Umicore France -v- ACGNet [2004] DRS 1889 (8 September 2004)

BAILII is celebrating 24 years of free online access to the law! Would you consider making a contribution?
No donation is too small. If every visitor before 31 December gives just £5, it will have a significant impact on BAILII's ability to continue providing free access to the law.
Thank you very much for your support!

1.1 The Complainant is Umicore France, of Les Mercuriales, 40 Rue Jean-Jaures, Bagnolet, 93176, France, represented by Mr David Tatham of Gevers & Partners.

1.2 The Respondent is ACGNet, of Unit 2.31, 75 Whitechapel Road, London, E1 1DU.

3.1 This Complaint falls to be determined under the Nominet UK Dispute Resolution Service Procedure (“the Procedure”) and the Nominet UK Dispute Resolution Service Policy (“the Policy”).

3.2 The Complaint entered Nominet’s system on 12 July 2004. It was validated and sent to the Respondent on 23 July 2004. A Response was due by 16 August 2004 but no Response was received. Mediation not being possible and the Complainant having paid the relevant fee, the Complaint was referred to me on 25 August 2004 for a Decision. On that date, I confirmed that I was not aware of any reason why I could not act as Independent Expert in this case nor of any matters which ought to be drawn to the attention of the parties which might appear to call my independence or impartiality into question.

4. Outstanding Formal/Procedural Issues

4.1 Having reviewed the file I am satisfied that Nominet took all proper steps to bring the Complaint to the attention of the Respondent, including sending the Complaint by first class post to the contact address shown in its domain name register database and sending it in electronic form to postmaster@vmzinc.co.uk (paragraph 2a of the Rules).

4.2 Under Nominet’s terms and conditions of registration, it is the responsibility of the registrant of a domain name to provide Nominet with accurate contact details and to keep such details updated.

“If, in the absence of exceptional circumstances, a Party does not comply with any time period laid down by the Policy or this Procedure, the Expert will proceed to a Decision on the complaint.”

5.1 The Complainant is the French subsidiary of a Belgian conglomerate, Umicore SA. It focuses on the business of recycling metals and the production of value-added materials including zinc.

5.2 The Complainant is the proprietor of an International word-only trade mark VM ZINC, number 705234, dated 24 November 1998. The mark is registered in Class 06 and is effective in France and numerous other European territories. The Complainant is also the proprietor of a UK device trade mark incorporating a VM ZINC logo, number 2014594, dated 9 August 1996, also registered in Class 06.

5.3 In addition, the Complainant (or its parent company) is the owner of numerous Internet domain names comprising the term “vmzinc” in generic top level and country-code top level domains. Examples include <vmzinc.com>, <vmzinc.net>, <vmzinc.fr> and <vmzinc.de>.

6.1 The Complainant states that in the year 2000 it instructed a French registration agent, Filnet, to register the Domain Name for it. Lacking UK accreditation, Filnet passed the instruction to a UK-based agent, the Respondent. The registration was duly made in September 2000, apparently in the name of the Complainant.

6.2 The Complainant states that the domain name has at all material times resolved, and continues to resolve, to its own website at www.vmzinc.co.uk. Prints from the website are exhibited to the Complaint.

6.3 The Complainant states that the Domain Name was renewed in September 2002, but in February 2003 the Respondent appeared to have gone out of business. At that time, the Complainant believes, all domain names registered by the Respondent were transferred by Nominet into the Respondent’s name and suspended.

6.4 The Complainant has since that time made strenuous efforts to contact the Respondent in order to effect an orderly recovery of the domain name. However, it has had no success in this regard.

6.5 The Complainant has been informed by Nominet that the only manner in which it can obtain a transfer of the Domain Name in the circumstances is to bring a Complaint under the Policy. It exhibits a letter from Nominet to this effect, dated 19 January 2004.

6.6 The Complainant makes various further submissions as to why the registration of the Domain Name may be regarded as an Abusive Registration for the purposes of the Policy. However, for the reasons set out below, it is unnecessary to consider those submissions in detail.

“(a) A Respondent must submit to proceedings under the Dispute Resolution Service if a Complainant asserts to [Nominet], according to the Procedure, that:

(i) the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

(ii) the Domain Name, in the hands of the Respondent, is an Abusive Registration.

(b) The Complainant is required to prove to the Expert that both elements are present on the balance of probabilities.”

7.2 The term “Abusive Registration” is defined in paragraph 1 of the Policy as referring to 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.”

7.3 I am satisfied on the evidence provided by the Complainant that it has trade mark rights in various jurisdictions in the sign VM ZINC. I also find that the sign is identical to the Domain Name (ignoring the space between VM and ZINC and the formal suffix “co.uk”).

7.4 It is the Complainant’s evidence, which is not disputed in any Response, that the Respondent registered the Domain Name solely in the capacity as agent for the Complainant.

7.5 The Complainant believes that the Domain Name was originally registered in its own name, but transferred by Nominet to the Respondent in or after February 2003. However, it appears from Nominet’s records that the Domain Name was at all material times registered in the name of the Respondent.

7.6 In any event, it appears on the evidence that the Respondent can have no interest in the Domain Name other than as agent for the Complainant. Accordingly, the Respondent is prima facie obliged to transfer the Domain name to the Complainant, absent any lien or other lawful reason why it may refuse to do so. There is no evidence of any such reason in this case.

7.7 Accordingly, I find that the Respondent’s failure to transfer the Domain Name is unfairly detrimental to the Complainant’s rights, and the registration is therefore an Abusive Registration for the purposes of the Policy.

8. Decision

8.1 The Complainant has demonstrated on the balance of probabilities (i) that it has Rights in respect of a name or mark which is identical or similar to the Domain Name and (ii) that the Domain Name, in the hands of the Respondent, is an Abusive Registration. I therefore direct that the Domain Name be transferred to the Complainant.

	[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback]
	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Umicore France -v- ACGNet [2004] DRS 1889 (8 September 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1889.html Cite as: [2004] DRS 1889