1. Parties:
Complainant: Hygienik Systems Ltd.
Country: UK
Respondent: Hygenic Installations Ltd.
Country: UK
Jointly "the Parties"
2. Domain Name:
hygienik.co.uk and hygieniksystems.co.uk ("the Domain Names")
3. Procedural Background:
Summary of activities:
18/12/2006 Dispute entered into system
22/12/2006 Complaint hard copies received in full
22/12/2006 Complaint documents forwarded to Liquidator of named Respondent
02/01/2007 Liquidator names Hygenic (Clad and Clean) Ltd. as successor company to Hygenic Installations Ltd.
03/01/2007 Complaint forwarded to new Respondent. Extension of time for Response given to 25/01/2007
26/01/2007 Response due date amended by 1 working day because electronic complaint form received not response
26/01/2007 Non-Standard electronic response received by e-mail. Check to see whether annexes are to follow in hard copy
30/01/2007 Respondent chased for confirmation of annexes & hard copy
31/01/2007 e-mail sent to Respondent setting deadline of midday 01/02/2007 to confirm whether they want their non-standard Response used and whether the annexes are to be supplied
01/02/2007 Response hardcopies received
01/02/2007 Respondent confirmed that it was withdrawing the annexes originally included in the Response.
01/02/2007 Response forwarded to Complainant without annexes
12/02/2007 Reply hard copies received
12/02/2007 Mediation initiation documents generated
02/03/2007 Mediation completion documents generated
16/03/2007 Fees for Decision received from Complainant
16/03/2007 Conflict check sent to Mr. Iain M Tolmie
16/03/2007 Mr. Iain M Tolmie selected as Expert
23/03/2007 Mr. Tolmie instructed as Expert
28/03/2007 Expert issues Procedure §13a Direction to the Parties for additional information to be supplied first by the Respondent and then for that reply to be open for comment by the Complainant
28/03/2007 Respondent makes first submission under Procedure §13b which is copied to the Complainant and Expert
03/04/2007 Respondent replies to the Expert's Procedure §13a Direction which is copied to the Complainant and the Expert
10/04/2007 Complainant makes reply to Respondent's reply to Expert's Procedure §13a Direction AND provides a reply to Respondent's first submission under Procedure §13b – both documents are copied to the Respondent and Expert.
11/04/2007 Respondent makes second submission under Procedure §13b which is copied to the Complainant and Expert.
Appointment of Expert
3.1. On the 16th March 2007, I (Iain M. Tolmie, the undersigned, "the Expert") was contacted by the Nominet Dispute Resolution Service ("DRS") and I confirmed to them that:
"I am independent of each of the parties. To the best of my knowledge and belief, there are no facts or circumstances, past or present, or that could arise in the foreseeable future, that need be disclosed as they might be of a such a nature as to call in to question my independence in the eyes of one or both of the parties."
3.2. I was appointed by the DRS as the Independent Expert for this Case as from 23rd March 2007 to respond on or before 6th April 2007 (that date being subsequently amended). This process is governed by the Procedure for the conduct of proceedings under the Dispute Resolution Service ("the Procedure") and the Dispute Resolution Service Policy ("the Policy"). Both of these documents are available for inspection on the Nominet UK website (http://www.nominet.org.uk/disputes/drs).
4. Outstanding Formal/Procedural Issues:
4.1. The progress of this case has been far from routine, and as a result there are a number of procedural issues which need to be clarified and procedural decisions put on record.
Complainant
4.2. It is usual for complaints to be submitted by an individual, or by a director of a company (or similar person) or in some cases by a legal representative of the Complainant. In this case the connection between the signatory of the Complaint as submitted and the named Complainant is unusual. The Complaint is signed by Frank Dillon who is associated in some way with the Internet Service Provider for Hygienik Systems Ltd. (SwishPixel), he is not (apparently) an employee or director of Hygienik Systems Ltd.
4.3. In situations such as this, it would be normal to expect that the Complainant would have appointed (in writing) Mr. Dillon as its agent, since otherwise there is no certainty that the Complaint is properly made or indeed that the purported Complainant is making the complaint.
4.4. After consideration, in this instance I have decided to accept that the Complaint is properly made and to admit the Complaint.
Respondent
4.5. I was not happy that the assumed respondent was in fact the correct respondent. The owner of the Domain Names is clearly registered as Hygenic Installations Ltd. Whilst the Liquidator had replied to Nominet that Hygenic (Clad and Clean) Ltd. were the successor company to Hygenic Installations Ltd., I noted that the transaction covering that transfer took place on 16th March 2004 which was well before the date that the Domain Names were registered. I was not satisfied therefore that the sales of the rights on 16th March 2004 covered the situation that arose on 22nd September 2004.
