Beiersdorf AG v. Elastoplast

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Beiersdorf AG v. Elastoplast

Case No D2002-0216

1. The Parties

The Complainant is Beiersdorf AG with its address at Unnastrasse 48, 20253 Hamburg, Germany.

The Respondent is Elastoplast with an address given as IP Department, OfficeMail, PO Box 407, St Petersburg, SPb 197046, Russian Federation.

2. The Domain Name and Registrar

The domain name in dispute is <elastoplast.com> which is registered with iHoldings.com, Inc d/b/a DotRegistrar.com of 13205 SW, 137th Avenue, Suite #133, Miami, Florida 33186, United States of America.

3. Procedural History

An initial Complaint was received by the WIPO Arbitration and Mediation Center on March 5, 2002, by email. A hard copy of the Complaint was received on March 7, 2002. Acknowledgement of the receipt of the Complaint was given to the Complainant on March 15, 2002. A Request for Verification by the Registrar iHoldings.com, Inc was made by the Center on March 18, 2002, with confirmation received that the Respondent was the current Registrant.

Notification of the Complaint was given to the Respondent on March 19, 2002, by post and by email. On April 9, 2002, the Respondents representatives Konsul Ltd requested an extension of time for filing the Response on the basis that the Respondent had only received the Complaint on March 27, 2002, and had therefore only 12 days to prepare its Response. The request was granted insofar as the Center extended the due date for submission of the Response to April 10, 2002. A Response was received by the Center by email on April 10, 2002, and acknowledged on April 11, 2002. On April 17, 2002, a panel consisting of a sole panelist, Mr. Clive Duncan Thorne, was appointed with a scheduled date for a decision of May 1, 2002. Mr. Thorne has completed a Statement of Acceptance and Declaration of Impartiality and Independence. The Panel understand that the requisite fees have been paid. The language of the proceedings is English.

On April 18, 2002, the Complainant indicated to the Center that it wished to

prepare a response to the Respondent's response. This request was put to the

Panel. The Panel indicated that having reviewed the Complaint and the Response

and in the circumstances of the case it considered that it would be helpful

to receive a Reply Submission from the Complainant limited only to matters raised

in the Response. Accordingly the Panel has considered the Complainant's further

submission. In the light of this submission the due date of decision was extended

to May 7, 2002.

4. Factual Background

The Complainant is the owner of the United States trade mark registration "Elastoplast" number 250633 registered for "plaster bandages" as of December 11, 1928. A copy of the Trade Mark Registration Certificate is exhibited as Annex C.1. Evidence is also adduced by the Complainant on trade mark registrations for the mark "Elastoplast" in about 200 countries worldwide. A computer list of the Complainant's international world mark registrations "Elastoplast" is annexed to the Complaint at Annex C.2. It should be noted that the list of registrations includes a registration number 2941 in the Russian Federation.

In its Response the Respondent asserts that it has made a search at the Russian Patent Office database for the trade mark "Elastoplast" and that according to published information in the Committee for Inventions Newsletter number 8, 1928, page 1228 the trade mark "Albin" was registered under trade mark number 2941. A copy translation of this trade mark registration number 2941 is annexed to the Response.

The Respondent also asserts that in 1995 to 1996, the Russian Patent Office refused registration of the trade mark "Elastoplast". In support of this the Respondent exhibits a letter from a Russian Patent Attorney which concludes that International Trade Mark Registration R327061 for the trade mark "Elastoplast" is not in force in the Russian Federation.

The Respondent points out the trade mark "Elastoplast" held by the Complainant has been in use since 1925 in respect of plaster bandages in class 44 for dental, medical and surgical appliance and also in class 5 in respect of "pharmaceutical, veterinary, sanitary preparations, dietetic substances adapted for medical use, food for babies, plasters, materials for dressings, material for stopping teeth, dental wax, disinfectants, preparations for destroying vermin, fungicides and herbicides."

However the Respondent asserts that the term Elastoplast also has a common

use in relation to polymers so that polymers having the features of elasticity

and plasticity and traditionally referred to as Elastoplast are used in footwear,

rubber and mechanical rubber industries, in glue manufacturing and other uses.

