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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> DRB Ltd d/b/a Bernard Haldane Assos -v- Desert Technologies [2004] DRS 1860 (21 September 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1860.html Cite as: [2004] DRS 1860 |
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Nominet UK Dispute Resolution Service
DRS 01860
DRB, Ltd d/b/a Bernard Haldane Assos. -v- Desert Technologies
Decision of Independent Expert
1. Parties:
Complainant:
DRB, Ltd d/b/a Bernard Haldane Assos.
Country:
US
Respondent:
Desert Technologies
Country:
US
2. Disputed Domain Name:
bernardhaldane.co.uk (the "Domain Name")
3. Procedural Background:
The Complaint in this case was lodged with Nominet UK ("Nominet") on June, 29 2004, with hard copies received in full on July 1, 2004. Nominet validated the Complaint on July 6, 2004 and notified it to the Respondent, giving him 15 working days within which to lodge a Response. The Respondent failed to respond on or before July 28, 2004. On August 2, 2004, Nominet wrote to the Parties confirming that it had not been possible to achieve a resolution of the dispute by informal mediation, and advising that the dispute would be referred to an independent expert for a Decision if the Complainant paid the appropriate fee by August 16, 2004. On August 12, 2004, the Complainant paid to Nominet the appropriate fee for a Decision by an Expert pursuant to paragraph 6 of the Nominet Dispute Resolution Service Policy ("the Policy").
On August 22, 2004, the undersigned, Christopher Gibson ("the Expert"), formally confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as an expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.
4. Outstanding Formal/Procedural Issues (if any)
Paragraph 5a of the Procedure for the conduct of proceedings under the Dispute Resolution Service ("the Procedure") requires the Respondent to submit a response to Nominet. In this case no such response has been received.
Under paragraph 15b of the Procedure, the Expert will proceed to a Decision on the Complaint if, in the absence of exceptional circumstances, a party does not comply with any time period laid down in the Procedure or the Policy.
There is no evidence before the Expert to indicate the presence of exceptional circumstances; accordingly, the Expert will now proceed to a Decision on the Complaint notwithstanding the absence of a Response.
Paragraph 15c of the Procedure provides that "if, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure..., the Expert will draw such inferences from the Party's non-compliance as he or she considers appropriate."
In light of the absence of a Response in this case, it is necessary for the Expert to consider whether to draw any special inferences from the Respondent's non-compliance with paragraph 5a of the Procedure. There are many reasons why a Respondent may not provide a Response and the Procedure does not require the Expert to speculate upon these. In the view of the Expert, if the Respondent does not submit a response the principal inference that can be taken is that the Respondent has simply not availed itself of the opportunity to attempt to demonstrate that the Domain Name is not an Abusive Registration. This does not affect the primary requirement upon the Complainant, on whom the burden of proof rests, to demonstrate an Abusive Registration.
On September 7, 2004, the Expert requested that Nominet, in accordance with paragraph 13 of the Procedure, send to the parties a request for further information concerning why the Respondent did not complete the transfer of the Domain Name to the Complainant in March 2004. A response to this request was received from the Complainant shortly after the deadline of September 14, 2004. The Expert addresses this response in his discussion below.
5. The Facts
Founded in 1947, Bernard Haldane Associates is a large career management organization, with offices throughout the United States, Canada, the United Kingdom, the United Arab Emirites and Australia. It operates a website at www.bernardhaldane.com. In the United Kingdom, Bernard Haldane Associates operates from offices in London, Leeds, Birmingham, Bristol, Manchester, Edinburgh and Glasgow.
The Complainant (DRB, Ltd d/b/a Bernard Haldane Associates) has been granted an exclusive, perpetual worldwide license to use and sublicense the trademark BERNARD HALDANE for individual career counseling and outplacement services since July 1986. The trademark BERNARD HALDANE, which is the subject of U.S. trademark registration numbers 2210149 and 2147499, was originally registered in the name of Bernard Haldane and transferred to Jean Margaret Kind Haldane at the death of Bernard Haldane.
In 1988, the Complainant entered into a sublicense agreement with "Robert Hart, Edward Hostmann, and Eugene F. Martin or their corporation" (collectively, the "Sublicensee") granting Sublicensee rights to conduct career counseling services using the trade mark and trade name BERNARD HALDANE in the territories of Southern Arizona, including the city of Tucson. This agreement allows the Sublicensee to further sublicense use of the trademark BERNARD HALDANE, provided that the sub-sublicensee(s) agreed in writing to assume the obligations of the Sublicensee Agreement.
In 1994, Sublicensee sublicensed the business methods and right to use the trade mark and trade name BERNARD HALDANE to IBA Associates, Inc., of which Ms. Sarah Hightower Hill is the Chief Executive Officer, for purposes of a career management business. Although a copy of the sublicense agreement between Sublicensee and IBA Associates, Inc. is not available to the Complainant, its existence is acknowledged by Ms. Hightower Hill and IBA Associates in a February 10, 2004 letter of termination of that sublicense agreement mentioned below.
