633
Nominet UK Dispute Resolution Service
DRS 00633
Pharmacia AB –v- Abdul Rashid
Decision of Independent Expert
1 Parties
Complainant: Pharmacia AB
Country: SE
Respondent: Abdul Rashid
Country: GB
2 Domain Name
detrusitol.co.uk (“the Domain Name”)
3 Conclusion
Based on the facts and analysis set out below, I conclude that the Complainant’s application to have the Domain Name transferred should succeed.
4 Procedural Background
The Complaint was lodged with Nominet 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 Respondent lodged a Response on 13 October 2002 and the Complainant replied to that Response on 18 October 2002.
The Informal Mediation process then commenced, but did not lead to a negotiated settlement. In accordance with Nominet’s practice, the Expert has not been provided with any of the materials, records or correspondence generated during the Informal Mediation stage.
On 19 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”).
On 6 December 2002, I, Simon Carne, the undersigned, confirmed to Nominet that I knew of no reason why I could not properly accept the invitation to act as expert in this case and further confirmed that I knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question my independence and/or impartiality.
5 The Facts
The Complainant is a pharmaceutical company. It is not disputed that it has registered the trade mark Detrusitol in the UK and other territories for pharmaceutical preparations.
On 21 October 1999, the Respondent registered the Domain Name.
On 3 July 2002 and 9 August 2002, the Complainant wrote to the Respondent drawing attention to its rights in the trade mark Detrusitol and requesting transfer of the Domain Name. The Respondent did not reply.
6 The Parties’ Contentions
Complaint
The substance of the Complaint reads as follows:
1 DETRUSITOL is an invented trade mark derived in part from the detrusal muscle connected with bladder control. It is not a dictionary word. It exists because the Complainant invented it. It is owned exclusively by the Complainant by virtue of its registrations and common law rights derived from use of the trade mark. The Respondent has registered the Complainant’s trade mark without due cause. He was not authorised to register the Complainant’s registered trade mark as a domain name, and there is no obvious reason why he should have done this.
2 The Complainant has a policy of registering its primary trade marks as top level domain names. The existence of the Domain Name in suit deprives the Complainant of a UK top level Domain Name for its important trade mark. The Complainant has established top level Domain Names for a large number of its trade marks eg www.celebrex.com, www.elleste.info, as information sites. Medical professionals and patients alike expect a Domain Name www.detrusitol.co.uk to take them to an information site about the DETRUSITOL product. The Complainant owns a variety of other DETRUSITOL domain names.
3 The Domain Name in suit is in use. If one visits the detrusitol.co.uk site one finds that it is serving as an advertising page for the ISP, UK2.net. The fact that the Domain Name in suit leads to a homepage promoting the IPS company, UK2.net is misleading and casts the Complainant in a poor light. This damages the Complainant’s reputation and the goodwill in the trade mark DETRUSITOL. It annoys and irritates the public, who assume the Complainant has set up the site, which unfairly damages the trade mark and the Complainant.
4 The existence of the Domain Name in suit constitutes a continuous threat to the Complainant. The potential for its being used to cause even more serious damage to the Complainant’s trade mark and thus its business is ever present.
5 The Domain Name in suit was registered in 1999 yet it has not been put into purposeful use. Given that the word DETRUSITOL only exists as the Complainant’s trade mark, one can only be left with the conclusion that the Respondent registered the Domain Name in suit with the purpose of blocking registration of the trade mark as a Domain Name by the Complainant in the hope that monies would be offered by the Complainant for the purchase of the Domain Name or for the purpose of selling the Domain Name to a third party, for valuable consideration in excess of the Respondent’s documented out of pocket costs directly associated with acquiring the Domain Name.
6 The Complainant has found that the Defendant, Abdul Rashid, has also registered zydol.co.uk as a domain name. ZYDOL is a registered trade mark of Grunenthal GmbH. As with the detrusitol.co.uk domain name, the site is used to promote services provided by UK2.net, its having been registered also in 1999. This suggests a pattern of abusive registration of registered trade marks as domain names by the Defendant. A search of the Nominet.UK database for other domain names in the name of the Defendant is not possible.
7 The DETRUSITOL product is a controlled drug. There are thus public health and public safety issues which may arise from any unauthorised or abusive use of the Domain Name in suit.
8 The Complainant requests that a Decision be issued that the Domain Name in suit be transferred to the Complainant. Respondent
Response
The substance of the Response reads as follows:
“The domain is available for transfer to the complainant subject to covering my administration costs of £650.00.”
