Nominet UK Dispute Resolution Service

DRS 03712

Bayer Healthcare LLC
v
Abbeyvet Export Limited 

Decision of Independent Expert

1.	PARTIES

Complainant:  Bayer Healthcare LLC

Country:	USA	

Respondent:	Abbeyvet Export Limited

Country:	UK

2.	DOMAIN NAME

advantageflea.co.uk (the "Domain Name")

3.	pROCEDURAL BACKGROUND

3.1.	A Complaint in respect of the Domain Name under Nominet UK's Dispute Resolution Service Policy (the "Policy") was received from the Complainant on 25 May 2006.  Nominet forwarded the Complaint to the Respondent. A response was field on 30 June 2006. A Reply was filed on 3 July 2006.

3.2.	The dispute was referred for a decision by an Independent Expert following payment by the Complainant of the required fee in accordance with paragraph 5d of Nominet's Procedure for the conduct of proceedings under the Dispute Resolution Service (the “Procedure”) on 25 June 2006.  I was appointed as Independent Expert on 27 June 2006 and confirmed to Nominet that I was independent of the parties and knew of no facts or circumstances that might call into question my independence in the eyes of the parties.
3.3.	On 31st July at my request Nominet issued a notice to the parties in the following terms:-

"on a preliminary review of the papers the Expert notes that the Respondent has made a number of references to being willing to provide certain information in support of his case, providing the Expert keeps the material confidential and does not disclose it to the Complainant.  The Expert is not prepared to review or rely upon material which can not be disclosed to all parties.  If the Respondent wishes to file any of this material, if necessary in a redacted form (see below) where the Respondent consents to it being disclosed to the Complainant he should do so by Tuesday 8th August.  If he does so the Complainant should then have until Tuesday 15th August to lodge any further response to such material.  Such response to be restricted only to dealing with the material in question.  The Complainant may if he thinks fit redact any material he submits.  The Expert will however only rely upon redacted documents where it is still possible to understand the document concerned and be satisfied that the redaction in question has not rendered the document materially incomplete or otherwise misleading.  This applies also to any redacted documents already filed by the Respondent"

3.4.	Pursuant to this Notice on 7th August the Respondent filed further redacted copies of certain material.  These were provided to the Complainant's representative who indicated that it did not consider they added anything over and above what had already been provided and stated that it did not wish to make any further submissions. 
 
4.	The FACTS 
. 
4.1.	The Facts set out below do not appear to be in dispute.

4.2.	 The Complainant is an indirect subsidiary of Bayer AG, the well known pharmaceutical and medical products company.  Part of Bayer's AG operations includes the manufacture and sale of animal health products.  It sells those products in the United Kingdom through Bayer Plc.  It sells those products in the United States via the Complainant.

4.3.	One such product is an imidaclopird solution which protects dogs and cats against flea infestation and which is sold under the trademark Advantage.  This product was launched in 1996.  Bayer Corporation is the owner of United States Trade Mark No. 74668471 in respect of the word Advantage registered for flea control preparation for dogs and cats.  

4.4.	The Respondent runs an on-line business offering a range of flea control products.  These include the Bayer Advantage product as well as a number of other products manufactured by third parties.  

4.5.	Historically, the Respondent conducted its business through a website www.advantageflea.com.  This website became the subject of legal proceedings in the United States of America.  Apparently on advice from its lawyers the Complainant decided not to submit to the jurisdiction of the United States courts.  As a result proceedings have taken place without the Respondent entering an appearance, and various court orders in the United States have been made against the Respondent.  It appears those orders have included directions requiring the registrar of the advatageflea.com domain, Verisign, to transfer that domain name.  There appears to be a complicated history of litigation, also involving Novartis Animal Health US Inc, but for present purposes it is not necessary to go into all of this.  The Respondent has admitted in the present proceedings that the Domain Name was registered on 6th August 2005 "in response to the anticipated Verisign action" and at about that date the Respondent changed the address of its existing website to www.advantageflea.co.uk.

