Synbiotix Ltd -v- Rasalingham [2004] DRS 1570 (30 April 2004)

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Complainant: Synbiotix Limited 2nd Floor, Titan Court, 3 Bishop Squarem Hatfieldm Herts, AL10 9NA

Respondent: Simon Rasalingham, Aggrandize Limited, 12 Rossdale Road, Putney, London, SW15 1AD

A Complaint in respect of synbiotix.co.uk (the “Domain Name”) under Nominet UK's Dispute Resolution Service Policy (the “Policy”) was received from the Complainant on 17 February 2004. Nominet validated the Complaint and forwarded it to the Respondent on 20 February. A Response was received from the Respondent on 25 February and forwarded to the Complainant. No Reply was received.
Mediation was unsuccessful and on 26 March 2004 Nominet notified the parties that it would appoint an Expert to determine the dispute on receipt from the Complainant of the applicable fees in accordance with paragraph 5d of Nominet's Procedure for the conduct of proceedings under the Dispute Resolution Service (the “Procedure”). The applicable fees were received from the Complainant on 7 April 2004. I was appointed as Independent Expert as of 16 April 2004 and confirmed to Nominet that I was independent of the parties and knew of no facts or circumstances that might call into question my independence in the eyes of the parties.

The Complainant company was incorporated on 25 September 2003. According to the Nominet WhoIs database, the Respondent registered the Domain Name on 25 February 2003. The Domain Name does not apparently now resolve to any web page.

Complainant
(a) The Complainant makes bare assertions that the Domain Name is identical or similar to a name or mark in which the Complainant has rights and that the Domain Name in the hands of the Respondent is an abusive registration.
(b) The Complainant company has been trading since it was incorporated on 25 September 2003.
(c) The Respondent registered the Domain Name and the domain names synbiotix.com and synbiotix.net in his capacity as a director of Synbiotic Holdings Limited (“Synbiotic Holdings”) that was trading under the name SYNBIOTIX. He paid for the registrations with his own credit card since Synbiotic Holdings did not then have an active bank account. Once the account was set up the Respondent was reimbursed for the costs of registering the domain names.
(d) The Respondent has refused to transfer the Domain Name and the other domain names to their rightful owners, namely the Complainant and Synbiotic Holdings, although they are both active and trading under the trade names of SYNBIOTIX. He has ceased to be an operating officer of Synbiotic Holdings since 30 November 2003 although he is a shareholder. The Respondent is abusing his ownership of domain names that are not rightfully his and he is blackmailing the companies with disrupting their smooth operation. Synbiotic Holdings and Synbiotix Limited are asking for the domains that legally should belong to them by right as they paid for them and trade under that name.

Respondent
(a) The Respondent denies that the Complainant has any right to relevant names and denies that the registration of the Domain Name is abusive.
(b) The rights claimed by the Complainant are based on rights in a name or term which is wholly descriptive of the Complainant’s business and it is unable to rely on those rights.
(c) No monies have been received from Synbiotic Holdings or Synbiotix Limited as reimbursement for costs.
(d) The Respondent has not seen any evidence that Synbiotic Holdings owns Synbiotix Limited.
(e) The Respondent is a company director of Synbiotic Holdings and Synbiotix Limited and vigorously denies the claim of blackmail and abuse.

The Complainant is required under Clause 2b of the Policy to prove to the Expert on the balance of probabilities that the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration.

Complainant’s Rights
Under the Policy and the Procedure “Rights includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant’s business”. The Respondent submits that the Complainant is seeking to rely on a name that is wholly descriptive of its business. Since neither the Complainant nor the Respondent has made any submissions as to what that business may be or provided any documents indicating the nature of such business, it is difficult to form a view on that submission. I should however comment that SYNBIOTIX appears to me to be a made up word (unlike “synbiotic”) and cannot therefore be “descriptive” for the purpose of the definition of Rights.

Under English law, rights in a name or mark may be protected by registered trade marks or by unregistered rights such as would justify a claim in passing-off to protect the goodwill or reputation in such name or mark. As the Appeal Panel pointed out in its decision in Seiko UK Limited v Designer Time/Wanderweb (DRS 00248), “the requirement to demonstrate ‘rights’ is not a particularly high threshold test.”

In this case, however, the Complainant has not in fact put forward any specific evidence to prove the existence of “Rights” as defined in the Policy and in the Procedure. The Complainant makes no assertion of registered trade mark rights in respect of SYNBIOTIX and I therefore take it that no such registered rights exist. The Complaint is extremely brief and no documents have been submitted with it. The Complainant’s representative has done little more in effect than tick the box on the online Complaint Form confirming that the Domain Name in dispute is identical or similar to a name or mark in which the Complainant has Rights.

The Complainant states baldly that Synbiotic Holdings was trading as SYNBIOTIX at the time the Domain Name was registered but I have no evidence as to the relationship (if any) between Synbiotic Holdings and the Complainant. Furthermore, Synbiotic Holdings is not a Complainant and the Complainant does not claim to bring the Complaint on Synbiotic Holdings’ behalf. The Complainant company was incorporated in September 2003, some seven months after the Domain Name was registered and less than five months before the Complaint was filed.

I have no evidence as to what trading has in fact taken place under the SYNBIOTIX mark since the Complainant was incorporated or any evidence to show that the Complainant has in fact done anything to acquire any reputation or goodwill in the name beyond the statement that it has been trading under that name since incorporation on 25 September 2003. I consider that even if there had been reasonably active trading in the five month period between that date and the date of filing the Complaint, it is unlikely that this would have been sufficient to establish rights akin to those in passing?off, even on the basis of the low threshold test required for the purposes of a Complaint under the Policy.
Accordingly, I find that the Complainant has failed to prove on the balance of probabilities that it has Rights in respect of a name or mark which is identical or similar to the Domain Name

Abusive Registration
Since the Complainant has not established that it has Rights in respect of a name or mark which is identical to the Domain Name, it is unnecessary for me to decide whether the Domain Name, in the hands of the Respondent, is an Abusive Registration.

I find that the Complainant has failed to prove that it has Rights in respect of a name or mark which is identical or similar to the Domain Name. I therefore determine that no action be taken in respect of the Complaint.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Synbiotix Ltd -v- Rasalingham [2004] DRS 1570 (30 April 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1570.html Cite as: [2004] DRS 1570

Nominet UK Dispute Resolution Service