In support of this at Annex 4 to the Response an experts report dated April 4, 2002,

from the Saint Petersburg State Technological Institute is exhibited. In conclusion

that report states:

"… it is necessary to note that the specialists in the field of polymers, in the field of polymers processing and those in the related fields interpret the term "elastoplast" only as a united name of synthetic materials group, having special properties reflected in the above name."

The Respondent suggests the reason for the refusal of registration of the trade mark "Elastoplast" was that under Russian trade mark law it was not permitted to register trade marks consisting only of words which "are in common use as denomination of goods of a certain type; those that a commonly accepted symbols of terms".

In its Reply to the Response the Complainant referred in more detail to the history of the registration number 2941 for the mark "Elastoplast" and also the refusal by the Russian Patent Office of registration of the trade mark Elastoplast (number R327061 in 1986). In summary the Complainant asserts that trade mark number 2941 was acquired from and transferred to the Complainant by its former owner, TJ Smith & Nephew Limited in 2001. The Complainant exhibits a copy of the assignment document and comments that it cannot establish why the Respondent's research at the Russian Patent Office failed to reveal this.

It also suggests that because TJ Smith & Nephew Limited and the Complainant share the use of the trade mark "Elastoplast" worldwide the prior registration of Elastoplast in Russia by TJ Smith & Nephew Limited, ie registration number 2941 may have been the reason why the Russian Patent Office refused registration of trade mark number R327061. This may account for the evidence of non registration adduced by the Respondent and for the purposes of this decision the Panel is prepared to accept that the Complainant has established trade mark rights in respect of the mark "Elastoplast" in Russia under registration number 2941.

It is therefore unnecessary for the Panel to consider the Complainant's reply to the Respondent's contentions that the term "Elastoplaste" or "Elastoplast" are chemical terms. In summary the Complainant points out that the evidence submitted by the Respondent only refers to "elastoplast" or "Elastoplastic" which differ from the term "Elastoplast" which spelt with a capital E is the Complainants trade mark registration worldwide.

In summary therefore the Panel finds that the Complaint has trade mark rights in the mark "Elastoplast".

5.Discussion and Findings

In order to succeed in its request for an order to transfer the domain

name to the Complainant the Complainant has the burden of proof of showing

that each of the elements set out in paragraph 4(a) of the Uniform Domain

Name Dispute Resolution Policy ("the Policy") are present. These are as

follows:-

(i) The Respondents domain names are identical or confusingly similar to a

trade mark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interest in respect of the

domain names;

(iii) The Respondent's domain names were registered and are being used in bad

faith.

The Panel proceeds to deal with each of these in turn.

(i) The Respondents domain names are identical or confusingly similar to a

trade mark or service mark in which the Complainant has rights

The Panel having established that the Complainant has rights in the trade

mark "Elastoplast" has to consider whether the Respondent's domain name

is identical or confusingly similar to the Complainant's trade mark. This

is accepted by the Respondent at page 4 of the Response where it indicates

"the Respondent does not oppose that the contested domain name is identical

or confusingly similar to the trade mark in which the Complainant has rights".

The Panel therefore finds for the Complainant in respect of this element.

(ii) The Respondent has no rights or legitimate interest in respect of the

domain names

In support of this contention the Complainant asserts in the Complaint

that there is no relation between the Respondent and Complainant and that

the Respondent is not a licensee of the Complainant nor has he otherwise

obtained an authorization to use the Complainant's mark. In its Reply (paragraph

4) the Complainant states that the Respondent has not proven any legitimate

interest in the domain <elastoplast.com> and in particular has not

delivered any arguments or evidence provided by Article 4 of the Uniform

Domain Name Dispute Resolution Policy. With respect to the Complainant the

burden of proof in showing that the Respondent has no legitimate interest

in the domain name falls upon the Complainant and not the Respondent.

The Respondent submits that it has a legitimate interest in the use of

the domain name and relies upon the following:-

(a) That in its view the word "Elastopast" is a commonly accepted term used

in the chemistry of polymers although it appears to accept that in the case

of polymers the terms "Elastoplasts" as a descriptive term is the term that

is used.

(b) It points out that Saint Petersburg are specialists in the field of research

and production of "elastoplasts" are trained and refers to the evidence given

at Annex 4 to the Response to show this.

