The Complainant is Tomatis Developpement SA of Luxembourg, represented by Cabinet Harle et Phelip, France.
The Respondent is Mozart-Brain-Lab of Belgium, represented by Allen & Overy LLP, Germany.
2. The Domain Name and Registrar
The disputed domain name <tomatis.com> is registered with TierraNet d/b/a DomainDiscover.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2009. On December 29, 2009, the Center transmitted by email to TierraNet d/b/a DomainDiscover. a request for registrar verification in connection with the disputed domain name. On January 4, 2010, TierraNet d/b/a DomainDiscover transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 January 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2010. The Response was filed with the Center on February 3, 2010.
The Center appointed Sir Ian Barker as the sole panelist in this matter on February 10, 2010. 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. Due to exceptional circumstances, the due date for the Decision was extended by the Panel to March 31, 2010.
4. Factual Background
The Complainant is the current owner of intellectual property rights in a psycho-therapeutic method developed by a French ear nose & throat specialist, Dr. Alfred Tomatis, in the 1950s. The method is concerned with “the relationship between the ear and the voice by extension between listening and communications” and is known as the “Tomatis Method”.
The Complainant owns numerous trademarks throughout the world for a device mark featuring the word TOMATIS superimposed over a representation of a flame. These registrations date back to 1979. The Complainant is also the registered proprietor of a Benelux registration for the word TOMATIS granted in 2006. All the registrations are for psychotherapeutic services and associated goods and services.
Dr. Tomatis assigned all his trademarks to Tomatis International SA (TISA) in June 1990. He died in 2001. TISA apparently encountered financial difficulties. Some time after Dr. Tomatis' death, the trademarks were sold by a trustee in bankruptcy to the Complainant which is now the sole owner of all the TOMATIS trademarks. The Complainant manages public and private Tomatis centres in several countries.
On November 1, 1991, TISA entered into a non-exclusive licence with the Tomatis Listening & Learning Centre (TLLC) which was licensed to use the TOMATIS flame device trademark under certain conditions. The licensee's representative was Mr. P. Sollier whose colleague at the time was a Mr. J. Gerritsen.
On February 11, 1996, Mr. Gerritsen registered the disputed domain name for the purpose of establishing a website about Tomatis centres in the western hemisphere. In 1997, TLLC and TISA fell out and the licence agreement was cancelled. However, Mr. Gerritsen and Mr. Sollier continued to operate a website accessed by the disputed domain name devoted to providing information on the TOMATIS method and on practitioners of that therapy.
The present Complainant commenced a proceeding under the UDRP against Mr Gerritsen seeking a transfer of the disputed domain name. However, the panel in Tomatis Developpement SA v. Jan Gerritsen,
WIPO Case No. D2006-0708, on August 1, 2006, denied the Complaint.
That Panel held that, although the disputed domain name was identical to the Complainant's Benelux trademark, the Complainant had not proved that registration of the disputed domain name had been in bad faith. The Panel was in no doubt that, when Mr. Gerritsen registered the domain name in 1996, he justifiably thought that he was doing something he was entitled to do and that all concerned understandably thought then that the registration had been bona fide.
In 1992, TISA concluded a licence agreement with a company called Association Atlantis (“Atlantis”) represented by Mr. J. Vervoort, who is closely associated with the present Respondent. This licence included the right to use the Tomatis method in nominated fields plus the right to use the TOMATIS device trademark. The agreement was confined to use of the Tomatis method only at Atlantis' operation at Sint Truiden, Belgium. The contract was expressed to be intuitu personae with Mr. Vervoort and could not be transferred. Other details of the agreement are not necessary to recount.
The Panel is not able to decide where the fault lay for the eventual falling out of Atlantis and TISA. Nevertheless, it is clear that the 1992 licence agreement came to an end in 1997.
On July 23, 2009, Mr. Gerritsen transferred the disputed domain name to the Respondent, which is controlled by Mr. Vervoort in Sint Truiden. There he trains people in the Tomatis method of therapy.
The Respondent operates a website accessed by the disputed domain name which gives information about the Tomatis method and Tomatis centres. Nothing is sold on the site. Information about the Respondent's training centre is included along with similar information about other Tomatis centres.
