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WIPO Arbitration and Mediation Center

Complainant is Ciphergen Biosystems, a Delaware (USA) corporation with its principal place of business in Fremont, California, United States of America, represented by the law firm Cooley Godward LLP, Palo Alto, California, United States of America.

The Respondent is David Sabatini, an individual who resides in Cambridge, Massachusetts, United States of America.

The domain name at issue (Domain Name) is <proteinchip.com>. According to the "whois" database, Respondent registered the Domain Name on July 27, 1999.

The registrar is Network Solutions, Inc., Bethlehem, Pennsylvania, United States of America.

The WIPO Arbitration and Mediation Center (the "Center") received Complainant's complaint on July 1, 2002 (electronic copy) and June 27, 2002 (hard copy). At the Center's request, on July 12, 2002, Complainant corrected two technical deficiencies in the Complaint. The Center verified that the Complaint as amended satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the WIPO "Supplemental Rules"). Complainant made the required payment to the Center. The formal date of the commencement of this administrative proceeding is July 15, 2002.

On June 28, 2002, the Center transmitted via email to the Registrar a request for registrar verification in connection with this case. On July 9, 2002, the Registrar transmitted its verification response to the Center, confirming that the Respondent David Sabatini is the registrant and administrative and billing contact, and that VeriSign, Inc., Dulles, Virginia, United States of America is the technical contact.

On July 15, 2002, the Center transmitted to the Respondent a Notification of Complaint and Commencement of the Administrative Proceeding via courier and e-mail. The Center received confirmation of courier delivery, and at least one email copy sent to Respondent was received, as the Center received no notice to the contrary.

Also on July 15, 2002, Respondent wrote to Complainant's counsel, advising that he had previously sent to the Registrar a signed agreement to transfer the Domain Name to Complainant, that this had not been processed, and that he was sending another signed copy to the Registrar. Respondent's counsel duly forwarded this correspondence to the Center.

On August 6, 2002, the Center notified Respondent of his default.

In view of the Complainant's designation of a single panelist and Respondent's default the Center invited Mr. Richard G. Lyon, to serve as a panelist.

After receiving Mr. Lyon's Statement of Acceptance and Declaration of Impartiality and Independence, on September 2, 2002, the Center transmitted to the parties a Notification of Appointment of Administrative Panel. The projected decision date is September 16, 2002.

I find that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules, and that the panel has jurisdiction over this dispute.

The Administrative Panel shall issue its decision based on the complaint, the evidence presented, the Policy, the Rules, and Supplemental Rules.

Complainant is engaged in the biotechnology fields of protein discovery, assay development, and characterization. Complainant develops, manufactures, sells, and services systems and related products (known generically as arrays, microarrays, biochips, and protein biochips) that discover, characterize, and assay proteins from native biological samples.

Complainant holds four registered trademarks for ProteinChip, two in the United States, one in Switzerland, and one in the European Union. The first of these was filed in June 1997 and registered in October 1999, in the United States. Complainant has sold products under the ProteinChip name since 1997. It maintains a website at <ciphergen.com>.

Complainant has not licensed Respondent to use its name or marks.

Complainant alleges that a user seeking a website at the Domain Name obtains a page noting "Under Construction. Please check back at a later date." I confirmed on September 6, 2002, that entry of the Domain Name yields this response.

Respondent, who holds Ph.D and M.D. degrees, also owns the domain name <proteinarray.com>, which he also registered on July 27, 1999. Complainant alleges that Respondent is a Whitehead Fellow at the Massachusetts Institute of Technology (MIT) in Cambridge, Massachusetts, performing research in the area of developing systems and approaches to the characterization of gene products, and a scientific advisor to Agencourt Bioscience Corporation. The stationery used by Respondent in his correspondence referred to above confirms his association with Whitehead Foundation and MIT.

Complainant or its counsel wrote to Respondent in November 1999, December 2000, January 2001,and January and May 2002, [1] requesting transfer of the Domain Name. According to the Complaint, the only responses were telephone calls in December 2000 and January 2001, in which Respondent told Complainant's representative that he intended to use the Domain Name, that Complainant had no right to the Domain Name, and that Respondent intended to begin a business selling "protein chips."[2]

As noted above, on the day the Center transmitted notice of the Complaint, Respondent wrote to Complainant's counsel, stating that he had previously sent to the Registrar a transfer agreement under which the Domain Name would be transferred to Complainant.

Complainant's contentions may be summarized as follows:

The Domain Name is identical to its registered trademarks. Respondent has no rights or legitimate interests in respect to the Domain Name. Respondent's registration of the Domain Name has prevented the mark owner from using its mark in a domain name. Since Respondent is active in the biotechnology field, Respondent was surely aware of Complainant's marks and rights when it registered the Domain Name and would have discovered Complainant's pending applications had he performed a trademark search prior to registration. Since Complainant held registered marks, Respondent was on "constructive notice" of the marks at the time Respondent registered the Domain Name. Respondent's failure to build out a functioning website in the three and one-half years since obtaining the Domain Name constitutes use in bad faith under the "warehousing" or "parking" doctrine.

Respondent has failed to reply to the Complaint. From his letter to Complainant's counsel, however, it appears that Respondent is willing to transfer the Domain Name to Complainant.

The Complainant must prove the elements set out in paragraph 4(a) of the Policy. These elements are as follows:

(i) Respondent's Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect to the Domain Name; and

(iii) Respondent's Domain Name has been registered and is being used in bad faith.

The Complainant bears the burden of proof on each of these elements. Respondent's default does not automatically result in judgment for the Complainant.

The Complainant has plainly established the first element. The Domain Name incorporates verbatim the Complainant's mark.

