You are on page 1of 6

ARBITRATION

AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION


Unilabs SA v. Gregg Ostrick, GNO, Inc.
Case No. D2017-0738

1. The Parties

The Complainant is Unilabs SA of Geneva, Switzerland, represented by Ports Group AB, Sweden.

The Respondent is Gregg Ostrick, GNO, Inc. of Steele, Alabama, United States of America (United States),
represented by John Berryhill, Ph.d., Esq., United States.

2. The Domain Name and Registrar

The disputed domain name <biocheckup.com> is registered with eNom, Inc. (the Registrar).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) on April 12, 2017. On
the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection
with the disputed domain name. On April 13, 2017, 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 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on April 24, 2017. In accordance with the Rules, paragraph 5, the
due date for Response was May 14, 2017. On May 12, 2017, the Respondent filed a request for an additional
four calendar days to file the Response. In accordance with paragraph 5(b) of the Rules, the Center granted
the extension of time. The Response was filed timely with the Center.

The Center appointed Steven A. Maier, Jacques de Werra and Adam Taylor as panelists in this matter on June
14, 2017. The Panel finds that it was properly constituted. Each member of 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 is a limited liability company headquartered in Geneva, Switzerland. It is a medical


diagnostic company with a presence principally in Europe.

The Complainant is the proprietor of the following trademark registrations:

- Switzerland trademark number P-513796 for a combined mark including a device and the words
Bio check up CONCERNED BY YOUR HEALTH, registered on August 27, 2003 in Classes 35, 42 and
44;

- International trademark number 816486 for a combined mark including a device and the words
Bio check up CONCERNED BY YOUR HEALTH, registered on December 23, 2003 in Classes 35, 42
and 44 and designating Germany, Spain, France, Italy, Monaco and the Russian Federation;

- European Union Trade Mark number 009855727 for a combined trademark including the words
BioCheck Up registered on March 27, 2013 with a filing date of March 31, 2011 in Class 44;

- France trademark number 4035524 for a combined trademark including the words BioCheck Up
registered on August 1, 2014 with a filing date of March 31, 2011 in Class 44;

- Switzerland trademark number 618595 for a combined trademark including the words BioCheck
Up registered on August 22, 2011 with a filing date of February 28, 2011 in Classes 35, 41, 42 and 44.

The disputed domain name <biocheckup.com> was registered on June 24, 2006.

The Complainant has submitted evidence by way of a screen shot dated March 7, 2017 that the disputed
domain name has resolved to a website offering links to services including Medical Check Up and stating that
the disputed domain name was for sale.

5. Parties Contentions

A. Complainant

The Complainant states that it has operated since 1987 and has extensive coverage in Europe as well as
operating laboratories in Peru and Dubai. It states that it employs more than 5,300 individuals including 300
medical doctors and that it integrates a wide range of services including laboratory medicine, imaging and drug
development services. The Complainant states that it services customers including public and private
healthcare providers, insurance companies and the pharmaceutical industry as well as the general public.

The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark in
which the Complainant has rights. The Complainant refers to the trademark registrations set out above and
contends that the Complainant has registered rights in respect of the terms Bio check up and BioCheck
Up. The Complainant contends that the disputed domain name is effectively identical to these terms.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed
domain name. The Complainant states that the Respondent has no rights in any trademark BIOCHECKUP,
that the Respondent is not a licensee of the Complainant and that the Complainant has not authorized the
Respondent to use its trademarks for the purpose of the disputed domain name. The Complainant denies that
the Respondent has been commonly known by the disputed domain name or that the Respondent is making
any legitimate noncommercial or fair use of the disputed domain name. The Complainant refers to the screen
shot dated March 7, 2017 and submits that the Respondents website includes only advertising and links to
competing businesses, which do not evidence any rights or legitimate interests in the disputed domain name.

The Complainant submits that the disputed domain name has been registered and is being used in bad
faith. The Complainant contends that the Complainant had been well exposed under the terms Bio check
up and BioCheck Up, both through its own marketing channels and through its partners in the healthcare
industry, for many years prior to the registration of the disputed domain name. The Complainant contends that
it is therefore obvious that the Respondent registered the disputed domain name in the knowledge of the
Complainants trademark rights.

The Complainant submits that the Respondents prior knowledge of the Complainants trademark rights is also
obvious from the Respondents use of the disputed domain name for the website described above. The
Complainant contends that the Respondent registered the disputed domain name to prevent the Complainant
from reflecting its trademark in a corresponding domain name and that the Respondent registered and has
used the disputed domain name with the intention of obtaining an offer from the Complainant to purchase the
disputed domain name.