On August 4, 2009, the Complainant's lawyers sent a “cease and desist” letter to Atlantis for the attention of Mr. Vervoort. He was asked to not use the trademark TOMATIS in connection with products and services in the field of audio-psychology and languages training, immediately to stop the use of the expression “TOMATIS TODAY” on all documents and websites and to renounce the website accessed by the domain name <tomatis-today.com>.
In reply, Mr. Vervoort claimed that the trademark was descriptive and that the Complainant had lost its right in the Tomatis trademarks. He, nevertheless, agreed not to use the domain name <tomatis-today.com>.
The Complainant, not satisfied with this response, sent another “cease and desist” letter asking Mr. Vervoort to stop using the disputed domain name. He declined to do so and the Complainant commenced this proceeding.
5. Parties' Contentions
A. Complainant
The disputed domain name is identical to the Complainant's Benelux word trademark for TOMATIS and also identical or confusingly similar to the device trademark for the word TOMATIS and flame.
Since the termination of the licence agreement between Atlantis and TISA, the former owner of the trademarks, the Respondent has no rights or legitimate interests in respect of the disputed domain name. That licence agreement had been purely personal to Mr. Vervoort and not to any company of his, such as Atlantis or the present Respondent.
The disputed domain name was registered and is being used in bad faith. The Respondent must have known at the time of registration that it was not authorised to use the trademark, having neither licence nor authorization from the Complainant. Considering the historical background and reputation of the Tomatis Centres around the world, the fact that the Respondent is advertising the same services will lead the public to think immediately that the services provided on the website of the disputed domain name are those provided by genuine Tomatis Centres.
The Respondent is making a non-legitimate use of the disputed domain name with attempt at commercial gain by misleading the public by referring to Tomatis Centres and Tomatis therapists on the website accessed by the disputed domain name.
B. Respondent
Unlike the Complainant which did not produce any declarations by way of evidence in support, the Respondent augmented its Response with a declaration made under penalty of perjury by Mr. Vervoort. He is the Chairman of both Atlantis and the Respondent. He was trained by Dr. Tomatis and since 1974, has treated over 15,000 children and 6,000 adults using the Tomatis method. He was given a certificate by Dr. Tomatis in 1998 allowing him to teach the Tomatis method.
The disputed domain name is not identical or confusingly similar to the Complainant's device mark because the design trademark includes the word “Tomatis” depicted in a special way with the logo. The decision of a WIPO panel in Cream Holdings Limited v. National Internet Source, Inc.,
WIPO Case No. D2001-0964,was cited for the idea that for the purposes of the Policy a disputed domain name is not identical to a claimant's registered trademark which is a combination of a word and a device.
The Respondent does not need a licence from the Complainant to be entitled to use the disputed domain name. He has a legitimate interest in using the disputed domain name. The term Tomatis has a descriptive character and may be used by everyone who provides activities and services by way of the Tomatis method.
Moreover, the Respondent uses the disputed domain name in a non-commercial way and is protecting the interests and heritage of Dr. Tomatis. The licence agreement did not refer to domain names.
Paragraph 4(a)(ii) of the UDRP differentiates between a right and a legitimate interest. The argument of the Complainant that the missing right to use the design trademark leads to a missing legitimate interest is a “double fault”. The Complainant has to prove the Respondent's legitimate interest is missing.
The Complainant has to prove that the term is not descriptive. The expression “Tomatis” describes a special therapeutic method developed by Dr. Tomatis and used by a great number of persons and companies throughout the world. The Tomatis method is the only term used to describe this special kind of therapy.
Besides practising the Tomatis method, the Respondent operates a Tomatis museum and organizes Tomatis training. All these activities have to be referred to by the term “Tomatis” in order to communicate with users, clients and interested people. All of these identify the name “Tomatis” with the special therapeutic method used by the Respondent and others.
Mr. Vervoort is performing research on the Tomatis method and has published scientific articles in the Journal of Neurotherapy. One of these was attached to the Response.
The Respondent quoted two decisions, one of a United States Federal Court and the other of the German Federal Supreme Court concerning the terms “Pilates” and “Feldenkrais” respectively, which represent alternative therapies for developmental and learning disabilities. No translation was provided of the German decision which is of, therefore, of no assistance to this Panel.
