Nominet UK Dispute Resolution Service

 
Nominet UK Dispute Resolution Service
DRS 02822
Eden Aesthetics Distribution Ltd -v- Fightback (National) Ltd
Decision of Independent Expert

a. Parties

Complainant: Eden Aesthetics Distribution Ltd

Country: GB

Respondent: Fightback (National) Ltd

Country: GB

b. Domain Name

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

c. Procedural Background

The Complaint was lodged with Nominet on 27 July 2005. Nominet notified the Respondent of the validated Complaint on 29 July 2005. The Respondent replied to the Complaint on 16 August 2005. The Complainant filed a reply on 25 August 2005. Since a resolution to the dispute was not achieved by mediation, the Complainant paid Nominet the appropriate fee for a decision of an Expert, pursuant to §7 of the Nominet UK Dispute Resolution Service Policy (the "Policy"), on 14 September 2005.

Steve Ormand, the undersigned, (the "Expert") confirmed to Nominet on 14 September 2005 that he knew of no reason why he could not properly accept the invitation to act as expert in this case, and 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.

d. Procedural Issues

The Complainant supplied an extract from a contract between the Complainant and Biosyn Inc to demonstrate that it has an exclusive licence to use the latter's Agera trademark in the UK. This extract did not include the term of the agreement or indeed establish that it is still in force. Accordingly, the Expert requested, on 18 September 2005, pursuant to §13 of the Dispute Resolution Procedure (the "Procedure"), further evidence from the Complainant to demonstrate the term and continuance of the agreement.

The Complainant provided the requested evidence on 21 September 2005 and the Respondent, given the opportunity to respond to this additional evidence, declined to do so before the deadline of 23 September 2005.

e. The Facts

Complainant

Biosyn Inc, a US manufacturer of personal health and skincare products, is the registered owner of the UK trademark Agera. The trademark was filed on 14 January 2003 and registered on 8 July 2003 in the class of cosmetic products, skin cleansers etc. Agera branded products are designed for beauty salons and spas

The Complainant was appointed on 1 June 2003 as the master distributor of Biosyn's products in the UK and the Republic of Ireland. Biosyn granted the Complainant an exclusive, non-transferable and royalty free licence to use its trademarks, logos and trade names, and all derivatives thereof, including Agera and AgeraRx.

The Complainant sells AgeraRx exclusively through medical aesthetic clinics such as the Respondent. The Complainant has used Agera and AgeraRx since July 2003 in marketing and advertising materials.

The Complainant has other Agera based domain names, agera.eu and agera.ie, as well as several AgeraRx domain names including agerarx.co.uk.

Respondent

Stratford Dermatherapy Clinic is a trading name of the Respondent. The Respondent is a customer of the Complainant's and has regularly purchased AgeraRx skincare products since 16 September 2003. The Respondent sells the products to its patients at prices recommended by the Complainant.

The Respondent recognises that the Complainant is the appointed distributor of Biosyn Agera and AgeraRx products in the UK and that those products are beneficial to the day-to-day skin care of their patients and are an important therapeutic vehicle to complement other treatment modalities offered by the Respondent.

The Respondent registered the Domain Name on 2 October 2003.

f. The Parties' Contentions

Complainant

The Complainant asserts:

1. That the Domain Name is identical or similar to a name or mark in which the Complainant has rights because the Complainant:

a. was appointed as master distributor of Agera and AgeraRx products in the UK and Ireland.

b. has an exclusive, non-transferable, royalty-free licence to use the Agera trademark and all derivatives thereof.

c. has advertised and exhibited using the Agera trademark since July 2003.

