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 £1, 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!
 |
[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback] | |
Nominet UK Dispute Resolution Service |
||
|
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Klein-Becker USA LLC v Domain Names [2006] DRS 3690 (8 July 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3690.html Cite as: [2006] DRS 3690 |
||
[New search] [Printable RTF version] [Help]
Nominet UK Dispute Resolution Service
Complainants:
First Complainant: Klein-Becker usa LLC
Country: GB
Second Complainant: Klein-Becker IP Holdings LLC
Respondent: Domain Names
Country: GB
strivectin.co.uk (referred to as "the Domain Name")
The Complaint was submitted to Nominet on 17 May 2006, and hard copies of the Complaint were received in full by Nominet on 18 May 2006. On the same day, the Complaint was validated by Nominet and the Complaint was sent to the Respondent by post to the address provided in the whois information. Nominet also sent the notification by e-mail to two addresses, namely the e-mail address provided in the whois information and also to [email protected]. The notifications informed the Respondent that it had 15 working days, that is, until 12 June 2006, in which to respond to the Complaint. On 24 May 2006 the postal notification to the Respondent was returned by the Royal Mail to Nominet, marked "return to sender - not @ this address". Nominet also received notification that delivery of the e-mail to postmaster@strivectin had failed. However, no indication was received by Nominet indicating that the e-mail sent to the e-mail address provided in the whois information had not been delivered to or received by the Respondent.
No response has been filed by the Respondent and so mediation was not possible. On 26 June 2006, the Complainant paid the fee to obtain an Expert Decision pursuant to paragraph 6 of the Nominet Dispute Resolution Service Policy ("the Policy").
On 27th June 2006, Antony Gold, the undersigned, ("the Expert"), confirmed to Nominet that he knew of no reason why he could not properly accept Nominet's invitation to him to act as an Expert in this case.
No response
The Respondent failed to submit a response to Nominet within the time stipulated in paragraph 5 of the Nominet UK Dispute Resolution Service Procedure ("the Procedure"). Paragraph 15b of the Procedure states that where a party (in the absence of exceptional circumstances) does not comply with any time period laid down in the Policy or the Procedure, the Expert will decide the dispute based upon the Complaint.
Clause 2.3 of Nominet's terms and conditions for registering a .uk domain name require a Registrant to inform Nominet promptly of any changes to its registered details and to maintain and update any details submitted. The clause expressly provides; "…In particular, it is your responsibility directly or by your Agent to ensure that we have your full and correct postal address".
The fact that a notification sent to the Respondent at the address provided by it to Nominet for the purpose of enabling Nominet to communicate with the Respondent has been returned by the Royal Mail does not constitute an exceptional circumstance for the purpose of paragraph 15b of the Procedure. In particular it seems probable that at least one of the e-mails sent to the Respondent was received by him.
Paragraph 15c of the Procedure states, in summary, that if, in the absence of exceptional circumstances, a party does not comply with any provision in the Policy or the Procedure, the Expert will draw such inferences from the party's non-compliance as he or she considers appropriate. Whilst the Expert does not intend to draw any adverse inferences from the Respondent's failure to respond to the Complaint, the Complainants' assertions of fact have, in general terms, been accepted by the Expert unless indicated otherwise.
In the absence of a Response, the Expert accepts as accurate the Complainants' account of the background giving rise to their Complaint. The material facts appear to be that:
The First Complainant is the producer of a popular cosmetic cream for the treatment of facial lines and wrinkles sold under the name STRIVECTIN-SD. The Second Complainant is an affiliated company of the First Complainant and the owner of registered Community trade marks for the word STRIVECTIN (filed in September 2003 and registered in February 2005 in class 3 for cosmetics) and for the word STRIVECTIN-SD, (filed in October 2004 and registered in January 2006 in class 3 for cosmetics) The second Complainant acquired the trade marks pursuant to an assignment dated 22 March 2006 and the First Complainant is the exclusive licensee of them.
The Complaint states that the First Complainant owns a number of domain names which incorporate the marks STRIVECTIN and STRIVECTIN-SD (the "Marks"), such as strivectin.com, strivectin.net and strivectin-sd.net. At least one of these domain names, strivectin.com, resolves to a website advertising the STRIVECTIN-SD product. The mark is also mentioned in a number of articles and advertisements which were published in "Glamour" (July 2005, circulation of over 620,000), the Daily Telegraph (May and June 2005, circulation of over 900,000 and 1,000,000 respectively) and various other publications.
