Nominet UK Dispute Resolution Service

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URL: http://www.bailii.org/uk/cases/DRS/2004/1869.html
Cite as: [2004] DRS 1869

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Nominet UK Dispute Resolution Service

DRS 01869

Bausch & Lomb Incorporated and Andrew Jones

Decision of Independent Expert

1. PARTIES:

Complainant: Bausch & Lomb Incorporated

Country: USA

Respondent: Andrew Jones

Country: GB

2. DISPUTED DOMAIN NAME:

bauschandlomb.co.uk ("the Domain Name")

3. PROCEDURAL BACKGROUND:

The dispute was entered into the Nominet Dispute Resolution Service (DRS) on 5th July 2004. A hardcopy of the Complaint was received in full by Nominet on 6th July 2004. Nominet validated the Complaint on 9th July 2004 and sent a copy to the Respondent on the same day.

No response was received by the Respondent and therefore informal mediation was not possible.

On 16th August 2004 the Complainant paid the fee to obtain an Expert Decision pursuant to paragraph 6 of the Nominet Dispute Resolution Policy ("the Policy").

On 17th August 2004, Veronica Bailey, the undersigned ("the Expert"), having confirmed to Nominet that she knew of no reason why she could not properly accept the invitation to act as the Expert in this case and that she knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question her independence and/or impartiality, was appointed Expert.

4. OUTSTANDING FORMAL/PROCEDURAL ISSUES (if any):

The Respondent has not submitted a Response to Nominet in time (or at all) in compliance with paragraph 5(a) of the DRS Procedure for the conduct of proceedings under the Dispute Resolution Service ("the Procedure") .

Paragraph 15(b) of the Procedure provides, that "if, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or this Procedure, the Expert will proceed to a Decision on the complaint".

Nominet appears to have used all of the available contact details to try to bring the Complaint to the Respondent's attention. There do not appear to be any exceptional circumstances involved and in accordance with paragraph 15(b) of the Procedure a Decision will be made on the Complaint notwithstanding the absence of a Response.

5. THE FACTS:

The Complainant is a manufacturer of contact lenses, lens care products and ophthalmic surgical and pharmaceutical products. It is the proprietor of the trade mark "BAUSCH & LOMB" and has since 1978 held a number of registrations for the trade mark in the United Kingdom. In addition the Complainant in 2003 has two Community trade mark applications, one of which does not predate the registration of the disputed Domain Name.

On 8 August 2003 the Complainant's representative wrote to the Respondent notifying him of the Complainant's Rights in the Domain Name and seeking the transfer of the name to the Complainant.

On 12 August 2003, the Respondent responded by email. He acknowledged the Complainant's rights in the Domain Name but stated that he was not willing to sell or transfer the Domain Name to the Complainant as he had paid several hundred pounds for it and that the Domain Name was originally purchased to launch a web site to sell the Complainant's contact lens products on the web and although the plans were temporarily shelved, he wished to retain the name in case his plans changed.

On 7 October 2003, the Complainant's representative replied stating that the Complainant did not supply their contact lens products for onward sale to the public, other than through specialised outlets with appropriately qualified staff and offered to reimburse the Respondent's registration costs in exchange for the transfer of the Domain Name.

On 8 October 2003, the Respondent replied by email stating that his out of pocket expenses in acquiring the Domain Name were £500.00 and that if the Respondent did not wish to pay that amount, it would have to pay Nominet £750.00 to initiate DRS proceedings or spend thousands on court action.

On 22 October, the Respondent's agent, CHC Internet, emailed Get Lenses, inviting offers to purchase the Domain Name. Get Lenses, a customer of the Complainant, informed the Complainant of the approach.

On 30 October 2003, the Complainant's representative wrote to the Respondent concerning the offer made by CHC Internet to Get Lenses. The letter noted that the going rate for a .co.uk registration was typically less than £50 and that the Complainant was prepared to reimburse this cost. If additional expenses were involved then evidence justifying these would be required. No reply was received and on 5 December 2003 and 14 January 2004 reminders were sent by post to both Respondent and CHC Internet.

On 22 January 2004, CHC Internet replied by email stating that the Respondent had retained CHC Internet to market the Domain Name on its behalf and that the price sought was £495.00 plus VAT. The letter went on to state that "the Respondent paid exactly £495.00 for the domain and does not seek to profit from the sale"

On 6 February 2004, the Complainant's representative wrote by email to CHC Internet requesting a breakdown and proof of the costs of £495.00 plus VAT. On the same day CHC Internet replied stating they "would be happy to provide documentary evidence of our client's costs to the DRS panellist after you have paid the £750.00 plus VAT fee to Nominet to commence the DRS action. As our client is not seeking a single penny over and above his costs requiring the name, the registration cannot be held to be abusive and so consequently you will lose the DRS case... Why not just pay the £495.00 plus VAT and your client can start using the Domain Name immediately, even prior to the completion of the transfer formalities. Or they can pay £750.00 plus VAT and not even secure the domain."