2. That the Respondent's registration and use of the Domain Name constitute an Abusive Registration because:

a. Around October 2003 the Complainant expressed concern to the Respondent as to its registration of the Domain Name. The Respondent led the Complainant to believe that when it intended to use the Domain Name the Respondent would transfer it to the Complainant.

b. The Complainant requested (by email on 5 July 2005) transfer of the Domain Name since it was about to embark on a marketing campaign utilising the Domain Name. The Respondent refused this request (by email on 8 July 2005). A final request to transfer the domain name was made on 21 July 2005.

c. The Respondent is using the trademark Agera in the Domain Name to direct traffic to its website at www.skincareclinic.co.uk. The Respondent accepts that it does get traffic through the use of the Domain Name and that "the Domain Name has driven a number of patients to its website and as a result have been introduced to a number of different treatments that it offers, some which do not yet appear on the site, but are shortly to do so and which are very high revenue and a valuable addition to the array of treatments that it offers." The Respondent has quantified this at £100,000 future sales over 5 years.

d. The Domain Name was primarily registered on a purely opportunistic basis.

e. The Domain Name is used by the Respondent in a way that has and will confuse people into thinking that it is controlled by the Complainant.

f. Potential AgeraRx customers, when searching for product information, will be significantly confused by the fact that they are directed to an unrelated clinic website.

g. The Agera information contained in the Respondent's website does not relate to the product selection that it sells and that the Complainant offers to medical aesthetic clinics nationwide because it describes the Agera beauty salon products rather than the medical AgeraRx range.

h. The registration of the Domain Name is one of a series of products and trademarks not owned by the Respondent but registered by it as domain names e.g. photoderm.co.uk . PhotoDerm is a registered trademark of Lumenis Ltd.

Respondent

The Respondent asserts that its registration and use of the Domain Name is not an Abusive Registration because:

a. In the late summer of 2003 the Respondent thought that registration of the Domain Name would be beneficial at that time and to future sales.

b. The Respondent created the link to its main website www.skincareclinic.co.uk so that would-be customers/patients could not only see the range of other complementary treatments that it provides, but could learn about the benefits of Agera products and indeed could link to the USA web site www.agera.com for further information.

c. This link is proving to be successful and provides the Respondent with additional business and opportunities to educate its patients as to the benefits of all the treatments that it offers.

d. The Respondent obtained the Domain Name in October 2003 and was made fully aware by the Complainant that it knew that the Respondent had done so.

e. Now some 2 years later, the Complainant, with whom the Respondent has an excellent relationship, both professionally and personally, has asked for the transfer of the Domain Name. The Respondent disputes that it ever gave the intention that it would transfer the Domain Name to the Complainant.

f. The Complainant enquired in July 2005 by telephone as to the sum the Respondent would accept in order to transfer the Domain Name. The Complainant offered to fully finance organisation of the Respondent's website through search engine manipulation to assist in its "business traffic", an offer as yet not accepted.

g. The Complainant's contract with Biosyn Inc states that they "shall acquire no right, title or interest in such Biosyn trademarks, logos or trade names.... and the [Complainant] shall not use any Biosyn trademarks, logos or trade names as part of their corporate or trade name or permit any third party to do so without written consent to do so". The Respondent does not use the word Agera as part of its trade name and is not claiming intellectual property rights to the name. The Domain Name drives sales to the benefit of the Respondent and directly for the benefit of the Complainant in direct sales.

h. The Complainant sells a number of products as well as the Agera range. The specific range is called AgeraRx and it should be noted that the Complainant is the owner of the domain name www.agerarx.co.uk which opens their web site to the general population looking for their product(s).

i. The Complainant has registered or pre-registered a number of web addresses, 14 of the 20 names in fact pertaining to European addresses and not the UK. If there existed intellectual property rights to the Agera or AgeraRx names then why has the Complainant not acquired legal rights to all the available names and for that matter any derivative such as "ageratreatments", which have not been registered.

j. When members of the public search for Agera products many web addresses and practitioners come up, including the Complainant and the Woodford Medical Clinic. Others may well specifically type agera.co.uk in the hope of achieving the same and will be introduced to skincareclinic.co.uk and the other treatments that the Respondent provides plus a direct link to the dot com site in the US.

k. It has spent over £9500 promoting the Agera products and indeed bought an £11,000 medical microdermabrasion machine from the Complainant in 2003, to complement the Agera treatments.

l. Before being aware of the Complainant's cause for complaint the Respondent has used or made demonstrable preparations to use the Domain Name with a genuine offering of goods or services.

