Healthcare company loses arbitration for domain name


Healthcare giant Novo Nordisk has lost a dispute over the domain name FlexTouch.com.
Novo Nordisk filed a complaint with World Intellectual Property Organization to get the domain name based on its 2008 and 2009 trademark filings for “FlexTouch”. The current domain owner acquired the domain name after the trademarks were filed.
Novo Nordisk argued that the respondent was a “professional domainer” who should have searched for existing trademarks before acquiring the domain name. However, the company has not yet started using the FlexTouch mark in commerce. As the respondent pointed out in the case, the term “FlexTouch” is generic and is commonly associated with computing. Indeed, a Google search for “FlexTouch” returns a number of technical uses. A parking page at FlexTouch.com only included links to electronics and computers, not health care.
The WIPO panel found that the domain was not registered in bad faith:
The Complainant did not provide any evidence that the Respondent registered the disputed domain name with knowledge of the Complainant’s rights in the term “flextouch”. The Complainant itself submits that it has not used its FLEXTOUCH Marks actively in commerce so far, but merely intends to use the FLEXTOUCH Marks for pharmaceutical preparations for the treatment of diabetes. The Complainant neither provided any evidence that it promoted its FLEXTOUCH product in any way nor listed any other circumstances supporting the assumption that the Respondent must have been aware of the Complainant and its rights in the term “flextouch” at the time of the registration of the disputed domain name. The Respondent, in turn, provided evidence of substantial third parties’ use of the terms “flex touch” and “flexible touch” in connection with various products. As far as this Panel is aware, he has not been found to infringe the Policy in an earlier proceeding.
Panelist Brigitte Joppich also noted:
…the registration of domain names because of their attraction as generic terms is a business model permitted under the Policy, and there is no general obligation under the Policy to conduct searches in order to find out whether a domain name might infringe third parties’ rights.