4.6. In order to clarify ownership I issued a Procedure §13a Direction to the Parties in the following terms.
"This communication is addressed to both Parties in the DRS 04317 by me, Iain M. Tolmie, the Expert.
I am not satisfied that I understand the status of the Respondent in this matter. The Respondent is defined in the DRS Policy as: Respondent means the person (including a legal person) in whose name or on whose behalf a Domain Name is registered and against whom the Complainant makes a complaint.
This Complaint was made against the registered owner of the Domain Names in dispute - Hygenic Installations Ltd. The Response is filed in the name of Hygenic (Clad and Clean) Ltd. who are not the registered owners of the Domain Name.
I therefore request that the Respondent should explain in writing with signature:
(a) why the Domain names were registered in the name of a non-existent company and (b) why the Expert should treat the Respondent and not the named registrant as the respondent for the purpose of this proceeding.
Attention being drawn to the fact that the Domain Name registration took place on 22nd September 2004 and the wind-up of the named registrant took place on 16th August 2004.
This request shall be replied to by the Respondent within four (4) days - to be received by Nominet no later than midnight on 2 April 2007. The reply being copied to the Complainant and thereafter the Complainant may make representations on the content of the Respondent's reply within a further four (4) days from the date that it is communicated to them."
4.7. The response which I received from The Respondent was largely about extraneous matters which were not covered by my request. The only information which was clearly in response to my request for information was a single paragraph:
"With regard to the registration of the domain names as Hygenic Installations Ltd. Our domain name provider, Inphinet of Bradford were simply asked verbally by myself to add these domains to our portfolio which at the time was done in the old name of Hygenic Installations Ltd. This was a simple oversight which will be rectified and amended once the case has concluded."
4.8. In my opinion this fails to answer satisfactorily either question. Registration in a false name may be grounds for complaint, and may invalidate the registration. No supporting statement has been made by Inphinet, and I cannot understand why Inphinet would make the mistake alleged. I would presume that Inphinet handled the transfer of ownership of hygenic.co.uk in March 2004 [see 5.5] and will have billed Hygenic (Clad and Clean) Ltd. for their services at that time and thereafter.
4.9. In this case it seems to me, without better explanation, that the mischief (if any) arises from the use being made of the Domain Names by Hygenic (Clad and Clean) Ltd. – whether or not Hygenic (Clad and Clean) Ltd. is the proper registrant of the names. That being so, and since Hygenic (Clad and Clean) Ltd. have entered a Response, I have decided to treat Hygenic (Clad and Clean) Ltd. as the proper Respondent for this case.
4.10. As to Inphinet being instructed to amend the registration in favour of Hygenic (Clad and Clean) Ltd. subsequent to this Complaint, I shall be reporting the details of the registration problem to Nominet, who may take a different view as to whether the registration can be amended.
4.11. I should make it clear that, apart from the paragraph extracted above, the remainder of the Respondent's response to my request was not relevant to that request and is therefore inadmissible and I shall disregard it in making my Decision.
4.12. The Complainant provided a response to the Respondent's response to my request, however it dealt in its entirety with the extraneous matters raised by the Respondent and is therefore inadmissible and I shall disregard it in making my Decision.
Status of the Response
4.13. The process of entering a Response is normally by means of an on-line form provided on the Nominet website. Thereafter three signed hard copies of the Response and any annexes are required to be posted to Nominet. The Response is not complete until both activities are completed.
4.14. In this case, the Respondent did not follow the standard procedure which resulted in delays and much follow-up activity by Nominet to achieve a completed Response.
4.15. In effect the Response arrived by e-mail on 26th January 2007, and hence has been termed a "non-standard" Response. The annexes were marked for Nominet sight only. All documents lodged as part of the DRS are transparently copied to the other party and the Expert. When notified of this fact, there were further delays whilst the Respondent decided the status of the annexes.
4.16. Finally, and not until 1st February 2007, it was established that the document of 26th January 2007 was to stand as the Response, but that the annexes were withdrawn. The DRS continued the process on that understanding, and I formally accept the Response as submitted by e-mail but without annexes as the formal Response.
Procedure §13b submissions
4.17. In exceptional circumstances it is possible under Procedure §13b for a party to supply additional information to the expert. It is at the Expert's sole discretion whether any such submission is accepted in whole or in part.
4.18. Procedure §13b clearly states that these submissions must be exceptional in nature, and must clearly explain in an initial paragraph why the exceptional need arises and why the Expert should take the contents into consideration.
4.19. The Respondent made 2 Procedure §13b submissions, on 28th March 2007 and 11th April 2007. The Complainant made one Procedure §13b submission on 10th April 2007.