Further emails were exchanged between the parties relating to the actual costs of registering the Domain Name in which the CHC Internet stated that it would produce documentary evidence of the costs of registering the Domain Name after the DRS panellist was appointed

6. THE PARTIES' CONTENTIONS:

Complainant

The Complainant has Rights in the Bausch & Lomb trade mark when the dispute Domain Name was registered. The Domain Name consists of the Complainant's Trade Mark, save that the Domain Name differs only in substituting equivalent word "and" for the ampersand, which cannot be replicated in domain names.

The disputed Domain Name is an abusive registration because it was registered or acquired in a manner which, at the time of registration or acquisition, took unfair advantage or was unfairly detrimental to the Complainant's rights.

By email of 12 August 2003, the Respondent admitted that he knew of the Complainant's rights in the mark Bausch & Lomb that is identical/similar to the Domain Name.

The Complainant has not authorised the Respondent to use its trade mark, nor to register the disputed Domain Name, nor has the Respondent provided any evidence that it has engaged in the sale of optical products or has any competency in this field, nor shown any real demonstrable preparations to use the Domain Name in connection with any genuine offering of goods and services.

The use of the disputed Domain Name by the Respondent would take unfair advantage of and be unfairly detrimental to the Complainant's Rights and is likely to unfairly attract Internet users seeking the Complainant by misleading them into believing the site is linked to or authorised by the Complainant. Use of the disputed Domain Name would take away the Complainant's control over its Trade Mark and would be unfairly detrimental to the Complainant.

The Respondent and/or his "agent " CHC Internet, registered or otherwise acquired the Domain Name primarily for the purposes of selling, renting or otherwise transferring it to the Complainant, for valuable consideration in excess of its out of pocket costs.

The Respondent has engaged in a pattern of abusive domain name registration and is also the owner of orangemobilephone.co.uk ; chasebank.co.uk and chasebanking.co.uk which use the trade marks of Orange Personal Communication Services Limited and J P Morgan Chase and Co., respectively.

The Respondent's conduct has been obstructive in withholding disclosure of evidence supporting the Respondent's actual costs of acquiring the Domain Name until the Complainant had incurred fee of £750 plus VAT to file a DRS proceeding.

Respondent's claimed costs of acquiring the Domain Name are considerably higher than the usual cost of a simple two year registration for a .co.uk domain.

Respondent

The Respondent has not submitted a Response.

7. DISCUSSIONS AND FINDINGS

Burden of Proof

Paragraph 2 of the Policy requires that the Complainant prove on the balance of probabilities that:

i it has Rights in a name or mark that is identical or similar to the Domain Name; and

ii the Domain Name, in the hands of the Respondent, is an Abusive Registration (as those capitalised terms are defined in paragraph 1 of the Policy).

Rights

Rights as defined in paragraph 1 of the Policy "includes, but is not limited, to rights enforceable under English law. However, the Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business".

In determining whether a party has Rights in a domain name the first and second suffixes (.co.uk) should be ignored. The ampersand in the Complainant's trade mark "BAUSCH & LOMB" cannot be replicated in a domain name and the names "Bausch & Lomb" and "Bausch and Lomb" should be considered interchangeable.

The requirement to demonstrate Rights is not a particularly high threshold test. The Appeal Panel found in DRS 00248 Seiko UK Limited v Designer Time/Wanderweb that it was satisfied by showing that the Complainant was duly authorised by the trade mark owner to use the mark and to bring the Complaint.

The Complainant has a number of trade mark registrations in the United Kingdom and has used the mark which is used as the Domain Name (excluding the .co.uk suffix) since at least 1978. In addition, the Respondent acknowledges in his email letter to the Complainant dated 13 August 2003 that the Complainant has rights in the Domain Name.

As the Complainant is the owner of the trade mark which is used as the Domain Name and the Respondent does not dispute the Complainant's Rights I find that the Complainant has Rights in the name or mark for the purposes of paragraph 2 a. i. of the Policy.

Abusive Registration

A Domain Name is an Abusive Registration under paragraph 1 of the Policy if it:

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 takes unfair advantage of or is unfairly detrimental to the Complainant's Rights;

In determining whether the Domain Name is an Abusive Registration an assessment must be made whether the registration or subsequent use "took unfair advantage of or was unfairly detrimental to the Complainant's Rights".

The non-exhaustive list of factors which may be evidence of Abusive Registration is set out in paragraph 3 of the Policy. Those factors relevant to the Complainant's allegations are set out below:

3a...

      i      Circumstances indicating that the Respondent has

registered or otherwise acquired the Domain Name:

A.       primarily as for the purpose 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 out of pocket costs directly associated with acquiring or using the Domain Name;...

