1798
NOMINET UK DISPUTE RESOLUTION SERVICE
DRS 01798
F. HOFFMAN LA ROCHE AG
- AND -
JONATHAN STOCK
RE: XENICAL.CO.UK
(Execution of outcome suspended under DRS Procedure p.20)
Decision of Independent Expert
Parties:
Complainant: F. Hoffman LaRoche AG
Represented by: Legal Department
Respondent: Mr. Jonathan Stock
Disputed Domain Name: Xenical.co.uk
Abbreviations used in this decision:
Abbreviation Definition
DRS Nominet UK's Dispute Resolution Service
DRS Policy Nominet UK's Dispute Resolution Service Policy
DRS Procedures Nominet UK's Dispute Resolution Service Procedures
The Expert Kirsten Houghton
Procedural Background:
1. The Complaint was lodged with Nominet on 28th May 2004 and hard copies were received on the same day.
2. Nominet validated the Complaint on 3rd June 2004.
3. On 3rd June 2004, Nominet sent the complaint to
(a) The Respondent’s address by post;
(b) By e-mail to the Respondent’s email address listed in Nominet’s database and
(c) By e-mail to postmaster@xenical.co.uk
It appears that an attempt was also made to serve the proceedings by fax to the number listed in Nominet’s database, but the fax cover sheet is noted “New fax – confirmation not switched on”. I assume that this means that service by fax was not successful.
4. No response was received and, accordingly, mediation was not attempted.
5. On 23rd July 2004, the Complainant paid the fee in order to obtain a decision of an independent expert.
6. On 26th July 2004, I 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.
Outstanding Formal/Procedural Issues (if any):
7. None.
The Facts:
(1) The Parties – the Complainant
8. The Complainant is a well known pharmaceutical company F. Hoffmann-La Roche whose registered office is Grenzacherstrasse 124, CH-4002 Basel, Switzerland. The Complainant’s authorised representative in this proceeding is its UK affiliate Roche Products Limited. The Complainant has granted Roche Products Limited a power of attorney to pursue any action on its behalf to protect its rights in the trade mark Xenical, a copy of which is annexed to the Complaint as Annex 1.
(2) The Parties - the Respondent
9. The Complainant has not provided me with any information about the Respondent apart from the information held in the whois database.
(3) The Complainant’s rights
10. The Complainant is the holder of the registered trade mark “Xenical”, which is registered in class 5 in its name and has provided copies of 3 certificates of registration substantiating the registrations.
11. The Complainant asserts, and I accept, that it also has common law rights in the name Xenical, evidenced by their registered trade mark and global use and recognition of the name in connection with an anti-obesity medicine developed by the Complainant. Xenical has been used since 1998 and is now sold worldwide. Evidence of use of the mark over time is attached to the Complaint as Annex 8.
(4) The Complaint
12. Chronology
19 August 1998 The Domain Name is registered by a Public Relations company Netcoms Europe on behalf of Roche.
August 2002 The Domain Name expires.
14 March 2003 The Domain Name is detagged by the Domain Name host WEBDNS.
10 October 2003 Roche applies to register the Domain Name. Roche’s application is unsuccessful because of the Domain Name’s detagged status.
14 October 2003 Roche applies through an ISP to have the Domain Name retrieved on availability. The e-mail trail and invoice (39937) relating to this transaction are attached as Annex 4.
8 March 2004 The Domain Name is cancelled by Nominet and subsequently made available. (18.38hrs)
8 March 2004 The Domain Name is registered by current Registrant. (23.30hrs)
11 March 2004 Roche is informed by its ISP that the Domain Name retrieval failed.
April 2004 On or before April 2004 the Domain Name was used for a website www.xenical.co.uk. The website contained links to sites offering Xenical for sale.
15 April 2004 On 15 April 2004 the Complainant wrote to Registrant drawing attention to its rights in the trade mark Xenical and requesting transfer of the Domain Name. A copy of the letter is attached as Annex 6. The Registrant has failed to reply to the Complainant’s letter and to transfer the Domain Name to the Complainant.
24 April 2004 On or around 24 April 2004 the site associated with Domain Name changed
13. A letter of confirming original ownership of the Domain Name is attached to the Complaint as Annex 3. It seems that Netcoms Europe Limited, a PR company which formerly represented the Complainant, registered the Domain Name in its own name for use by the Complainant. I am told that the Complainant developed a website associated with the Domain Name but that it was “dissolved”. The Domain Name registration was then not renewed. The original tag holder then detagged the Domain Name.
14. No explanation is given for the failure to renew the domain name in August 2002, the end of the 2 year period of registration. The loss of the registration does not appear to come to light until about October 2003, when a new employee, [NAME EDITED], tried to renew the registration and discovered the detagging.
15. At that stage, the Complainant could easily have contacted the previous registrant (which is still registered at Companies House) and asked the directors to assist in the renewal of the Domain Name and its retagging, which Nominet would have carried out for a fairly nominal fee. However, Mr. George subscribed to www.nameretriever.co.uk in order to attempt to secure the registration of the Domain Name after its cancellation by Nominet. Nominet does not publish cancellation dates, since its policy is to allow 1st come 1st served registration, and such publication might compromise that policy.
16. On cancellation, it would seem that the Respondent identified the Domain Name as having returned to the market more quickly than nameretriever, and registered the Domain Name. Mr. Stock almost immediately parked a website at the url www.xenical.co.uk which simply contained links to other sites which sold weightloss products. The site was changed in late April, to a similar “links” page, but I do not have any information about the originator of this site in my papers. The Domain Name currently resolves to a further “links” page, run by sedo.co.uk. The current page says that the Domain Name is for sale. Towards the end it states that the page has been provided free by sedo.co.uk’s Domain Parking service.