4.20. The Respondent's first submission was not made in the required format and the first few lines of the text (which were sent to me by Nominet instead of the required explanatory paragraph) made it clear that the document was discussing legal issues of intellectual property and "passing off". I am unable to understand why this submission is exceptional and I am only concerned with the operation of the DRS Policy and Procedure. I therefore declined to accept the submission. I have not seen the remainder of the submission and I have not taken it into consideration in my Decision.
4.21. The Complainant's submission was received with his reply to the Respondent's reply to my Procedure §13a Direction. It was in the correct form, but was dealing with matters which had been raised by the Respondent which I had already decided were irrelevant or inadmissible. I was unable to see why this submission was exceptional and I therefore declined to accept the submission. I have not seen the remainder of the submission and I have not taken it into consideration in my Decision.
4.22. The Respondent's second submission was in the correct form, however it sought to reply to issues raised by the Complainant's response to the Respondent's reply to my Procedure §13a Direction and the Respondent's additional Procedure §13b submission. All the matters covered were additional detail to matters that had already been identified as irrelevant or inadmissible. I was unable to see why this submission was exceptional and I therefore declined to accept the submission. I have not seen the remainder of the submission and I have not taken it into consideration in my Decision.
5. The Facts:
5.1. I accept as fact the following:
5.2. On 18th March 1992 Mr. Anthony Docherty became a director of Hygenic Installations Ltd., an existing operational company. As far as I can see the other directors were Mr. Geoffrey Ryan and members of his family.
5.3. Hygenic Installations Ltd. registered a domain name – hygenic.co.uk – on 19th February 1999.
5.4. On or about 11th December 2003 a new company Hygenic (Clad and Clean) Ltd. was registered and Patricia Ryan became a director. Mr Ryan was appointed a director on 28th February 2004.
5.5. On 16th March 2004, Hygenic Installations Ltd. was put into Administration and on that date, by signed agreement with the Administrator, Hygenic (Clad and Clean) Ltd. bought the business assets of Hygenic Installations Ltd., including various intellectual property rights. The ownership of the domain "hygenic.co.uk" passed to Hygenic (Clad and Clean) Ltd.
5.6. On 23rd March 2004 a company Darkhorse Publications Ltd changed directors to Anthony and Catherine Docherty, and on 2nd April 2004 the company name was changed to Hygienik Systems Ltd.
5.7. By this route, and by April 2004, the original company in which Messrs. Ryan and Docherty were engaged had ceased to exist and there were now 2 separate companies in operation, one owned by each of them.
5.8. Hygienik Systems Ltd registered the domain name – hygienik-systems.co.uk – on 10th May 2004.
5.9. Hygenic Installations Ltd. passed into voluntary liquidation and was wound up on 16th August 2004.
5.10. The Domain Names were registered on 22nd September 2004 in the name of Hygenic Installations Ltd. There are no web sites at the Domain Names, they both point to the web site of Hygenic (Clad and Clean) Ltd. – hygenic.co.uk.
5.11. Hygienik Systems Ltd. registered the domain name – hygienee.co.uk – on 21st December 2004.
5.12. It is not disputed that the two companies operate in competition in the same business area. The following brief extracts from the company websites summarise that situation:
5.12.1. Hygenic (Clad and Clean) Ltd. - hygenic.co.uk - "Hygenic was one of the first specialist companies in the UK to offer hygienic walls and ceilings, our full range of products and services includes:
• Hygienic PVC walls and ceilings,
• PVC plastic Cladding wall panels,
• Altro Whiterock alternatives
• Plus many more."
5.12.2. Hygienik Systems Ltd. - hygienee.co.uk - "Hygienik Systems Ltd offers an extensive range of advanced hygienic wall and ceiling systems."
5.13. The domain names hygienik.com and hygieniksystems.com (also registered on 22nd September 2004) point to the Hygenic (Clad and Clean) Ltd. website – hygenic.co.uk.
6. The Parties' Contentions:
6.1. Note that the following documents are extracted from electronic submissions and appear unchanged – the paragraph layout and numbering and any emphasis are mine.
Complainant
6.2. The Complainant's submissions (made on its behalf by a representative) are as follows:
6.2.1. The complainant (Hygienik Systems Ltd) had been trading previously under a different name, but became incorporated under the name Hygienik Systems Limited on 2nd April 2004 (see enclosed Certificate of Incorporation). Under this registered name, the complainant offer hygienic wall and ceiling lining and related hygienic products, operating both a supply and install service to a wide range of markets throughout the whole of the UK.