Reply
The substance of the Complainant’s Reply is as follows:
9 In his response to the Complaint, the Respondent makes an offer to sell the domain name in suit for £650. This figure is far in excess of the cost of registering a domain name and is therefore in excess of out-of-pocket costs referred to in the Nominet DRS policy.
10 The fact that the Respondent fails to explain why he registered the domain name in the first place and is willing to sell the domain name for a “for profit” consideration, having never exploited it, is further evidence that the domain name registration is an abusive registration.
11 In the decision of the WIPO Arbitration and Mediation Center in Case no. D2001-1409 (BellSouth Intellectual Property Corporation v. Jaclyn Thomas), the Panel considered that $300 was a sum clearly in excess of the normal “out-of-pocket” expenses for the registration of a domain name.
12 Since the Respondent had no bona fide reason for incurring the registration fees, the Complainant submits that the Respondent should not be compensated for the out-of-pocket cost of registration of the domain name in suit.
7 Discussion and Findings
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 owner of the trade mark Detrusitol in the UK and elsewhere. The Complainant also markets a drug under that name. The Respondent does not challenge this. I, therefore, find that the Complainant has Rights in respect of a name or mark, which is identical 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.”
Although I have indicated above that my conclusion is that the Complainant’s application should succeed, it is easier to deal first with those of the Complainant’s submissions which do not succeed.
The Complainant’s policy, described at paragraph 2 of the summarised Complaint (see above), of registering its primary trade marks as domain names does not, of itself, make a registration which would otherwise be non-abusive into an Abusive Registration. In the absence of some evidence to suggest that the Respondent was aware of this policy and was deliberately acting to thwart it, it is difficult to see how the Complainant’s policy can have any bearing on the determination of whether the registration is abusive.
Paragraphs 3 and 5 appear to be in direct contradiction of each other, paragraph 3 asserting that the Domain Name is in use as the address for an advertsising page and paragraph 5 asserting that the page has not been put into purposeful use.
The advertisement asserted in paragraph 3 is for the ISP used by the Respondent in connection with the Domain Name. From the Complainant’s own submission (to which was appended a copy of the web page at the Domain Name), it can be seen that the ISP in question has included the legend:
“The Domain has been registered by a client of UK2.Net and the client has chosen to point it to our free holding page.”
In the absence of any evidence that the Respondent is connected in any way with ISP2.Net (other than as a customer/client), I do not consider this to be evidence that the Domain Name is being used to take unfair advantage of the Complainant’s Rights. The alternative possibility under part (ii) of the definition of Abusive Registration, ie that the site is unfairly detrimental to the Complainant’s Rights, depends on the premise that visitors to the site will think less of the Complainant because they will believe that the Complainant owns the site, but does not take the trouble to upload any relevant information to it.
Whilst it is the case that detriment might arise if the Complainant is presented in a light which suggests that it is lazy or insufficiently caring of its customers, I am reluctant to conclude that visitors will draw such an inference merely from the existence of a site bearing the name of a product manufactured by the Complainant, without any evidence to suggest that visitors do believe the sight belongs to the Complainant. In arriving at this conclusion, I am mindful that, in countries where the drug Detrusitol is not marketed and the name has not been registered as a trade mark, there could be a word “detrusitol” or a business bearing that name. On the Claimant’s argument, in the very limited form in which it appears in its submission, I would have to find the registration of the Domain Name by such a business to be detrimental to the Complainant and that does not seem to me to be a correct inference to draw.
The Claimant actually goes further, in paragraph 3, than suggesting that detriment might occur. The Complainant asserts that the website “annoys and irritates the public, who assume the Complainant has set up the site.” No evidence has been submitted which supports this assertion.
As to paragraph 5 of the Complaint (the absence of a purposeful use), the DRS Policy says at paragraph 3(b) that failure to use the domain name for the purposes of email or a web site is not, in itself, evidence of an Abusive Registration.
At paragraph 4, the Complainant asserts that the existence of the Domain Name constitutes a “continuous” threat to cause “even more serious damage” to the Complainant’s trade mark. Since I have not found that damage actually occurs or that the likelihood of its occurrence has been sufficiently established, it follows that this submission does not succeed either.
