Respondent Joachim Camrath informed the Center by email:

The Complaint was acknowledged on August 10, 2001. That day registration details were sought from the Registrar and the Center informed Complainant that if it decided to seek a settlement with Respondents, Complainant should contact the Center if it wished to suspend the proceeding until the transfer has been made.

On August 21, 2001, the Registrar confirmed that the disputed domain name is registered in the name of Respondent Sven Camrath, with contact details being Firma Tharmac GmbH, Herr Joachim R. Camrath, at the address mentioned above; that the Policy applies to the disputed domain name.

At the request of Complainant, the Center on August 24, 2001 and again on September 25, 2001 gave notice of the suspension of the proceeding, the latter notice expiring on October 23, 2001. Complainant informed the Center on October 24, 2001 that it wished to continue with the proceedings.

On October 26, 2001, the Center satisfied itself that the Complaint complied with all formal requirements (including payment of the prescribed fee) and on October 26, 2001 formally dispatched copies of the Complaint by post/courier (with enclosures) to Respondent Sven Camrath at the address as recorded with the Registrar and by email (without attachments). The Center included with that material a letter dated October 26, 2001, containing notification of the commencement of this administrative proceeding, with copies (of the Complaint without attachments) to the Complainant, the Registrar and ICANN.

The last day specified by the Center for a Response was November 15, 2001. No Response was filed and on November 16, 2001, the Center notified the parties of the Respondent’s default.

The Complainant elected to have the case decided by a single-member Administrative Panel ("the Panel") and on November 22, 2001, the Center notified the parties of the appointment of Alan L. Limbury as panelist, Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality and Independence. On November 22, 2001, the Center transmitted the case file to the Panel and notified the parties of the projected decision date of December 4, 2001.

The Panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the Panel agrees with the Center’s assessment concerning the Complaint’s compliance with the formal requirements; the Center discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint; no Response was filed within the time specified in the Rules and the Panel was properly constituted.

The language of the proceedings is English. Some of the Exhibits to the Complaint are in German.

Complainant is in the business of selling instrumentation and consumables in the anatomic pathology market, which includes histology and cytology. Complainant’s products allow cells and tissue to be prepared for cancer detection.

Complainant has used the trademark CYTOSPIN in the United States since 1967, where the mark has been registered since September 1982. The CYTOSPIN mark has also been registered in Germany since November 16, 1997.

Respondent Joachim Camrath was, for many years, managing Director of Complainant’s German subsidiary, Shandon GmbH, with responsibilities which included the sale of cytospin products in Germany. His employment was terminated effective September 30, 2000 and shortly thereafter, he started Tharmac GmbH, a business selling instrumentation and consumables in the anatomic pathology market in direct competition with Complainant.

The disputed domain name was registered on November 7, 2000 in the name of Respondent Sven Camrath, the 15 year old son of Joachim Camrath.

Complainant requests the Panel to direct that <cytospin.com> be transferred to the Complainant upon the following legal grounds:

The disputed domain name is identical to Complainant's CYTOSPIN trademark.

Respondents are not affiliated with Complainant and have not received any express or implied licence or authorization to use the CYTOSPIN mark in a domain name or in any other matter.

Respondents’ registration and use of the disputed domain name is tainted with evidence of bad faith intent. As evidenced by the web pages shown in Annex B, the domain name is now being used as a link to the website located at thermac.de. Thus, Respondents’ ongoing use of the disputed domain name continues to generate initial interest confusion among customers who come to the site looking for Complainant’s goods and services and are redirected to Respondents’ website.

In light of: (i) the fame of Complainant’s CYTOSPIN mark; (ii) Respondents’ registration and use of the disputed domain name to create a likelihood of confusion with Complainant’s trademark; and (iii) the absence of any plausible use of the disputed domain name that would not be unlawful, Respondents’ registration and use of the disputed domain name should be held to be in bad faith in accordance with Paragraph 4 (a) (iii) of the Policy.

