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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Oxford Instruments plc -v- Bruinder Singh DHA [2003] DRS 832 (25 March 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/832.html Cite as: [2003] DRS 832 |
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Nominet UK Dispute Resolution Service
DRS 00832
Oxford Instruments PLC -v- Bruinder Singh Dha
Decision of Independent Expert
1. Parties:
Complainant: Oxford Instruments PLC
Country: GB
Respondent: Bruinder Singh Dha
Country: GB
2. Disputed Domain Name:
Oxfordinstruments.co.uk (the “Domain Name”)
3. Procedural Background:
The Complaint in this case was lodged with Nominet UK ("Nominet") on January 30, 2003. Nominet validated the Complaint on the same day and notified it to the Respondent, giving Respondent 15 working days within which to lodge a response. As of February 24, 2003, no response was received from the Respondent. On February 28, 2003, the Complainant paid to Nominet the appropriate fee for a Decision by an Expert pursuant to paragraph 6 of the Nominet Dispute Resolution Service Policy (the “Policy”).
The undersigned, Christopher Gibson (the “Expert”), was formally appointed on March 7, 2003. The Expert has formally confirmed to Nominet that he knows of no reason why he cannot properly accept the invitation to act as an expert in this case and further confirmed that he knows 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.
4. Outstanding Formal/Procedural Issues (if any)
None.
5. The Facts
The Complainant, Oxford Instruments Plc (company number 00775598), was initially established in September 1963. The Complainant operates a web site with the following URL: http://www.oxinst.co.uk, of which the Expert has taken notice for purposes of confirming information about the Complainant in this dispute
The Nominet Whois search, which was provided to the Expert, shows that the Domain Name was registered on behalf of the Respondent on March 11, 2000.
On January 9, 2003, solicitors acting on behalf of the Complainant wrote to the Respondent drawing the Respondent’s attention to the Complainant’s rights in the name OXFORD INSTRUMENTS and, inter alia, seeking transfer of the Domain Name. No reply to that letter was received.
There is currently no website accessible under the URL http://www.oxfordinstruments.co.uk (see below).
The Domain Name appears to have been de-tagged, which means that the Domain Name is no longer hosted on two valid name servers. This stops the operation of any services associated with the Domain Name (e.g., e-mail or website). Only a registration agent (ISP) can detag a domain name, which it may do if, for instance, it no longer has a relationship with the registrant to provide services for the domain name concerned.
6. The Parties' Contentions
Complainant
The Complainant submits that the Domain Name in dispute is identical or similar to a name or mark in which it has rights and that the Domain Name in the hands of the Respondent is an abusive registration.
The Complainant states that it is a global leader in advanced instrumentation, and that its products are used by people all over the world for scientific research, industrial chemical analysis and quality control, semiconductor processing and healthcare. Its customers include most of the world's major international companies as well as the leading research institutes. The Complainant claims, in particular, that it is recognised as a world leader in several technologies, among others in the application of superconductivity, the creation of low temperatures, the production and detection of X-rays and in neurological measurements. In this respect, the Complainant contends that it has generated a considerable reputation in its field.
The Complainant points to a number of registered trade marks: it is the registered proprietor of Community Trade Mark No. E1225416 in respect of the words “Oxford Instruments”, which was registered on 25 June 1999; and it is also the registered proprietor of Trade Marks 2001215 and 2201199, registered on 24 January 1997 and 28 July 2000 respectively, which are variations on “Oxford Instruments”.
The Complainant claims that it attempted to register the <oxfordinstruments.co.uk> domain name, but discovered that it was unavailable for registration having already been registered by the Respondent, Bruinder Singh Dha, the current registrant of the Domain Name.
The Complainant contends that it has rights in respect of the name “Oxford Instruments”, both with regard to the registered trade mark rights noted above and as a trading name protected by the law of passing-off.
The Complainant contends that the Respondent’s registration is of an abusive nature for the following reasons:
1. That searches of the Domain Name (as noted above) indicate that there is no website registered at oxfordinstruments.co.uk. Whilst this is not conclusive evidence of abusive registration, there is no evidence of bona fide use of the domain name. The Complainant further contends that the Domain Name could not have been acquired with the intention of using it since, were that the case, Oxford would immediately have taken legal action to prevent such use. Accordingly, the presumption can only be that it was acquired by the Registrant with the intention of selling it.
2. That the Domain Name could only be used by someone other than Oxford Instruments in a way which will confuse people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with Oxford Instruments.
3. That the Domain Name was registered in a manner which took unfair advantage and was unfairly detrimental to Oxford Instruments rights since those rights should self-evidently include the right to use this Domain Name.
Respondent’s Response
No response was received from the Respondent.
