WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

M/s. Core Diagnostics v. Herr Guenter Keul

Case No. D2013-1238

1. The Parties

The Complainant is M/s. Core Diagnostics of Gurgaon, India, represented internally.

The Respondent is Herr Guenter Keul of Steinfurt, Germany.

2. The Domain Name and Registrar

The disputed domain name <corediagnostics.com> is registered with PSI-USA, Inc. dba Domain Robot (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2013. On July 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 11, 2013, the Registrar 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 July 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2013. The Response was filed with the Center on August 2, 2013.

The Center appointed Richard Hill as the sole panelist in this matter on August 4, 2013. 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

The Complainant first started business in 2011. It registered its trademarks in 2012.

The Respondent registered the disputed domain name in 2001 and has been using it since then to promote various medical diagnostic products.

5. Parties’ Contentions

A. Complainant

The Complainant states that it has been running its business since 2011and has quickly gained prominence around the world. In 2012 and 2013 it registered various trademarks for the term CORE DIAGNOSTICS. It owns the domain name <corediagnostics.in> as well as other related domain names.

According to the Complainant, the disputed domain name is confusingly similar to its mark. The Complainant cites UDRP precedents to support its position.

The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name because he “does not run any business under the name and in style of Core Diagnostic” and “a perusal of the said website clearly shows that only mere information has [sic] given therein”.

According to the Complainant, the disputed domain name was registered and is being used in bad faith because, in response to a request by the Complainant, the Respondent offered to sell it for a price well in excess of out-of-pocket costs. The Complainant cites UDRP precedents to support its position.

Further, says the Complainant, “the Respondent is making commercial and unfair use of the disputed domain name to divert Internet users to websites that are unaffiliated being ‘www.kuel.de’ and in competition with Complainant or Complainant’s services”. The Complainant cites UDRP precedents to support its position.

The Complainant submits the WhoIs record for the disputed domain name, showing that it was first registered in 2001.

B. Respondent

The Respondent states that the Complaint was filed in bad faith and constitutes reverse domain name hijacking.

The Respondent alleges (and provides evidence) that the disputed domain name was registered more than 11 years before the Complainant was founded and started doing business.

The Respondent alleges (and provides evidence) that he uses the disputed domain name to promote his business of shipping various medical diagnostic products to customers.

For the reasons set forth below, the Panel will not summarize the remainder of the Response.

6. Discussion and Findings

A. Identical or Confusingly Similar

For the reasons set forth below, the Panel will not consider this element of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., NAF Claim No. 116765 (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).

B. Rights or Legitimate Interests

For the reasons set forth below, the Panel will not consider this element of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., NAF Claim No. 116765 (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).

C. Registered and Used in Bad Faith

The Respondent notes that he registered the disputed domain name in 2001, and has been using it since then to promote various medical diagnostic products, while the Complainant started its business in 2011 and first applied for its trademark in 2012. Because the Respondent’s registration of the disputed domain name predates the Complainant’s mark, the Panel finds that the Respondent could not have registered the disputed domain name in bad faith. See Aspen Grove, Inc. v. Aspen Grove, WIPO Case No. D2001-0798 (finding that it is “impossible” for the respondent to register disputed domain name in bad faith if the complainant company did not exist at the time of registration); see also Telecom Italia S.p.A. v. NetGears LLC, NAF Claim No. 944807 (determining the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark).

Indeed, this is well settled case law under the Policy, see paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition. This paragraph states:

“… when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right.”

D. Reverse Domain Name Hijacking

Paragraph 1 of the Rules defines Reverse Domain Name Hijacking:

Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.

The Respondent invokes this provision when he requests the Panel to find that the Complainant is using the Policy in a bad faith attempt to deprive a registered domain name holder of a domain name.

The general conditions for a finding of bad faith on the part of the Complainant are well stated in Smart Design LLC v. Carolyn Hughes,WIPO Case No. D2000-0993:

“Clearly, the launching of an unjustifiable Complaint with malice aforethought qualifies, as would the pursuit of a Complaint after the Complainant knew it to be insupportable.”

These conditions are confirmed in Goldline International, Inc. v. Gold Line,WIPO Case No. D2000-1151 and Sydney Opera House Trust v. Trilynx Pty. Limited,WIPO Case No. D2000-1224 (where the condition is stated as “the respondent must show knowledge on the part of the complainant of the respondent’s right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in the face of such knowledge”), which in turn cites Plan Express Inc. v. Plan Express,WIPO Case No. D2000-0565.

The Respondent notes that his registration of the disputed domain name far predates Complainant’s claim of rights in the CORE DIAGNOSTICS mark. The Complainant knew this because it produced the WhoIs record for the disputed domain name as an attachment to its Complaint. Thus the Complainant should have known that it was unable to prove that the Respondent registered and is using the disputed domain name in bad faith. This suffices to establish Reverse Domain Name Hijacking. See Futuris Automotive Interiors (Australia) Pty Ltd v. X9 Interactive LLC, WIPO Case No. D2011-0596 (“On the contrary, the Complainant’s own researches as described in the Complaint clearly demonstrate that the Respondent (or its corporate predecessor) began to use the disputed domain name in the context of a business using the term ‘Futuris’ within a short period after registration of the disputed domain name and furthermore that this use continued over a period of many years. […] Accordingly, it is clear to a majority of the Panel that the Complainant knew or ought to have known that the Respondent’s registration and use of the disputed domain name could not, under any fair interpretation of the reasonably available facts, have constituted registration and use in bad faith. The majority of the Panel therefore finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”); see also Pick Enterprises, Inc. v. Domains by Proxy, LLC, DomainsByProxy.com / Woman to Woman Healthcare / Just Us Women Health Center f/k/a Woman to Woman Health Center, WIPO Case No. D2012-1555 ("Regardless of actual intent, Respondent has been put to time and expense to address a Complaint that the Panel finds objectively groundless, one as to which this Panel believes ‘the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP.’ These circumstances justify a finding of RDNH in this case, which the Panel accordingly makes.")

Consequently, the Panel finds that the Complaint was submitted in an attempt to hijack the Respondent’s domain name.

7. Decision

For the foregoing reasons, the Complaint is denied.

The Panel finds that the Complainant attempted to engage in Reverse Domain Name Hijacking.

Richard Hill
Sole Panelist
Date: August 28, 2013