The Respondent registered the Domain Name on 4 June 2004. The Complainant has produced web pages which show that at some point in January 2006, the Domain Name was used as an address which redirected the browser to another website at www.biovea.net. That website advertised products competing with the Complainants' STRIVECTIN-SD product. At another point in 2006, the Domain Name resolved to a website which displayed the Marks prominently and invited browsers to click on a link which took browsers through to a website which contained the strapline "Bye, Bye Strivectin-SD" and the statement "Better than Strivectin? Looking for an even better product? Click here" Clinking on this link took browsers to the website at www.biovea.net which offered for sale a product competing with the Complainants' STRIVECTIN product and contained the following statement "Bye, Bye StriVectin-SD. Learn How OHT Peptide-3 Delivers Safe Cosmetic Injection-Like Effects …" together with the statement "Compare ingredients with StriVectin-SD and save! Why are our customers switching from StriVectin-SD™ to OHT Peptide-3? OHT Peptide 3 contains more anti-ageing breakthrough ingredients than StriVectin-SD™!"
In early February 2006, the Domain Name resolved to a website which displayed a picture of Kermit the Frog with a link entitled "contact me". On 22 February 2006, the Domain Name resolved to a website which advertised the Domain Name for sale for US $100,000. From at least 27 February 2006, the Domain Name resolved to a website associated with UNICEF and, according to a recent website shot of the Domain Name provided by Nominet, this is still the position at present.
The Complainants notified the owner of the Bioivea website of its objection to the Respondent's ownership and use of the Domain Name by letters through its solicitor in August 2005 and February 2006. No response was received by the Complainant.
The Complainants assert that:
1. The Domain Name is identical or similar to the name and mark in which they have rights.
The Second Complainant owns registered trade marks for the word STRIVECTIN and STRIVECTIN-SD. In addition, the Complainants assert that they have acquired goodwill in the Marks. The Complainants refer to sales of their products through authorised distributors such as Harvey Nichols and NK Space, advertisements displayed at the Complainants' website and press articles. The Complainants also state that an internet search for "STRIVECTIN" using the Google search engine returned 1,310,000 results, the first hundred of which referred to the Complainants' STRIVECTIN-SD product. In addition, the Claimants state that a search for "STRIVECTIN" on ebay.co.uk returned 23 items for sale all of which are, or refer to, the Complainants' product STRIVECTIN-SD.
2.The Domain Name is an Abusive Registration, as defined by the Policy, because it:
(a) 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 Complainants' Rights; or
(b) has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainants' Rights.
In support of this contention, the Complainants seek to rely upon the fact that the Respondent has previously offered the Domain Name for sale for $100,000. The Complainant submits that the Respondent was aware of the Complainants' rights in the Marks when it registered or acquired the Domain Name and did so for the purpose of selling or transferring the Domain Name to the Complainant or a competitor of the Complainant for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name.
The Complainants also submit that the Respondent registered the Domain Name as a blocking registration. They assert that by registering the Domain Name the Respondent has prevented the Complainants as the legitimate owners of rights in the Marks from registering and using the Domain Name. The Respondent has no bona fide interest in the Domain Name nor any valid reason for its registration.
The Complainants further submit that the Respondent's registration of the Domain Name was designed to unfairly disrupt the Complainants' business. The Respondent took advantage of the goodwill in the Marks to attract browsers to the website displayed at the Domain Name or direct them to other websites offering competing products.
The Complainants submit in addition that the Respondent's registration and use of the Domain Name is likely to confuse internet users into believing that it is registered to, or operated or authorised by, or otherwise connected with the Complainants. The Complainants assert that anyone visiting www.strivectin.co.uk is likely to expect to find a website of the Complainants. In this respect, the Complainants refer to a court decision in Global Projects Management Limited & Another v Citigroup Inc & Others (2005). The Complainants assert that this decision is authority for the proposition that the mere registration and maintenance in force of a domain name that led people to erroneously believe that the holder of a domain name was in fact linked with a third party was enough to make the domain name a potential "instrument of fraud" and amounted to passing off.
Finally, the Complainants submit that the Respondent has given false contact details to Nominet.
Respondent
As explained above, the Respondent has not responded.
In order to succeed, the Complainants must prove, on the balance of probabilities, that:-
(i) it has Rights in respect of a name or mark which is identical or similar to the Domain Name (paragraph 2(a)(i) of the Policy);
(ii) the Domain Name in the hands of the Respondent constitutes an Abusive Registration (paragraph 2(a)(ii) of the Policy).