6.2.2. The domain names which the complainant is disputing were both registered in September later that year, at a time when Hygienik Systems Ltd were already trading under their company name. Hygienik Systems were known of by the respondent and are in direct competition in the same industry. The respondent has registered both of the domain names in the knowledge that they are the ideal domain names for the complainant, in an attempt to prevent the complainant from being able to register a domain name which matches their company name, thus hindering the complainant's ability to operate the internet marketing aspect of their company to the best levels possible.
6.2.3. The complainant believes beyond all reasonable doubt that by securing these domain names, the respondent has undertaken an abusive registration with no intention other than to direct potential business away from Hygienik Systems Ltd, to confuse potential customers who unknowingly enter one of these domain names into their web browsers and to promote on the search engines to appear at the top of search results for keywords such as 'hygienik'.
6.2.4. Upon entering any of the domain names into a web browser, the viewer is redirected to the respondent's website (hygenic.co.uk) which is under different branding, a completely different company name and a similar range of products and services. On the respondent's website, to add insult to injury, there are slanderous comments aimed against the complainant in a further attempt to convince potential customers looking for the complainant's business into having a second thought.
6.2.5. In retrospect the complainant cannot feasibly estimate the extent of losses of business due to this malpractice by the respondent, but is adamant that damage has been, and will continue to be done as a direct cause of the abusive use of the domain names in question.
6.2.6. Hygienik Systems Ltd clearly have the rights to the domain names in question by virtue of their prior incorporation under the name matching the domain names in question, and have also spent relatively large amounts of time and money on the branding process and raising awareness of their branding and company name. As I enclose various items of business stationary, documents, brochures, certificates and promotional merchandise all branded with the name Hygienik Systems Ltd, it is plain to see the extent that the complainant has gone to in replicating and distributing their branding to their clients, potential clients and associates.
6.2.7. It has on many occasions become apparent that clients or associates consulting with Hygienik Systems Ltd have later typed in one of the domain names in question without thinking otherwise, and have been taken to the respondent's website in an attempt to be tricked by the slander and offerings of similar services. This is costing the complainant time, money, customers and embarrassment. By virtue of their registered company name, it goes without saying that certain people will often enter these domain names into their web browser in an attempt to find the complainant's website. It is also true that the alternative domain name which Hygienik Systems Ltd have resorted to using is always going to be more difficult to promote and enforce with their branding, as the two do not tie in properly.
6.2.8. The complainant believes they have the rights to this asset to put a stop to this awkward situation and streamline their company name with their company email addresses and website address. As the complainant has become aware of clients and associates typing in the domain names in question by accident or unknowingly, they are also of the thinking that email enquiries and prospective clients and contracts could quite easily have been sent the same way, and the respondent will be collecting and acting upon such enquires. This in turn is another aspect of the abusive registration aimed at jeopardising the success and sustainability of Hygienik Systems Ltd.
6.2.9. Although this potentially priceless asset of Hygienik Systems Ltd was restricted from their possession a long time ago, and at an early point in the history of the complainant under their new name, the detrimental effects of this abusive registration will surely become more substantial as the complainant continues to expand on an ongoing basis. Because of this, the complainant now feels it has become imminent that the domain names in question be transferred to their control as their rightful asset to allow confident and justified expansion of their internet marketing campaign. As the range of promotional merchandise and printing enclosed will show, Hygienik Systems Ltd are forced to display their domain name larger than necessary to make a point of the fact that it doesn't match the company name as you would expect. In turn, the complainant believes that this is also detrimental to the fluidity and success of their marketing communication, as it is effectively a case of the recipients of their marketing being in two minds as to what name to remember.
6.2.10. On behalf of the complainant, we request that this situation be remedied by a transferral of both of the domain names in question to the complainant's domain name registrar, with the IPS Tag '123-REG'. The complainant can also confirm that they have already proceeded with legal actions via their appointed solicitor, who in turn advised that Nominet's Dispute Resolution Service was to be pursued before further action was taken.
Respondent
6.3. The Respondent's submission (prepared and submitted by its legal advisors) is as follows:
6.3.1. The Respondent (Hygenic (Clad & Clean) Limited) received the Complaint on 4/1/07.
6.3.2. The Respondent objects to the Complaint and asks that the Expert does not grant the Complainant the remedy that he has asked for.
6.3.3. The correct name of the Registrant is Hygenic (Clad & Clean) Limited. The name given on the complaint is that of a company now in liquidation.
6.3.4. A Director of the Respondent, Geoff Ryan, was formerly in business with a Director of the Complainant, namely Tony Doherty. The 2 gentlemen traded as Hygenic Installations Limited, which was put into liquidation by the Directors Geoff Ryan and wife Patricia purchased the goodwill of the company and all the intellectual property from the Liquidators. They legally own the copyrights to drawings, telephone numbers web site domains associated with Hygenic Installations Ltd.
