Nominet UK Dispute Resolution Service

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URL: http://www.bailii.org/uk/cases/DRS/2003/1211.html
Cite as: [2003] DRS 1211

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DRS 1211

NOMINET-UK DISPUTE RESOLUTION SERVICE

B E T W E E N :

DERMALOGICA INC
[being the name used herein as a collective description for
DERMALOGICA INC and INTERNATIONAL DERMAL INSTITUTE INC)
Complainants

- and -

CHRISTOPHER NALL
Respondent

__________________________________________

DECISION OF INDEPENDENT EXPERT
__________________________________________

Appointment
1. I was appointed, by a letter dated the 20th October 2003 to decide, under the DRS Procedure, a complaint of Abusive Registration. I am required to give my decision by the 6th November 2003.

Terminology
2. In this Decision:
· “Nominet” means Nominet-UK
· “the DRS Procedure” means Nominet’s current dispute resolution procedure
· “the Policy” means Nominet’s current dispute resolution policy
· “the Domain Name” means the domain name “dermalogicamailorder.co.uk”

Materials
3. I have been provided with the following materials:
(1) Dispute History
(2) Complaint
(3) Standard correspondence between Nominet UK and the parties
(4) Register entry for dermalogicamailorder.co.uk
(5) Nominet WHOIS query result for dermalogicamailorder.co.uk
(6) Printout of website at dermalogicamailorder.co.uk
(7) Copy of Nominet UK’s Policy and Procedure.

The Complaint
4. The Complainants assert that the Domain Name in the hands of the Respondent is an “Abusive Registration”.

5. The Complaint which dated the 5th September 2003 and which is signed by a Mr Steele of Christie Parker and Hale, trademark counsel acting on behalf of the Complainants is summarised in the Complaint in the following terms:-.
“The Complainants own the well-known DERMALOGICA trade name and trade mark which they have used for over 15 years to identify their highly successful line of skin care products. The subject domain name is confusingly similar to the Complainants’ mark, merely adding a generic suffix “mail order,” and the domain name is an abusive registration in the hands of the Respondent who has admitted to cybersquatting with the intent to sell the domain name to the Complainant for £10,000.00”

Response
6. No Response has been provided by or on behalf of the Respondent. The complaint not being challenged, therefore, I am entitled to, and will, assume that the facts asserted in the complaint are true. Indeed there is no reason to doubt the veracity of those asserted facts.

Jurisdiction
7. Under paragraph 2a of the Policy the Respondent is required to submit to proceedings if a Complainant asserts to Nominet in accordance with the DRS Procedure that
“i. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name: and

ii. The Domain Name, in the hands of the Respondent, is an Abusive Registration”.

8. Under paragraph 2b of the Policy a Complainant is required to prove both these elements on the balance of probabilities.

Rights

9. Paragraph 1 of the Policy defines “Rights” as including but not being “limited to, rights enforceable under English law”. This definition is subject to a qualification which is not material.

10. The Complaint, signed by Mr Steele, includes a declaration as to its veracity.

11. In that Complaint Mr Steele asserts, in relation to the Complainants’ rights, that:
“The International Dermal Institute, Inc. and Dermalogica, Inc. (collectively Complainant) own and license the DERMALOGICA trade mark and trade name, respectively. The Complainant has used the DERMALOGICA name and mark in the United Kingdom, the United States and around the world in connection with a wide range of innovative skin care products of the highest quality. The Complainant’s DERMALOGICA mark is the subject of over 60 trade mark registrations around the world including European Community Mark 000256156 and United Kingdom Reg No. 1301528, both of which encompass Respondent’s listed address. …

Complainant operates an extensive web site at www.dermalogica.com which provides a wealth of information regarding its DERMALOGICA products, locations and contact information for one of the thousands of skin care professionals offering Complainant'’ products, general skin care information, and information about Dermalogica, Inc.”

12. Mr Steele further asserts that:
“… Today, DERMALOGICA is the most-selected brand among professional skin care therapists in the United States. Over 3,500 skin care centers in the United States alone carry Complainant’s products, with many thousands more in Europe, Asia and Australia. The DERMALOGICA mark is extensively used around the world, and is well known by professionals and consumers alike. Evidence of this use is found in the many news and magazine reports and stories depicted on Complainant’s web site available at www.dermalogica.com…”

13. The Complainants’ case is supported by:
(1) A spreadsheet detailing the Complainants’ trade mark registrations applications around the world.

(2) Copies of the information data sheets for European Community Mark 000256156 and United Kingdom Trade Mark Reg. No. 1301528.

(3) A copy of their website.

14. In the circumstances I am satisfied and find as a fact that the Complainants have rights enforceable under English law as proprietors of or applicants for trademarks in, and as registrants of the domain name, “dermalogica”.

15. Plainly this is not identical with the Domain Name (“dermalogicamailorder”), but in my judgment it is similar, and I so find. The dominant and distinctive element of the Domain Name is “dermalogica”.

Abusive Registration
16. 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;”

17. The Policy provides:
“3. Evidence of Abusive Registration

a. A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is as follows:

i. 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.

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;

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;

iii. 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; or

iv. it is independently verified that the Respondent has given false contact details to us.

b. Failure on the Respondent’s part to use the Domain Name for the purposes of e-mail or a web-site is not in itself evidence that the Domain Name is an Abusive Registration.

