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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Maximuscle Ltd v CHC Internet [2004] DRS 1840 (10 September 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1840.html Cite as: [2004] DRS 1840 |
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Nominet UK Dispute Resolution Service
DRS 01840
MAXIMUSCLE LIMITED v. CHC INTERNET
Decision of Independent Expert
1. Parties:
Complainant: Maximuscle
Country: GB
Respondent: CHC Internet
Country: GB
2. Domain Name:
promax.co.uk ("the Domain Name")
3. Procedural Background:
The complaint was received by Nominet in full with hardcopies on 18 June, 2004. Nominet validated the complaint and informed the Respondent, by both letter and by e-mail on 23 June, 2004, noting that the Dispute Resolution Service had been invoked and that the Respondent had 15 working days (until 16 July, 2004) to submit a Response. A Response was received on 12 July, 2004 and forwarded to the Complainant on 14 July, 2004, with an invitation for the Complainant to file any reply by 21 July, 2004. No reply was submitted and Nominet duly invited the parties to enter Informal Mediation. No resolution having been achieved, on 6 August 2004, Nominet wrote inviting the Complainant to pay the fee to obtain an Expert Decision pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy ("the Policy"). The fee was duly paid on 23 August 2004.
On 24 August, 2004, 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 the same day.
4. Outstanding Formal/Procedural Issues (if any):
None.
5. The Facts:
The Complainant was evidently incorporated as Maximuscle Limited in 1995. It operates a business providing nutritional supplements directed at sportsmen and women. It has a web store accessible at www.maximuscle.co.uk.
Its products include a protein powder sold under the PROMAX brand. It has a UK Trade Mark Registration 2244961 dating from 8 September, 2000 for the mark PROMAX for "medicated nutritional powders, tablets and capsules; all for bodybuilding and sports nutrition; medicated energy and protein preparations" in Class 5.
The Respondent, CHC Internet, appears to be an unincorporated business (aka. Christopher Holland Consultancy) offering various internet related services, including web hosting and domain name registration (see website at www.thechc.com ).
From the WHOIS records, the Domain Name promax.co.uk was registered for CHC Internet on 17 April, 2003 with the Registrant's Address as indicated for the Respondent above.
6. The Parties' Contentions:
Complainant:
The Complainant has asserted that, for the Domain Name at issue:
i) 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
ii) The Domain Name, in the hands of the Respondent, is an Abusive Registration (Policy Paragraph 2a(ii)).
In support of its case, the Complainant submits that:
"Maximuscle Ltd have Rights in respect of a name and mark which is identical to the domain name: www.promax.co.uk [sic] dated from 08 September 2000. Following a telephone call, the Respondent offered to sell the domain name to Maximuscle.ltd for £950.00 + VAT. We are seeking to have the domain name registration transferred to Maximuscle Ltd."
A hard copy of its trade mark Registration Certificate was posted along with the Complaint.
Respondent:
The Respondent replied that:
"CHC Internet operate the DropCatcher (www.detagged.co.uk) service that monitors and registers premium generic domain names. It is the largest service of its kind in the World and has a global client base that includes the Royal Bank of Scotland, Rolls Royce, Deutsche Telekom, the BBC, Littlewood, Harrods and thousands of other clients throughout the World.
"CHC Internet also use the system to book names on their own account. We are not interested in registering other company's trademarks and when we are made aware of such a registration occurring inadvertently, we will immediately offer to transfer the name to the IP holder at a cost of no more than our costs of acquiring the domain.
"Members of the public and companies can select detagged domain names that are about to be released by Nominet and use our service to monitor them. Our service attempts to register these domain within seconds of them being deleted by the registry. Clients can switch their bookings at any time to other names and when this happens we examine the discarded bookings to see if "the house" would like to continue to monitor the name on its own account.
"In this case the domain name was booked on our system last year and the client switched their booking shortly before the name was released. We decided to keep the booking on the system and booked it to our own account. The DropCatcher system was successful in registering the name and our sales team subsequently sent about 15 emails to companies who had products or services called "promax".
"One of these emails reached the complainant and they telephoned our office to enquire how much the domain was listed at. We quoted them £950 + VAT and they they hung up on us.
