Thermo Electron Corporation v. Joachim Camrath; Sven Camrath

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Thermo Electron

Corporation v. Sven Camrath and Joachim Camrath

Case No.

D2001-1013

1. The Parties

The Complainant is Thermo

Electron Corporation of 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.

2. The Domain Name and

Registrar

The disputed domain name

is <cytospin.com>.

The Registrar is Schlund

+ Partner AG of Karlsruhe, Germany.

3. Procedural History

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:

"We wish to transfer

the domain names http://www.cytospin.com and http://www.cytospin.de to Thermo

Electron Corporation".

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.

4. Factual Background

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.

5. Parties’ Contentions

A. Complainant

Complainant requests the

Panel to direct that <cytospin.com> be transferred to the Complainant

upon the following legal grounds:

Identity or confusing similarity

The disputed domain name

is identical to Complainant's CYTOSPIN trademark.

Legitimacy

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.

Bad faith

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.

B. The Respondent

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.

6. Discussion and Findings

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.

Failure to file a Response.

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).

Identity or confusing similarity

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.

Illegitimacy

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.

Bad faith registration

and use

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 Limited v. 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 Corporation v.

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. See Disney 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