6.3.5. The Respondent began trading under its present name and from its present address early in March 2004, supplying specialist wall and ceiling linings. Promotional material (a copy of which is attached hereto and which included reference to a new system developed by the Respondent known as "Hygeinikits" sic. [Note. This is the material referred to in 4.16 above and which was withdrawn by the Respondent]) was sent to the Respondent's customers in the week commencing 22/3/04. This was before the incorporation of the Complainant on 2/4/04.
6.3.6. The domain names were registered with the promotion of the Hygienikit system in mind. Further or alternatively, the Respondent was aware of the Complainant's intention to pass itself off as the Complainant and registered the domain names with this in mind as a protest site, which it is submitted it was entitled to do in the circumstances.
6.3.7. In the premises, the Respondent has used or made demonstrable preparations to use the domain names in connection with a genuine offering of goods or services and/or is legitimately connected with a mark which is similar to the domain names (i.e. the Complainant is known as "Hygenic" and sells products part of the Hygenic brand, cf. "Hygienik") and/or has made fair use of the domain names.
6.3.8. The Complainant has produced no evidence that people or businesses are confused into believing that the Domain Names are registered to, operated or authorised by, or otherwise connected with the Complainant. The Respondent is not aware of any of its customers mistakenly believing that in accessing the domain names and/or communicating with the Respondent they were in fact dealing with the Complainant. In particular, the Respondent has had no requests for products supplied by the Complainant. Indeed, it is the Respondent's belief that customers have in the past mistakenly believed that the Complainant to be in some way connected with the Respondent.
6.3.9. The Respondent notes the delay in making this complaint (The Domain Names have been registered to the Respondent for in excess of 2 years) and would suggest that this in itself indicates that the Respondent's registering of the Domain Names has had no discernible adverse impact on the Complainant. It is further noted that the Complainant has its own distinctive and memorable domain name registered (hygienee.com) and that it has not registered "hygieniksystemslimited" as a Domain Name.
6.3.10. The Respondent denies that it has completed an Abusive Registration. The Respondent contends that the Complainant has in fact sought to pass its goods and services as being those of or in some way connected with the course of trade of the Respondent. The Complainant cannot, it will be argued, have Rights in a name that in itself gives rise to a cause of action in passing off. Notwithstanding the aforesaid, by way of compromise, the Respondent is prepared to offer to put on its website a notice to the effect that it has no connection whatsoever with the Complainant.
Complainant's Reply
6.4. The Complainant has made a Reply in the following terms:
6.4.1. On behalf of the complainant (Hygienik Systems Ltd), we would like to offer this further response to the respondent's reply dated 29th Jan 2007.
6.4.2. The complainant is somewhat disillusioned by the mention of 'hygienikits' which are claimed to be mentioned in promotional material included with the response. The respondent's reply didn't contain any supporting documentation or material. Furthermore the complainant believes the claim regarding 'hygienikits' to be grossly immaterial. There is no reference on the respondent's website to 'hygienikits' and indeed the domain names themselves, hygienikits.com and hygienikits.co.uk are both available to register. Surely the respondent would have registered these domain names aswell if there was any truth in their claim that the disputed domain names were indeed bought to promote this seemingly non-existent product.
6.4.3. The complainant would also like to point out how the claim to have commenced advertising and promoting a product called 'hygienikits' just 2 weeks prior to the company Hygienik Systems Ltd becoming incorporated is not only a mistruth, but as it is also a very convenient timeframe to suggest, giving more weight to the argument that this claim has been fabricated.
6.4.4. The complainant is determined that no physical evidence could possibly be manifested to back up these claims. Hygienik Systems Ltd has done nothing to suggest any link to the respondent in any way at any time. On the contrary, the respondent is responsible for any and all suggested links between the two companies by firstly registering the most ideal domain names which should be important assets to the complainant. Secondly the respondent has created news stories prominently on their website in an attempt to tarnish the reputation of the complainant. Indeed the complainant has felt forced into a drastic change of direction regarding their intended internet campaign just to steer clear of the effects of the respondent's abusive registration of domain names.
6.4.5. To contest the arguments based on the timeline of events, please refer to the following:
6.4.5.1. TIMELINE OF EVENTS The following time-line will help to illustrate this sequence of events, and can be confirmed using WHOIS lookups:
• 02 April 2004 The complainant is incorporated under the name of Hygienik Systems Ltd.