m. The Respondent has been commonly known to its patients as legitimately connected with the Domain Name since the patients have been buying Agera products for the last 2 years from it and therefore, by definition, from the Complainant.

n. The Domain Name is generic and the Respondent is making fair and legitimate use of it.

o. The Respondent is not engaged in a pattern of registrations outside the disputed Domain Name in order to confuse people or businesses into believing that the Domain Name is registered to or operated by the Complainant.

p. The Respondent's use of the Domain Name is fair in that it is used solely in tribute to the Agera range of products and not to their detriment.

q. The Complainant has not attempted to, nor has proven, Abusive Registration in the last two years.

Complainant's Reply

The Complainant further asserts that:

a. The Domain Name was unused, not resolving to a website, until around April/May 2005 after a further verbal request for the name to be transferred to the Complainant. At that point the Domain Name record was updated to resolve to www.skincareclinic.co.uk.

b. The Complainant's request for transfer of the Domain Name coincided with a marketing initiative to develop the Agera (non-medical) product range. The Complainant had not formerly pushed ahead with the transfer up until this point because it had received verbal reassurances that the Domain Name would be transferred, and the relationship with the Respondent was a friendly one.

c. It is incorrect to say that the Respondent's patients connect its clinic to the Domain Name because there is no mention of it in the Respondent's adverts and the Domain Name did not, until very recently, resolve to any website.

d. The Respondent's use of the Domain Name is neither legitimate nor fair. Traffic is directed to the skincareclinic.co.uk home page, which relates to a whole range of aesthetic treatments unrelated to Agera.

e. The Domain Name is not generic as this is the registered trademark of a leading skincare company.

g. Discussion and Findings

General

To succeed in this Complaint, the Complainant has to prove to the Expert on the balance of probabilities, pursuant to §2a of the Policy, both limbs of the test that:

1. it has Rights (as defined in §1 of the Policy) in respect of a name or mark identical or similar to the Domain Name; and

2. the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in §1 of the Policy).

Complainant's Rights

The wholly generic domain suffix ".co.uk" is discounted for the purposes of establishing whether the Complainant has rights in a name or mark which is identical or similar to the Domain Name.

The Respondent states that the Complainant has waited two years to request the transfer of the Domain Name and has not attempted to show that the Domain Name is an Abusive Registration during this period. It is not clear what is meant by these statements, save that perhaps the Respondent believes that the Complainant's lack of action is an implied approval of the Domain Name registration and a waiver of the Complainant's rights to bring this Complaint. The Respondent also questions the Complainant's rights in the Agera name by its failure to acquire all available names and derivatives as domain names.

Both of these assertions by the Respondent are irrelevant. The Agera trademark is registered in the UK to Biosyn Inc, predating the Respondent's registration of the Domain Name. The Complainant was granted an exclusive licence to use Biosyn's trademarks for the purposes of marketing and promotion, distribution and sale of Biosyn's products in the UK, which also predates the registration of the Domain Name, and that licence remains in force.

The Expert finds therefore that the Complainant has rights in respect of a name or mark that is identical to the Domain Name.

Abusive Registration

§3a i A of the Policy

It is not clear whether the Complainant's statement that the Respondent primarily registered the Domain Name on a purely opportunistic basis is intended to be an assertion that the Respondent intended to profit from the Domain Name contrary to §3a i A of the Policy.

The Respondent admits that it registered the Domain Name on the basis that it might be beneficial to it in the future. The Respondent also states, in an email to the Complainant, that it now finds itself "in possession of something valuable" and indicates a willingness to consider selling the Domain Name to Biosyn for a sum that could possibly exceed its out of pocket expenses in acquiring or using the Domain Name.

The Expert concludes that the evidence is insufficient to establish that the Respondent's primary purpose when it registered the Domain Name was to profit from it contrary to §3a i A.

§3a ii of the Policy

The majority of the Complainant's assertions fall under §3a ii of the Policy, 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 Respondent concurs with the Complainant on several points: that the Respondent does receive traffic to its own website as a result of the link from the Domain Name; that the Domain Name does introduce would-be customers to all of the Respondent's products and services, not just Agera products; that the Domain Name does generate additional business for the Respondent in all the treatments that it offers; and the value of business the Respondent expects to generate from its use of the Domain Name.

