Orba Originals Ltd v Janus Promotions Ltd [2004] DRS 02120 (23 December 2004)

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Cite as: [2004] DRS 02120, [2004] DRS 2120

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    Orba Originals Ltd v Janus Promotions Ltd [2004] DRS 02120 (23 December 2004)

    ORBA ORIGINALS LIMITED –v- JANUS PROMOTIONS LIMITED
    Nominet UK Dispute Resolution Service
    DRS 02944
    Orba Originals Limited and Janus Promotions Limited
    Decision of Independent Expert
    1. PARTIES:

    Complainant: Orba Originals Limited

    UK

    Respondent: Janus Promotions Limited

    UK

    2. DOMAIN NAME:

    orbaoriginals.co.uk

    3. PROCEDURAL BACKGROUND:
  1. .1 A hardcopy of the Complaint was received in full by Nominet on 19 October 2004. Nominet validated the Complaint and notified the Respondent of the Complaint on 22 October 2004

  2. .2 No Response was received by the Respondent and therefore informal mediation was not possible. On 6 December 2004 the Complainant paid the fee to obtain the Expert Decision pursuant to paragraph 6 of the Nominet UK Dispute Resolution Policy ("the Policy").

  3. .3 On 9 December 2004, Nick Phillips, the undersigned ("the Expert"), confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as the Expert in this case and further confirmed 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.

    4. 4. OUTSTANDING FORMAL/PROCEDURAL ISSUES:
  4. .1 The Respondent has not submitted a Response to Nominet in time (or at all) in compliance with paragraph 5(a) of the procedure for the conduct of proceedings under the Dispute Resolution Service ("the Procedure").

  5. .2 Paragraph 15(b) of the Procedure provides, inter alia, that "if, in the absence of exceptional circumstances, a Party does not comply with any provisions in the Policy or Procedure, the Expert will draw such inferences from the Parties non-compliance as he or she considers appropriate".

  6. .3 Nominet appears to have used all of the available contact details to try to bring the Complaint to the Respondent's attention. There do not appear to me to be any exceptional circumstances involved and I will therefore proceed to a Decision on the Complaint notwithstanding the absence of a Response.

    7. 5. THE FACTS:
    5.1 The Complainant is Orba Originals Limited.
  7. .2. The Complainant is a dormant company but its shareholder and director, Robin Brown and its company secretary Jean Brown own the domain name, orbaorginals.com, which is registered in the name of "Orba Originals".

  8. .3 The domain name, orbaoriginals.com resolves to a website which sells products under the name, "Orba Originals". This website appears to be operated by a company called Rodette International Limited in which Mr Brown is also a shareholder and director.

  9. .4 The Domain Name is registered in the name of the Respondent, Janus Promotions Limited but resolves to a website which sells similar products to those which can be found at the website behind the domain name, Orbaoriginals.com under the name Elegance.

    10. 6. THE PARTIES' CONTENTIONS:

    The parties' contentions can be summarised as follows:

    Complainant

    6.1 In its Complaint, the Complainant makes the following submissions:
  10. .1.1 Rodette International has the trading name and brand name – Orba Originals and also trades as Orba Originals Limited;

  11. .1.2 The Domain Name Orbaoriginals.com is held by Robin and Jean Brown, under the name "Orba Originals" and have a website which operates from this domain name;

  12. .1.3 The Domain Name resolves to a website called "Elegance" which sells similar products as the Complainant and is the Complainant's main competitor;

  13. .1.4 Anyone looking for Orba Originals who forgets that it has a .com domain name will type in Orbaoriginals.co.uk and, therefore, business will be diverted to one of the Complainant's competitors;

  14. .1.5 On a compliments slip accompanying the hardcopy of the Complaint and which is on the headed notepaper of Rodette International Limited, it is also asserted that the brand name of the product, "Orba Originals" is trade marked.

    15. Respondent
    6.2 The Respondent has not responded to the Complaint.
  15. DISCUSSIONS AND FINDINGS

    16. General
    Under clause 2 of the DRS Policy ("the Policy") the Complainant is required to show, on the balance of probabilities that:
  16. .1 It has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

  17. .2 The Domain Name, in the hands of the Respondent, is an Abusive Registration.