The United States decision in Pilates, Inc. v. Current Concepts Inc., et al., 120. F.Supp.2d 286 (S.D.N.Y. 2000), cancelled the United States (“US”) trademark for the name “Pilates” because it was a generic term used by consumers to identify a particular method of exercising. The current registrant was not permitted to monopolise it. The same principle applies to the word “Tomatis”. The intent of Dr. Tomatis was to promote his therapy in order to help as many people as possible.
In the German decision, the Respondent says that the Court concluded that the owner of a trademark has no right to prohibit the use of a term which is regarded as descriptive of special services to the relevant parts of the public.
The term “Tomatis” can be found in several lexicons available through Internet search engines to describe the therapy methods of Dr. Tomatis. It is, therefore, a generic term of a purely descriptive character.
Alternatively, the Respondent is making a legitimate noncommercial and fair use of the disputed domain name without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark at issue. The website does not offer goods and services but primarily provides information. The information provided is neutral and does not show any promotional character. It is limited to general facts about the Tomatis method, its origins and field of application. There is no highlight concerning the Respondent's company.
Any qualified Tomatis provider in the world, regardless of affiliation, can be listed on the Respondent's website. All of those currently listed have been trained, either by Dr. Tomatis or by persons trained by him. All of the centres mentioned on the disputed domain name website are affiliated with the Respondent. There are more Tomatis Centres outside the Complainant's group than inside. There are at least 406 centres in the world but only roughly 150 belong to the Complainant's organisation.
The Respondent has no financial interest in the disputed domain name, nor does it intend to change this status. The disputed domain name is not used for commercial purposes. Any contributions provided to the Centres via the websites cover solely the necessary costs to maintain the website.
The Respondent did not register or use the disputed domain name in bad faith. Dr. Tomatis, if alive, would have agreed to the Respondent's use. Starting in 1974, Dr. Tomatis taught Mr. Vervoort the fundamental principles of his method, enabling Mr. Vervoort to treat over 15,000 children and 6,000 adults since then. Dr. Tomatis issued a certificate in 1998 confirming that Mr. Vervoort was able to bear the responsibilities of being a trainer or supervisor of the Tomatis method.
In 1999 when Dr. Tomatis fell ill, he gave his personal documents and thousands of books to Mr. Vervoort to be housed in the Tomatis Museum or shown in its library. A letter from Dr. Tomatis stated “this intellectual heritage will be preserved in a museum being realized in a building of the Mozart-Brain Lab”. Everyone has free access to these documents in the museum. In order to fulfil Dr. Tomatis' mission, the Respondent carries out voluntary work in many parts of the world and is currently conducting, for example, a workshop in La Paz, Bolivia.
The termination of the licence agreement with TISA only meant that the Respondent was no longer allowed to use the Complainant's logo. Accordingly, the Respondent removed the logo from all its documents after the termination. As a layperson, it was not evident to Mr. Vervoort that the use of the simple name Tomatis could be dependent on a licence agreement concerning the logo. The Respondent was, and still is, convinced that the agreement concerned only the design trademark and bears no relation to the use of the disputed domain name.
The Complainant's statement that the Respondent is offering the same services as the Complainant on the disputed domain name website is untrue. The Respondent offers no services. It provides factual and neutral information about the Tomatis method. The website is different from the Complainant's, which operates a commercial website.
The “cease and desist” letters and their responses do not show the Respondent's bad faith. Although Mr. Vervoort agreed to refrain from the use of the domain <tomatis-today.com> in order to avoid legal proceedings, he did not accept the legal views of the Complainant as correct. He has always been, and still is, convinced that he is allowed to identify the Tomatis method by the generally known and commonly-accepted name.
6. Discussion and Findings
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:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Preliminary Matter
Although the Complainant and the disputed domain name are the same as in
WIPO Case No. D2001-0964 referred to earlier, the present Respondent is quite different from the Respondent in that case. Consequently, the panel is not treating this as a “refiled complaint” and the jurisprudence concerning refiled complaints does not need to be considered. The Panel notes that a “refiled complaint” was defined in Creo Products Inc v. Website in Development (
WIPO Case No. D2000-1493) as “one which, in practice, concerns the same parties and domain name that were the subject of a previous adjudication on the merits under the Uniform Policy”.
B. Identical or Confusingly Similar
All that has to be shown under paragraph 4(a)(i) of the Policy is that the Complainant has rights in a trademark which is identical or confusingly similar to the disputed domain name.
