The French registrant of the domain Vetronix.com acquired it at a DropCatch auction for $361 dollars, seven years ago. The 2018 registration was followed by a trademark application soon after and the launch of a business.
That application at the USPTO was turned down, however: the USPTO refused the application, citing that the term is merely descriptive of automotive diagnostic tools. The alternatively spelled word Vetronics is a portmanteau of vehicle + electronics, according to Wikipedia.
Nothing odd here but last month Vetronix Research Corporation filed a UDRP to get the domain, citing an existing mark for Vetronix.
The Forum panelist noted that:
Third, the term VETRONIX seems to refer to the term VETRONICS or to be a word play on this term or to be an alternative spelling of this term. At the very least, it can be said that the term VETRONIX is very close to the term VETRONICS, both aurally, visually, and conceptually. The term VETRONICS is described by Wikipedia as follows: “Vetronics, a portmanteau of vehicle and electronics, is a technological designation used extensively in the military domain”. In other words, it seems that the term VETRONICS is a known general concept in this specific sector.
It’s odd that the panelist seemed to ignore that the Complainant’s registered mark predates the domain’s registration by 6 years.
Final decision: Deny the transfer of the domain name Vetronix.com to the Complainant.
Copyright © 2025 DomainGang.com · All Rights Reserved.Vetronix Research Corporation v. Erik Bobbink
Claim Number: FA2501002136051
PARTIES
Complainant is Vetronix Research Corporation (“Complainant”), represented by Michael C. Cerrati of Belzer PC, Georgia, USA. Respondent is Erik Bobbink (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is vetronix.com, registered with OVH sas.
PANEL
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Bart Van Besien as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on January 20, 2025; Forum received payment on January 20, 2025.
On January 22, 2025, OVH sas confirmed by e-mail to Forum that the vetronix.com domain name (the “Disputed Domain Name”) is registered with OVH sas and that Respondent is the current registrant of the Disputed Domain Name. OVH sas has verified that Respondent is bound by the OVH sas registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 27, 2025, Forum served the Complaint and all Annexes, including a French and English Written Notice of the Complaint, setting a deadline of February 18, 2025, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@vetronix.com. Also on January 27, 2025, the French and English Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on February 8, 2025.
On February 10, 2025, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Bart Van Besien as Panelist.
On February 13, 2025, Complainant submitted an additional submission.
On February 14, 2025, Respondent submitted an additional submission.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
RELIEF SOUGHT
Complainant requests that the Disputed Domain Name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: ADDITIONAL SUBMISSIONS
On February 13, 2025, Complainant submitted an additional submission. As a reaction, on February 14, 2025, Respondent also submitted an additional submission.
Supplemental Rule 7 states that it is within the discretion of the Panel accept or consider additional unsolicited submissions.
The Panel finds that the arguments and facts mentioned in the parties’ additional submissions are relevant for the Panel to take its decision. Therefore, in accordance with Supplemental Rule 7, the Panel decides to take into consideration the parties’ Additional Submissions.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING
The language of the Registration Agreement is French.
In its Complaint, the Complainant requested that the Panel determines that the administrative proceeding proceed in the English language under UDRP Rule 11(a).
In an email of February 6, 2025, to Forum, the Respondent requested the language of the proceeding to be in French rather than in English. However, in his subsequent email of February 8, 2025, to Forum, the Respondent did no longer insist on the use of the French language. Also, the Respondent submitted his Response both in French and in English. The Panelist, who understands both English and French, verified both the French and the English version of the Response and confirms that both versions are identical. The Respondent’s Additional Submissions of February 14, 2025, were solely in the English language. The website available via the Disputed Domain Name is entirely in English. Finally, on his English-language LinkedIn profile, as submitted by the Complainant, the Respondent mentions that he has “Native or bilingual proficiency” in English.
In light of the circumstances mentioned in the preceding paragraph, and in accordance with UDRP Rule 11(a), the Panel decides to change the language of the proceeding into English.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant is an engineering and manufacturing company, specializing in the applied research, design and development of rugged electronics in the defense, aerospace, and industrial markets.