• 10 May 2004 The complainant purchases the following domain name before discussing their in-depth internet campaign a website design/internet company: hygienik-systems.co.uk #
• 22 Sep 04 The respondent registers the following domain names to match the complainant's company name, since they did not register each and every combination of their company name. hygienik.co.uk hygieniksystems.co.uk
• 21 Dec 04 Upon speaking to a website design/internet company, the realisation that the respondent has registered similar domain names to those in the possession of the complainant, and indeed the complainant's registered company name, Hygienik Systems Ltd are forced to take a drastic change of direction and obtain a unique domain name, hygienee.co.uk, in order to minimise the extent of damage and confusion the respondent's abusive registration would have caused. As it will be well known to anybody familiar with domain names, two words with a dash in-between can easily be mistakenly input without the dash by many web users. Because of this, Hygienik Systems Ltd had no choice but to give up promoting a domain name they possessed which had the closest match to their company name, in fear of this happening.
6.4.6. The complainant finds the respondent's claim (section 8) that customers have in fact believed that the complainant is connected with the respondent only helps to illustrate the fact that the respondent has created this impression by the actions we are disputing. With regards to giving evidence of customers of the complainant experiencing confusion while locating the website of Hygienik Systems Ltd, and ending up viewing the respondent's website, the complainant has knowledge of this happening on an increasingly more frequent basis as their operation expands. Evidence of such a happening could surely only be a personal statement from a customer and the complainant refuse to involve their customers in this dispute. However, the complainant challenges anybody to dispute the fact that when looking for a company website, you would quite feasibly go straight to your web browser and type in the company name with a .co.uk extension at the end. This has undoubtedly happened countless times.
6.4.7. The complainant too is aware of the length of time which has elapsed since these registrations took place, and would like to point out that the Nominet Dispute Resolution was not known to them initially, so without knowing what action could be taken, no action was taken immediately. The complainant fails to see the relevance of this comment, but can also confirm that initially they were a smaller company starting up in business with plenty to focus on. The abusive domain name registrations in question were put to one side. As the complainant expanded, it became more financially viable to launch a dispute regarding the domain names. Furthermore the adverse impact the domain name registrations had on the complainant became more noticeable and more imminent as their operations expanded. Hygienik Systems Ltd have now reached a decision whereby they wish to challenge this wrong-doing.
6.4.8. The complainant doesn't wish to end up in a petty argument, but the domain name hygieniksystemslimited.co.uk is not registered as there is no purpose in having 'limited' at the end of one's domain name, and certainly not if this alone was the only domain name in their possession. The complainant protests to the respondent putting any sort of notice mentioning the complainant, as the complainant does not wish to be linked to or belittled by the respondent in any further way. This is the sort of thing the complainant is trying to get away from. The complainant does not, and never has tried to pass themselves off as anything to do with the respondent. The complainant would be doing nothing to connect itself to the activities, products and/or services of the respondent by possessing the domain names in question, but justice would be done. Hygienik Systems Ltd has rights to the domain names to continue to operate their company under their own identity.
6.4.9. Finally the complainant and myself, Frank Dillon, acting on behalf of the complainant would like to state that we are not solicitors and are not using solicitors to dispute these domain name, but rather we are honest people stating the truth of matters. We feel strongly about the complainant's rights to the domain names, and would not be involved in such a dispute if we didn't feel that it was justified.
7. Discussion and Findings:
Registering Domain Names in the ".uk" registry
7.1. For simplicity and for the convenience of potential registrants of the many thousands of Domain Names registered each day, Nominet operates an automated "first come first served" policy in the registration of domain names. Names are deemed available if nobody else has previously registered them. The Respondent registered available names on this "first come first served" basis.
The Dispute Resolution Service, Policy and procedure
7.2. Nominet through its Dispute Resolution Service provides a simple and accessible administrative procedure for dealing with the majority of straightforward mistakes or abuses which can occasionally arise (as explained in Nominet's DRS Policy and Procedures). It is worthy of note that this occurs in only about 0.05% of the total registrations. This administrative procedure is limited in its scope by the defined Policy and Procedure and is not (for example) a suitable forum for arguing intellectual property law or potential offences such as "passing off" and particularly where the factual background is complex.
7.3. The Respondent undertook the condition of complying with the DRS when it registered the Domain Name. The Complainant undertook to comply with the DRS Policy when submitting its complaint.
7.4. The Nominet web site contains extensive help for complainants and respondents and explains clearly how to submit a complaint or response. It gives clear reminders of what appropriate evidence should be submitted. It also makes it clear that it is a complainant's responsibility to prove his case, and provides examples of how that might be done.
7.5. Despite the attempts to introduce additional materials [§4.19] this Decision has considered only the formal documents required by the Procedure.
Burden of Proof
7.6. In order for a complainant to succeed he must (under Paragraph 2 of the DRS Policy) prove to the Expert, on the balance of probabilities, both:
i that he has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
ii that the Domain Name, in the hands of the Respondent, is an Abusive Registration as defined in Paragraph 1 of the Policy.
