WIPO decision highlights cumulative requirements of third limb of UDRP

In Heraeus Kulzer GmbH v Stoll (Case D2010-0137, March 23 2010), German company Heraeus Kulzer GmbH has failed to obtain the transfer of the domain name 'venussmile.com' under the Uniform Domain Name Dispute Resolution Policy (UDRP).
Heraeus filed a UDRP complaint with the World Intellectual Property Organization (WIPO) against Dr Walt Stoll, an individual based in the United States, seeking the transfer of the domain name.
To achieve the transfer of a domain name under the UDRP, a complainant must establish all of the three following circumstances:
  • The domain name registered by the respondent is identical, or confusingly similar, to a trademark or service mark in which the complainant has rights;
  • The respondent has no rights or legitimate interests in respect of the domain name; and
  • The domain name has been registered and is being used in bad faith.
From 2002 through 2009, Heraeus registered several marks incorporating the term 'Venus' in Germany and in the United States, including the word marks VENUS, VENUS DIAMOND and VENUS WHITE for dental products (eg, teeth filling material, chemical products for dental purposes and other similar goods). Heraeus also had a pending application to register VENUS SMILE as a trademark for the dental field in the United States. By way of its wholly owned US subsidiary, by mid-2009 Heraeus had made nearly $25 million worth of sales of dental goods in the United States under its VENUS mark, and had spent more than $5 million on advertisement.
Stoll has been a practicing dentist in Ohio, United States, for over 25 years. The domain name 'venussmile.com', registered on December 3 2006, pointed, before May 2009, to a free parking page with sponsored links to products and services related to science in general, and astronomy in particular. In May 2009 the parking page began displaying sponsored links to dental products and services which competed with those of Heraeus. Following the filing of the complaint, Stoll asked the registrar to lead the domain name to a page announcing that a website was "coming soon".
Heraeus decided to seek transfer of the domain name before WIPO by establishing the three limbs of the UDRP.
Demonstrating the first element of the UDRP, Heraeus asserted that the domain name was identical, or confusingly similar, to trademarks in which it had rights. Stoll denied this allegation, saying that Heraeus did not hold rights in the mark VENUS SMILE when he selected and registered the domain name. The panel found that Heraeus had satisfied the first test on the basis that it had acquired common law rights in the marks VENUS SMILE, which the domain name fully incorporated. The panel also accepted, although with some hesitation, that the domain name was confusingly similar to Heraeus' VENUS mark, as the domain name consisted of the trademark and the generic word 'smile'.
Turning to the second prong of the UDRP, Heraeus submitted that Stoll had no rights or legitimate interests in respect of the domain name. Stoll counter-attacked by submitting that he intended to use the domain name as a web address to sell an anti-aging skin care line under research and development, for which he had selected the combined term 'Venus Smile' to suggest a good-looking and healthy skin. However, the panel decided that Stoll had failed to provide sufficient evidence to establish this and, therefore, Heraeus had satisfied the second prong of the UDRP.
With regard to the third prong, Heraeus sought to establish Stoll's bad faith by asserting that, when he registered the domain name in December 2006, he knew of Heraeus' rights in the VENUS mark because he had received free VENUS-branded dental goods from Heraeus at a dental trade show in 2003.
Heraeus further submitted that Stoll has used the domain name to attract internet users to his website, thereby creating confusion as to Heraeus' sponsorship of, or affiliation with, that website. Stoll rejected Heraeus' allegations by submitting that accepting free samples from Heraeus was inconsequential, and that the registrar was responsible for all of the advertisements appearing on the parked page. The panel considered that, although Heraeus had established bad-faith use, it had failed to establish the cumulative requirement of bad-faith registration, therefore failing to establish the third limb of the UDRP.
On this basis, the transfer of the domain name to Heraeus was denied.
While this decision may come as a surprise to some commentators, as it almost certainly did to Heraeus, the decision is absolutely correct, as the complaint did not satisfy the cumulative requirements of the third limb of the UDRP and demonstrated only that the domain name had been used in bad faith.
This decision is a good demonstration of how the rules for the UDRP require a demonstration of bad faith on two distinct points: the registration of the domain name and the use of the domain name. Failure to establish either of these will result in a complaint being denied. Other alternative dispute resolution policies, such as that in place for '.eu', require the complainant to demonstrate that the domain name has been registered or used in bad faith. Under these circumstances, Heraeus would have secured the transfer of the domain name.
When drafting a complaint under the UDRP, one must always pay close attention to the conjunctions - failure to do so can have catastrophic consequences.
David Taylor, Hogan Lovells LLP, Paris

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