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and Mediation Center
Forum Bioscience Holdings Limited v. Darren Rowe
Case No. D2006-0050
1. The Parties
The Complainant is Forum Bioscience Holdings Limited, Surrey, United Kingdom of Great Britain and Northern Ireland (the “Complainant”), represented by A.A.Thornton & Co, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Darren Rowe, Peterborough, United Kingdom of Great Britain
and Northern Ireland (the “Respondent”), represented by Fennemores
Solicitors, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name, <aqualutionltd.com> (the “Domain Name”),
is registered with Easyspace (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2006. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 19, 2006, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 20, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 9, 2006. The Response was filed with the Center on February 9, 2006.
The Center appointed Tony Willoughby as the sole panelist
in this matter on February 15, 2006. The Panel finds that it was properly constituted.
The Panel has submitted the Statement of Acceptance and Declaration of Impartiality
and Independence, as required by the Center to ensure compliance with the Rules,
4. Factual Background
The Complainant is a company incorporated in England. It is engaged in the field of water treatment for various industrial, agricultural, horticultural, pharmaceutical and dental applications and is the proprietor of UK and Community trade mark registrations of the mark AQUALUTION for related goods and services. The trade mark registrations date back to November 2003.
The Respondent is a director of Aqualution Limited, on whose behalf the Domain Name was registered. For the purposes of this decision, the Panel treats the Respondent and his company as one.
Aqualution Limited is a company incorporated in England on April 7, 2005, which is engaged in the hire to chiropractors of “AquaMED Dry-Hydrotherapy beds, whereby the patient lies on the bed and receives treatment by a number of jets of water massaging the patient by being aimed at the underside of the bed”.
The Respondent registered the Domain Name on June 1, 2005.
In September and October 2005, the Complainant and its trade mark attorneys wrote to the Respondent drawing attention to its trade mark rights, complaining about the Respondent’s registration of the Domain Name and seeking transfer of the Domain Name. No reply was received to either letter.
On December 13, 2005, the Respondent underwent the name change from Aqualutions Limited to its current name, Aqualution Limited
On January 13, 2006, the Complaint was filed.
On January 25, 2006, the Respondent’s representatives
responded to the letters of September and October 2005, from the Complainant
and its trade mark attorneys. The letter denied trade mark infringement and
invited the Complainant to withdraw the Complaint.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its AQUALUTION trade mark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. In support of this contention the Complainant asserts that the Domain Name and the use that the Respondent is making of it infringes the Complainant’s trade mark rights.
The Complainant further contends that the Domain Name was registered and is being used in bad faith.
The Complainant points to the failure of the Respondent to reply to the letters sent to it in September and October of last year and claims that this is indicative of deliberately abusive behaviour on the part of the Respondent.
The Complainant concludes that the Respondent registered the Domain Name with full knowledge of the Complainant’s rights and that it was infringing those rights. The Complainant contends that the Respondent’s purpose was to disrupt the Complainant’s business and to benefit from the reputation of the Complainant.
The Complainant asserts that the Respondent’s behaviour constitutes bad faith registration and use within the meaning of paragraph 4(b)(iv) of the Policy (i.e. deception of Internet users for commercial gain) and asserts that the Respondent’s name change after receipt of the Complainant’s warning letters to ensure that the Respondent’s corporate name matched the Domain Name is suggestive of bad faith intent on the part of the Respondent.
The Respondent denies that the Domain Name is confusingly similar to the Complainant’s trade mark. It points out that the Domain Name is a corporate name and asserts that it would not be confused with a trade mark. Furthermore, the industries in which the parties are engaged are so far apart that nobody could be confused.
In response to the allegation that the Respondent has no rights or legitimate interests in respect of the Domain Name the Respondent again points to the significant differences between the parties’ areas of activity and asserts that the Complainant’s mark is not so well-known that its reputation can bridge the gap. Thus trade mark infringement is not an issue here. The Respondent produces documentation to demonstrate that prior to registration of the Domain Name it was making preparations to use the name Aqualutions in relation to its business. It claims that through marketing activity it has become known to its customers as Aqualution Limited and has acquired a reputation under that name. It is not aware of there having been any confusion.
The Respondent denies that it registered and is using the Domain Name in bad faith. It denies that it had any intention to damage or benefit from the reputation of the Complainant in any way. It registered the Domain Name for the benefit of its business and is so using it. There is no risk of any confusion or damage to the Complainant of any kind.
As to the inference that the Complainant seeks to draw from the failure of the Respondent to reply to the letters written to it, the Respondent contends that it is misplaced. The failure to reply was as a result of an oversight by the Respondent’s solicitors to whom the letters had been passed. The Respondent complains that the letters breach the Civil Procedure Rules in that the letters were marked ‘Without Prejudice’ when they should have been open. On learning of the oversight, the Respondent immediately contacted the Complainant in order to resolve the matter and to point out that the companies’ fields of activity were miles apart.
As to the Complainant’s assertions in relation to the name change of the Respondent, the Respondent claims that the addition of the ‘s’ to the name was an error and was corrected as soon as it was drawn to the Respondent’s attention. The Respondent states that if it had intended to trade under the original name, it would have registered the domain name, <aqualutionsltd.com> which is available. The Respondent produces an email dated July 26, 2005, indicating that at that date steps were being taken to change the Respondent’s corporate name to its present name.
