{ "case_number": "CAC-UDRP-106285", "time_of_filling": "2024-02-23 09:43:11", "domain_names": [ "scipio.email" ], "case_administrator": " Iveta Špiclová (Czech Arbitration Court) (Case admin)", "complainant": [ "SCIPIO BIOSCIENCE" ], "complainant_representative": "Laurence RIVIERE (ICOSA)", "respondent": [ "Christian SCIPIO" ], "respondent_representative": null, "factual_background": "

A<\/strong>. Complainant<\/strong>'s Factual Allegations<\/strong><\/p>\n

The Complainant's statements of fact can be summarised as follows:<\/p>\n

The Complainant, Scipio bioscience, is a French biotech startup incorporated in 2017, which develops, manufactures and commercialises laboratory kits and analysis software for single-cell RNA sequencing. 'Scipio' is a distinctive name with regard to the Complainant’s business segment, namely medical devices and medical software.<\/p>\n

In addition to the trade marks set out in the above section 'Identification of Rights', the Complainant is the owner of domain names bearing the term 'scipio', including the Complainant's official website at <scipio.bio>, which was registered in 2017.<\/p>\n

B<\/strong>. Respondent<\/strong>'s Factual Allegations<\/strong><\/p>\n

The Respondent served a Response in this UDRP administrative proceeding on 28 February 2024, the contents of which are laid down in the below section 'Parties’ Contentions'.<\/p>\n

The Respondent is a German individual who works as a Senior Key Expert Transformation at Siemens Healthineers AG, in Germany.<\/p>\n

In response to the PO1 (defined below), the Respondent provided documentary evidence that 'Scipio' is his surname by virtue of marriage in 2020.<\/p>", "other_legal_proceedings": "

The Panel is unaware of any other pending or decided legal proceedings in respect of the disputed domain name <scipio.email> ('the disputed domain name').<\/p>", "no_response_filed": "

A<\/strong>. Complainant<\/strong>'s Submissions<\/strong><\/p>\n

The Complainant's contentions can be summarised as follows:<\/p>\n

I<\/strong>. The disputed domain name is confusingly similar to a trade mark in which the Complainant has rights<\/strong><\/p>\n

The Complainant submits that the disputed domain name incorporates the trade mark SCIPIO in its entirety, and that the generic Top-Level Domain ('the gTLD') <.email> heightens the confusion with the Complainant's trade mark to the extent that Internet users will be misled to believe that it is associated with the Complainant.  <\/p>\n

The Complainant therefore concludes that the disputed domain name is identical to the Complainant’s trade mark.<\/p>\n

II<\/strong>. The Respondent has no rights or legitimate interests in respect of the disputed domain name<\/strong><\/p>\n

The disputed domain name is held by the Respondent, Mr Christian Scipio, a German individual who holds no trade marks in the sign 'scipio' and has never been authorised by the Complainant to use the Complainant's trade mark.<\/p>\n

The Complainant submits that the disputed domain name redirects to the website at <www.christian-scipio.de>, where Mr Scipio presents himself in the form of a curriculum vitae which, inter alia, provides that he is a Senior Key Expert Business Transformation & Architect for Healthcare Digitalization at Siemens Healthcare.<\/p>\n

The Complainant further submits that the Respondent has no legitimate interest in the disputed domain name as he can and does communicate in his full name with the domain name <christian-scipio.de>, and could retain this sole domain name or any variations thereto.<\/p>\n

In addition, the Complainant states that 'Scipio' is not a common family name in Germany, where the Respondent is located. According to the Complainant's own research, only 56 persons bear such surname in Germany, which makes it very rare.<\/p>\n

In view of the above, the Complainant concludes that the Respondent has no rights or legitimate interests in the dispute domain name.<\/p>\n

III<\/strong>. The Respondent registered and is using the disputed domain name in bad faith<\/strong><\/p>\n

The Complainant submits that MX servers are configured to the disputed domain name and that the Respondent could thus be sending fraudulent e-mails to the Complainant's partners, clients, potential clients, providers, employees, etc.<\/p>\n

The Complainant has reached out to the Respondent to alert him of these circumstances and to ask him to communicate only under his full name and to abandon the disputed domain name, in order for him to avoid any confusion with the Complainant's trade mark. The Respondent, however, refused the Complainant's reasonable proposition, which shows bad faith, particularly as he only uses the domain name <christian-scipio.de>.<\/p>\n