The Complainant owns a Benelux trademark for the word mark TOMATIS, which trademark does not have the flame device. That trademark is identical to the disputed domain name.
It is beyond the scope of a proceeding under the Policy for a Panel to consider a respondent's argument that a registered trademark is generic. There is a registered trademark for this word and, for the purposes of this administrative proceeding, the Panel cannot go behind the trademark registration and, in effect, hold that registration should not have been granted.
The Pilatesand Feldenkrais decisions were challenges in court concerning the legitimacy of trademark registrations of generic words. The Panel cannot speculate on whether a challenge to the TOMATIS trademark would reach a similar result in some national court. The Panel is confined to the rules laid down in the Policy. There is a registered trademark in which the Complainant has rights which is identical to the disputed domain name.
In the Panel's view, the disputed domain name is also confusingly similar to the TOMATIS trademark with the flame device. This proposition does not need to be authoratitively determined, however, because the disputed domain name is identical to a registered trademark in which the Complainant has rights and that is sufficient.
Consequently, paragraph 4(a)(i) of the Policy has been proved.
C. Rights or Legitimate Interests
The Panel finds that the Respondent had no rights to use the Complainant's device trademark once Atlantis' licence agreement with the Complainant's predecessor in title terminated in 1997. In the circumstances, particularly given the date of termination, it does not matter that the domain names were not mentioned in the licence agreement. The Respondent had no rights from the Complainant at the time when the disputed domain name was acquired by it in 2009.
The defence offered by the Respondent under paragraph 4(c)(iii) of the Policy thus needs to be considered.
Legitimate interests mean interests acquired legally, not, as the Respondent appears to argue, a mere interest of a personal or academic sort in the subject matter covered by the disputed domain name.
The Respondent's website provides much information about Dr. Tomatis, his method and its efficacy for various conditions and ailments (e.g. dyslexia), information about persons who had experienced the method and contact details of providers of the method in many countries. There is no highlight of the Respondent or its particular services.
However, there are links to Tomatis providers in many countries and in several languages. One of these leads to Atlantis in Belgium, said to be one of the largest Tomatis Centres in the world. There is reference to the present Respondent, said to be a “research and training centre for future Tomatis therapists”. Both Atlantis and the Respondent are said to be directed by Mr. Vervoort “a long time student and confidant of Dr. Tomatis”. Domain names are provided for both Atlantis and the Respondent – i.e. <atlantis-vzw.de> and <mozart-brain-lab.de>.
The information on the website states that Mr. Vervoort formed the Respondent in 1998 after Dr. Tomatis had asked him to continue training and research. Information is given about the training offered for Tomatis therapists by the Respondent.
Similar information about available therapy and training courses is offered for other Tomatis providers in several different countries through other links on the Respondent's website.
For the defence under paragraph 4(c)(iii) to be established, the respondent must first prove to the Panel that it is making a legitimate noncommercial or fair use of the disputed domain name. Then the Panel must go on to consider whether there is an intention to misleadingly divert consumers. Or, in the alternative, an intent for commercial gain to tarnish the Complainant's mark.
In this Panel's view, it is difficult to say that there is a noncommercial use when the website gives particulars of courses and training programmes offered by the Respondent. Likewise, when the courses of other Tomatis centres are available for search on the website.
Accordingly, the Panel cannot find that the Respondent has discharged the onus of proof under paragraph 4(c)(iii) of the Policy. It may be that Mr. Vervoort is well-motivated and bears a deep attachment to the late Dr. Tomatis and his therapy. He may feel he is disseminating information about those who in his view are authentic practitioners of Dr. Tomatis' methods. But that does not make the website “noncommercial”.
Accordingly, the Complainant has established paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Although the disputed domain name was first registered in 1996 by Mr. Gerritsen, the date at which good faith registration must be assessed when considering the present complaint is the date when Mr. Gerritsen transferred the disputed domain name to the Respondent - July 23, 2009.
It seems fairly clear that the Tomatis method created by Dr. Tomatis has acquired a reputation in its therapeutic field not unlike that enjoyed by the Pilates method of aerobic exercise. Persons trained in the Tomatis method are enthusiastic about its advantages, and wish to disseminate information about the method and teach it to others.