Finally, the Respondent contends that the Complainant
is guilty of reverse domain name hijacking on the basis of its contentions as
set out above and there having been no confusion or damage to the Complainant
of any kind. It contends that this was an abusive use of the Policy to hijack
the Domain Name and is an unwarranted harassment of the Respondent. It further
observes that although the Complainant is seeking transfer of the Domain Name,
it could never have used it without passing itself off as the Respondent.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
If the Complaint fails, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:
“If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes and abuse of the Administrative Proceeding.”
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as meaning “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.”
As indicated above, for the purposes of this decision, the Panel treats the Respondent and his company, Aqualution Limited, as one.
A. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s trade mark and the well-known abbreviation ‘ltd’. It is not identical to the Complainant’s trade mark, but is it confusingly similar? The Respondent argues that because it is obviously a corporate name it cannot be confused with a trade mark. The Panel rejects that argument. It is common for trade mark owners to feature their trade mark in their corporate names (e.g. Cadbury Limited and CADBURY).
The Panel accepts the Complainant’s argument that someone familiar with the Complainant’s brand and seeing the Domain Name might well assume that the two are associated.
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Clearly, the Respondent must be known to those with whom it trades by its corporate name, Aqualution Ltd. Clearly, too, the Respondent has been using the Domain Name in connection with its business, which appears on its face to be a genuine business. On that basis (and having regard to the terms of paragraph 4(c) of the Policy) the Respondent is likely to have a legitimate interest in respect of the Domain Name.
However, if, as the Complainant contends, the Respondent selected its corporate name and then the Domain Name with full knowledge of the Complainant’s rights and in the knowledge that what it is doing infringes those rights, then what appears on its face to be a bona fide offering of goods and services becomes something rather different and the Respondent cannot sensibly pray in aid any aspect of the terms of paragraph 4(c) of the Policy. In other words, the outcome of this dispute depends on the validity or otherwise of the Complainant’s allegations under the next heading.
C. Registered and Used in Bad Faith
Under this head of the Complaint, the Complainant contends as follows:
1. The Respondent deliberately selected the Domain Name (and presumably its corporate name, which preceded the Domain Name) with a view to confusing Internet users into believing that the Respondent is or is in some way associated with the Complainant; thus, the Respondent has acted in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
2. In trading under and by reference to the Domain Name (and presumably its corporate name, which preceded the Domain Name) in the field of beds for use in combination with a water treatment, the Respondent is infringing the Complainant’s trade mark rights. In that context, knowledge or intent is not a necessary pre-requisite, but the Complainant argues that the Respondent did have that knowledge and intent and therefore registered the Domain Name with intent to disrupt the Complainant’s business within the meaning of paragraph 4(b)(iii) of the Policy.
The Complainant has no direct evidence of the Respondent’s bad faith intent, but asks the Panel to infer it from the following:
a) What the Respondent is doing plainly infringes the Complainant’s trade mark rights;
b) The Respondent must have known of the Complainant’s trade mark rights in the name AQUALUTION because the Respondent must have conducted a trade mark search prior to selecting the Domain Name;
c) The Respondent failed to respond to the Complainant’s warning letters;
d) The Respondent originally registered the corporate name Aqualutions Limited and only changed it to Aqualution Limited after having received those warning letters and in order to enable the Respondent to argue that the Domain Name and the Respondent’s corporate name are the same, thereby providing the Respondent with a legitimate interest in the Domain Name in accordance with paragraph 4(b)(ii) of the Policy.
The Panel accepts that what the Respondent is doing might infringe the Complainant’s rights, but is by no means certain on that point. As the Respondent points out, the areas in which the parties trade are very far apart and there is nowhere near enough evidence before the Panel to enable the Panel to come to a finding of infringement, even if it were appropriate for the Panel to make such a determination..
The Respondent has not denied knowledge of the Complainant’s rights and for the purposes of this administrative proceeding the Panel is ready to proceed on the basis that the Respondent was aware of the Complainant’s rights when it selected its corporate name and subsequently the Domain Name. That said, the Panel can readily appreciate that, even with that knowledge, the Respondent might reasonably have dismissed the idea of trade mark infringement, given the wide divergence of business area.
The failure of the Respondent to respond to the Complainant’s warning letters has been explained (an oversight on the part of the Respondent’s representatives) and the Panel sees no reason to disbelieve that explanation. Accordingly, nothing adverse to the Respondent is to be inferred.
As to the change of corporate name, the Respondent explains that the original corporate name registered was a mistake, an administrative error. The name should have been registered in the singular. Certainly by the end of July 2005, steps were being taken to correct the error. The Panel is ready to accept that the Domain Name was registered either in the belief that it reflected the Respondent’s corporate name or that it would reflect the new name. Whatever the truth of the matter, it is plain that the name change was being planned well in advance of the Complainant’s first approach to the Respondent. The Panel sees no reason to draw any adverse inferences from the name change.
In the result, the Panel is not persuaded that the Respondent registered the
Domain Name in bad faith and is using it in bad faith. The Panel regards it
as very likely that the Respondent registered the Domain Name aware of the Complainant’s
rights, but in the honest and reasonable belief that it was entitled to do so.
7. Reverse Domain Name Hijacking
While the Complaint has failed, the Panel can readily understand why the Complainant
might reasonably have thought that its complaint was merited. The Panel is not
persuaded that this Complaint was a deliberate attempt to deprive the Respondent
of the Domain Name unfairly.
For all the foregoing reasons, the Complaint is denied, as is the request for a finding of Reverse Domain Name Hijacking.
Dated: February 23, 2006