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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Pipette Doctor Ltd v Anachem Ltd [2006] DRS 3951 (9 October 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3951.html Cite as: [2006] DRS 3951 |
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Complainant: Pipette Doctor Limited
Country: GB
Respondent: Anachem Ltd
Country: GB
pipettedoctor.co.uk ("the Domain Name")
The complaint was received by Nominet in full on 1 September, 2006. Nominet validated the complaint and informed the Respondent, by both letter and by e-mail on 4 September, 2006, noting that the Dispute Resolution Service had been invoked and that the Respondent had 15 days (until 26 September, 2006) to submit a Response. No Response was received. Nominet informed the Complainant accordingly on 27 September, 2006, noting that Informal Mediation was not an option in this situation, and inviting the Complainant to pay the fee to obtain an Expert Decision pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy ("the Policy"). The fee was duly paid on 3 October, 2006.
On 4 October, 2006, Nominet invited the undersigned, Keith Gymer ("the Expert"), to provide a decision on this case and, following confirmation to Nominet that the Expert knew of no reason why he could not properly accept the invitation to act in this case and 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, Nominet duly appointed the undersigned as Expert on 5 October, 2006.
None.
The Complainant, Pipette Doctor Limited was incorporated under that name in 1999. It does business in the servicing and calibration of pipettes for laboratory use. It operates a website at www.pipettedoctor.com and has registered trademarks for PIPETTE DOCTOR in the UK (2236470A) and in the EU (CTM1970078).
The Respondent, Anachem Limited was incorporated in 1970. It does business in laboratory services of various sorts, including also pipette servicing and calibration. It operates a website at www.anachem.co.uk.
From the WHOIS records, the Domain Name pipettedoctor.co.uk was registered for Anachem Ltd on 9 June, 2006 with a registrant's contact email address "[email protected]".
Complainant:
The Complainant has asserted that:
1. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name (Policy Paragraph 2a(i)); and
2. The Domain Name, in the hands of the Respondent, is an Abusive Registration (Policy Paragraph 2a(ii)).
In support of its case, the Complainant says
"1. The Complainant has rights in the domain name because:
a) It is registered at companies house under the name of Pipette Doctor Limited and has been since 27th September 1999. [A Companies House printout was attached to the Complaint.]
b) It has the UK trademark to Pipette Doctor and has done since 11th May 2001. [A Trademarks Office printout was attached to the Complaint.]
c) It has the community trademark and has done this since 30th January 2002. [A Trademarks Office printout was attached to the Complaint.]
d) It trades under the name Pipette Doctor and has since September 1999, providing specialist pipette service and calibration services. [Examples of printed advertising material were attached to the Complaint.]
e) Pipette Doctor also trades using www.pipettedoctor.com ."
"2. History between Complainant and Respondant:
The two parties, Pipette Doctor and Anachem Limited, both supply specialist pipette service and calibration services to the same spectrum of customers. Since its inception in 1999 Pipette Doctor has been under a sustained pattern of aggression from the Respondant, Anachem. This culminated in June 2004 when the Advertising Standards Agency upheld a complaint against the Respondant where they were found to be advertising in a way that denigrated the name of Pipette Doctor." [A copy of the ASA adjudication was attached to the Complaint.]
"3. The Domain Name in the hands of the Respondent is abusive because it was:
a) registered to stop me registering it despite my rights in the name.
Anachem Ltd has a service division that carries out exactly the same type of business as Pipette Doctor (details of this can be found at www.anachem.co.uk and clicking on the Pipette Service text). As such Anachem is in direct competition with Pipette Doctor and its registration of the domain name can serve no legitimate purpose other than to prevent Pipette Doctor from registering it."
The Complainant requests that the Domain Name should be transferred to it.
Respondent:
The Respondent made no Response to, and raised no challenge to, any of the facts and evidence submitted by the Complainant.
General
Paragraph 2 of the Policy requires that, for the Complainant to succeed, it must prove to the Expert, on the balance of probabilities, both that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and that the Domain Name, in the hands of the Respondent, is an Abusive Registration as defined in Paragraph 1 of the Policy.
Complainant's Rights
The Complainant in this case has asserted that it has rights in the name and mark PIPETTE DOCTOR and that this name is identical or similar to the Domain Name.
The Complainant has provided evidence that it has Rights in the name as a company name and as a registered trade mark.
Accordingly, for the purposes of the Policy, the Expert concludes that the Complainant does have Rights in this case in respect of a name or mark, which is similar to the Domain Name.
Abusive Registration
The Complainant also has to show that the Domain Name is an Abusive Registration. Paragraph 1 of the Policy defines "Abusive Registration" as a Domain Name which either:
i. was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR
ii. has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.
A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration are set out in Paragraph 3a of the Policy. The most relevant factors in the present case are as set out in Paragraph 3a(i)B & C:
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.
However, the factors listed in Paragraph 3 of the Policy are only exemplary and indicative. They are not definitive. It is Paragraph 1 of the Policy, which provides the applicable definition as indicated above.
The evidence shows that the Domain Name has been used for a webpage at www.pipettedoctor.co.uk, which was simply identified as a "Holding page". There were no perceptible links on this page either to redirect the visitor to the Complainant's active website at www.pipettedoctor.com, or to directly divert the visitor to the Respondent's website at www.anachem.co.uk. A visitor seeking Pipette Doctor in the UK might thereby be misled into believing that the Complainant had no active UK website and go off to find the competitor's website anyway. It is also quite possible that the Respondent will have received emails sent to addresses @pipettedoctor.co.uk, which were meant for the Complainant.
On the evidence, which has not been disputed by the Respondent, the inference must be that the Respondent, as a competitor of the Complainant, has knowingly taken the Complainant's name and used it in the Domain Name for the specific purposes of disrupting or subverting the Complainant's business at least to that extent, and of directly preventing the Complainant from acquiring or using the obvious UK variant, pipettedoctor.co.uk, of its principal domain name, pipettedoctor.com.
It is over eight years since the Court of Appeal, in its leading judgment in the "One In A Million" case (British Telecommunications plc & Others v. One In A Million Limited & Others, [1999] FSR 1), roundly condemned the practice of misappropriating trade marks in which other parties have rights and registering them as domain names. Such practice has routinely been found unacceptable in many subsequent cases, and in many DRS Decisions.
In these circumstances, it beggars belief that any reputable business should still imagine that misappropriating a competitor's trade mark as a domain name, as the Respondent has done in the present case, could be anything other than unfair, and abusive.
The Expert therefore concludes that the Domain Name was registered and has been used by the Respondent in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights and that it is an Abusive Registration for the purposes of the Policy.
Having concluded that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert determines that the Domain Name, pipettedoctor.co.uk, should be transferred to the Complainant.
October 9, 2006
Keith Gymer
