Bravissimo -v- Gander [2002] DRS 661 (15 December 2002)

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The Complaint was lodged with Nominet on 18 October 2002. Nominet validated the Complaint and notified the Respondent on 22 October 2002 and informed the Respondent that it had 15 working days within which to lodge a Response. The Respondent failed to respond. Mediation not being possible in the circumstances, Nominet so informed the Complainant and on 25 November 2002 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the Nominet Dispute Resolution Service Policy (“the Policy”).

Sallie Spilsbury, the undersigned (“the Expert”) has confirmed to Nominet that she knew of no reason why she could not properly accept the invitation to act as Expert in this case and further confirmed that she knew of no matters which ought to be drawn to the attention of the Parties which might appear to call into question her independence and impartiality.

Under Paragraph 5a of the Dispute Resolution Service (“the Procedure”) the Respondent was required to submit a Response to the Complaint to Nominet by 13 November 2002. The Respondent has failed to do so.

If, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in this Policy or Procedure, the Expert will proceed to a Decision on the Complaint.

Are there exceptional circumstances which would suggest that it is not appropriate to proceed to a Decision?

It is the view of the Expert that there are no exceptional circumstances. The Respondent has made no attempt to explain its lack of response and there is no evidence to suggest that anything exceptional has occurred.

The Expert is accordingly authorised under the Procedure to proceed to decide the Complaint. Under paragraph 16a of the Procedure the Expert should reach a decision based on the Parties’ submissions (which consists of the Complaint and its Annex in this case) and the Policy and Procedure. In the absence of any exceptional circumstances the Expert is also entitled to draw such inferences from the Respondent’s non-compliance with the Policy or Procedure as she considers appropriate (paragraph 15c of the Procedure).

The Complainant owns the trade mark for the word BRAVISSIMO registered at the UK Trade Marks Registry on 2 June 1998 as a series of two marks (one stylised and the other word-only) under number 2168205. The registration is in respect of articles of outer clothing, underwear and swimwear all in class 25 of the Trade Marks Register. In addition the Complainant appears to use the domain name bravissimo.com (no details about this have been produced).

The Complainant has provided no further information about its activities but a search at Companies House shows that the Complainant was incorporated on 10 February 1997 and that the nature of its business is the retail sale of clothing and retail sale via mail order houses. The Complainant is not shown as being a dormant company. The accounts filed with Companies House are apparently up-to-date.

There is very little information about the Respondent before the Expert. The Complainant simply asserts that at the time of registration of the Domain Name the Respondent’s address was also the address of a former competitor of the Complainant, Bust Shop. Bust Shop is described as having gone “into liquidation” in December 1998.

The Respondent registered the Domain Name on 24 March 1998. The registration was last updated on 25 June 2002. The registration is in the name of the Respondent personally, not Bust Shop.

There is no evidence before the Expert that any communication has taken place between the Parties in respect of the Domain Name.

The Complainant contends that it has rights in respect of a name or mark which is identical or similar to the Domain Name. In support of this claim it relies on the trade mark registration for the mark BRAVISSIMO. The Complainant produces no other evidence about the length and extent of its use of the Bravissimo mark.

Pointing to the fact that the Respondent does not operate a web-site at www.bravissimo.co.uk, the Complainant asserts that the Domain Name is an Abusive Registration in the hands of the Respondent.

(i) The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

(ii) The Domain Name, in the hands of the Respondent, is an Abusive Registration.

The onus of proving both of the above elements is borne by the Complainant who must prove them on the balance of probabilities (Clause 2b of the Policy).

The term “Rights” is defined by the Policy to include, but not be limited to, rights enforceable under English law but the term does not extend to a name or term which is wholly descriptive of the Complainant’s business.

(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.

The Complainant has a UK trade mark registration No 2168205 consisting of the word BRAVISSIMO. There is no evidence before the Expert of any relevant disclaimers applying to the registration.

The Expert is of the view that the trade mark registration for the word mark confers Rights on the Complainant in the word Bravissimo. The Complainant is accordingly able to establish for the purposes of the Policy that it now owns the requisite Rights in the Bravissimo mark by virtue of its trade mark registration.

The first criterion of the Policy is accordingly satisfied on the basis of the trade mark registration of 2 June 1998.

The Complainant has however produced no evidence to support a finding that it owned rights in the Bravissimo mark which pre-date the trade mark registration on 2 June 1998. This factor becomes relevant in the context of establishing whether the Domain Name is an Abusive Registration in the hands of the Respondent.