At paragraph 6, the Complainant asserts that that the Respondent has also registered, as a domain name, zydol.co.uk, based on the registered trade mark Zydol, owned by Grunenthal GmbH. As with the detrusitol.co.uk domain name, the site is said to be used to promote UK2.net. It is further submitted that this suggests a pattern of abusive registration of registered trade marks as domain names by the Defendant.
This argument is an entirely misconceived attempt to build on paragraph 3(a)(iii) of the DRS Policy, which identifies the following as a factor which may be evidence of an Abusive Registration:
“In combination with other circumstances indicating that the Domain Name in dispute is an Abusive Registration, the Complainant can demonstrate that the Respondent is engaged in a pattern of making Abusive Registrations”
It can be seen that this factor is based on two limbs as follows:
a) circumstances which indicate [but do not prove] that the Domain Name is an Abusive Registration; and
b) other domain names registered by the Respondent which are proved to be Abusive Registrations,
The words “but do not prove” (or similar) must be inferred in limb (a), because a registration which is proven to be an Abusive Registration plainly does not need the second limb. But where the second limb is required (because the Complainant is otherwise unable to prove that the registration of the Domain Name is an Abusive Registration), the other domain names in the “pattern” must be Abusive Registrations.
I recognise that the list of factors in DRS Policy paragraph 3(a) is said to be a non-exhaustive list. There may be circumstances in which a pattern of behaviour may lend support to an argument that the behaviour is abusive, but I do not consider that it is safe to extend the list of factors to include the very limited argument adopted here. All the Complainant has done is to produce evidence of a second domain name, registered in circumstances which look similar to the Domain Name, but with even less evidence that the second registration is an Abusive Registration. This may establish a pattern of behaviour, but it does not establish a pattern of Abusive Registrations.
I think the argument at paragraph 7 (health and safety issues) must fail. For a registration to be an Abusive Registration under the DRS Policy, it is the Complainant’s Rights that must be damaged, not some third party’s. If Nominet wishes to change the DRS Policy to include third party rights and/or public safety, that is for Nominet to decide.
Finally, therefore, I turn to paragraph 1 of the Complainant’s submission, as summarised above. The Complainant says that Detrusitol is an invented trade mark [I think the Complainant must mean “invented word registered as a trade mark”]; the Respondent has registered the Complainant’s trade mark without due cause; he was not authorised to register the Complainant’s registered trade mark as a domain name, and there is no obvious reason why he should have done this.
In effect, the Complainant is mounting an argument under DRS Policy paragraph 3(a)(i), ie that the Domain Name was registered:
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;
B. as a blocking registration against a name or mark in which the Complainant has Rights; or
C. primarily for the purpose of unfairly disrupting the business of the Complainant;”
In xigris.co.uk (DRS 001), the circumstances were similar: the name of a drug was registered as a domain name by someone other than the owner of the trade mark. In that case, however, the circumstances surrounding the registration were more indicative of the Respondent’s intent at the time of registration, in that the Respondent was a former employee of the Complainant and the date of registration was very soon after the Respondent left the Complainant’s employment.
In this case, unlike in xigris.co.uk, the Respondent has submitted a Response and has had the opportunity to explain his reason for the registration. Although the burden of proof rests with the Complainant, I take the view that there is sufficient evidence in the Complaint (but only just) to establish that, in the absence of any contrary submission by the Respondent, the registration falls, on the balance of probabilities, within either sub-paragraph A or B above (the evidence in the Complaint is not sufficient to determine which sub-paragraph applies, but it is sufficient for me to conclude that it is one or other of these two).
The Respondent’s submission does not address any of the Complainant’s submissions, nor does it provide any explanation as to why the Domain Name was registered. Somewhat curiously, the Respondent has used the opportunity of the Response to make an offer to sell the Domain Name to the Complainant. The quoted offer price is said to cover the Respondent’s administrative costs, but in the absence of any documentation to show that the quoted price is no more than the Respondent’s “out-of-pocket costs directly associated with acquiring or using the Domain Name”, I conclude that a price of £650 is greater than the Respondent’s expenses.
Although the Response does not establish that the Respondent’s intention at the time of registration was to sell the Domain Name at a profit, the Response is insufficient to displace my finding, on the balance of probabilities, that the registration was either made with a view to making a sale or else as a blocking registration (with the offer for sale being an afterthought).
In the light of this analysis, there is no need to consider the Complainant’s Reply.
8 Decision
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, I direct that the Domain Name, detrusitol.co.uk, be transferred to the Complainant.
Simon Carne Date: 8 December 2002