The Complainant hired the Respondent (a related company of IBA Associates, Inc.), of which Ms. Hightower Hill is a Manager and Member, as a technical consultant to register several domain names, including the Domain Name bernardhaldane.co.uk, and to develop a job search and career assistance website for the Complainant.
A Nominet WHOIS search shows that on August 22, 2000, the Respondent Desert Technologies registered the Domain Name bernardhaldane.co.uk. Throughout the relevant period in this case, it is undisputed that when the Domain Name is entered into an Internet browser, the following web site appears:
The Respondent did not file a Response.
6. The Parties' Contentions
Complainant
The Complainant submits that the Domain Name in dispute is identical or similar to a name or mark in which it has rights and that the Domain Name in the hands of the Respondent is an abusive registration. The Complainant provides copies of BERNARD HALDANE trade mark registrations in the U.S. and certain relevant license agreements, and asserts that it has been granted an exclusive, perpetual worldwide license to use and sublicense the trademark for individual career counseling and outplacement services since July 1986.
The Complainant asserts that the Respondent's registration of the Domain Name is abusive for the following reasons:
i. In 1994, the Complainant (through its Sublicensee) sublicensed the business methods and right to use the trade mark and trade name BERNARD HALDANE to IBA Associates Inc of which Ms. Sarah Hightower Hill is the Chief Executive Officer, for purpose of a career management business. The Complainant then hired the Respondent (a related company of IBA Associates, Inc.), of which Ms. Hightower Hill is a Manager and Member, as a technical consultant to register several domain names, including the Domain Name bernardhaldane.co.uk, and to develop a job search and career assistance website for the Complainant.
ii. The Complainant provides documents showing that Ms. Hightower Hill formed several business entities, including Desert Technologies, LLC (formed 1998) for which Ms. Hightower Hill is Manager; NextWest, Inc. (formed 2003) for which Ms. Hightower Hill is President; IBA Associates, Inc. (formed 1994) for which Ms. Hightower Hill is Chief Executive Officer; The DCM Group, LLC for which Ms. Hightower Hill is Manager; The DHI Group, LLC for which Ms. Hightower Hill is Manager; MCMG, LLC. for which Ms. Hightower Hill is Manager; and Chandler Hill Partners, Inc. (formed 1994) for which Ms. Hightower Hill is the President and Chief Executive Officer. The Complainant believes that the activities of these various business entities are directed by Ms. Hightower Hill and that the obligations and activities of these entities are so intertwined that they have been commingled for all practical purposes. For purposes of the Complaint, the Complainant refers to Ms. Hightower Hill, Desert Technologies and NextWest, Inc. collectively as Respondent.
iii. On February 10, 2004, Ms. Hightower Hill terminated the personal relationship and the relationship of her business entities that existed with Complainant. As part of the termination of this business relationship, Ms. Hightower Hill was required to assign to the Complainant the domain names Ms. Hightower Hill and her business entities had acquired that included, in whole or in part, the trade mark and trade name BERNARD HALDANE. The Complainant provides copies of letters of termination dated February 10, 2004. The Complainant also provides a copy of a letter wherein Ms. Hightower Hill notifies the Complainant's licensees and staff of the termination of her relationship with the Complainant, which specifically states that "I speak for my family and our staff members, when I say that our earnest desire is to go forward together with Bernard Haldane in a spirit of healthy competition that has the continuance and growth of our entire industry at its heart" (emphasis added).
iv. The Complainant asserts that a Michael P. Stow of NextWest, Inc. represented to Neil Conklin (an employee of the Complainant) on March 10, 2004, that NextWest, Inc. would transfer, among others, the disputed Domain Name, to the Complainant. However, the transfer of the subject domain name was never completed. The Complainant asserts that the Respondent never responded to the Complainant's request (through Mr. Conklin) of March 12, 2004, and that the Complainant never received any email from a registrar regarding transfer of the Domain Name as Mr. Stow stated would occur in an email dated March 10, 2004. The Complainant does not know why the Respondent never transferred the Domain Name to the Complainant, or why the Respondent never responded to further inquiries from the Complainant regarding the agreed transfer.
v. The Complainant believes that Ms. Hightower Hill or the Respondent did not transfer the Domain Name to the Complainant because Ms. Hightower Hill has begun offering online job search and career counseling services (in the United Kingdom, among other places) that directly compete with the Complainant and wishes to disrupt the Complainant's business. Specifically, the Complainant claims that the Respondent has registered and begun using the domain name www.jobsniper.com for such services.
vi. The Domain Name is not currently active. Nevertheless, the Complainant asserts that by the Respondent's refusal to transfer the Domain Name to Complainant in accordance with the termination of any and all rights to use the trade mark BERNARD HALDANE previously held by the Respondent, the Respondent is holding the Domain Name "hostage", is blocking the Complainant from registering a trade mark and trade name in which the Complainant has rights, is further holding the Domain Name for the purpose of unfairly disrupting the business of the Complaint, and, finally, is using the Domain Name in a manner that takes unfair advantage of or is unfairly detrimental to Complainant's trade mark rights and its right to enter conduct legal business in the United Kingdom through the Internet using a domain name that incorporates the Complainant's lawfully licensed trade mark.
