respiratorius.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Respiratorius AB v. Dr. Bengt Skogvall, WhoisGuard

Case No. D2007-1447

1. The Parties

The Complainant is Respiratorius AB, Lund, Sweden, represented by Advokatbyrån Gulliksson AB, Sweden.

The Respondents are (1) Dr. Bengt Skogvall, c/o ITV Solutions GmbH, Berlin, Germany; and (2) WhoisGuard, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <respiratorius.com> is registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2007. On October 3, 2007, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain name at issue. On October 4, 2007, eNom, Inc. transmitted by email to the Center its verification response confirming registrant and contact information for the disputed domain name which differed in part from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 9, 2007, providing the registrant and contact information confirmed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on October 11, 2007. The Center verified that the Complaint together with the amendment to 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 October 16, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 5, 2007. The Response was filed with the Center on November 5, 2007.

The Center appointed David Perkins as the sole panelist in this matter on November 12, 2007. 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.

On November 9, 2007, the Complainant made a supplemental filing to the Response and on November 12, 2007, the Respondent filed a Supplemental Response thereto, Pursuant to the Rules, in addition to the Complaint and the Response, the Panel may request in its sole discretion, further statements or documents from either of the parties (Rule 12). However, there is no Rule permitting the unilateral submission of such additional statements by the parties. Notwithstanding, Rule 10 provides the Panel with power to admit such additional material. Since both parties have submitted further statements and since this has not delayed this administrative proceeding, the Panel is prepared to admit these further statements.

4. Factual Background

4.A. The Complainant

4.A.1 The Complaint provides no information as to the Complainant’s business. However, from its website, it appears that the Complainant was founded in 1999 as a spin-off from the University of Lund in Sweden. Its co-founders were Staffan Skogvall and Christer Fåhraeus.

4.A.2 The Company’s activities involve research in relation to two of what it describes as the most common and fastest growing diseases, namely Chronic Obstructive Pulmonary Disease [COPD] and asthma. For over 10 years that research has concentrated on bronchi (the small airways) and that research has resulted in the discovery and patenting of a new substance class having a novel mechanism of action which provides a superior and long-term relaxation of small human airways. Within the next 3 years, the Complainant’s aim is to develop its projects into clinical Phase IIa studies and thereafter establish collaboration with an international pharmaceutical company capable of undertaking Phase III clinical trials, the regulatory registration process, production and sales and marketing of a treatment presumably derived from the new substance class.

4.A.3 One of the two co-founders, Christer Fåhraeus, is the Chairman of the Complainant Company. His co-founder, Staffan Skogvall, has apparently left the Company as a result of a disagreement. The First Respondent, Dr. Bengt Skogvall, is Mr. Staffan Skogvall’s brother.

The Complainant’s RESPIRATORIUS trademark

4.A.4 The Complainant is the owner of the following registered trademarks.

The Complainant says that the RESPIRATORIUS trademark has been used continuously for several years in both Sweden and Internationally. As to the Community Trademark, no opposition was filed within the three months opposition period.

The Complainant’s domain name

4.A.5 The Complainant is the owner of the domain name <respiratorius.se> which was created on June 7, 1999.

4.B. The Respondents

4.B.1 The domain name in issue <respiratorius.com> was created on May 30, 2005, and is currently a protected name identified by the Registrar as being WhoisGuard, the Second Respondent.

4.B.2 As stated, according to the Complainant, the First Respondent is the brother of the co-Founder of the Complainant Company. This is confirmed in the Response. The First Respondent says that the domain name in issue was registered by him some 12 months before the conflict which resulted in his brother leaving the Complainant Company.

4.B.3 The First Respondent says that at that time (namely, mid 2005) he suggested to his brother, who was then Chief Executive Officer and President of the Complainant as well as being a substantial shareholder in that Company, that it would be a good thing for the Company to have a web page, which it did not at that time have despite the fact that its <respiratorius.se> domain name had been created in 1999. The First Respondent says that he then offered the domain name in issue to the Complainant to be used with its Company web page.

4.B.4 Although the Complainant did then establish a website, it used the <respiratorius.se> domain name for that site. The First Respondent explains that the domain name in issue was “only used as an alias” so that if users wrongly looked for <respiratorius.com> they would be immediately directed to the web site at <respiratorius.se>.