7.7. Rights are defined in the Policy as:
Rights includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business;
Complainant's Rights
7.8. The Complainant has supplied details of its incorporation and a number of annexes showing business stationery, price lists, membership of trade bodies and advertisements showing examples of work for named clients.
7.9. It is clear that the Hygienik Systems Ltd. business is in operation and has been for some time. I therefore accept that the Complainant has established rights in its corporate name from its use of that name.
7.10. The rights test is deliberately a low hurdle. It should be remembered that the rights may not be exclusive. Simply having "rights" in a name does not automatically imply the right to ownership of any domain name which may be based upon or include that name. It is possible for multiple companies to have similar business names and all could make claim to a particular domain name on that basis.
7.11. In this case the Complainant's company name Hygienik Systems Ltd. is the same as one of the Domain Names – hygieniksystems.co.uk – taking into account that domain names can only be expressed in lower case, punctuation and blanks are not permitted and that the ".co.uk" is generic. The other Domain Name – hygienik.co.uk – is similar to the Complainant's company name.
7.12. The second sentence of the DRS Policy's definition of Rights expressly excludes consideration of rights in names, which are wholly descriptive of the Complainant's business. The Complainant's name is highly suggestive, but, being an obvious misspelling, is not wholly descriptive of the Complainant's business.
7.13. The Respondent has argued that the Complainant's adoption of its corporate name was unlawful in that it invades the Respondent's rights. The Respondent asserts that one cannot acquire rights in an unlawfully adopted name [see the Response §6.3 seq. and particularly §6.3.10]. As indicated below, I am not in a position to assess the strengths and weaknesses of this argument, hence my ultimate decision.
7.14. But for the Respondent's arguments summarised in §7.13 above, I would have had no hesitation in finding that the Complainant has established Rights in respect of a name or mark which is identical or similar to the Domain Name. Given my ultimate decision, it is unnecessary for me to attempt to come to a concluded view on the issue
Abusive Registration
7.15. Whilst I have come to no concluded view as to the Complainant's Rights, for completeness I will now examine its allegations of an Abusive Registration by the Respondent.
7.16. An Abusive Registration is defined in the Policy as follows:
Abusive Registration means 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;
7.17. This Complaint is clearly part of a much wider dispute which probably has its roots in events preceding the wind-up of Hygenic Installations Ltd. The Parties have taken every opportunity in this DRS case to elaborate on the details of the matters in dispute between them and to throw mud at each other, and there is clearly a complete rift between them.
7.18. My duty is to ignore the extraneous material and to decide this case based upon the DRS Policy and Procedure.
7.19. The Complainant has made two key points in the Complaint:
7.19.1. The respondent has registered both of the domain names in the knowledge that they are the ideal domain names for the complainant, in an attempt to prevent the complainant from being able to register a domain name which matches their company name.
7.19.2. The complainant believes beyond all reasonable doubt that by securing these domain names, the respondent has undertaken an abusive registration with no intention other than to direct potential business away from Hygienik Systems Ltd, to confuse potential customers who unknowingly enter one of these domain names into their web browsers and to promote on the search engines to appear at the top of search results for keywords such as 'hygienik'.
7.20. In effect these points are directed to the Policy §3 which sets out:
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 primarily:
A [……];
B. as a blocking registration against a name or mark in which the Complainant has Rights; or
C. [……];
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;
7.21. With reference to §7.19.1, in order to make the case of "blocking" (Procedure §3aiB) the Complainant would need to show evidence that the Respondent at the time of making the registration had knowledge of the Complainant and/or his business. The Complainant has not produced any evidence of this, but circumstances could indicate that, even if the Respondent was not aware of the Complainant's business at the time of its incorporation (April 2007), it may have become aware in the 6 months following before the Domain Names were registered (September 2007). I say this because they operate in the same business area and from the same town. This is not conclusive without some other supporting evidence, since I have no idea how long it took the Complainant to set up its business and the Complainant has supplied no information as to when effective trading began.
7.22. With reference to §7.19.2, the Complainant alleges that the Respondent is unfairly confusing people or businesses and is drawing away its business by directing the Domain Names, which a customer of the Complainant might reasonably assume were associated with the Complainant, to the Respondents website (in effect breaching Policy §3aii). The Complainant produces arguments as to why the Respondent's registration of the Domain Names is abusive, and is clearly offended by the situation, but produces no evidence to support the arguments.
7.23. The Complainant has made the decision not to seek evidence of confusion from its customers: Evidence of such a happening could surely only be a personal statement from a customer and the complainant refuse to involve their customers in this dispute [Reply §6.4.6].