"We subsequently researched this company and found that they held a trademark on the term "promax" and we emailed them to offer them the name for a lower price, and one that would not contain any profit element for us.
"The complainant has refused to reply to our correspondence and has subsequently issued these proceedings.
"We fully accept that the complainant has rights in the name in question but we categorically deny that this domain was registered by us abusively. Many DRS and UDRP decisions have held that there is nothing wrong with the buying of domain names specifically to resell, even at a profit, provided nobody's IP rights are infringed. We have a clear policy of offering for sale to IP holders domains that they have demonstrated rights in to us, at a cost of no more than our cost of acquiring them."
7. Discussion and Findings:
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 each Domain Name at issue; and that each Domain Name in this case, 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 PROMAX and that this mark is identical or similar to the Domain Name at issue.
The Respondent itself "fully accepts that the Complainant has rights in the name in question".
The Complainant has an unchallenged trade mark registration for PROMAX and accordingly, for the purposes of the Policy, the Expert agrees that the Complainant does have Rights in this case in respect of a name or mark, which is identical or similar to the Domain Name at issue in this case.
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:
i. Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
A. primarily for the purposes 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 documented out-of-pocket costs directly associated with acquiring or using the Domain Name;
B. as a blocking registration against a name or mark in which the Complainant has Rights; or
C. primarily for the purpose of unfairly disrupting the business of the Complainant;
ii. Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant;
iii. In combination with other circumstances indicating that the Domain Name in dispute is an Abusive Registration, the Complainant can demonstrate that the Respondent is engaged in a pattern of making Abusive Registrations; or
iv. It is independently verified that the Respondent has given false contact details to [Nominet].
Paragraph 3b of the Policy states expressly that:
Failure on the Respondent's part to use the Domain Name for the purposes of e-mail or a web-site is not in itself evidence that the Domain Name is an Abusive Registration.
However, ultimately, 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.
In the present case, the Complainant's case rests on the claim that the Respondent contacted the Complainant and offered to sell the Domain Name to the Complainant for £950.00 + VAT which is certainly somewhat greater than the £5 out-of-pocket costs associated with acquiring the Domain Name, which CHC Internet (as a Member of Nominet and a Tag Holder) would have been charged by Nominet.
For its part, the Respondent has argued that the registration should not be considered as abusive simply because the domain name was bought specifically to resell. The Respondent acknowledges that it originally sought to ask for the quoted £950.00 +VAT from the Complainant, but seeks to be excused from having this held against it, because it claims to have "subsequently researched this company" and offered the domain name again at a lower cost with no profit element. This is held up as evidence of an alleged "clear policy of offering for sale to IP holders domains that they have demonstrated rights in to us, at a cost of no more than our cost of acquiring them."
However, by its own admission, the Respondent first decided to speculatively register the domain name on its own account (allegedly when a client discarded its option) and then equally speculatively hawked it around about 15 companies "who had products or services called "promax"".
Plainly, as the admitted, first-quoted price demonstrates, the Respondent's objective was not to offer the domain to rightful owners of relevant IP rights at cost, but to make a quick killing at a substantial profit, irrespective of the nature or identity of the purchaser. Only when it suspected the game was up in this case did the Respondent bother to investigate whether or not one of its targets might in fact have relevant IP rights, and only then did the Respondent seek to modify its demands.
In operating its business in this fashion, in the Expert's view, the Respondent's actions would appear to fit squarely in the circumstances described in Section 3a(i)(A) of the Policy in that the Respondent has evidently and admittedly acquired the Domain Name primarily for the purposes of selling it to the Complainant (or any one of about 14 others) for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring the Domain Name. Its purported application of a special policy for IP rights holders is "after-the-event" and, in this Expert's opinion, cannot excuse the admitted initial efforts at profiteering.
Consequently, the Expert concludes that the Domain Name has been 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, and that it is an Abusive Registration for the purposes of the Policy.
8. Decision:
Having concluded that the Complainant 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, the Expert determines that the Domain Name, promax.co.uk should be transferred to the Complainant as requested.
Keith Gymer
September 10, 2004