Complainant: Eden Aesthetics Distribution Ltd
Country: GB
Respondent: Fightback (National) Ltd
Country: GB
agera.co.uk (the "Domain Name")
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.
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.
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.
Complainant
The Complainant asserts:
That the Domain Name is identical or similar to a name or mark in which the Complainant has rights because the Complainant:
That the Respondent's registration and use of the Domain Name constitute an Abusive Registration because:
Respondent
The Respondent asserts that its registration and use of the Domain Name is not an Abusive Registration because:
Complainant's Reply
The Complainant further asserts that:
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:
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.
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