Furthermore, the Complainant avers that besides the risk linked to fraudulent messages, the Respondent will certainly – and unduly – divert Internet users looking for the Complainant to the Respondent's website.<\/p>\n

The Complainant therefore concludes that the Respondent has registered and is using the disputed domain name in bad faith.<\/p>\n

B<\/strong>. Respondent<\/strong>'s Submissions<\/strong><\/p>\n

The Respondent served a Response in this UDRP administrative proceeding on 28 February 2024.<\/p>\n

The Respondent's contentions can be summarised as follows:<\/p>\n

I<\/strong>. The disputed domain name is neither identical nor confusingly similar to a protected trade mark <\/strong><\/p>\n

The Respondent's surname is 'Scipio' and the personal ownership of this name predates the registration of the Complainant's trade mark.<\/p>\n

II<\/strong>. The Respondent has rights or legitimate interests in the disputed domain name<\/strong><\/p>\n

The disputed domain name is used for the Respondent and his family as a personal mail server and web-forward host.<\/p>\n

The Respondent provides mail accounts to his family members and does not intend to sell any goods or services through the disputed domain name, nor to cause any harm to the Complainant or any other legal entity.<\/p>\n

The Respondent has already switched to use [christian@scipio.email] as his primary e-mail address and so did other family members.<\/p>\n

The Respondent is merely working as an employee in the same industry sector but for another company.<\/p>\n

III.<\/strong> The disputed domain name has not been registered and used in bad faith<\/strong><\/p>\n

The Respondent has never used the disputed domain name for any fraudulent purposes and does not intend to do so. The mail server is used for private, family mail purposes only. The number of e-mails from the disputed domain name to other mail services is less than 25 since the beginning of 2024.<\/p>\n

The Respondent submits that the Complainant has not shown that the Respondent has been using the disputed domain name for fraudulent activities. The Complainant was also not able to prove that the Respondent’s presence has caused confusion among the Complainant's customers.<\/p>\n

The Respondent further submits that in an exchange prior to commencing this UDRP administrative proceeding the Complainant has made unproven allegations of the Respondent's bad faith use associated with the disputed domain name. The Complainant has also falsified information submitted to CAC in so far as the copy of the e-mail exchange between the Parties prior to the dispute, provided by the Complainant, makes reference to a UDRP claim which had not been raised with the Respondent at the time.<\/p>\n

IV<\/strong>. Reverse Domain Name Hijacking <\/strong><\/p>\n

The Respondent seeks a finding for reverse domain name hijacking (RDNH) against the Complainant, for the following reasons:<\/p>\n

• Shortly after the registration of the disputed domain name, the Complainant reached out to the Respondent and made unfounded allegations of the Respondent's bad faith simply because the Respondent had not yet set up a website;<\/p>\n

• The Complainant's allegation that the Respondent offers digital healthcare solutions is incorrect;<\/p>\n

•  The Complainant has shown no proof of actual confusion or that the Respondent has engaged with irreprehensible practices associated with the disputed domain name; and<\/p>\n

• The Complainant has also falsified information submitted to CAC as set out under item III above.<\/p>\n

V<\/strong>. Settlement options<\/strong><\/p>\n

The Respondent is open to reasonable negotiations with the Complainant.<\/p>", "rights": "

The Complainant has, to the satisfaction of the Panel, shown that the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the UDRP Policy).<\/p>", "no_rights_or_legitimate_interests": "

The Complainant has failed to make prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name (within the meaning of paragraph 4(a)(ii) of the UDRP Policy).<\/p>", "bad_faith": "

The Panel makes no ruling on this UDRP Policy ground for the reasons set forth in section 'Principal Reasons for the Decision' further below. <\/p>", "procedural_factors": "

A<\/strong>. Unsolicited filings<\/strong><\/p>\n

On 7 March 2024, the Parties filed new – albeit unsolicited – submissions which the Panel has considered and decided to accept into the case record due to their materiality to the case.<\/p>\n

A<\/strong>.1 Complainant<\/strong>'s submission<\/strong><\/p>\n

The Complainant's submission reads as follows:<\/p>\n

'We revert to you since the Parties were not able to settle the matter amicably.<\/em><\/p>\n

Indeed, the Respondent is only willing to sell the litigious domain name, at the price of 5 000 €. Obviously, this is an attempt to take advantage of the Claimant’s legitimate concerns regarding a risk of confusion and of fraudulent messages sent to impersonate him, to earn money. It clearly shows the Respondent’s lack of good faith.<\/em><\/p>\n