17. The Complainant’s representative wrote to the Respondent on 15th April 2004 alleging that the Complainant’s intellectual property rights had been infringed, asserting that “the supply of services by you under the domain name xenical.co.uk infringes the intellectual property rights of [the Complainant]” and threatening proceedings unless the Domain Name was transferred. No reply was received.
18. The Complainant asserts that these actions constituted abusive registration under heads 3(a)(i)(B) and (C) and 3(a)(ii) of the DRS Policy, which state:
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:
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;
19. The Complaint states (in relation to the 3(a)(i) heads):
a. It can be discerned from the chronology and Annex 3 that the Domain Name was originally registered by a third party on behalf of the Complainant.
b. The Complainant made attempts to register the Domain Name in its own name but these attempts were unsuccessful because of the ‘de-tagged’ status of the Domain Name (please see Annex 4).
c. On 8th March 2004 the Domain Name was cancelled by Nominet and was subsequently made available. Within hours of the Domain Name becoming available the Registrant registered the Domain Name, preventing the Complainant’s ISP to retrieve the name on their behalf.
d. The Domain Name is identical to the Complainant’s trade mark, which comprises a freely invented word which does not appear in the English Dictionary. There is no obvious reason why the Registrant might be said to have been justified in registering the Domain Name.
e. The Complainant has not licensed or otherwise permitted the Registrant to use the Domain Name or its trade marks.
f. Since registration, the Domain Name has been used for a website containing links to various other websites offering the Complainant’s pharmaceutical products for sale without the Complainant’s authority (please see Annex 5).
g. The timing of the registration by the Registrant and the subsequent use of the Domain Name, provide prima facie evidence of the Registrant’s intention to, and success in, blocking the Complainant’s registration of the Domain Name.
h. The circumstance of registration and subsequent use of the Domain Name, also point to the Registrant’s intention and success in unfairly disrupting the business of the Complainant. An internet user seeking information on the Complainant’s product and typing in the Domain Name would expect to reach an official “Xenical” site. Such users may be attracted to the Domain Name as it is identical to the Complainant’s mark. It is therefore submitted that the primary purpose in registering the Domain Name was to disrupt the Complainant’s business by unfairly diverting users seeking information on the Complainant’s products to the Registrant’s site.
i. In summary, as the Registrant’s immediate and only use of the Domain Name was to attract, for commercial gain, Internet users to a website purporting to and/or supplying the Complainant’s products unofficially; and given the Registrant’s failure to respond to the Complainant’s letter of 15 April 2004, it is submitted that the Registrant’s primary purpose in registering the Domain Name was, and is, to unfairly disrupt the business of the Complainant.
j. Accordingly, it is submitted that the Domain Name was registered or acquired in a manner which took unfair advantage or was unfairly detrimental to the Complainant’s rights.
20. I do not accept that the registration is an abusive “blocking” registration; there is no evidence that the Respondent had any malicious intent in registering the detagged name for the purpose of preventing the Complainant from acquiring it. It was the Complainant’s (or its agent’s) own omission that caused the name to be detagged and cancelled and the Respondent simply got there first when it became available again.
21. Further, I do not accept that the Respondent’s primary purpose in registering the name was for the purpose of unfairly disrupting the business of the Complainant. It may well be true that the links on the various “holding” or “parking” pages which have been used are links to unauthorised resellers of the Complainant’s products, and that, the Respondent may be obtaining a financial benefit (i.e. a pay per click fee), but those features do not, in my judgment, go far enough to establish that the Respondent’s “primary” purpose was unfairly to disrupt the business of the Complainant. Indeed, it is difficult to see how the use to which the Domain Name is currently put by the Respondent (as opposed – possibly - to the owners/operators of the linked sites, for whom he is not responsible) disrupts the business of the Complainant at all. The Respondent is not, so far as I can tell, himself supplying any goods or services and is not using (or abusing) the Complainant’s logo or get up.
22. In reaching these conclusions, I have considered and applied the decision of the expert in DRS 0001 xigris.co.uk. In that case, the expert was able to infer from the fact that respondent had previously worked for the complainant and that he had not cooperated in the DRS procedures at all, that there was legitimate cause for concern on the part of the complainant and that the registration was intended by the respondent to be put to an abusive use. No such special features are present in this case and I do not consider that the Complainant has put forward any evidence which proves the necessary degree of “unfairness” required to stigmatise the registration as abusive.
23. The Complainant also asserts that the use of the Domain Name falls within the “customer confusion” limb of the non-exclusive tests set out in Paragraph 3 of the DRS Policy. However, no evidence of any actual confusion has been produced, and I do not accept that any has been caused. The link and park pages could not, in my view, reasonably lead a potential customer to think that the pages were connected with or authorised by the Complainant.
24. Whilst the Complainant does not expressly rely upon Paragraph 3(a)(i)(A) of the DRS Policy , the Complaint does refer to the fact that the name is advertised for sale and that it would have no control over the sale or the activities of a subsequent owner. It does seem to me that it is most likely that the purpose of the registration was in order to sell on the name, but there is no evidence that the primary purpose was to sell it to the Complainant or a competitor of the Complainant, or at what price it was intended to be sold (although I am prepared to infer that, if sold, it would be for more than the out of pocket expenses). The sedo.co.uk site clearly invites offers for the name, but the offer is open to all comers. In this respect, I respectfully agree with the expert in DRS 01629 cyclone.co.uk that it is a necessary ingredient under this head that the Complainant can show that the primary purpose of the registration was to sell it to the Complainant or a competitor.
Decision
25. I find that, the Complainant has rights in a name or mark which is similar to the Domain Name. However, I do not find that the registration is abusive in the hands of the Respondent and, accordingly, I refuse to order its transfer.
KIRSTEN HOUGHTON
Date: 30 July 2004