The allegation of non-use for three years, unanswered by Respondent, supports a finding of use in bad faith under the doctrine of warehousing, first set out in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and found by many panels as sufficient to sustain a finding of use in bad faith. That doctrine is grounded in Section 4(b)(ii) of the Policy, which includes as an example of bad faith use action (which may include prolonged and intentional inaction) that deprives a mark owner of use of its mark in a domain name.

Paragraph 4(a)(iii) is conjunctive – both registration and use in bad faith must be proven. World Wrestling Federation, Inc. v. Bosman, WIPO Case No. D1999-0001, citing Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy. Here Complainant's asserted basis for finding registration in bad faith is the presumption of knowledge created under the Lanham Act from Complainant's registration of its marks and Respondent's likely actual knowledge of the marks by reason of his presence as an active player in the biotechnology field.

I am prepared to accept Complainant's assertion that Respondent was aware of Complainant's marks when he registered the Domain Name. That might suffice to establish bad faith registration if the Domain Name incorporated a fanciful or famous mark.[3] Complainant's marks, however, are descriptive; protein chip (like protein array, which Respondent has incorporated into a domain name to which Complainant does not object) is a generic term in biotechnology that refers to products made and marketed not only by Complainant but its competitors as well.[4] While a UDRP panel may not ignore a validly registered mark or the presumption it creates, it is not required to expand the mark owner's rights beyond those granted by statute. The registrant of a descriptive mark has limited rights to exclude infringers, under both United States trademark law and the Policy.[5] I am not willing to hold that ownership of a descriptive mark that is or becomes a registered trademark alone establishes that a third party who registered a domain name incorporating that term did so in bad faith under the Policy.

Complainant offers no evidence of any other conduct by Respondent that would sustain a finding of registration in bad faith. As to registration, the evidence supports none of the examples in Paragraph 4(b) of the Policy. There is no evidence of registration with the intent to sell the Domain Name, no evidence of disruption of Complainant's business, and no evidence of Respondent's diversion (intentional or otherwise) of Complainant's customers. While as noted Respondent's non-use of the Domain Name might support "a pattern of . . . conduct" that deprives Complainant of the opportunity to use its mark as its domain name, the only evidence is that Respondent registered as .com domain names two common, descriptive terms in his field.

Bad faith in registration may be inferred from subsequent bad faith use, such as attempted sale of the domain name at issue or diversion of customers. A "pattern of [suspect] conduct" in other instances is also relevant. Here, though, Complainant has not alleged any misconduct (active or passive) by Respondent with respect to any other domain name, and I cannot find any record of him as a party in any other proceeding under the Policy. Registration in bad faith cannot be sustained here entirely by inaction.[6]

For the same reasons I am unwilling on so sparse an evidentiary record to hold that a scholar in the field of biotechnology shall be presumed to lack legitimate rights in a generic term in his field on the sole basis that one of the existing manufacturers has trademarked that term.

I emphasize that I am not holding Complainant's marks invalid or denying the evidentiary presumption that their registrations provide. To do so is a matter for the courts, not an arbitrator under the Policy. I know of no reason why the marks are not valid. What I find, on the record in this case, is that Respondent's constructive knowledge of Complainant's descriptive marks, standing alone, does not establish that he registered the Domain Name in bad faith.

Hopefully, once the Registrar terminates the block on transfers created by this proceeding, Respondent's revised transfer agreement will be duly processed and the Domain Name transferred to Complainant. While I regret that if this does not occur further proceedings may be necessary, I believe that the benefits of adhering to the requirement that a complainant prove by competent evidence each of the elements in Section 4(a) of the Policy outweigh any inconvenience to Complainant in pursuing the matter privately with Respondent or later proceeding in an appropriate forum.

For the foregoing reasons, the Complainant is dismissed.

__________________

Richard G. Lyon
Sole Panelist

Dated: September 12, 2002

Footnotes:

1. Respondent claims to have signed and sent to the Registrar a transfer agreement in response to the January 2002 letter.

2. Complainant does not support this allegation concerning Respondent's statements with an affidavit or other evidence. Accordingly I give it little weight. See, e.g., Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Jonathan Dardashti, WIPO Case No. D2001-1158, at footnote 2.

3. Volvo Trademark Holding AB v. volvoaero.com, WIPO Case No. D2001-0723.

4. A Google® search for <protein chip> yielded over 95,000 hits. Many of the articles and notes displayed by this search used the term as descriptive of a product. Complainant's marks employ a single word with an upper case "P" and "C" -- ProteinChip®. Combining the words and adding a second capital letter may create a distinctive association with Complainant's products in print media, but that distinction cannot apply to domain names, in which upper and lower case are indistinguishable and spacing between words not permitted.

5. E.g., Rollerblade, Inc. v. CBNO, WIPO Case No. D2000-0427; Lumena s-ka zo.o v. Express Ventures LTD., NAF Case No. FA0003000094375 (2000); SOCCERPLEX, INC. v. NBA, Inc., NAF Case No. FA0003000094361 (2000); Car Toys, Inc. v. Informa Unlimited, Inc., NAF Case No. FA0002000093682 (2002).

6. Complainant cites Chernow Communications, Inc. v. Kimball, WIPO Case No. D2000-0119 (ccom.com), and Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 (jackspade.com), as authority for holding that constructive notice of a mark at the time of registration and subsequent non-use satisfy Sections 4(a)(ii) and 4(a)(iii) of the Policy. Neither of these cases involved a common, descriptive term selected as the domain name. Moreover, with due respect for the majority panelists in those cases, I do not agree with all the inferences drawn and conclusions reached in those cases.