However, the Respondent contends that it is not claiming any intellectual property in the Agera name (and therefore the Complainant is not in breach of the terms of its agreement with Biosyn) and the Complainant benefits from the sales of the Agera and AgeraRx products as a result of the Respondent's use of the Domain Name. It is instructive at this point, in addressing this latter point, to consider the function of a trademark, which is to distinguish the goods or services of one organisation from that of others. The law prevents impairment of this function, such impairment occurring when another organisation uses a similar word, phrase or logo in circumstances such that the public are likely to be confused, or the effect is to harm the distinctiveness or reputation of the trademark. Clearly, if the user of a name, in which another party has rights, confuses a person into thinking he or she is accessing a website that is controlled or operated by the party with those rights, then it is irrelevant whether that party derives any benefit from it.

The Respondent agrees that it profits from its use of the Domain Name and that people arrive at its website by searching on "agera" or by typing www.agera.co.uk. It is highly likely that some users would not know that the Domain Name was not connected with the Complainant and possibly this would lead those people to purchase a service from the Respondent believing it to be a site endorsed by or connected with the Complainant. On the balance of probabilities, the Expert concludes that the Respondent's use of the Domain Name has the potential to cause confusion or has caused actual confusion.

In Seiko UK Ltd v Designer Time/Wanderweb (DRS 00248) the appeal panel states "if there is support in the evidence for the suggestion that the Domain Names make, or are liable to be perceived as making, the latter representation (i.e. that there is something approved or official about their website), this would constitute unfair advantage being taken by Wanderweb or unfair detriment caused to Seiko."

The Respondent's website, accessed via the Domain Name, does represent that there is something approved or official about the site and, furthermore, the Respondent makes little or no attempt to credit the ownership of the Agera and AgeraRx names. Thus, the Respondent's use of the Domain Name takes unfair advantage of, and causes unfair detriment to, the Complainant.

§3a iii of the Policy

The Complainant submits a Whois search result showing that the Respondent has registered a domain name using a trade mark, Photoderm and submits that the Respondent has no rights to use this trade mark. It is assumed that the Complainant believes this to be contrary to §3a iii of the Policy.

The Respondent holds the registration to photoderm.co.uk but the Complainant has not submitted any evidence to show that "photoderm" is a registered trademark and the name of the trademark registrant. The Expert has verified that photoderm is a registered Community trademark held by Lumenis Ltd but there is no evidence to show whether or not the Respondent has a licence to use it.

The Expert concludes that the evidence is insufficient to demonstrate an Abusive Registration contrary to §3a iii of the Policy.

§4 of the Policy

The Respondent asserts that before being aware of the Complainant's cause for complaint the Respondent has used or made demonstrable preparations to use the Domain Name with a genuine offering of goods or services. The Respondent asserts that it has been commonly known to its patients as legitimately connected with the Domain Name since the patients have been buying Agera products for the last 2 years from it.

The Complainant states that the Domain Name was dormant for some 18 months until April/May 2005 when the Complainant requested the transfer of the Domain Name, but provides no evidence to substantiate this. In any event, the Respondent's use of the Domain Name has the potential to or causes actual confusion contrary to §3a ii of the Policy.

The Respondent also asserts that the Domain Name is generic and that it is making fair and legitimate use of the Domain Name since it is used solely in tribute to the Agera range of products and not to their detriment. The Respondent's use of the Domain Name is not a tribute site, it is used for commercial gain. Neither is the name Agera generic, it is a registered trademark.

Conclusion

The Expert finds that on the balance of probabilities the Respondent is using the Domain Name in a way which has confused, or has the potential to confuse, people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant and it has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights in contravention of §1 (i) and (ii) of the Policy and is therefore an Abusive Registration.

h. 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 the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name, agera.co.uk, be transferred to the Complainant.

Signed: Steve Ormand

Date: 3 October 2005