The Complainant provided evidence that it is the owner of the following trademark (hereafter referred to as the “Complainant Vetronix Trademark”):
U.S. Trademark Registration No. 4,192,776, for the word mark VETRONIX, application date January 4, 2011, registration date August 21, 2012, registered for the following goods in international class 9: “Power and data distribution systems for military vehicles and military aircraft, namely, bus controllers, serial data bus interfaces, mic bus interfaces, can bus interfaces, mil-std-1553 bus interfaces, utility bus interface modules; digital audio processors and diagnostic equipment, namely, embedded vetronics monitors (evms) and mic bus development systems (mbdss) comprising cards that plug into personal computers and computer software for use in testing and monitoring hardware; component level and complete systems that incorporate data buses and mic buses, remote digital and analog signal acquisition circuit card assemblies, high-power load control modules (hplcms), low current programmable load control modules (plcms); solid state power controllers (sspcs) for use with circuit breaker functions for loads in ground vehicles and aircraft, intelligent power controllers (ipcs), intelligent power control modules (ipcms), high-energy voltage transient clamps for protecting electrical circuits from transients in vehicles and aircraft; integrated power supplies and dc power supplies, namely, dc to dc converters, power sequencing electronics, namely, master power control modules (mpcms) and primary power controllers (ppcs), fire control circuits, high-power backplanes, busbars and complete line-replaceable units (lrus)”
The Complainant claims that it has used the Complainant Vetronix Trademark continuously since November 22, 1989. The Complainant further claims that, due to its substantial and continuous promotion, the extent and duration of its use, and the reputation for quality of its goods and services, the Complainant Vetronix Trademark has become a well-established and highly regarded indicator of the source, origin, or sponsorship of its goods and services worldwide.
The Complainant also owns and operates the domain name vetronixresearch.com, since March 13, 2002.
Identical and/or Confusingly Similar (Policy Paragraph 4(a)(i)):
The Complainant claims that the Disputed Domain Name is identical or confusingly similar to its registered Complainant Vetronix Trademark.
The Complainant claims common law rights in the Complainant Vetronix Trademark for use in connection with research, engineering, product development and manufacturing services. The Complainant claims that it has used the Complainant Vetronix Trademark exclusively and continuously since 1989, which is nearly thirty years before the Respondent registered the Disputed Domain Name on August 27, 2018.
The Disputed Domain Name comprises the Complainant Vetronix Trademark, with the sole addition of the gTLD ‘.com’, which should be disregarded in a Policy Paragraph 4(a)(i) analysis.
Rights or Legitimate Interests (Policy Paragraph 4(a)(ii)):
The Complainant claims that the Respondent does not have rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant claims that the Respondent is a U.S. citizen and owner or principal of Wavetek, Inc., an alleged Delaware corporation (hereafter “Wavetek”).
According to the Complainant, the Respondent and Wavetek were involved in a prior domain name dispute (Eat Online SA v. Erik Bobbink, Wavetek, Inc, Case No. D2018-1128 (WIPO July 27, 2018)), not involving the Complainant, whereby the domain names allo-resto.com, allo-resto.info, and allo-resto.net were ordered to be transferred to the complainant, Eat Online SA. In this previous domain name case, the Panel specifically found that the Respondent’s registration of a trademark in another country corresponding to the domain name did not suffice to establish rights or legitimate interests if the overall circumstances demonstrate it was obtained primarily to circumvent the application of the UDRP or otherwise prevent the complainant’s exercise of its rights, even if only in a particular jurisdiction.
The Complainant further claims that Wavetek owned a U.S. trademark for “VETRONIX” in class 9 (Registration No. 5,864,556, this registration has been cancelled) and that the Respondent still owns a similar French trademark, also in class 9.
In May 2021, The Complainant sent a cease-and-desist letter to Wavetek claiming Wavetek infringed on the Complainant’s trademark rights and misled consumers by using a stylized version of the Complainant Vetronix Trademark. The Complainant’s cease-and-desist letter also highlighted customer complaints and alleged that Wavetek’s use of the mark harmed the Complainant’s reputation. Wavetek did not respond, but it removed listings of “Vetronix” products from its website and deactivated its Facebook page. The Complainant subsequently filed a petition to cancel Wavetek’s U.S. trademark registration, which was granted in October 2021, after Wavetek failed to respond.