7.24. The Respondent states: "The correct name of the Registrant is Hygenic (Clad & Clean) Limited. The name given on the complaint is that of a company now in liquidation". I do not accept that assertion – see §4.5.
7.25. The Respondent in its Response has entered a "scatter gun" defence, the key parts of which are:
7.25.1. The domain names were registered with the promotion of the Hygienikit system in mind.
7.25.2. Further or alternatively, the Respondent was aware of the Complainant's intention to pass itself off as the Complainant and registered the domain names with this in mind as a protest site, which it is submitted it was entitled to do in the circumstances.
7.25.3. In the premises, the Respondent has used or made demonstrable preparations to use the domain names in connection with a genuine offering of goods or services and/or is legitimately connected with a mark which is similar to the domain names (i.e. the Complainant is known as "Hygenic" and sells products part of the Hygenic brand, cf. "Hygienik") and/or has made fair use of the domain names.
7.25.4. The Respondent contends that the Complainant has in fact sought to pass its goods and services as being those of or in some way connected with the course of trade of the Respondent
7.25.5. The Complainant cannot, it will be argued, have Rights in a name that in itself gives rise to a cause of action in passing off.
7.26. The wording of the relevant part of the Policy is:
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 aware of the Complainant's cause for complaint (not necessarily the 'complaint' under the DRS), 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. [……] ;
b. Fair use may include sites operated solely in tribute to or in criticism of a person or business.
7.27. I find the "Hygienikit" argument convenient for the Respondent, and since there is no evidence presented to me that these "kits" were marketed or ever existed, I am not inclined to give the idea much weight. Note that such evidence as there may have been was withdrawn by the Respondent [§4.16].
7.28. As to any idea of being a "protest site" [Policy §4aiC and 4b], that does not sit well with the fact that the Domain Names simply point to the Respondent's commercial web site. Had there been no website, or alternatively had there only been fair comment on a website restricted to criticism of the Complainant my view might have been different – though using the unadorned name of the object of criticism as the domain name is generally not approved. However, under these circumstances I do not regard the website (which is a commercial website) as being a legitimate criticism site.
7.29. As far as §7.25.3 is concerned, the wording of the Policy §4ai has an introductory sentence:
4ai Before being aware of the Complainant's cause for complaint (not necessarily the 'complaint' under the DRS), 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;
7.30. The emphasis being on "before being aware of the Complainant's cause for Complaint". Much depends here on interpretation. When did the Respondent become aware of the Complainant's activities? Neither party has offered evidence on this issue. However it is clear that the domain name used by the Respondent for its main website "hygenic.co.uk" is similar to the Domain Name "hygienik.co.uk" – both being misspellings of "hygienic". It is clear that "hygenic.co.uk" was registered in 1999, and that the Respondent had made legitimate use of that domain name from March 2004.
7.31. I have to take cognisance of the fact that Hygenic Installations Ltd. (now defunct) and Hygenic (Clad and Clean) Ltd. were both in operation before the existence of Hygienik Systems Ltd.. This dispute is aggravated by the fact that the Complainant chose to set up in direct competition with the Respondent with a similar company name. The Respondent clearly meets the test for Policy §4aiB: Before being aware of the Complainant's cause for complaint (not necessarily the 'complaint' under the DRS), the Respondent has been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name [my emphasis]. There can be no doubt that, at the time of the company registration, Hygienik Systems Ltd. must have known about the existence of Hygenic (Clad and Clean) Ltd. and its website.
7.32. In my view, the main nub of the dispute is set out in paragraphs §7.25.4 and §7.25.5. This is in reality a dispute about ownership and use of intellectual property on a larger scale than is covered by the DRS. Essentially the argument is about whether it was legitimate for Hygienik Systems Ltd. to set up in competition with Hygenic (Clad and Clean) Ltd., and the manner in which it did so. These questions are outside my competence to decide. They would require full disclosure and evidence being presented and tested before a formal tribunal.
7.33. In this instance I must apply the DRS Policy and Procedure, and it is a clear requirement that the Complainant must make his case. In my judgement the Complainant has not offered the necessary evidence to carry his case, and that the Respondent has cogent points in its defence.
8. Decision:
8.1. For the reasons set out above I find that the Complainant has failed to satisfy me that it has the relevant Rights nor has it shown that the Domain Names, in the hands of the Respondent, are Abusive Registrations, as required by the DRS Policy. I should stress that in so finding, I am not making any concluded finding on the facts against the Complainant: I am merely underlining that the factual and legal background to this Complaint is highly complex and not suitable for determination under the DRS Policy.
8.2. I therefore determine that there should be no action taken on the Domain Names.
Date: 19th April 2007
Iain M. Tolmie ("the Expert")