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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Owlstone Medical Limited v. Caba Oth

Case No. D2018-1203

1. The Parties

The Complainant is Owlstone Medical Limited of Cambridge, United Kingdom of Great Britain and Northern Ireland ("United Kingdom" or "UK"), represented by Nash Matthews LLP, United Kingdom.

The Respondent is Caba Oth of Beijing, China.

2. The Domain Name and Registrar

The disputed domain name <breathbiopsy.com> (the "Domain Name") is registered with TurnCommerce, Inc. DBA NameBright.com (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 30, 2018. On May 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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 June 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 26, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 27, 2018.

The Center appointed Nicholas Smith as the sole panelist in this matter on July 6, 2018. The Panel finds that it was properly constituted. 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 an UK company that is engaged in, amongst other things, the provision of medical equipment and related computer systems and diagnostics methods.

The Complainant is the owner of a United Kingdom trademark registration for BREATH BIOPSY (the "BREATH BIOPSY Mark"), which was filed on September 7, 2016 and registered on December 9, 2016 (registration number UK00003184389) for goods and services in classes 9, 10, and 42 relating to medical equipment.

The Domain Name was registered on September 12, 2016 and is presently inactive. The Respondent has been the named respondent in two previous proceedings with the Center, being VISIOMED GROUP v. Caba Oth, WIPO Case No. D2017-0133 and Halfords Limited v. Caba Oth, WIPO Case No. D2017-1676. In both of these cases a finding was made that the Respondent had registered and used the subject domain names in bad faith.

5. Parties' Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Name is identical or confusingly similar to the Complainant's BREATH BIOPSY Mark;

(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

The Complainant is the owner of the BREATH BIOPSY Mark, having registered the BREATH BIOPSY Mark in the United Kingdom. The Domain Name is identical to the BREATH BIOPSY Mark.

There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent has not registered and has no rights to the BREATH BIOPSY Mark, nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent registered the Domain Name just after the Complainant applied to register the BREATH BIOPSY Mark and has passively held the Domain Name since then. The Respondent has registered other domain names corresponding to recently filed trade mark applications and appears to have no legitimate interest in the use of the Domain Name.

The Domain Name was registered and is being used in bad faith. The Respondent is passively holding the Domain Name and has provided false contact information.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant's trade or service mark.

The Complainant is the owner of the BREATH BIOPSY Mark, having registrations for the BREATH BIOPSY Mark as a trademark in the United Kingdom.

The Domain Name is identical to the BREATH BIOPSY Mark, save for the removal of the space between the words "breath" and "biopsy" and the addition of the ".com" generic Top-Level Domain ("gTLD"), both requirements for the creation of a domain name.

The Panel finds that the Domain Name is, if not identical, certainly confusingly similar to the Complainant's BREATH BIOPSY Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

"Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the BREATH BIOPSY Mark or a mark similar to the BREATH BIOPSY Mark. The Panel is not satisfied that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial use or in connection with a bona fide offering of goods or services; the Domain Name is inactive.

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of any such submissions the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location. (Policy, paragraph 4(b)).

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") records, in response to the question "3.1.2 What constitutes a pattern of conduct of preventing a trademark holder from reflecting its mark in a domain name?" that:

"UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration. This may include a scenario where a respondent, on separate occasions, has registered trademark-abusive domain names, even where directed at the same brand owner. A pattern of abuse has also been found where the respondent registers, simultaneously or otherwise, multiple trademark-abusive domain names corresponding to the distinct marks of individual brand owners…"

The Panel finds that the Respondent has engaged in pattern of registering domain names closely corresponding with the names of commercial enterprises and (in the cases referred to in the Complaint, though not in the present case), seeking consideration in excess of its out of pocket costs for the transfer of such domain names. In one case, the complainant, as the Complainant here, was in the medical device industry; in another case the panel noted that the Respondent had registered some 900 domain names, many of which corresponded (as was the case in that proceeding) to recently filed trademark applications (as is the case here). On the basis of this information, as well as the lack of any explanation by the Respondent of its registration of the Domain Name five days after the Complainant applied to register the BREATH BIOPSY Mark, the Panel is satisfied that the Domain Name was registered and is presently used in order to prevent the Complainant, being the owner of the BREATH BIOPSY Mark, from reflecting its mark in a corresponding domain name and that the Respondent has engaged in a pattern of such conduct. The Policy, paragraph 4(b)(ii), provides that this circumstance is evidence of registration and use of a domain name in bad faith.

Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <breathbiopsy.com> be transferred to the Complainant.

Nicholas Smith
Sole Panelist
Date: July 11, 2018

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