617
Nominet Dispute Resolution Service
DRS 00617
Barudan UK Ltd. -v- Xceptional
Decision of Independent Expert
1. Parties:
Complainant: Barudan UK Limited
Country: GB
Respondent: Mr Imran Choonara
Country: GB
2. Disputed Domain Name:
Barudan .co.uk ("the Domain Name")
3. Procedural Background:
The Complaint was lodged with Nominet UK (“Nominet”) on 15 September 2002 and entered in to the system on 16 September 2002. Nominet received the hard copy on 25 September 2002. Nominet validated the complaint and notified the Respondent of the complaint on 30 September 2002 and informed the Respondent that he had 15 days within which to lodge a response. The due date for a response was 15 October 2002. Confusion has arisen here in that the letter to the respondent enclosing the complaint gives 15 days until 15 October 2002 to respond whereas the letter to the complainant confirming service had taken place and copied to the respondent gives 15 clear working days requiring a response by 21 October 2002. The procedure specifies 15 days and is silent as to whether these are straight consecutive days or working days. In the event, no response was received within either prescribed time limit. Mediation not being possible in these circumstances, Nominet so informed the Complainant and on 6 November 2002 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (“the policy”).
The respondent sent an e-mail to Nominet UK on 4 November 2002 identifying an office move as the reason for the delay in replying and expressing a desire to retain the Domain Name.
On 7 November 2002, the undersigned, Mr Alistair Abbott, ("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. He was subsequently selected by Nominet as the Expert for this case.
4. Outstanding Formal/Procedural Issues (if any):
The complainant is represented by Mr M Shaw of Amadis Systems Limited who is the duly authorised representative of Barudan UK Ltd.
A Whois query reveals that the Domain Name BARUDAN.co.uk was registered by UK2NET for xceptional on 29 May 2000. The contact name at both Xceptional and UK2NET Domainmaster is in both cases Imran Choonara. Although the 4 November 2002 e-mail from the respondent would indicated that Xceptional is a Limited company the registrant is clearly Xceptional and the contact as above therefore the expert is satisfied that the respondent for the purpose of this adjudication is Imran Choonara trading as Xeceptional.
The complaint has been correctly lodged and complies with the requirements of The Procedure for Conduct of Proceedings under Nominet's Dispute Resolution Service. The appropriate declarations have been made and the document is signed.
There was no response from Xceptional within the prescribed time limit or in the prescribed format clearly set out in the Procedure document sent to the respondent on 30 September 2002. The 4 November 2002 e-mail speaks of an office move and gives a different address but no undelivered correspondence was returned to Nominet. In all the circumstances the expert finds that the respondent has not filed a response and the appropriate inference will be drawn in the later conclusions.
The Expert is satisfied that The Complainant has complied with all the required policies and procedures and the Respondent has been given every opportunity to lodge a response.
5. The Facts:
Barudan UK Ltd. is a subsidiary company of Barudan Industries in Japan and has companies trading under the Barudan name in Japan, USA, Asia, UK, and France and support outlets and vendors throughout the world. Barudan is an established manufacturer and seller of its specialist embroidery machines and is well known within its industry. The Complainant has produced evidence to support this by providing brochures detailing its product range and showing international coverage.
The Complainant has not produced evidence that Barudan is a registered trademark and the domain Name in dispute does not in its self describe the nature of the business conducted by Barudan UK Ltd.
The complainant states that the Domain Name has been used previously by an organisation masquerading as the complainant to sell second hand Barudan equipment. When a passing off action was threatened the web site was withdrawn and was replaced by aUK2. Net holding page. This was about one year ago and the web site has remained dormant since.
There is no evidence to support this but it is not challenged. It is noted that the Domain Name was registered to Xceptional on 29 May 2000 and it was about a year ago the passing off action was threatened by the complainant.
The complainants representative approached the respondent by e-mail on 15 September 2002 asking what intentions they had for the Domain Name, they received no reply but it was obviously received as it was later copied and attached to the e-mail from the respondent to Nominet on 4 November 2002.
There is no suggestion here that the registration of this Domain Name forms part of a series of registrations by the respondent.
6. The Parties' Contentions:
Complainant:
The substance of the Complaint is The Respondents registration of the Domain Name is an abusive registration, having been registered in circumstances indicating that the respondent intended to at the time of registration to confuse people or businesses into believing that the Domain Name is registered to, operated or authorised by or otherwise connected with the complainant.
The complainant further states that the Domain Name is identical or similar to a name or mark in which they have rights.
RESPONDENT
The Respondent has failed to respond to the Complaint. The evidence produced by the Complainant is therefore unchallenged.
7. Discussion and Findings:
General
The Complainant claims a right to the Domain Name as being identical or similar to a name in which they have rights 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
There is no evidence that the Complainant owns the registered trademark Barudan but there is unchallenged evidence that Barudan are well known and recognised within their own industry and throughout numerous Countries world-wide. The Domain Name does not specifically describe the business of Barudan UK Limited
The name of the Complainant company in which the directors have rights and the disputed Domain Name are so similar to convince the Expert that the complainant can justifiably bring this claim for Abusive Registration.
Abusive Registration
Is the Domain Name, in the hands of the Respondent, an Abusive Registration?
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.
"Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
A Primarily for the purposes 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;
There is no evidence to suggest this was the intention at the time of the original registration and infact in the communication from the complainant to respondent of 15 September 2002 the complainant enquires if they intend to sell the name. This could be interpreted as a request to buy but even so had this been the respondents intention this would surly have been the door opening for negotiations.
Consideration needs to be given to paragraph 3 a ii
Circumstances indicating that the respondent is using the Domain Name in a way, which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by or otherwise connected with the complainant.
The web site we are told has been used to sell Barudan equipment and this although not supported by specific evidence is not challenged by the respondent. The fact that when a passing off action was threatened by the complainant the web site was closed and the allegation not challenged, denied or defended would suggest the allegations are likely to be correct.
The Whois enquiry reveals that the respondent owned the Domain Name at the relevant time.
Although failure to develop a website in itself is not evidence of an Abusive Registration leaving a website dormant when viewed with the other factors indicated above would suggest that this is a factor that can be taken in to account when assessing the overall picture.
The evidence is clear that the Domain Name in dispute is similar or identical to the complainant’s name.
Accepting the unchallenged evidence that this site has been used to sell equipment allowing potential and actual customers to believe it was the Barudan UK Ltd. website. This would clearly show that paragraph 3 a ii has been contravened and that this is an abusive registration in the hands of the respondent.
There is clearly a case to answer as an abusive registration and the Respondent is now required to show;
4 i A He has used or has made preparation to use the Domain Name in the offering of goods or services.
This has not been challenged, but was to the detriment of the complainant.
4 i B Been commonly known by the name or is legitimately connected with a mark which is identical or similar to the domain name.
There is no evidence of any connection in the name or description of the Respondents business with the Domain Name whereas the Complainant has the name Barudan in numerous countries
4 i C Made legitimate non-commercial use of the Domain Name or (ii) The Domain Name‘s generic or descriptive and the Respondent is making use of it.
The Respondent has failed to show that he is making legitimate fair use of the Domain Name and therefore fails also on this point.
Accordingly, the Expert finds that the Domain Name is an Abusive Registration.
8. Decision:
In light of the foregoing findings, that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name, barudan.co.uk be transferred to the Complainant.
Alistair Abbott Date: 25 November 2002