    18. Complainant's Rights
  18. .3 The first question I must answer is therefore whether the Complainant has proved on the balance of probabilities that it owns Rights in a name or mark that is identical or similar to the Domain Name.

  19. .4 In this case, the Complaint is made in the name of a company called Orba Originals Limited. A company search against this company shows it to be a non-trading, dormant company. I have also checked the UK Trade Marks database and I can find no evidence of this company holding any registered trade marks.

  20. .5 A "whois" search shows that the domain name, orbaoriginals.com is owned by an organisation described as, "Orba Originals" which I assume is a trading name for Robin and Jean Brown who are the director/only shareholder and Company Secretary respectively of the Complainant. The website to which the domain name, orbaoriginals.com resolves to is clearly labelled as belonging to Rodette International.

  21. .6 A company search against Rodette International Limited reveals it to be a trading company and there is clearly a link between it and the Complainant with both sharing the same registered office, and with Mr Robin Brown being a director and shareholder in both although an Odette Brown is also a shareholder, Company Secretary and director in Rodette International Limited. It is not however clear exactly what the link is. A search of the UK Trade Mark Register does not reveal Rodette International Limited to be the proprietor of any trade marks.

  22. .7 The Complainant, Orba Originals Limited is a non-trading, dormant company. Additionally no evidence has been put forward that the Complainant owns any rights in the name, "Orba Originals" or anything similar. For example there is no evidence that the Complainant has traded under this name, has made any use of the name other than as a company name or has any relevant trade mark registrations. Therefore I cannot make a finding that the Complainant has Rights in a name or mark that is identical or similar to Domain Name.

  23. .8 Having found that the Complainant has not proved, on the balance of probabilities, that it has Rights in the name which is either identical or similar to the Domain Name and I will, therefore, not go on to address the other half of the test, namely whether the Domain Name is in the hands of the Respondent and Abusive Registration.

  24. .9 Although I have not considered the position, it may well be that the trading company Rodette International Limited and/or Mr Brown actually have Rights in the Domain Name and it would be open to one or both of them to file a fresh Complaint.

  25. .10 I have also given some thought to alternative outcomes. I could, for example, say that the name of the Complainant is purely a administrative error and that the correct complainant should have been the trading company, Rodette International Limited or Mr Brown and then go on to decide the Complaint accordingly. Notwithstanding the fact that I do not see how I can unilaterally substitute a different legal entity in a Complaint I do not know why the Respondent has not put in a Response. This could easily have been because the Respondent has looked at the Complaint, noted that it is made in the name of a dormant company and decided that it is bound to fail. Alternatively, I have considered inviting the Complainant to withdraw the Complaint and to cause it to be filed in the name of the correct Complainant, which would presumably be Rodette International Limited or Mr Brown. I do have a general discretion under Clause 13 of the Procedure to request further statements or documents from the Parties. However, this course of action would amount to asking a separate legal entity to re-file the Complaint and would clearly go further than Paragraph 13 provides. I therefore do not think that I can do it.

  26. .11 I do however have in mind that this is probably a case where the wrong Complainant has been chosen and therefore the Complaint has fallen at the first hurdle. That is not however to say that if filed in a different name the Complaint would succeed and I have specifically not considered this but I am concerned that the correct complainant should not be punished unduly for this error. I am, therefore, going to order that the Domain Name be suspended for a period of twenty-eight (28) days from the date of this Decision to enable a new Complaint to be filed without there being any danger that the Respondent transfers the Domain Name to a third party in the meantime.

  27. DECISION

    28. In the circumstances, I find that the Complainant has not demonstrated it has Rights in a name or mark which is similar or identical to the Domain Name. I, therefore, decide that the Complaint should be rejected. I will, however, direct that the Domain Name should be suspended for a period of twenty-eight (28) days to preserve the status quo and enable a Complaint in the name of the correct complainant to be filed.

    NICK PHILLIPS
    23 December 2004

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URL: http://www.bailii.org/uk/cases/DRS/2004/02120.html