4. How the Respondent may demonstrate in its response that the Domain Name is not an Abusive Registration

a. A non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration is as follows:

i. 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 or 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; or

ii. The Domain Name is generic or descriptive and the Respondent is making fair use of it.

b. Fair use may include sites operated solely in tribute to or criticism of a person or business, provided that if:

i. the Domain Name (not including the first and second level suffixes) is identical to the name in which the Complainant asserts Rights, without any addition; and

ii. the Respondent is using or intends to use the Domain Name for the purposes of a tribute or criticism site without the Complainant’s authorisation.

then the burden will shift to the Respondent to show that the Domain Name is not an Abusive Registration.”

18. In a letter to the Respondent dated the 19th June 2003 Mr Steele explained that the Complainants owned the Dermalogica trade name and trademark, and continued:-
“Your registration of the Internet Domain name dermalogicamailorder.com has recently come to our attention and a copy of the “whois” registration information is enclosed. Dermalogica is concerned that your registration and subsequent use of the dermalogicamailorder.com domain name is highly likely to cause confusion and will dilute the distinctiveness of our client’s DERMALOGICA trademark and trade name, thereby irreparably damaging our client’s goodwill and reputation. Principally this confusion stems from the use of DERMALOGICA as the predominate portion of the domain name. That you have added the generic term “mail order” does not remedy this confusion, and indeed further increases the likelihood of confusion.”

In the letter Mr Steele demanded that the Respondent should immediately:
(1) cease any use, or planned use, of the domain name dermalogicamailorder.com and

(2) transfer the domain name to Dermalogica.

19. No reply to this letter was received and accordingly Mr Steele wrote again on the 30th July 2003, enclosing a copy of his earlier letter dated the 19th June 2003. The Respondent replied in an e-mail dated the 3rd August 2003.

20. It is to be noted that Mr Steele’s letter of the 19th June 2003 referred only to the domain name “dermalogicamailorder.com”. However, as appears below, in the exchange of e-mails which followed the initial response on the 3rd August 2003, the Respondent indicated that he was also the registrant of the Domain Name, (i.e. “dermalogicamailorder.co.uk.”).

21. The terms of the e-mails exchanged from the 3rd August 2003 were as follows:-
3.8.03
“Dear Mr Steele

Thank you for your letter Dated 30th July 2003/reference Dermalogicamailorder.com

I never unfortunately received your earlier correspondence dated 19th June.

First let me explain that I invest in many domain names.

I believe we can reach an amicable solution as stated in your letter representing the company.

Kind Regards

Christopher Nall”

9.8.03
“Mr Nall,

Thank you for your email. As we discussed in our letter, our client would like for you to transfer the domain name. They would likely be willing to compensate you for your out of pocket cost in registering the domain name.

David”

9.8.03
“Dear David
As explained I take considerable time and money in investing in domain names you can purchase it from me but this is not a hobby to me please come back to me with a reasonable offer.

I want to sort this out for both parties as I know it will be more cost effective long term for all concerned.

Kind Regards

Christopher Nall”

“…
To Christopher Nall

I believe that reimbursing you your out of pocket costs is reasonable. Any more than that allows you to profit from the registration of a domain name that infringes our clients rights. While I appreciate that this isn’t your hobby and that you are in the business of buying domain names and then selling them for a profit, you will not find me nor my client receptive to your business model.

You want to sell the domain name for more than we’ve offered; we’ll not spend time guessing how much you want. If you want to sell the domain name to us -- before we take it from you (you’ll lose money in that case) -- make an offer we can accept.

David”

10.8.03
“Dear David

Thank you for your reply you have asked me the price of purchasing the Domain addresses I have not only the .com but also .co.uk for sale. These are valuable domain name addresses which I believe reflects the asking prices for world wide use. Both names are for sale at a combined price of around 10,000 pounds this is fair considering what future profits these names can generate for dermalogica. I have sought commercial and legal advice on the above and believe this is a fair offer for ownership of my property.

Kind Regards

Christopher Nall”

22. There is no material before me which would establish any of the factors referred to in a or b of paragraph 4 of the Policy. Indeed the Respondent’s e-mails provide evidence which would be destructive of any attempt to rely upon the non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration.

23. The Complainants contend that the Respondent’s only use of the Domain Name has been to offer it (together with dermalogicamailorder.com) for sale to the Complainants for around £10,000, and that the communications between the parties referred to above establish that:
“the Respondent has registered or otherwise acquired the domain name: primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant … for valuable consideration in excess of [its] documented out-of-pocket costs directly associated with acquiring or using the domain name”

within the terms of paragraph 3aiA of the Policy. It seems to me that it is more probable than not that the Respondent, who registered the Domain Name on the 22nd February 2003, did have the owners of the dermalogica name and work in mind as a potential source of profit, even though there is no evidence before me that he knew who those owners were and are. Further, the evidence shows that his primary purpose was to negotiate a consideration in excess of any out-of-pocket costs directly associated with his acquisition of the Domain Name. I am satisfied that the Complainants have established their allegations and that the Respondent’s registration is abusive.

Decision

24. For the reasons given above, I find that the Domain Name, was registered in a manner which at the time when the registration took place was unfairly detrimental to the Complainants` Rights and, in the hands of the Respondent, is an Abusive Registration.

25. The Complainants have requested the transfer of the Domain Name. On the basis of the material before me I consider that that is an appropriate remedy and accordingly that the Domain Name should now be transferred to the Complainants as they request.

David Blunt QC

Date: 27th October 2003