4.B.5 The First Respondent explains that his brother was “thrown out of” the Complainant Company in May 2006 and his dispute with the Company has not been resolved and still continues. In the circumstances, the First Respondent says he was not inclined to transfer the domain name in issue to the Complainant. Instead, he says that he offered control of the domain name server [DNS] of the domain name in issue and that this was accepted by the Complainant. As to this, the Complainant retorts that it has no log-in details and, consequently, no control of the DNS. However, the fact that the domain name in issue is currently being used by the First Respondent to direct users to the Company’s website is, the Complainant says, evidence itself that the First Respondent accepts that he has no rights or legitimate interests in respect of the domain name.

4.B.6 However, the First Respondent says that he is now looking into the possibility of selling breathing protection equipment over the Internet and he may want to use the domain name in issue for that purpose. Such a business will not, the First Respondent explains, compete with the business of the Complainant which is research into pharmaceuticals. Consequently, he sees no future conflict with the Complainant.

4.B.7 In furtherance of this possible Internet business the First Respondent says that he has also registered the domain name <respiratorius.de> and that he may try to register RESPIRATORIUS as a trademark for goods other than those covered by Class 5 for which the Complainant’s trademarks are registered.

4.B.8 The First Respondent says that if his new business does go live, he will offer to place on the website to which the domain name in issue then resolves a link to the Complainant’s <respiratorius.se> domain name, so that visitors will not be confused between the two businesses. The Complainant responds that this possible future use of the domain name in issue is itself demonstrative of bad faith on the part of the First Respondent.

4.C. The correspondence between the Complainant and the First Respondent

4.C.1 An email exchange of September 2006 is exhibited to the Complaint wherein the Complainant requested the First Respondent to transfer the domain name in issue to the Company and the First Respondent replied that the domain name in issue is his personal property registered at his own expense. As noted above, that exchange appears to have taken place shortly after the First Respondent’s brother had his dispute with the Complainant Company in mid 2006.

4.C.2 By letter dated January 30, 2007 counsel on behalf of the Complainant put the First Respondent on notice of its registered RESPIRATORIUS trademarks and requested transfer of the domain name in issue, failing which the Company would seek a remedy under the Policy.

4.C.3 Subsequently, on May 8, 2007 the registration details of the domain name in issue were changed to WhoisGuard.

5. Parties’ Contentions

5.A Complainant

5.A.1 The domain name in issue is identical to its RESPIRATORIUS registered trademarks.

5.A.2 The Respondents have no rights or legitimate interests in the domain name in issue because the Respondents are not commonly known by that domain name, nor before notice of this dispute is there any evidence of the Respondents’ use, or of demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services.

5.A.3 By reason of the First Respondent’s knowledge of the Complainant Company through his brother being its former CEO and President, he was well aware of its trademark rights in the mark RESPIRATORIUS. The Complainant asserts that, given the history of the relationship between the First Respondent and the two founders of the Complainant Company, the First Respondent can only have registered the domain name in issue out of malice for the purpose of selling it to the Complainant or a competitor. Further, in the light of the First Respondent’s refusal to transfer the domain name to the Complainant, the Complainant concludes that the domain name was registered in order to prevent it from reflecting its RESPIRATORIUS trademark in a corresponding domain name. The Complainant also asserts that the First Respondent registered the domain name in issue primarily for the purpose of disrupting its business.

5.A.4 Additionally, the change of registration details to WhoisGuard some 3 months after receipt of the cease & desist letter of January 30, 2007 from the Complainant’s lawyers is, the Complainant says, a type of cyber-flight designed to hide the First Respondent’s identity. In the light of the foregoing, the Complainant says that indicates bad faith on the part of the First Respondent. In this respect, the Complainant cites Fifth Third Bankcorp v. Secure Whois Information Service, WIPO Case No. D2006-0696.

5.A.5 As to use of the domain name in issue, the Complainant points out that it has no control over the use to which the First Respondent may put the domain name. The First Respondent could, the Complainant says, use the domain name to direct users to a different website or he could transfer it to another Company. This is, the Complainant asserts, use in bad faith. In relation to future misuse of the domain name, the Complainant cites Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and to Blemain Group v. Mr. Stuart Frost,WIPO Case No. D2006-0871.

5.B Respondents

5.B.1 As the Second Respondent is clearly the agent for the First Respondent, both Respondents will hereafter be referred to as “the Respondent”.

The Complainant’s alleged lack of rights in the RESPIRATORIUS trademark

5.B.2 The Respondent says that the Complainant’s use of its RESPIRATORIUS trademark is limited to use in Sweden and is limited to use in relation to Class 5, namely for “pharmaceutical preparations for respiratory tract diseases”. Hence, the Respondent says, the Complainant cannot complain of use of RESPIRATORIUS for goods outside that class.