The Complainant further alleges that the Respondents website has intentionally advertised activities that can
be confused with the Complainants main practice areas, which creates a risk of confusion with the
Complainants trademarks.

The Complainant produces evidence of a cease and desist letter to the Respondent dated March 7, 2017 and
states that the Respondent failed to transfer the disputed domain name to it in response to that letter. The
Complainant also alleges that that Respondent altered its website in response to the cease and desist letter,
which it relies on as further evidence of bad faith. The Complainant exhibits a screen shot dated April 7, 2017
which contains links that no longer include Medical Check Up or any similar service.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent submits that the disputed domain name comprises a non-distinctive combination of two
common terms, bio and checkup, which the Respondent registered in 2006 and has legitimately used for
keyword advertising relating to those two terms.

With regard to the Complainants trademark rights, the Respondent submits that the Complainant has failed to
provide any particulars of any commercial activity, reputation or customer recognition relating to its marks. The
Respondent also submits evidence that the Complainant attempted to register a United States trademark
similar to its BioCheck Up trademarks referred to above, but subsequently abandoned that application.

The Respondent further contends that all of the Complainants registered trademarks contain a figurative
element and that the term biocheckup amounts to a relatively small component of those marks, and in
particular the Complainants 2003 trademarks. The Respondent denies in the circumstances that the disputed
domain name resembles the Complainants trademarks.

Concerning rights or legitimate interests, the Respondent contends that the disputed domain name comprises
two descriptive terms which are suggestive of checking biological functions. The Respondent argues that
elements of the disputed domain name including biocheck and bio checkup are commonplace and he
exhibits multiple examples of the use of these term by other parties. The Respondent submits, therefore, that
none of the terms bio, check or up, or those terms in combination, are uniquely or distinctively associated
with the Complainant.

The Respondent submits that he (or his organization) is a well-known registrant of combinations of common
and descriptive words and phrases. He refers to other of his domain name registrations which have been
unsuccessfully challenged under the UDRP, including <greentrust.com> and <displaydepot.com>. The
Respondent also cites the decision in Larry S. Nichter, M.D. & Another v. Domain Administrator/Thought
Convergence, Inc., NAF Case No. FA1611001702547, denying a claim concerning the domain name
<biospa.com>.

The Respondent submits that his use of the disputed domain name for over ten years without objection from
the Complainant also undermines the Complainants claim that the Respondent has no rights or legitimate
interests in respect of the disputed domain name.
On the question of bad faith, the Respondent submits that, prior to being made aware of the Complainants
claim, he had never heard of the Complainant and had no duty to have been aware of the Complainants 2003
trademarks.

The Respondent contends that a registrant is free to register domain names comprising common terms on a
first-come, first-served basis and that the use of such domain names for the purpose of revenue generating
pay-per-click websites is not of itself unlawful.

The Respondent repeats his submission that the term biocheckup represents only a small proportion of the
Complainants 2003 trademarks, which were the only trademarks to predate the registration of the disputed
domain name, and that the disputed domain name does not resemble the Complainants figurative
trademarks. The Respondent also restates that the Complainant failed to obtain a corresponding trademark
registration in the United States, which the Respondent refers to as the mutual jurisdiction for the purposes of
this proceeding.

The Respondent repeats his submission that the disputed domain name comprises a combination of
descriptive terms which was not informed by the Complainants 2003 registrations. The Respondent states that
he is the registrant of numerous other descriptive domain names that include the term bio such as
<biomedtesting.com>, <biomakeover.com> and <biofinder.com>. The Respondent contends that the term
bio indicates biological and is descriptive of living systems and that the term checkup is descriptive of
monitoring or testing relating to such living systems.

The Respondent takes issue with the Complainants allegations concerning his alleged advertising of
competing businesses. The Respondent submits that the Complainant relies solely on the term Medical
Check Up which appears on the screen shot dated March 7, 2017, but that the Complainant fails to identify
any such competing business or to describe its own relevant products or services. The Respondent contends
that there is a profusion of online activities relating to medical check ups and that the use of the disputed
domain name for this purpose is not suggestive of the Complainant or its services.

The Respondent also denies that its use of the disputed domain name has caused any customer confusion or
that the Complainant has produced any relevant evidence in that regard.

The Respondent denies that his rejection of the Complainants cease and desist letter is evidence of bad faith
and submits that the Complainant has failed to exhibit the Respondents representatives reply to that letter
dated April 11, 2017 denying the Complainants claim, which the Respondent himself exhibits. The
Respondent states that he did alter the keyword settings on the relevant website after receipt of the
Complainants cease and desist letter, but submits that he did so in order to avoid the possibility of keyword
spiking in order to make the website appear incriminating.

6. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements
set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service
mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain
name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established that it has registered trademark rights in the figurative or combined
trademarks referred to above, all of which registrations include the terms Bio check up or BioCheck
Up. While these terms form only part of the overall trademark registration in each case, the Panel finds
them to be significant elements nonetheless and clearly sufficient to satisfy the threshold test
contemplated by paragraph 4(a)(i) of the Policy when compared to the disputed domain name. The
Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark or
service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Panel finds that the disputed domain name is descriptive in nature and comprised of the dictionary
terms bio, check and up or checkup. A registrant may legitimately register a descriptive domain
name in circumstances where the registrant is not targeting or seeking to take unfair advantage of a
complainants trademark rights. A registrant may also legitimately use such a domain name for the
purpose of a revenue generating pay-per-click website corresponding with the descriptive nature of the
domain name, again in circumstances where it is not seeking to target or take unfair advantage of the
goodwill attaching to a complainants trademark.

In this case, the Complainant submits that the Respondent must have registered the disputed domain
name with the Complainants trademarks in mind and that the Respondent has used the disputed domain
name in bad faith to confuse Internet users and/or to solicit an offer from the Complainant to purchase the
disputed domain name. The Complainant submits in this regard that it had used the terms Bio check up
and BioCheck Up for many years prior to the Respondents registration of the disputed domain name
and that it was well exposed as the owner of those marks.

However, at the date of registration of the disputed domain name in 2006, the Complainant was the
owner only of the trademarks that had been registered in 2003 in a limited number of territories, not
including the United States. Those trademarks were figurative or combined in nature and included a
device and the words concerned by your health in addition to the term Bio check up. The Complainant
has produced little or no evidence of the reputation of its trademarks as of 2006 (and no evidence at all
specific to the United States) and the Panel is not persuaded that the descriptive term biocheckup can
only have referred to the Complainants trademarks at that time, or that the Respondent knew or ought to
have known of the Complainants trademark rights.

In the view of the Panel, therefore, the disputed domain name is descriptive in nature and Complainant
has not discharged the burden of proving on balance that the Respondent registered the disputed domain
name with the Complainants trademarks in mind and with the intention of targeting or taking unfair
advantage of the Complainants trademark rights. In the circumstances, the Complainant has not
established that the Respondent has no rights or legitimate interests in respect of the disputed domain
name.

C. Registered and Used in Bad Faith

Given that the three elements under paragraph 4(a) of the Policy are cumulative, and given that the
Complainant has failed to establish that the Respondent had no rights or legitimate interests in respect of the
disputed domain name, there is no technical need for the Panel to assess whether the Respondent registered
and has used the disputed domain name in bad faith. However, in view of the Parties submissions, the Panel
makes the following brief observations on the third element.

Similar considerations to those above apply in assessing whether or not the disputed domain name was
registered and has been used in bad faith. Once again, the Complainant has not demonstrated to the
satisfaction of the Panel that the Respondent knew or ought to have known of the Complainants trademark
rights at the date of registration of the disputed domain name and that he registered the disputed domain name
with the intention of taking unfair advantage of the Complainants rights.
With regard to the use of the disputed domain name for a pay-per-click website which linked to services
including Medical Check Up, the Panel finds that this was a predictable name for a link corresponding to the
descriptive nature of the disputed domain name and that the Complainant has failed to establish that this was
deliberately intended to cause confusion with the Complainant and its services.

As to the fact that the disputed domain name was offered for sale, the mere fact of offering a descriptive
domain name for sale is not of itself indicative of bad faith and the Panel finds no evidence that the Respondent
intended to solicit a sale of the disputed domain name specifically to the Complainant or to a competitor of the
Complainant.

Nor does the Panel consider that the Respondent acted in bad faith in response to the Complainants cease
and desist letter. The Respondent did not ignore that letter, but replied to it denying the Complainants
claim. While the Respondent admits to having then changed the relevant pay-per-click settings on his website,
the Panel views this as a neutral point in response to the Complainants letter and not as one that indicates
culpability on the part of the Respondent.

In the circumstances, the Panel finds that the Complainant has failed to establish that the disputed domain
name has been registered and is being used in bad faith.

7. Decision

For the foregoing reasons, the Complaint is denied.

Steven A. Maier
Presiding Panelist

Jacques de Werra
Panelist

Adam Taylor
Panelist
Date: June 26, 2017

You might also like