Becton, Dickinson & Co. v. Garry Harper

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Becton, Dickinson and Company v. Garry Harper

Case No. D2001-1058

1. The Parties

The Complainant is Becton, Dickinson and Company, of 1 Becton Drive, City of

Franklin Lakes, New Jersey 07417, United States of America, represented by Georges Nahitchevansky

Esq., of Fross Zelnick Lehrman & Zissu, P.C., of New York, United States

of America.

The Respondent is Mr. Garry Harper, of 83 Albert Road, Southsea, Portsmouth

PO5 2SG, United Kingdom.

2. The Domain Name and Registrar

This dispute concerns the domain name <vacutainer.com>.

The Registrar is Computer Service Langenbach GmbH, dba Joker.com. of 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 23, 2001, and in

hardcopy on August 24, 2001. The Complaint was acknowledged on August 24, 2001.

That day, registration details were sought from the Registrar. On August 28,

2001, the Registrar confirmed that the disputed domain name is registered in

the name of the Respondent.

On August 31, 2001, the Center satisfied itself that the Complainant had complied

with all formal requirements (including payment of the prescribed fee) and formally

dispatched a copy of the Complaint to the Respondent by post/courier (with enclosures)

and by email (Complaint without attachments) together with a letter to notify

the Respondent of the commencement of this administrative proceeding. The Center

sent copies to the Complainant, the Registrar and ICANN.

In conformity with Rule 5(a), the last day specified by the Center for a Response

was September 20, 2001. No Response was received. On September 24, 2001, the

Center notified the Respondent of its default.

On October 1, 2001, the Center notified the parties of the appointment of Alan L. Limbury

to serve as panelist, Mr. Limbury having submitted a Statement of Acceptance

and Declaration of Impartiality and Independence. On that day, the Center transmitted

the case file to the Panel and notified the parties of the projected decision

date of October 15, 2001.

The language of the proceeding is English.

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 and the administrative panel was properly constituted.

4. Factual Background (Uncontested Facts)

The Complainant manufactures and sells, for use by healthcare professionals,

medical research institutions, industry and the general public, products such

as tubes, needles, needle holders, sharps collectors and safety devices for

the collection of blood and urine samples.

Since 1944, it has used the mark VACUTAINER in connection with its products.

It has registered that trademark in many jurisdictions, including in the United

States, the United Kingdom and Germany and has heavily promoted the products

it supplies under that mark.

From January 1991 to September 1993, the Respondent was employed by the Complainant

as a staff scientist at the Complainant’s Research Center. During his employment

the Respondent worked with others in developing new innovations for the Complainant’s

VACUTAINER line of products. The Respondent at all times during his employment

was fully aware of the Complainant’s exclusive rights in its VACUTAINER mark.

On April 4, 2000, about six years after the Respondent ceased working for Complainant

and without any authorization or permission, he registered the disputed domain

name.

When the Complainant discovered this in about early March 2001, it wrote demanding

that the Respondent transfer the disputed domain name to the Complainant. Instead,

the Respondent posted on a web site placed at <vacutainer.com>the statement:

"About a year ago (April 2000) I found the Vacutainer name domain drifting

FOR SALE in cyberspace, while the marketing guys were doing what exactly?? ….So

I got Vacutainer.com registered, partly to secure BD’s baby and mine, deciding

on this experiment to see how long before they rumbled their strategic mistake.

Well anyway the floor of lawyers in New Jersey are waking up about now and will

come and ask me to give it back to them sometime soon……. (which has taken them

about a year …. Cool experiment huh?)"

That website contained a number of links to other web sites owned and operated

by the Respondent, including <wetascience.com>, <biomaterialscience.com>,

<scienceuk.com>, <nanodirectory.net> and <microparticle.com>.

Through those sites, the Respondent promoted his services as a "contract

research scientist." Further, he posted links to <uk2.net>, a provider

of domain name registration and hosting services, on the top of the home page

of the <vacutainer.com> web site.

Between May and August 2001, during the course of correspondence between the

Complainant’s outside Counsel and the Respondent, the Respondent:

i posted a link on the <vacutainer.com>

web site to outside counsel’s web site at <frosszelnick.com> along with

a statement indicating that he would transfer the disputed domain name if the

Complainant reimbursed his registration costs;

i pointed the disputed domain name to the

Complainant’s web site at <bd.com>;

i framed the <bd.com> web site with

an advertisement for <uk2.net>, the domain name registration and hosting

service;

i ceased pointing the disputed domain name

to the Complainant’s web site and

i again posted at the disputed domain name

pages from his prior web site.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar Domain Name

The disputed domain name is identical to the Complainant's mark.