The Complainants' Rights
The Complainants have provided details of two registered Community trade marks for STRIVECTIN and STRIVECTIN-SD respectively, both owned by the Second Complainant. For the purposes of paragraph 2(a)(i) of the Policy, the Expert is satisfied that the Domain Name is identical to the word STRIVECTIN, it being usual to ignore the .co.uk suffix, and that the Complainants have Rights in the names STRIVECTIN and STRIVECTIN-SD.
There is therefore no need to consider further the evidence filed as to the nature and extent of the Complainants' unregistered rights in the marks.
Abusive Registration
The Complainants also have to show that the Domain Name is an Abusive Registration. Paragraph 1 of the Policy defines "Abusive Registration" as a Domain Name which either:
(a) 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 Complainants' Rights; or
(b) has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainants' Rights.
A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration are set out in paragraph 3a of the Policy. The Complainants seek to rely upon the factors set out in subparagraphs (i) A, B, C and (ii) and (iv) of the Policy.
The first of these factors are circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name "primarily for the purpose of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name" (paragraph 3a(i)A).
It is evident that at some point the Respondent has made attempts to sell the Domain Name to a third party by displaying a notice on its website offering to sell the Domain Name for $100,000. This sum will have exceeded any costs which the Respondent is likely to have incurred in acquiring or using the Domain Name. The only legitimate interested buyer would seem to have been the First and/or Second Complainant. Although, the notice offering the domain name for sale has not been on the website at the address of the domain name at all times, the strong likelihood is that the Respondent must have had the Complainants' brand in mind at the time of acquisition of the Domain Name. It may be that the possible sale of the Domain Name was not the "primary" purpose of the Respondent when it acquired the Domain Name but at no point during the life of the site, as outlined by the Complainants, does the Respondent seem to have made any use of the site which might be regarded as legitimate, having regard to the Complainants' trade mark rights.
The Complainants also seeks to rely upon paragraphs 3a(i)B of the Policy on the basis that the Respondent's primary purpose in registering or acquiring the Domain Name was to prevent the Complainants as the legitimate owners of rights in the Marks from registering and using the Domain Name. In support of this assertion, the Complainants submit that the Respondent has no bona fide interest in the Domain Name nor any valid reason for its registration. It is often difficult for a Complainant to adduce positive evidence to show that a Respondent was aware of the Complainants' rights at the time it registered the Domain Name. However, the fact that the Respondent has used the Domain Name in connection with cosmetic products suggest strongly that it was aware of the Complainants' Rights at the time of registration and selected the Domain Name in order to prevent the Domain Name from being registered by the Complainants and/or to otherwise seek to profit from traffic which was likely to be attracted to the site by virtue of the fact that the Domain Name corresponded with the name of the Complainants' marks.
The Complainants seek to rely upon paragraphs 3a(i)C of the Policy on the basis that the Respondent's primary purpose in registering or acquiring the Domain Name was to unfairly disrupt the Complainants' business. It is reasonable on these facts to assume that the Respondent was aware at the time of registration of the Domain Name that it could use the Domain Name to attract users to a website at which competing products were available for sale. Such a course would invariably disrupt the Complainants' business by interfering with sales of the Complainants' products.
Clause 3 does not provide a comprehensive list of matters which could amount to an Abusive Registration. An Abusive Registration, is one which arises where a Domain Name "has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainants' Rights". Looked at in its totality, the Respondent's use of the Domain Name plainly takes unfair advantage of and has been unfairly detrimental to the Complainants' Rights. Accordingly, it is not necessary to consider the Complainants' other assertions.
Before concluding, it is necessary to consider paragraph 4 of the Policy which indicates grounds by which a Respondent might demonstrate in its response that the Domain Name is not an Abusive Registration. These include, under paragraph 4a(i), that before being informed of the Complainant's dispute, the Respondent has;
A; used or made demonstrable preparations to use the Domain Name or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods and services;
B; been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name;
C; made legitimate non-commercial or fair use of the Domain Name.
There is nothing on the facts which are known which would suggest that the Respondent might have been able to avail itself of the defences set out at paragraph 4 a of the Policy.
Accordingly, the Expert finds that the Domain Name is an Abusive Registration as defined by paragraph 1 of the Policy.
The Expert finds that the requirements of paragraph 2 of the Policy have been satisfied. The Expert directs that the Domain Name be transferred to one of the Complainants. The Complainants will need to resolve between themselves to which of them the Domain Name is to be transferred.
Antony Gold
8th July 2006