No Response was filed. However, both before and during the suspensions of this administrative proceeding, it has been made clear on behalf of Respondents that they wish to transfer the disputed domain name to Complainant.

Under paragraph 15(a) of the Rules, the Panel must decide this Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The panel draws two inferences where a Respondent has failed to submit a response: (a) the Respondent does not deny the facts which Complainant asserts and (b) the Respondent does not deny the conclusions which Complainant asserts can be drawn from those facts: Reuters Limited v. Global Net 2000, Inc. (WIPO Case No. D2000-0441). See also Hewlett-Packard Company v. Full System (Case FA 0094637); David G. Cook v. This Domain is For Sale (Case FA0094957) and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge (Case FA0094925).

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. (WIPO Case No. D2000-0113), Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd. (WIPO Case No. D2000-0802); Nokia Corporation v. Nokiagirls.com a.k.a IBCC (WIPO Case No. D2000-0102) and Blue Sky Software Corp. v. Digital Sierra Inc. (WIPO Case No. D2000-0165).

The Panel finds the disputed domain name is identical to Complainant’s trademark CYTOSPIN.

The Complainant has established this element.

Complainant has not authorized Respondents to use its trademark nor to register the disputed domain name. Respondents are not known by the disputed domain name.

The panel finds the Complainant has established this element. Respondents have no rights or legitimate interest in the disputed domain name.

The circumstances enumerated in paragraph 4(b) of the Policy are not exhaustive: bad faith registration and use may be established in other ways. In SportSoft Golf, Inc. v. Hale Irwin’s Golfers’ Passport (NAF case FA94956) a finding of bad faith was made where the respondent "knew or should have known" of the registration and use of the trade mark prior to registering the domain name. Likewise Marriott International, Inc. v. John Marriot (NAF case FA94737); Canada Inc. v. Sandro Ursino (eResolution case AF-0211) and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com (NAF case FA95037).

Respondent Joachim Camrath is a former employee of Complainant’s German subsidiary with responsibililty for sales of Complainant’s cytospin products in that country. Within a few weeks of the termination of his employment the disputed domain name was registered in the name of his son, a minor, with contact details being Firma "Tharmac GmbH, Herr Joachim Camrath", a business conducted by Joachim Camrath in direct competition with Complainant. The panel is satisfied that the mind and will of Joachim Camrath were behind the registration and that he used the name of his son, a minor, in an endeavour to avoid personal responsibility for his action. The panel concludes that the disputed domain name was registered in bad faith. See Becton, Dickinson and Company v. Garry Harper (WIPO Case No. D2001-1058).

The panel has carefully examined Annex B to the Complaint but is unable to conclude that the disputed domain name has been used to redirect Internauts to the tharmac.de web site. Indeed, there is no evidence of active use.

The ‘use’ requirement has been found not to require positive action, inaction being within the concept: see Telstra Corporation Limitedv.Nuclear Marshmallows, (WIPO Case No. D2000-0003); Barney’s, Inc. v.BNY Bulletin Board (WIPO Case No. D2000-0059); CBS Broadcasting, Inc.v.Dennis Toeppen (WIPO Case No. D2000-0400); Video Networks Limited v. Larry Joe King (WIPO Case No. D2000-0487); Recordati S.P.A. v.Domain Name Clearing Company (WIPO Case No. D2000-0194) and Revlon Consumer Products Corporationv.Yoram Yosef aka Joe Goldman (WIPO Case No. D2000-0468).

Here the panel takes into account the competitive nature of Respondent Joachim Camrath’s business; the knowledge and experience of Joachim Camrath of Complainant’s business and of its CYTOSPIN trademark; the absence of any explanation from the Respondents as to why the disputed domain name has not been used and the period of 9 months during which it remained inactive prior to the initiation of this proceeding. The panel finds the disputed domain name is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. SeeDisney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol (WIPO Case No. D2001-0489).

The Complainant has established this element.

7. Decision

Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs that the domain name <cytospin.com> be transferred to Complainant.

Alan L. Limbury
Sole Panelist

Dated: December 3, 2001