7. Discussion and Findings:
General
According to paragraph 2 of the Policy, in order to succeed in this Complaint, the Complainant has to prove to the Expert that, on the balance of probabilities:
i. the Complainant has Rights (as defined in paragraph 1 of the Policy) in respect of name or mark which is identical or similar to the disputed domain name; and
ii. the disputed domain name is an Abusive Registration (as defined in paragraph 1 of the Policy).
These matters must be proven by the Complainant, notwithstanding the failure by the Respondent to respond. The effect of the Respondent’s default is rather that, under paragraph 15(c) of the Procedure (there being no exceptional circumstances in this case) the Expert is required to draw such inferences from the Respondent’s non-compliance as he considers appropriate.
Complainant's Rights
The Complainant has traded under its name, Oxford Instruments, since 1963 and will undoubtedly have acquired a trade reputation in that time. All of the information before the Expert in respect of the Complainant supports this view. Further, the Expert considers it reasonable to infer that the Complainant has goodwill in the name and acknowledges registration of the trade mark OXFORD INSTRUMENTS from 1997.
The Domain Name <oxfordinstruments.co.uk> comprises the word ‘oxfordinstruments’ and the suffix ‘.co.uk’. In assessing whether or not a name or mark is identical or similar to a domain name, it is appropriate to discount the domain suffix, which is of no relevant significance and wholly generic. In addition, it is appropriate to discount the fact that the Domain Name contains no space between the words ‘oxford’ and ‘instruments’ as this has no significance and in any event results from the fact that spaces, in contrast to the dash or hyphen, may not be used in domain names. The Expert therefore considers that the Complainant’s mark is very similar to the Domain Name.
Consequently, the Expert finds that, for purposes of the Policy, the Complainant has rights in respect of a name or mark, which is identical or similar to the Domain Name.
Abusive Registration
Under the second factor above, the Complainant must prove on the balance of probabilities that the disputed domain name, in the hands of the Respondent, is an Abusive Registration. An “Abusive Registration” is defined in paragraph 1 of the Policy 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, is set out in paragraph 3(a) of the Policy. Paragraph 4(a) of the Policy sets out how the Respondent may demonstrate in its response that the domain name in issue is not an Abusive Registration.
In the Expert’s view, in the particular circumstances of this case, a detailed analysis of those provisions of the Policy is unnecessary.
On the evidence before the Expert, the name OXFORD INSTRUMENTS is specifically referable to the Complainant. It is a sufficiently distinctive name and at any rate in the context of the Complainant’s field of use appears to be a well-established name. It is difficult to imagine that the Respondent could have registered that name without having the Complainant in mind, and unfortunately we have nothing from the Respondent to indicate otherwise.
The Expert observes that there is no obvious reason why the Respondent might be said to have been justified in registering the Domain Name, and the Respondent has elected not to come forward with any explanation for registration of the Domain Name. As noted above, the Complainant wrote to the Respondent on January 9, 2003 to request a transfer of the <oxfordinstruments.co.uk> Domain Name. This letter never received a response. Further, Nominet notified this case to the Respondent on January 30, 2003 but this notification was also ignored.
While it might be possible (at least theoretically) that the Respondent registered the Domain Name for no purpose at all, the Expert regards that as most improbable. What could the Respondent’s purpose have been? It could have been with a view to making a use of it, or it could have been with a view to selling it, or simply to block the Complainant. We are left to speculate because the Respondent has not responded, nor has the Respondent made any use at all of the Domain Name. As the Complainant points out, had the Respondent attempted to use the Domain Name, the Complainant very likely would have taken some form of legal action to protect its rights in its name. .
Thus, where a Respondent registers a Domain Name:-
1. which is identical (or virtually identical) to a name in respect of which the Complainant has rights; and
2. where that name is specifically referable to the Complainant and sufficiently distinctive; and
3. where there is no obvious justification for the Respondent having adopted that name for the Domain Name; and
4. where the Respondent has come forward with no explanation for having selected the Domain Name,
it will ordinarily be reasonable for an expert to infer first that the Respondent registered the Domain Name for a purpose and secondly that that purpose was abusive. In this case the Expert draws those inferences and cites this reasoning as first set forth in Chivas Brothers Limited -v- David William Plenderleith, DRS 00658 (12 December 2002).
Accordingly, the Panel finds on the balance of probabilities that the Respondent registered the Domain Name for one or more of the purposes contained in the non-exhaustive list set out in paragraph 3(a)(i) of the Policy or for some other abusive purpose.
8. Decision
The Expert finds that the Complainant has Rights in respect of a name or mark which is very similar to the Domain Name, and that, on the balance of probabilities, the disputed Domain Name, in the hands of the Respondent, is an Abusive Registration. The Expert therefore directs that the disputed Domain Name <oxfordinstruments.co.uk> be transferred to the Complainant.
Christopher Gibson
Date: 25 March 2003