In a 2015 case about nanosonics.com under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organisation (WIPO), a panel has denied a domain name transfer on the basis that there was no UDRP bad faith use, even though the respondent had held the domain name without using it for almost 13 years.
A WIPO panel concluded that passive holding of a domain name does not necessarily mean bad faith.
Factual Background for the UDRP
The Complainant supplies infection control and disinfectant products and services for medical apparatus, particularly ultrasound probes for medical use, under the trademark NANOSONICS. The Complainant is based in Sydney, Australia, and has affiliates in the USA and Europe. It also works with various other service providers around the world, including GE Healthcare in France and other countries, Miele Professional in a number of European countries, Ava Medica in the Russian Federation and Toshiba Medical Systems in the United Kingdom of Great Britain and Northern Ireland.
The Complainant registered NANOSONICS as a trademark in Australia by an application in May 2000 and in the European Union, Japan, New Zealand, the Russian Federation, Switzerland and the USA pursuant to applications in 2006. The Complainant has also registered a number of domain names with “nanosonics” as the second-level domain (“SLD”).
The Complainant has obtained patents relating to its products and methods in a large number of countries, including France and other European countries.
The Respondent manufactures and sells piezoelectric transducers, particularly for ultrasound diagnostics. It was founded in 1984 and is based in Tours, France. It focuses on designing and producing innovative ultrasound diagnostic products, involving research in the field of nanotechnology.
The Respondent registered the Domain Name in 2002 but has not so far used it or a corresponding name in relation to its products. Since at least 2008, the Domain Name has been directed to a parking page provided by an Internet Service Provider (“ISP”), neoDomaine, which describes itself by the caption “Le service integrale de noms de domaines internet”.
In deciding that there was no bad faith, the panelist wrote:
UDRP Bad Faith Requirement
It is clear from the wording of paragraph 4(a)(iii) of the UDRP and has been affirmed by many UDRP decisions that the two conditions of the third requirement, registration in bad faith and use in bad faith, are cumulative. Both must be satisfied, although use in bad faith can be evidence of registration in bad faith, and vice versa.
No Bad Faith
In this case, the Panel is not satisfied on the evidence that the Respondent knew of the rights now asserted by the Complainant when it registered the Domain Name in 2002. There is in fact, no evidence as to the existence, nature or extent of any use of the NANOSONICS trademark at this date. The most that can be said on the evidence provided as to the position at that date is that a predecessor of the Complainant, called Novapharm Research (Australia) Pty Ltd, had registered NANOSONICS as a trademark in Australia. In the Panel’s view, it cannot be inferred that the Respondent in France knew or should have known of this trademark registration at that date.
While the word “nanosonics” is made up, it does consist of descriptive elements, namely “nano” which is widely used in relation to nanotechnology, and “sonics” which is widely used to refer to equipment which emits or detects sounds. It is therefore not inherently improbable that two or more different companies might have independently had the same idea of combining these elements into a name.
Furthermore, even if the Respondent had known of the Australian trademark registration when it registered the Domain Name in 2002, it cannot be inferred based on the limited record before the Panel that it must have had a bad faith intention to use it to infringe the Complainant’s trademark or to trade off or appropriate goodwill associated with it. Without more evidence as to the use (if any) that had been made by the Complainant’s predecessor of the trademark NANOSONICS, it cannot be presumed that any use that might have been made by the Respondent of the Domain Name would have necessarily been objectionable.
The fact that the Respondent does not appear to have had any concrete plans to use the Domain Name and, indeed, has not used it in the 13 years since registering it does not mean that the Respondent necessarily registered it in bad faith. It is in principle legitimate for businesses to register domain names which they reckon they might want to use in good faith, even if this eventuality does not come to pass.
Nor can it be inferred from the evidence provided that the Respondent registered the Domain Name with a view to selling it at a profit to the Complainant’s predecessor or a competitor. In fact, somewhat unusually, the parking page to which the Domain Name has resolved for the last seven years has not presented any offer for sale of the Domain Name. Although the Response seems to accept the Complainant’s allegation to the contrary, the actual text on the page, set out above in the original French, contains no present indication that the Domain Name is for sale.
The website of the ISP, neoDomaine, is not in evidence, but on a limited viewing the Panel did not see any resale service being promoted alongside the services offered of registration, hosting, email redirection, and the like.
There is no evidence of the Respondent making any attempt to solicit a sale of the Domain Name. If its original registration was in good faith, the Respondent would have been entitled to respond to the Complainant’s entreaties years later to sell the domain name. However, the evidence shows that the Respondent ignored numerous invitations from the Complainant to sell the Domain Name and eventually sought a substantial payment before it would begin to discuss the matter. In the Panel’s view, it cannot be inferred from this that the Respondent registered the Domain Name with a view to selling it to the Complainant or the Complainant’s predecessor.
The Panel is also not satisfied that the Respondent is using the Domain Name in bad faith. It is true that passive holding of a domain name can be in bad faith, but it does not follow that all passive holding of a domain name is in bad faith. Merely retaining a domain name which could be used improperly, but without any attempt or intent actually to use it improperly, does not constitute use in bad faith.
In all the circumstances, the Panel concludes that the Complainant has not proved the third requirement of the UDRP. The Complaint must therefore be rejected.
For the foregoing reasons, the Complaint is denied.
Date: May 23, 2015