The Complainant claims that Wavetek and the Respondent are related parties and that the fact that Wavetek and the Respondent allowed the registration for their VETRONIX mark to be cancelled without defense demonstrates that the Respondent lacks legitimate interest in the Disputed Domain Name.
The Complainant further claims that Wavetek is not a valid entity in Delaware, undermining its claim to the trademark.
The Complainant claims that the Respondent is not commonly known by the Disputed Domain Name. The Complainant does not have an affiliation with the Respondent and did not authorize the Respondent to use the Complainant Vetronix Trademark. The Respondent has not used the Disputed Domain Name in connection with a bona fide offering of goods or services.
The Complainant also alleges that Wavetek used the Disputed Domain Name to impersonate its brand, sell unauthorized or counterfeit products, and deceive consumers.
According to the Complainant, the website at the Disputed Domain Name offered products branded with a mark very similar to the stylized mark used by the Complainant. Using the Disputed Domain Name in connection with counterfeit or otherwise unauthorized products is not a bona fide offering of goods nor a legitimate noncommercial or fair use. The Complainant claims that the Respondent has used the website at the Disputed Domain Name to sell counterfeit products of other manufacturers, such as General Motors.
The Complainant submits that the Respondent is not making a legitimate fair use of the Disputed Domain Name because it is being used to sell products (vehicle components, automotive testing scanners, etc.) that compete with the Complainant’s goods and business.
The Complainant submits that the Whois information indicates the website at the Disputed Domain Name was updated on June 3, 2021, shortly after Wavetek’s receipt of the cease-and-desist letter of May 28, 2021, but has not been updated since. Therefore, according to the Complainant, it is apparent that the primary use of the website at the Disputed Domain Name was, and still is, to impersonate the Complainant.
Overall, the Complainant argues that the Respondent and Wavetek have no legitimate interest in the Disputed Domain Name and use them unfairly for commercial gain, competing with the Complainant’s business.
Registration and Use in Bad Faith (Policy Paragraph 4(a)(iii)):
The Complainant claims that the Respondent registered and is using the Disputed Domain Name in bad faith.
According to the Complainant, the Respondent registered the Disputed Domain Name to prevent the Complainant from reflecting its mark in it. This behavior aligns with a broader pattern, as the Respondent and Wavetek were previously involved in a similar domain name dispute (Eat Online SA v. Erik Bobbink, Wavetek, Inc, Case No. D2018-1128 (WIPO July 27, 2018)), where they registered three domain names containing the “ALLO RESTO” trademark in bad faith. The Complainant asserts that the Eat Online SA case mirrors the present dispute, as the Respondent and Wavetek targeted domain names identical to an established brand. In both cases, the Respondent first registered a trademark in Europe (Monaco in Eat Online SA, France in this case) and later sought trademark registration in the U.S. The previous panel ruled that the Respondent and Wavetek lacked legitimate rights and deliberately created confusion for commercial gain. Given the Respondent’s history of registering domain names containing trademarks of other parties and previous UDRP rulings against them, the Complainant argues that the current registration and use of the Disputed Domain Name was also done in bad faith under UDRP Policy ¶ 4(b)(ii).
The Complainant claims that the Respondent registered the Disputed Domain Name with the primary aim of disrupting the Complainant’s business. Using a domain to sell competing goods or services is recognized as an act of disruption under Policy ¶ 4(b)(iii). The Respondent further confuses consumers by mimicking the Complainant’s stylized mark and making references to the Complainant or its mark on an associated Facebook page.
According to the Complainant, the Respondent intentionally used the Disputed Domain Name to mislead Internet users by creating the false impression of affiliation with the Complainant, thereby attracting traffic for commercial benefit. This aligns with bad faith use under UDRP standards.
The Complainant submits that the website linked to the Disputed Domain Name sold products that infringed on the Complainant Vetronix Trademark and referenced Vetronix on its related Facebook page. This demonstrates the Respondent’s actual knowledge of the Complainant Vetronix Trademark, further proving bad faith under Policy ¶ 4(a)(iii).
The Respondent likely had prior knowledge of the Complainant and its Complainant Vetronix Tademark, as the Respondent operates in a related industry.
The Respondent’s use of the Disputed Domain Name to sell counterfeit goods constitutes bad faith registration and use under UDRP Policy ¶ 4(b)(iii), as established in previous rulings.