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 business 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 is an Abusive Registration, the Complainant can demonstrate that the Respondent is engaged in a pattern of making Abusive Registrations;"

Paragraph 3a i A - Offer to sell

On 8 October the Respondent wrote to the Complainant stating "my out of pocket expenses for acquiring the Domain Name are £500. If you want to pay this to me to settle the matter, then that is acceptable to me. Please do not come back at me with a lower figure. If you do not wish to pay £500 for the certainty of securing this Domain Name for your clients, then pay Nominet £750 for the only chance of getting the Domain Name or even spend thousands on court action."

By email dated 22 January 2003, the Respondent's agent, CHC Internet, wrote to the Complainant's representative as follows:

"We have been retained to market the Domain Name on behalf of Mr Jones and the price that he is seeking is £495.00 plus VAT". .

The email goes on to state:

"Our client paid exactly £495.00 for the domain..."

The Respondent has not provided documentary evidence of the costs of acquiring the Domain Name although CHC Internet's email dated 6 February 2004 states:

"We will be happy to provide the documentary evidence of our client's costs to the DRS panellist after you have paid the £750.00 plus VAT fee to Nominet to commence the DRS action. Why not just pay the £495.00 plus VAT and your client can start using the Domain Name immediately, ...or they can pay £750.00 plus VAT and not even secure the domain."

The Respondent's costs for acquiring the Domain Name as stated in his or CHC Internet's emails varies between several hundred pounds, £500; £495 exactly, and £495 plus VAT. Whilst the variation is small and could perhaps be explained, the Respondent has not filed a Response explaining the variation and has not put any evidence before the Expert as to the documented costs of acquiring the Domain Name.

The Expert is entitled, pursuant to paragraph 15(c) of the Procedure to draw such inference as considered appropriate if the Respondent does not comply with any provision of the Policy. The Respondent's failure to file a Response or produce any evidence of his costs in acquiring the Domain Name is vital, given the variation in the Respondent's stated out of pocket expenses and the typical costs of registering a .co.uk Domain Name, which on the evidence before me is under £50.00 plus VAT. In addition, the sum sought by the Respondent is substantially more than the advertised price of a 2 year registration by CHC Internet (the Respondent's agent) of £19.95 plus VAT.

Taking into consideration:

(i) the typical cost of a 2 year .co.uk domain name registration;

(ii) the Respondent's reluctance to produce documentary evidence of its out of pocket expenses; and

(iii) the repeated proposition that the Compliant should pay £500 (email dated 8 October 2003) or £495 + VAT (email of 6 February 2003) or else pay £750 + VAT for a Nominet Decision,

I find that the Respondent has registered or otherwise acquired the Domain Name primarily for the purposes of selling or transferring the Domain Name to the Complainant for valuable consideration in excess of its documented out of pocket expenses which amounts to evidence of an Abusive Registration as set out in Paragraph 3 a i A of the Policy.

Paragraph 3 a ii Confusion

There is no evidence that the Respondent has used the Domain Name for the purpose or an email or website address but this in itself is not evidence of Abusive Registration. The Respondent has indicated in it letter dated 12 August 2003 that Domain Names was originally purchased to launch a web site to sell the Complainant's contact lens products and although the plans were temporarily shelved, he wished to retain the name in case his plans changed. The Respondent is not authorised to use the Complainant's trade mark and if used in connection with the Domain Name to sell the Complainant's products has the potential to confuse people into believing that the Domain Name is connected with the Complainant. However at this stage the Domain Name has not been used in a way which has confused people as required by Paragraph 3 a ii of the Policy.

Paragraph 3 a iii -Pattern of making abusive registrations

The Complainant contents that the Respondent is engaged in a pattern of abusive registrations and has cited the use of the ORANGE and CHASE trade marks as part of domain names registered in the Respondent's name. It has not been submitted by the Complainant that there has been a finding of Abusive Registration in respect of the domain names which incorporate the ORANGE and CHASE trade marks respectively. In the absence of such evidence it I am unable to determine that the Respondent is engaged in a pattern of making abusive registrations.

Unfair advantage

7.18 The Respondent has admitted that the Domain Name was originally purchased to launch a web site to sell the Complainant's contact lens products. As found in DRS00068 - Nokia Corporation v Andrew Stone "The fact that the Respondent has been given no licence or other authority to use the name creates a presumption that this use takes unfair advantage of the Domain Name".

8. DECISION

For the reasons set out above, the Expert finds that on the balance of probabilities the Complainant has Rights in the name which is identical to the Domain Name and that the Domain Name in the hands of the Respondent is an Abusive Registration and directs that the Domain Name be transferred to the Complainant.

Veronica Bailey

7th September 2004