5.B.3 In any event, the Respondent says that the content of the Complainant’s CTM application is entirely descriptive and, as such, disentitled to protection under the Community Trademark Regulation EC No. 40/94 of December 20, 1993. “Respiratorius” simply means “breathing” and the CTM applied for simply serves to designate the characteristics of the Complainant’s goods, namely, “pharmaceutical preparations for respiratory tract diseases”. The anatomy of the breathing system is known as “tractus respiratorius” or “bronchiolus respiratorius”. Accordingly, under Art. 7(1)(c) of the Regulation the word is unregisterable.

5.B.4 Furthermore, even if – contrary to the above – the Complainant does obtain a CTM registration for RESPIRATORIUS, that trademark applies only in the European Union. It creates no rights for the Complainant in the RESPIRATORIUS mark in other countries of the world, for example in the United States.

5.B.5 Still further, by reason of many years of no use, the Respondent says that the Swedish RESPIRATORIUS trademark is susceptible to cancellation. Indeed, the Complainant made no use (the Respondent says) of the RESPIRATORIUS prior to January 2005. That was the date when the Complainant filed its first patent application. Prior to that the Respondent says that the Complainant Company had been operating in “stealth mode” and its name and trademark were quite unknown to the public.

5.B.6 As to the fact that no opposition to the Complainant’s CTM was filed within the 3 months opposition period, the Respondent points to the fact that this does not prevent subsequent challenge to the validity of that mark.

5.B.7 Finally, the Complainant’s CTM application was not filed until December 2006, 18 months after the Respondent registered the domain name in issue in May 2005 and shortly after the first request from the Complainant to transfer that domain name. Plainly, the Respondent says, the CTM application was made only to bolster the Complainant’s case for the purpose of this administrative proceeding.

Rights or Legitimate Interests in the domain name in issue

5.B.8 Here, the Respondent relies on the facts set out in paragraph 4B above. Put shortly, the use thus far of the domain name in issue is a legitimate non-commercial use, without intent for commercial gain and is designed not to mislead consumers but to direct them to the Complainant’s website.

5.B.9 As to the present use of the domain name in issue, the Respondent explains that two DNS servers have been assigned to that domain name. They are NS1.BOX.SE and NS2.BOX.SE. The Respondent says that these servers were requested by the Complainant. The same servers are used for the Complainant’s <respiratorius.se> domain name. The Respondent says that the Complainant controls those servers. The fact that the Complainant may not have a log-in number could be because the third party which provides these DNS services for the Complainant handles those servers, and also hosts the Complainant’s website as well.

5.B.10 These is no redirecting from the domain name in issue to the Complainant’s website. The Respondent says that both the domain name in issue and the Complainant’s <respiratorius.se> domain name are handled “as aliases by the same web server”. By contrast, redirection occurs if a user goes to the Complainant’s <respiratorius.net> domain name, the user being redirected to <respiratorius.se>. The Respondent says he has acted utterly responsibly in providing the Complainant with 18 months free-of-charge use of the domain name in issue.

5.B.11 As to possible future use of the domain name in issue, it will be for dissimilar goods to the Complainant’s pharmaceutical preparations and, consequently, no confusion between his business and that of the Complainant can occur. Additionally, he will have a link in place as described in para. 4.B.8 above.

Registered and Used in Bad Faith

5.B.12 The Respondent says there cannot have been registration in bad faith or with malice because the domain name was created by him in May 2005, 12 months before his brother’s disagreement with the Complainant.

5.B.13 Nor, as explained in relation to Rights or Legitimate Interests, has there been any subsequent bad faith use. On the contrary, in operating the domain name in issue in the way explained in the preceding paragraph, the Respondent has at all times used that domain name in good faith.

5.B.14 The Complainant also owns the domain names <respiratorius.net>, <respiratorius.org>, <respiratorius.biz> and <respiratorius.info>, so that it cannot be said that the Respondent’s registration of the domain name in issue is preventing the Complainant from reflecting its RESPIRATORIUS trademark in a corresponding domain name.

5.B.15 Any future use by the Respondent of the domain name in issue will not be as a competitor of the Complainant, since he will not operate in the area of pharmaceuticals. Hence, no confusion with the Complainant’s RESPIRATORIUS trademark will arise.