The Complainant adds that the Panel is not limited to the listed criteria in Policy ¶ 4(b) and may consider the overall circumstances of the case. Previous decisions have recognized that additional factors can indicate bad faith registration and use.
The Respondent deliberately chose a domain identical to the Complainant Vetronix Trademark and used it to sell competing and counterfeit products. The Respondent further imitated the Complainant’s font and style of its mark to mislead consumers into believing there was an affiliation.
Given the notoriety of the Complainant Vetronix Trademark, the Respondent must have been aware of the Complainant’s trademark rights at the time of registration and use of the Disputed Domain Name. Using a domain to sell identical products under a well-known mark further supports a finding of bad faith.
The Complainant concludes that the Respondent’s actions in this case align with its previous misconduct in the Eat Online SA dispute, where the Respondent attempted to exploit a reputable brand for commercial gain. Taken together, these factors strongly indicate bad faith registration and use of the Disputed Domain Name.
B. Respondent
First, the Respondent claims that the Disputed Domain Name is not exclusive to the Complainant.
· The Respondent provided evidence that he is the owner of the following trademark (hereafter referred to as the “Respondent Vetronix Trademark”):
French Trademark Registration No. 4479917, for the word mark VETRONIX, application date September 4, 2018, registration date December 28, 2018, registered for the following goods in international class 9: “Measuring apparatus and instruments; Diagnostic apparatus, not for medical purposes”
· The Respondent states that the term VETRONIX is a generic and descriptive term for automotive electronics. The term VETRONIX is not inherently distinctive, but rather a commonly used term in the automotive industry.
· According to the Respondent, when he applied for a trademark registration for “VETRONIX ” in the United States, the USPTO refused the application, citing that the term is merely descriptive of automotive diagnostic tools.
· According to Wikipedia, “VETRONIX” is a portmanteau of “vehicle” and “electronics,” commonly used in military and other technology fields.
Second, the Respondent claims that the Disputed Domain Name was acquired and used in good faith.
· The Respondent states that he legally acquired the Disputed Domain Name through a public auction on August 30, 2018, for an amount of USD 361.
· The Respondent further states that the Disputed Domain Name was not registered with the intention of targeting the Complainant.
· The Respondent has never attempted to sell the Disputed Domain Name to the Complainant or a third party, nor to capitalize on their reputation.
Third, the Respondent claims legitimate rights and a bona fide business using the Disputed Domain Name.
· The Respondent states that the Disputed Domain Name is used for an active e-commerce website selling automotive diagnostic accessories, primarily diagnostic cables.
· The Respondent claims that it has used the Disputed Domain Name for legitimate and consistent e-commerce operations, through numerous legitimate customer orders.
· The Respondent emphasizes that his company is directly related to the field of automotive diagnostics, and that his French trademark registration supports his legitimate claim to the name VETRONIX.
· The Respondent states that he made substantial efforts to develop and maintain his business under this name.
Fourth, the Respondent claims that the Complainant fails to prove bad faith registration or use of the Disputed Domain Name.
· The Respondent states that he acquired the Disputed Domain Name before the Complainant attempted to assert exclusive rights over the name.
· The Respondent states that his USPTO trademark application was refused on the grounds that “VETRONIX” is a descriptive term, proving that it is not inherently distinctive.
· Finally, the Respondent claims that he has operated a legitimate business, with real sales, and has never sought to exploit the Complainant’s name.
Fourth, the Respondent claims that the Complainant’s delay in filing the Complaint shows a lack of bad faith.
· The Respondent states that the Complainant has been aware of the Disputed Domain Name for a long time but chose not to act until now.
· The Respondent states that his website has been active and publicly accessible for years.
· The Respondent claims that the delay suggests that the Complainant’s true motive is to seize a domain name.
FINDINGS
The Complainant applied for its US word trademark VETRONIX (the “Complainant Vetronix Trademark”) on January 4, 2011. This trademark was effectively registered on August 21, 2012. The Complainant claims common law rights in this trademark through its alleged continuous use of this trademark since 1989.
The Respondent registered the Disputed Domain Name on August 27, 2018.
The Respondent applied for his French word trademark VETRONIX (the “Respondent Vetronix Trademark”) on September 4, 2018. This trademark was effectively registered on December 28, 2018.
