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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Bioenvision Inc v Graphic Palette Company [2006] DRS 3639 (18 June 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3639.html Cite as: [2006] DRS 3639 |
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Nominet UK Dispute Resolution Service
DRS Number 3639
Bioenvision, Inc
v
The Graphic Palette Company
Decision of Independent Expert
| Complainants: | Bioenvision Inc |
| Country: | United States |
| For itself and for Bioenvision Limited. |
| Respondent | The Graphic Palette Company |
| Country: | GB |
bioenvision.co.uk - registered on 6 August 1999.
The Complaint was lodged with Nominet on 2 May 2006. Nominet validated the Complaint and notified the Respondent of the relevant Complaint on 2 May 2006 and informed the Respondent that it had 15 days within which to lodge a Response.
No response was received. No mediation having been possible, on 31 May 2006 the dispute was referred for a decision by an Independent Expert following payment by the Complainant of the required fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy ("the Policy").
David Flint, the undersigned, ("the Expert") confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as 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.
None
Complainants trade under the name Bioenvision, Inc. and Bioenvision Limited, a wholly owned affiliate of Bioenvision, Inc., and have done so since January 29, 1999 and February 10, 1999, respectively.
Complainants
I. Complainants use and have used the BIOENVISION mark as their house mark since at least as early as January 29, 1999 and February 10, 1999;
II. Complainants provide pharmaceutical products under the house mark BIOENVISION as evidenced by Bioenvision, Inc.'s 2005 Annual Report;
III. Complainant Bioenvision, Inc. owns the following registered trade mark, among many others: United Kingdom: Registration No. 2306608 BIOENVISION in Class 5;
IV. On information and belief, The Graphic Palette Company was a website design and new media advertising company. Bioenvision Limited engaged The Graphic Palette Company (Respondent) to register the domain name bioenvision.co.uk for the Complainant Bioenvision Limited and to design a website for Complainant Bioenvision Limited. There is no documentary evidence available memorializing the agency relationship between Respondent and Complainants; however, there is evidence showing that since at least as early as November 25, 2000, the domain name BIOENVISION.COM.UK was in use by Complainant Bioenvision Limited as its email address and website.
V. The domain name BIOENVISION.CO.UK currently stands in the name of The Graphic Palette Company.
VI. According to the Companies House database, The Graphic Palette Company (Manchester) Limited was dissolved September 12, 2003. On information and belief, Respondent and The Graphic Palette Company (Manchester) Limited are one and the same entity.
VII. The Domain Name in the hands of the Respondent is abusive because: The domain name BIOENVISION.CO.UK was registered with incorrect name and address details, which is independently proved by the use of the domain name as an email address and website associated with the Complainant Bioenvision Limited. The website should not have been registered in the name of the Respondent, but in the name of Complainant Bioenvision Limited.
VIII. The Complainant seeks transfer of the Domain Name.
Respondent
No response was received from the Respondent.
General
To succeed in this Complaint the Complainant has to prove to the Expert pursuant to paragraph 2 of the Policy on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Domain Name and, secondly, that the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in paragraph 1 of the Policy).
Complainant's Rights
In this case the first limb of that task is straightforward. The Complainant is the proprietor of a UK registered trade mark No 2306608 in respect of the word BIOENVISION. In those circumstances the Expert is satisfied that the Complainant does have Rights in respect of a name or mark which is identical or similar to the Domain Name.
Abusive Registration
This leaves the second limb. Is the Domain Name, in the hands of the Respondent, an Abusive Registration? Paragraph 1 of the Policy defines "Abusive Registration" 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 3a of the Policy. There being no suggestion that the Respondent has engaged in a pattern of making Abusive Registrations, the only potentially relevant 'factors' in paragraph 3 are to be found in subparagraphs iv and v. which read as follows:
iv. It is independently verified that the Respondent has given false contact details to [Nominet]; or
v. The domain name was registered as a result of a relationship between the Complainant and the Respondent, and the Complainant:
A. has been using the domain name registration exclusively; and
B. paid for the registration and/or renewal of the domain name registration.
From the evidence produced to the Expert, being an e-mail from the successor in business to the company that had registered the domain name originally to the effect that it had no contact details for the Respondent, the Expert considers that the test in subparagraph iv has been met.
As far as paragraph v is concerned it does appear from the Complainants' submission that "the domain name was registered as a result of a relationship between the Complainant and the Respondent, and the Complainant" as required by the first sentence of that subparagraph; however there is no evidence that either of the requirements of A or B or that subparagraph have been met. Accordingly the requirements of that subparagraph are not met.
Accordingly, the Expert finds that the Domain Name is an Abusive Registration within the definition of that term in paragraph 1 of the Policy on the basis that it was registered in a manner which, at the time when the registration took place, took unfair advantage of the Complainant's rights.
The Expert notes that in addition to the possibility of a decision under the Policy, in the circumstances of this case it would have been possible for Nominet to have cancelled the Domain Name pursuant to condition 16.1 of the Terms and Conditions of Domain Registration (http://www.nominet.org.uk/registrants/legal/terms/) in that the Respondent had "failed to keep [its] contact details up to date".
In light of the foregoing findings, namely that the Complainant has rights in respect of a name or mark which is identical to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name bioenvision.co.uk be transferred to the Complainant, Bioenvision, Inc.
David Flint
18 June 2006