The Complainant seeks the transfer of the Domain Name.
Respondent
The Respondent did not file a Response.
7. Discussion and Findings:
Based on the evidence and the reasons given by the Complainant above, the Expert agrees that for the purposes of this Complaint, the actions of Ms. Sarah Hightower Hill and the business entities under the common control of Ms. Hightower Hill (including Desert Technologies) in relation to the Domain Name should be considered those of one and the same entity, the Respondent.
General
According to paragraph 2 of the Policy, in order to succeed in this Complaint, the Complainant has to prove to the Expert that, on the balance of probabilities:
i. the Complainant has Rights (as defined in paragraph 1 of the Policy) in respect of name or mark which is identical or similar to the disputed Domain Name; and
ii. the disputed Domain Name constitutes an Abusive Registration (as defined in paragraph 1 of the Policy).
Complainant's Rights
The Complainant is doing business as Bernard Haldane Associates, and has been granted an exclusive, perpetual worldwide license to use and sublicense the trademark BERNARD HALDANE for individual career counseling and outplacement services since July 1986. The Complainant has undoubtedly acquired a trade reputation in that time. In addition, the Complainant's licensor is the proprietor of the U.S. registered trade mark BERNARD HALDANE, which is a name fairly well-known in the UK and abroad.
The Domain Name bernardhaldane.co.uk comprises the word 'bernardhaldane' and the suffix '.co.uk'. In assessing whether or not a name or mark is identical or similar to a domain name, it is appropriate to disregard the domain suffix, which is of no relevant significance and wholly generic. The Expert therefore considers that the Complainant's mark is very similar (and identical in the context of URL syntax) to the Domain Name.
Consequently, the Expert finds that, for purposes of the Policy, the Complainant has rights in respect of the trade mark BERNARD HALDANE, which is identical or similar to the Domain Name.
Abusive Registration
Under the second factor above, the Complainant must prove on the balance of probabilities that the disputed domain name, in the hands of the Respondent, is an Abusive Registration. An "Abusive Registration" is defined in paragraph 1 of the Policy as a domain name which either:
i. was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; or
ii. has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.
A non-exhaustive list of factors, which may be evidence that the domain name is an Abusive Registration, is set out in paragraph 3(a) of the Policy. Paragraph 4(a) of the Policy sets out how the Respondent may demonstrate in its Response that the domain name in issue
3(a)(i)(B) and (C): Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name "as a blocking registration against a name or mark in which the Complainant has rights" or "primarily for the purpose of unfairly disrupting the business of the Complainant."
Based on the records in this case, the Expert finds that the name Bernard Haldane is so unique, particular and well-known in the field of career counseling services that it is plainly one in which the Complainant has clear and obvious rights.
There is no evidence that the Respondent is commonly known by the name nor that it is legitimately connected with a mark which is identical or similar to the Domain Name. Based on the evidence submitted by the Complainant, it is clear that all licenses previously granted to the Respondent for use of the mark Bernard Haldane were terminated in February 2004. Thus, the Expert has no difficulty in finding that the Respondent no longer has any legitimate connection with the Bernard Haldane name and that it had obtained no proper authorization from the Complainant for the continued use of the Domain Name. Furthermore, the Respondent has not presented any evidence showing that it has made fair use of the Domain Name.
For reasons that remain unclear, the Respondent has refused to complete the transfer of the Domain Name to the Complainant as agreed in March 2004. Although the Domain Name is not currently active, the Expert finds that, the fact that the Complainant would legitimately desire to register and use the Domain Name that incorporates its licensed brand name and trade mark Bernard Haldane for conducting its career counseling business in the United Kingdom, was known to the Respondent at the time the business relationships between the Complainant and the Respondent were terminated. Thus, the Expert is persuaded that the Respondent's failure to transfer or cooperate in the transfer of the Domain Name has effectively acted as a blocking registration against a name or mark in which the Complainant has rights, and that the Respondent is now holding the Domain Name for the purpose of unfairly disrupting the business of the Complainant.
Consequently, the Expert finds that, on the balance of probability, the registration of the Domain Name is a blocking registration, and accepts that the Domain Name "has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights."
The Expert therefore concludes that it has been established, on the balance of the probabilities, that the Domain Name in the hands of this Respondent must be considered an Abusive Registration.
8. Decision
The Expert finds that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name and that the disputed Domain Name, in the hands of the Respondent, is an Abusive Registration. The Expert therefore directs that the disputed Domain Name, bernardhaldane.co.uk, be transferred to the Complainant.
Christopher Gibson
21 September 2004