Based on the evidence provided by both of the parties, the Panel notes that the Disputed Domain Name is being used for an e-commerce activity by the Respondent.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The disputed domain name incorporates the “VETRONIX” word element of the Complainant Vetronix Trademarks entirely, with the sole addition of the generic “.com” Top-Level Domain (gTLD). The addition of the gTLD does not add distinctiveness to the disputed domain name. It is well established that the gTLD may be disregarded when it comes to considering whether a domain name is confusingly similar to a trademark to which the Complainant has rights (see f.e. Abbott Laboratories v. Whois Service c/o Belize Domain WHOIS Service, FA 1254682 (Forum May 14, 2009).
The Panel therefore concludes that the disputed domain name is confusingly similar to the Trademark of the Complainant under the first element of paragraph 4(a) of the Policy.
Rights or Legitimate Interests
The overall burden of proof lies on the Complainant, but when a Complainant makes out a prima facie case that the Respondent lacks rights or legitimate interests, the burden of proof shifts to the Respondent. Following this shift, the Respondent must come forward with relevant evidence that demonstrates its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied the second element.
The Panel holds that the Complainant has not established a prima facie case in support of its arguments that the Respondent lacks rights and legitimate interests in the disputed domain name, under Policy paragraph 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Forum Aug. 24, 2006).
First, the Panel emphasizes that the Respondent is the current registered owner of a French VETRONIX trademark (the “Respondent Vetronix Trademark”). The Respondent has been the owner of this registered trademark since December 28, 2018. While the Complainant acted against the Respondent’s US trademark registration in 2021, it did apparently not act against the Respondent’s French trademark registration. The Respondent’s alleged abandonment of his US trademark application does not amount to an automatic abandonment of his trademark rights in other countries such as France. From the information made available to the Panel, it seems that the Complainant has not contested the Respondent’s ownership of the Respondent Vetronix Trademark in the six years’ period since its registration.
Second, it seems that the Respondent is operating an e-commerce website under the name VETRONIX via the Disputed Domain Name. This website seems to have been active since the Respondent’s registration of the Disputed Domain Name in 2018. The Respondent submitted evidence in the form of invoices and screenshots that seem to confirm that the Respondent uses the Disputed Domain Name for an actual e-commerce business. From the information made available to the Panel, the Panel cannot conclude that this e-commerce business would be illegitimate.
Third, the term VETRONIX seems to refer to the term VETRONICS or to be a word play on this term or to be an alternative spelling of this term. At the very least, it can be said that the term VETRONIX is very close to the term VETRONICS, both aurally, visually, and conceptually. The term VETRONICS is described by Wikipedia as follows: “Vetronics, a portmanteau of vehicle and electronics, is a technological designation used extensively in the military domain”. In other words, it seems that the term VETRONICS is a known general concept in this specific sector.
Fourth, the Complainant claims common law rights into the Complainant Vetronix Trademark but did not provide evidence of this claim.
Fifth, the Panel considers that the Complainant’s arguments regarding the prior domain name case (Eat Online SA v. Erik Bobbink, Wavetek, Inc, Case No. D2018-1128 (WIPO July 27, 2018)) are not relevant for the current case. The Panel considers that the facts of this prior case were different (for instance, in the prior case, the Respondent registered the first disputed domain name shortly after the Complainant announced a rebrand, the Respondent’s website mimicked the Complainant’s website, the Complainant proved substantial prior reputation in the mark ALLO RESTO, etc.).
Sixth, the Panel considers that there is insufficient evidence of the Complainant’s claim that the Respondent tried to impersonate the Complainant and its brand.
Taking the above elements into account and given the fact that the burden of proof is on the Complainant, the Panel concludes that the Complainant did not show that the Respondent lacks rights or legitimate interests in respect of the disputed domain name under the second element of paragraph 4(a) of the Policy.
Registration and Use in Bad Faith
In view of the Panel’s finding that the Complainant failed to establish the second element of Paragraph 4(a) of the Policy, the Panel does not need to consider the Complainant’s assertions that the Respondent (registered and) used the disputed domain name in bad faith.
DECISION
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the vetronix.com domain name remain with the Respondent.
Bart Van Besien, Panelist
Dated: February 24, 2025