Abusive Registration is defined by reference to two alternative limbs relating to (a) registration or acquisition of the Domain Name on the one hand and (b) use made of the Domain Name on the other.

(i) Registration or acquisition in a manner which at the time when the registration or acquisition took place took unfair advantage or was wholly detrimental to the Complainant's Rights.

The Domain Name was registered on 24 March 1998. The Expert must therefore consider whether the registration took unfair advantage or was detrimental to the Complainant’s Rights at that date.

As stated above the Rights which the Complainant has established in the Bravissimo mark came into being at the date of its trade mark registration on 2 June 1998. The trade mark registration post-dates the registration of the Domain Name (which took place on 24 March 1998) by a few weeks.

For the reasons stated above the Complainant has not established that it owned any rights in the Bravissimo mark at the time of the Respondent’s registration of the Domain Name. It therefore follows that the Respondent’s registration in March 1998 did not at that time take unfair advantage of nor was it wholly detrimental to the Complainant’s Rights. At the time of registration of the Domain Name the Complainant’s Rights have not been proved to exist.

Even if this is not correct there is no evidence before the Expert to support a finding that the registration of the Domain Name was abusive.

Clause 3 of the Policy provides a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration. The factors which may be relevant to the registration or acquisition of the Domain Name are as follows:

There are 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 Respondent.

(A) There is no evidence that the Respondent approached the Complainant or anyone else at any time following registration of the Domain Name with an offer to sell or transfer the Domain Name.

(B) There is nothing before the Expert to indicate that the Domain Name registration was secured as a blocking registration to prevent the Complainant from securing the registration.

( C) There is no other evidence before the Expert from which the Respondent’s motivations for registering the Domain Name may be inferred, save for an indication that at the time of registration the address given for the Respondent was also the address of a competitor of the Complainant. No further information is given by the Complainant to explain the apparent connection between the Respondent and this competitor. The Expert finds that the Complainant’s bare assertion of the sharing of the address does not in itself give rise to a presumption that the Respondent’s intention in securing the registration was abusive for the purposes of the Policy.

Although the Policy describes the above list of factors as non- exhaustive the Expert is unable to locate anything in the Complainant’s submissions which allow for a wider inference of bad faith on the part of the Respondent at the time of registration.

The Expert accordingly finds on the basis of the evidence which is currently available that the registration of the Domain name was not abusive.

Use of the Domain Name

The second way in which a registration of a Domain Name may be abusive relates to the use made of the Domain Name. The Policy states as follows in relation to Abusive Registration of a Domain Name:

(ii) has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.

The Complainant has provided no evidence of any use of the Domain Name by the Respondent. Indeed the Complainant bases its case on the fact that no web-site is currently operating at the www.bravissimo.co.uk site. The Complainant does not assert that the Respondent’s registration of the Domain Name has caused any confusion. Nor does the Complainant assert a pattern of Abusive Registrations on the part of the Respondent which might be taken to indicate overall abusive use.

Clause 3 of the Policy requires the Respondent to be making some use of the Domain Name for the purposes of establishing an Abusive Registration.

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.

The lack of use of the Domain Name cannot therefore constitute the Domain Name as an Abusive Registration in the hands of the Respondent.

The Expert accordingly finds on the basis of the evidence which is currently available that the Respondent has made no use of the Domain Name. Under the terms of the Policy this lack of use cannot in itself transform the Domain Name into an Abusive Registration.

It may well be that should the Respondent wish to make some use of the Domain Name in the future she would find it difficult to do so without contravening the Policy- but this is not directly relevant to this Complaint and would depend on the particular circumstances.

(a) The Complainant has proved on the balance of probabilities that it has Rights in respect of a name or mark which is identical or similar to the Domain Name. The Complainant has established for the purposes of this Complaint that its Rights date from the registration of trade mark No 2168205 on 2 June 1998.

(b) The Complainant has not proved on the balance of probabilities that the Domain Name is an Abusive Registration in the hands of the Respondent for the purposes of the Policy.

Accordingly the Expert finds against the Complainant in relation to this Complaint.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Bravissimo -v- Gander [2002] DRS 661 (15 December 2002) URL: http://www.bailii.org/uk/cases/DRS/2002/661.html Cite as: [2002] DRS 661

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