Indeed, we remind our client has prior company name, trademark and domain name rights on the name SCIPIO. We also emphasize on the fact that SCIPIO, if not associated with a first name, will not be immediately perceived as a patronym, since it is a very rare name, in Germany notably. On the contrary, SCIPIO is easily perceived as a trademark.<\/em><\/p>\n

That is why the Respondent must use its name as a family name, i.e Christianscipio, Christian-scipio or other combination associated with his first name, and not as a trademark.<\/em><\/p>\n

We hope we can settle this trademark infringement soon considering our client's prior rights’<\/em>.<\/p>\n

A<\/strong>.2 Respondent<\/strong>'s submission<\/strong><\/p>\n

The Respondent's submission reads as follows:<\/p>\n

‘I revert to you to the new arguments presented by the complainant.<\/em><\/p>\n

Indeed, I remind that the complainant never entered the standard procedure of negotiating first but rather immediately decided to threaten me via mail and then also further falsified the mail traffic presented to the UDRP by omitting the fact that the UDRP is to be involved in the first place. It clearly shows the complainants behavior is matching the criteria for reverse domain name hi-jacking and bad faith on their end. The fact that the complainant then again immediately demanded to have the domain transferred to them for free and then only offered 50€ after the UDRP validated my response further underlines their disinterest in an honest negotiation.<\/em><\/p>\n

Indeed, I remind that my ID shows my official personal ownership of the name Scipio as of June 17th, 2020 which predates the trademark registrations of the complainant which were filed in 2022 and 2023. I also emphasize that I have legitimate interest in owning a domain name that matches my last name. The complainant shows no proof that Scipio is <\/em>[sic] percieved as a trademark by independent individuals outside this case. In fact, Scipio is thus <\/em>[sic] percieved as a name only.<\/em><\/p>\n

This is also why I do not use this name as a trademark. I remind that it is clearly visible on my homepage that I do not own a company or that I offer services on my own. The allegation by the complainant that I bought the domain name with intentions to infringe the<\/em> [sic] complainants trademark thus further supports the criteria for reverse domain name hi-jacking and bad faith on their end in this case.<\/em><\/p>\n

As said in my response earlier: I am fully willing to cooperate with the result presented by the UDRP'.<\/em><\/p>\n

B<\/strong>. Procedural Order No. 1<\/strong><\/p>\n

The Panel transmitted to the Parties on 12 March 2024 the Procedural Order No. 1 ('the PO1'), as follows:<\/p>\n

1<\/em><\/strong>. PROCEDURAL BACKGROUND<\/em><\/strong><\/p>\n

1.1 This administrative proceeding is conducted pursuant to the Uniform Domain Name Dispute Resolution Policy (‘the UDRP Policy’); the Rules for Uniform Domain Name Dispute Resolution Policy (‘the UDRP Rules’), both of which issued under the auspices of the Internet Corporation for Assigned Names and Numbers (ICANN); and the Center of the Czech Arbitration Court (‘the CAC’) Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (‘the Supplemental Rules’).<\/span><\/em><\/p>\n

1.2 Rule 10 of the UDRP Rules affords a latitude of discretion for panels to conduct a UDRP administrative proceeding as they see fit, so long as it conforms to the procedural legal framework.<\/em><\/p>\n

1.3 The Panel <\/span><\/em>has reviewed the available record and hereby issues a procedural order, the particulars of which are set out in section 2 below (‘the Procedural Order No.1’ or ‘PO1’ interchangeably).<\/em><\/p>\n

2<\/em><\/strong>.<\/em> PARTICULARS OF PROCEDURAL ORDER NO. 1<\/em><\/strong><\/p>\n

<\/em><\/strong>2.1 The Procedural Order No.1 is made to seek the following factual clarification from both the Complainant and the Respondent (‘the <\/em>Parties’).<\/em><\/p>\n

2.2 The Panel notes that, in the Response, the Respondent alludes to his ‘[…] personal ownership of the name Scipio as of June 17th<\/strong>, 2020<\/strong>…’, as per a copy of the Respondent’s ID card which is appended to the Response (emphasis added).<\/em><\/p>\n

2.3 The Panel further notes that, in the same Response, the Respondent submits that the Complainant is ‘falsifying information to you [CAC] as the step to approach the UDRP was not mentioned in our e-mail conversion (see my Annex C and compare with Annex 10 by the complainant, especially the mail of Dec 18th, 2023)…’.<\/em><\/p>\n

<\/em>2.4 In view of the above, the Panel hereby makes the following ORDER<\/strong>:<\/em><\/p>\n