(c) That a group of specialists trained in elastoplasts had set up its structural

unit called Elastoplast with the purpose of providing expert consulting services

in the field of research/development, disposal and industrial use of elastoplasts

and that they had acquired the domain name "elastoplast.com" in order to demonstrate

that the domain name gives to potential customers a clear indication of the

kind of services provided.

In summary the Respondent submits that it has its own rights and legitimate

interests in respect of the chemical term elastoplast and that it has a

right to use the Internet as a means to search for a business partner/investor

with the purpose of development of its business, inter alia to own a registered

domain name i.e. <elastoplast.com>.

The Panel does not consider it necessary to consider the truth of the Respondent's

submissions under this head. It is conscious of the fact that the burden

of proof in showing no rights or legitimate interests in respect of the

domain name falls upon the Complainant. There is really no support for the

Complainants submission based upon a lack of a relationship between the

Respondent and the Complainant. Accordingly the Panel finds in respect of

this element that the Complainant has failed to show that the Respondent

has no rights or legitimate interest in respect of the domain name.

(iii) The Respondent's domain names have been registered and are being used

in bad faith

In support of this element the Complainant relies upon an extract from

the Respondent's website which is exhibited at Annex D to the Complaint.

The Panel has considered this extract which in English states

"For Sale

The owners of this URL and website are looking for a business partner/investor

wishing to take part in the development of http://www.elastoplast.com

domain name and website. If you are interested please fill out the form"

The Complainant submits that this is evidence that the Respondent has registered

the domain name "just for commercial purposes and only for the reason to

sell the domain". It further submits that because the Complainant is unaware

of any company trading and registered under the name "Elastoplast" in Russia

it is to be assumed that the Respondent's name "Elastoplast" is not a real

company with a real business but has just been created in connection with

the domain name <elastoplast.com>. Support for this view is given

by the fact that no formal address is given for the Respondent merely an

address via email and by a Post Office Box.

Further in its Reply the Complainant "denies" the Respondent's alleged

intention to establish a consulting service under the domain name <elastoplast.com>

because "there is no indicated to any scientific or economic interest concerning

chemical science given on the original website". The Russian words in the

mainframe, the screen shot exhibited at Annex D are hyperlinks.

In its Response the Respondent submits:-

(a) That its contact information is valid and sufficient. The fact that a PO

Box address is used is not proof of the fact that the companies have no real

business.

(b) The Complainant at no time attempted to establish contact with the Respondent

prior to filing the Complaint.

(c) The assertion that the domain name in question was offered for sale is

an "ad hoc assumption".

In summary the Respondent asserts that it is using the domain name in good

faith neither aiming "at misleading the visitors to the website for some

commercial purposes, nor willing to discredit the trade mark (service mark)

in question since the spheres of business conducted by the Respondent and

the Complainant are totally different".

The Panel has considered the respective submissions of the parties as to

bad faith. The Panel does not consider that the provision only of a PO Box

address by the Respondent is by itself evidence of bad faith.

The Panel has also considered carefully submissions as to the "For Sale"

notice exhibited at Annex D to the Complaint. It appears to the Panel that

this is no more than an advertisement inviting approaches from business

partners/investors wishing to take part in the development of the < elastoplast.com>

domain name and website. In the Panel's view this is a long way removed

from, for example, the circumstances envisaged by paragraph 4(b)(i) of the

Policy which requires evidence conclusively demonstrating that the Respondent

registered the domain name for the purpose of selling the domain name for

an amount far in excess of any conceivable out of pocket costs. The Panel

does not accept that as submitted by the Complainant that Annex D can be

construed as an indicia of bad faith.

Taking into account particularly that the burden of proof of showing bad

faith falls upon the Complainant the Panel finds that the Complainant has

failed to establish that the Respondent's domain name has been registered

and is being used in bad faith.

It follows that the Complainant has failed in its Complaint.

6. Decision

The Panel finds that the Complainant has failed in its complaint and accordingly

is not prepared to order a transfer of the domain name <elastoplast.com>

from the Respondent to the Complainant.

Clive Duncan Thorne

Sole Panelist

Dated: May 7, 2002

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