Mr. Vervoort's declaration and supporting documents show that he personally enjoyed a close association with Dr. Tomatis during the latter's lifetime. For 36 years he has been involved in study, research and teaching involving the Tomatis method. Dr. Tomatis obviously reposed confidence in him since he left his library and personal documents to be preserved at the Respondent's premises. Clearly, Dr. Vervoort had a close connection with the founder of the Tomatis method, even if he has none with the Complainant as successor in title to the TOMATIS trademark.
The circumstances of this case are unusual. It is hard to see Mr. Vervoort or his alter ego, the Respondent, fitting into the usual template for a cybersquatter wanting to cash in on trademarks or to tarnish or dilute them. Such cybersquatters are found in many decisions rendered under the Policy.
However, no matter the Respondent's motivation in registering the disputed domain name, the parties are in competition as focal points for Tomatis providers. Unfortunately for the Respondent, the Complainant owns the trademarks. That situation prevails unless and until a court of competent jurisdiction cancels the trademarks, as did a court in the Pilates case.
Although, the Tomatis method may have become a term in common use for a form of treatment, much like Pilates has become the name for certain exercise procedures, TOMATIS is a trademark owned by the Complainant. Mr. Vervoort must have known of the Complainant's rights in the trademark at the time he purchased the disputed domain name from Mr. Gerritsen. Any licence to use the trademark that he may have enjoyed previously under the Atlantis licence agreement had by then long since come to an end.
Furthermore, because of his association with Mr. Gerritsen, Mr. Vervoort would have known the basis on which the previous WIPO panel found in Mr. Gerritsen's favour in 2006.
Essentially, that decision turned on the fact that, at the date of registration of the disputed domain name, Mr. Gerritsen had a licence to use the Tomatis name and, therefore, it could not be said that he had registered the disputed domain name in bad faith. The Respondent must have known that, as at July 23, 2009, neither it nor Mr. Gerritsen had any such licence.
The Respondent's decision to discontinue the use of the domain name <tomatis-today.com>, for whatever reason, indicates that it was aware of the Complainant's concerns about the use of the Tomatis name.
The Complainant and the Respondent both have Tomatis centres within their respective spheres of influence. The Panel is not in a position to resolve how many each has.
The Respondent is deriving an indirect benefit from the website in that it is one of many purveyors of the Tomatis method. Details of its offerings can be ascertained by viewing the “click-through” links displayed on the site. Whatever the altruistic motives of providing dispassionate information about the Tomatis method, there still remains the element of pushing the Tomatis therapy as practised and taught by the Respondent and those other Tomatis providers who appear on the disputed website.
The Panel finds that there is an element of paragraph 4(b)(iv) of the Policy evident in the website. The Respondent clearly wishes to attract Internet users to itself and other practitioners and trainers of the Tomatis method. The hope is that persons will use their services as offered. In so doing, Internet users would necessarily be confused with the Complainant's mark as to the source, affiliation or endorsement of the Respondent's product and service there offered.
Accordingly, as this Panel sees it, there has to be a finding of bad faith registration and use. There has to be an element of commercial gain in the Respondent's activities on its website.
The Panel reaches this conclusion with some reluctance since Mr. Vervoort does not appear to be the usual sort of cybersquatter for whom that pejorative term is appropriate.
Mr. Vervoort appears from the documentation to be a passionate and learned practitioner and trainer of the Tomatis method of therapy. He appears to have a distinguished record of success in this area. He may honestly believe that he has a moral right to use the Tomatis name in a website, given his long and close personal relationship with the late Dr. Tomatis.
However, a subjective belief does not excuse the fact that, in order to demonstrate good faith, the Respondent should not have taken the transfer of the disputed domain name (especially in light of its terminated license agreement) when it must surely have known of the Complainant's trademark rights.
The facts of this case are not such that the Panel should decline to order transfer of the disputed domain name just because the question of whether the trademark Tomatis is now generic is something that could be decided by a national court – rather like what happened with the Pilates trademark. There are no court proceedings in contemplation. The Respondent had knowledge of the Complainant's mark yet elected to use it on its website long after any colour of right given by the earlier licence agreement had expired.
Accordingly, paragraph 4(a)(iii) of the Policy has been satisfied and the Complaint must succeed.
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 disputed domain name <tomatis.com> be transferred from the Respondent to the Complainant.
Sir Ian Barker Sole Panelist
Dated: March 31, 2010
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