Respondent’s Rights or Legitimate Interests in the Domain Name

The Respondent cannot demonstrate or establish any legitimate interest in the

disputed domain name. There exists no relationship between the parties that

would give rise to any license, permission or other right by which the Respondent

could own or use any domain name incorporating the Complainant's VACUTAINER

mark. Certainly, the disputed domain name is not, nor could it be contended

to be, a nickname of the Respondent or in any other way identified with or related

to a legitimate interest of the Respondent.

Domain Name Registered and Used in Bad Faith

The Respondent has registered and is using the disputed domain name in bad

faith under Paragraph 4(b)(i) and 4(b)(ii) of the Policy. He has either registered

it primarily for the purpose of selling, renting or otherwise transferring it

or has done so in order to prevent the Complainant from reflecting its VACUTAINER

mark in a corresponding domain name and/or to divert web users to his web site

for his own personal gain.

That the Respondent is acting in bad faith is confirmed through his own conduct.

Although the Respondent claimed that his web site was simply a free links web

site for Vacuum Science Biotechnology, it was meant to promote and benefit Respondent.

Given the Respondent’s awareness of the Complainant’s rights in its VACUTAINER

mark, and that the VACUTAINER mark is well known to healthcare professionals,

medical researchers and scientists, there can be no dispute that the disputed

domain name is intended to and does refer to Complainant’s VACUTAINER mark and

that the Respondent has acted in bad faith [1].

Clearly, the Respondent could only have registered the disputed domain name

confusingly similar to the Complainant's mark in order to capitalize in some

way on the Complainant's hard-earned goodwill.

B. Respondent

No Response was filed.

6. Discussion and Findings

The Panel draws two inferences where a Respondent has failed to submit a Response:

(a) the Respondent does not deny the facts which the Complainant asserts; and

(b) the Respondent does not deny the conclusions which the Complainant asserts

can be drawn from those facts [2].

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.

Identity or Confusing Similarity

It has been decided in many cases under the Policy that "essential"

or "virtual" identity is sufficient for the purposes of the Policy

[3].

The disputed domain name is clearly identical to the Complainant’s trademark

VACUTAINER.

The Complainant has established this element.

Illegitimacy

The Complainant has not authorized the Respondent to use its trademark nor

to register the disputed domain name. The name of the Respondent is not and

does not include any part of the disputed domain name. The Respondent has known

of the Complainant and of its VACUTAINER mark for 10 years. His stated purpose

in registering the disputed domain name was to see how long it would take before

the Complainant discovered that he had done so.

Under these circumstances the panel is satisfied that the Complainant has established

that the Respondent has no right to or interest in the disputed domain name.

Bad Faith Registration and Use

Findings of bad faith have been made where a Respondent "knew or should

have known" of the registration and use of the trademark prior to registering

the domain name [4].

Having been employed by the Complainant and having worked on its VACUTAINER

products, the Respondent knew of the Complainant’s trademark when he registered

the disputed domain name and he knew he had no authority to do so. The disputed

domain name was clearly registered in bad faith.

The Respondent’s conduct since the Complainant discovered his registration

of the disputed domain name is inconsistent with any bona fides on the part

of the Respondent. The disputed domain name is being used in bad faith.

The Panel finds that the Complainant has established that the disputed domain

name was registered and is being used in bad faith.

7. Decision

Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs

that the domain name <vacutainer.com> be transferred to the Complainant.

Alan L. Limbury

Sole Panelist

Dated: October 10, 2001

Footnotes:

1. See, e.g. , Veuve Clicquot Ponsardin,

Maison Fondee en 1772 v. The Polygenix Group Co., (WIPO

Case No. D2000-0163) at p. 5 (<veuveclicquot.org> is so obviously

connected with such a well-known product that its very use by someone with no

connection with the product suggests opportunistic bad faith"); accord Harrods

Limited v. Robert Boyd, (WIPO Case No.

D2000-0060).

2. See Rule 14(b) and Reuters Limited

v. Global Net 2000, Inc. (WIPO Case No.

D2000-0441).

3. See The Stanley Works and Stanley Logistics,

Inc v. Camp Creek. Co., Inc, (WIPO Case

No. D2000-0113) and Nokia Corporation v. Nokiagirls.com (WIPO

Case No. D2000-0102).

4. SportSoft Golf, Inc. v. Hale Irwin’s

Golfers’ Passport (NAF case FA94956); 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).