JJGC Industria E Comercio de Materiais Dentarios S.A. of Curitiba, Paraná, Brazil, represented by Baril, Brandão & Brofman Advogados (BBB), Brazil has just been found Guilt of Reverse Domain Name Hijacking (RDNH) on the domain name neodent.com.
The domain holder represented themselves.
Here are the relevant facts and findings by the one member WIPO panel:
“The Complainant is based in Brazil but has sales and other operations around the world. Its business is the production, sale, and support of dental implants and tools for installing dental implants and prosthetics. ”
“The Complainant has been in this business since 1993. Submitted with the Complaint is evidence of the Complainant’s ownership of fifty-two registered trademarks or pending applications for trademarks consisting of or including the word “Neodent” in many countries around the world.”
The earliest of these was registered in Brazil in 1997.
This portfolio includes a registration for NEODENT in the Republic of Korea applied for in 2005 and granted in November 2007. The Complainant has conducted its business under the trade name “Neodent” since its inception. Its principal website is “”.www.neodent.com.br
The Respondent is a dentist who conducts his practice in the Republic of Korea. He registered the disputed domain name in 2002. The disputed domain name currently resolves to a website in the Korean language for Neo Dental Clinic, with the logo
In May-June 2013 the Complainant sent the Respondent a cease-and-desist letter, first by email, then by post, and last by courier service, but received no reply beyond acknowledgment of receipt.
“”The Complainant provides no evidence that the Respondent, who does business only in the Republic of Korea, knew of the Complainant or its NEODENT marks when the Respondent registered the disputed domain name in 2002, five years before the Complainant obtained its Korean trademark, or of facts that might support an inference of knowledge.”
“Ordinarily if the face of the complaint itself demonstrates a settled reason why the complaint must be denied, a panel may make a finding of Reverse Domain Name Hijacking (RDNH). ”
This Panel believes that such a finding is appropriate in this proceeding, for three reasons.
First, as explained in paragraph B above the Complainant, which is represented by counsel, pays no heed to a longstanding rule of decision in Policy proceedings that “Panels have mostly declined to introduce the US concept of constructive (deemed) notice per se into the UDRP.” WIPO Overview 2.0, paragraph 3.4. While this is not designated a “Consensus View” it is at the very least a default rule, variation from which requires explication, supported by evidence, from one who pleads it. Notwithstanding its certification in the Complaint, required by paragraph 3(b)(xiv) of the Rules, that “that the assertions in this Complaint are warranted under the Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument,” the Complainant offers the Panel no reason why in this proceeding the Panel should depart from or modify settled Policy precedent.
The second reason is similar, though it involves a more serious pleading error.
According to the Response, the Respondent has operated a dental clinic under the name NEO Dental Clinic since 2002.
The Respondent has provided evidence of public use of the Neodent name (in English as well as Korean), which is something the Complainant could and should have verified prior to submission of the Complaint with an allegation, quoted in Section 5.B above, that the Respondent has never been known by the disputed domain name, and its pleading is misleading to the point of attempting to deceive the Panel.
This alone has been held grounds for finding RDNH. See, e.g., Timbermate Products Pty Ltd v. Domains by Proxy, LLC / Barry Gork, WIPO Case No. D2013-1603; Coöperatie Univé U.A. v. Ashantiplc Ltd / c/o Domain Name Privacy LLC, WIPO Case No. D2011-0636.
Third, the Complainant’s basic theory of its case raises issues far outside the limited jurisdiction and competence of a UDRP panel, and the Complainant or its representative should have known it. The Complainant pitches its case upon the notion that “Therefore, it is evident that the Complainant has exclusive rights over the use of the distinctive sign ‘NEODENT’, guaranteed by international treaties and national laws (including the applicable Korean Trademark Law), resulting from the trademarks registrations, as well as from the filing of its by-laws in the competent commercial register.” [Complaint, paragraph 89] This Panel’s brief is strictly limited by contract to an examination of the three requirements of paragraph 4(a) of the Policy. To determine the extent of the Complainant’s rights, or to weigh them against the Respondent’s claimed rights, lies well beyond that brief, and is something that belongs in a national court, not a UDRP proceeding.
For these reasons the Panel finds that “the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP,” WIPO Overview 2.0, paragraph 4.17, and declares in this Decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