5.B.16 The Respondent says that he has not committed cyber flight. Using WhoisGuard is no more than using a common practice to avoid spam. Furthermore, moving the domain name in May 2007 to another registrar was by reason of the then Registrar, registerfly.com, going into bankruptcy.

5.B.17 Put shortly, the Respondent says that none of the facts set out in paragraph 4(b) of the Policy as evidence of bad faith registration and use apply to the facts of this case.

5.B.18 Finally, in the Supplementary Response, the Respondent points out that the domain name in issue cannot have been registered in bad faith as regards the Complainant’s CTM for RESPIRATORIUS, as the former was created in May 2005 and the latter only applied for in December 2006.

6. Discussion and Findings

6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:

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

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

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

6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interest in the domain name in issue.

6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognises that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

Identical or Confusingly Similar

6.5 The Complainant has rights in the RESPIRATORIUS trademark. That trademark has been registered in Sweden since October 2000 and as a CTM since June 2007.

6.6 The domain name in issue, which was registered in May 2005, is identical to those registered trademarks, the earlier of which was registered almost 5 years before.

6.7 Asserting unregisterability and invalidity of a registered trademark is not relevant to the Policy. Any such challenge should be made in the appropriate courts.

6.8 The Complainant has satisfied the first requirement of the Policy in paragraph 4(a)(i).

Rights or Legitimate Interests

6.9 Given the relationship between the Respondent and the former CEO and President of the Complainant (they are brothers), it is clear that the Respondent was aware of the Complainant’s RESPIRATORIUS trademark.

6.10 Even if it is correct that that trademark was not used by the Complainant until January 2005 – prior to which the Complainant was operating incognito – the domain name was not registered (May 2005) until after such use began.

6.11 There is no evidence of demonstrable intention by the Respondent to make a bona fide use of the domain name in issue before being put on notice of this dispute by the Complainant in late 2006. The Respondent refers only to the possibility of use in the future of the domain name for selling breathing protection equipment over the Internet. The domain name currently resolves to a website with content highly similar (if not identical) to that which appears at Complainant’s website at “respiratorius.se”.

6.12. Nor is there evidence of the Respondent being commonly known by the domain name in issue.

6.13 As to the present use of the domain name in issue, the Respondent says that this is currently “under the control” of the Complainant and that it is being permitted by him free-of-charge to the Complainant. However, such is not a use of the type contemplated by paragraph 4(c)(iii) of the Policy, where with full knowledge of the Complainant’s rights in the RESPIRATORIUS trademark the Respondent nevertheless chose to register that trademark as a domain name. In the circumstances, the domain name is in this Panel’s view not being used in either a “legitimate” or “fair” manner.

6.14 Accordingly, the Complaint satisfies the second requirement of the Policy in paragraph 4(a)(ii).

Registered and Used in Bad Faith

6.15 There is no evidence that the Complainant can establish the circumstances set out in paragraph 4(b)(i) to (iii) of the Policy. Therefore, the issue resolves around paragraph 4(b)(iv) or the Complainant’s ability to establish bad faith by reference to other evidence.

6.16 In that respect, the current use of the domain name is, as the Respondent says, not harming the Complainant. In fact, it is providing the Complainant with free use of the domain name.

6.17 However, the investigation does not stop there. In the light of its trademark rights in RESPIRATORIUS, the Complainant has requested transfer of the domain name and the Respondent has refused. Still further, the Respondent raises the possibility of his using the domain name in the future to sell breathing protection equipment over the Internet. Can he do so without creating a likelihood of confusion with the Complainant’s RESPIRATORIUS registered trademarks? He says that he can by providing a link which will specifically explain to users that the two businesses are unconnected.

6.18 Although the Respondent may have originally registered the domain name in good faith with the intention of it being used by his brother’s Company (the Complainant), if that be the case then the original registration was made for the benefit of the Complainant and has at all times been held by the Respondent as agent, or trustee, for and on behalf of the Complainant. With the more recent refusal to transfer that domain name to the Complainant, it is stretching credulity too far to suggest that the Respondent’s “future possible business plans” for the domain name are not designed primarily to assist his brother in the latter’s continuing dispute with the Complainant by using the threat of such use as leverage in that unresolved dispute.

6.19 This is intent to make bad faith use of the domain name in issue and, accordingly, the Complainant succeeds in establishing the twin requirements of paragraph 4(a)(ii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <respiratorius.com> be transferred to the Complainant.

David Perkins
Sole Panelist

Dated: November 26, 2007