4.6.	The Respondents sells products advertised on its website internationally, including to customers in the United States. Insofar as those products may be the Bayer Advantage Flea Product, there is no suggestion that the products are other than genuine Bayer products, although the Complainant has raised issues as to whether the products concerned are properly marked and labelled to meet US regulatory requirements, and whether weights are displayed in a way that would be familiar to consumers in the United States.

5.	The Parties’ Contentions

Complainant

5.1.	The Complaint says that it has rights in the name Advantage.  It says that the Domain Name is confusingly similar to the Advantage mark.  It relies upon the fact that the only other substantive element is the word "flea" which is the pest that the Advantage product is formulated to control.  

5.2.	It says that the Respondent is using the Domain Name in a way that is confusing consumers, in that it would not be clear, to consumers visiting the Respondents website, that the site was not associated with Bayer.  It says that the site implies that Abbeyvet is an authorised seller of Bayer products which is not the case.  

5.3.	The Complainant goes on to say that Abbeyvet is unfairly disrupting the business of the Complainant because it is offering, under a name associated with the Complainant, products of third parties, which it describes as a "bait and switch" tactic. By this it means the name attracts consumers looking for the Advantage product (the "bait") but they are then offered products other than the Advantage product (the "switch").  

5.4.	The Complainant also says that the Respondent is breach of various US laws in that the products which are being offered were available for sale only outside the United States and are not approved for sale in the United States either by Bayer or by various United States regulatory bodies. It also says the labelling does not comply with US standards and might confuse consumers.

The Respondent
5.5.	The Respondent says that the Complainant does not have rights at English law because the trade mark rights for Advantage as registered in the UK are held by a different company within the Bayer Group, Bayer AG.

5.6.	The Respondent also says, as indicated above, that it registered the Domain Name in anticipation of a court order directing it to dispose of the domain name advantageflea.com in the United States.
 
5.7.	The Respondent says that it does not lure Internet users to its site and relies upon Google searches in this regard which show that a search for "advantage flea" results in a large number of sites offering products for sale.

5.8.	The Respondent says that the United States court proceedings and any orders that have been made in those proceedings are irrelevant.  

5.9.	The Respondent says that any differences between the Advantage products it supplies and those which are authorised in the United States are simply in the packaging itself, not the product contained within the packaging, and such differences as there are in that packaging are not material.

5.10.	The Respondent also alleges that Bayer conducts a practice whereby it is content for product to be placed on what it describes as "an extensive grey market" and that it should not be allowed to object to that market operating freely.

5.11.	The Respondent says that there is no evidence of any actual customer confusion and that it has never received any communication from any consumer identifying confusion from either its current web site or its predecessor.com site.  

5.12.	It says that the Domain Name is not abusive as it is only ever sold genuine UK branded Advantage (and Advantix, another Bayer product) which it is allowed to do under the UK Trade Marks Act.  It also says that Bayer UK and Bayer AG have been aware of its activities for many years and that it has an implied licence to use the Bayer trade names in marketing of their products.  It also alleges that Bayer UK was aware for many years of the www.advantageflea.com site and consented to its operation.  

5.13.	The Respondent also says that in any event the name "advantage" is generic and descriptive "in much the same way as Hoover is to vacuum cleaner" and relies upon Google search results for the words "advantage flea".

5.14.	Finally it says the Complainant is using the policy in bad faith because it does not own and is not licensed to use the trade marks in the UK.

6.	discussion and Findings:
	General
6.1.	The Complainant is required under Clause 2b of the Policy to prove to the Expert on the balance of probabilities that:

6.1.1.	the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

6.1.2.	the Domain Name, in the hands of the Respondent, is an Abusive Registration.

Complainant’s Rights

6.2.	“Rights” are defined in the Policy and in the Procedure.  "Rights includes, but is not limited to, rights enforceable under English law.”  I am satisfied that the United States trade mark relied upon by the Complainant amounts to rights for the purpose of the Policy.  I am also satisfied that the Complainant has an interest in those Rights.  The Complainant asserts that it is the owner of this trademark.  It appears from the filed papers that it may be another company within the Bayer Group that owns the trade mark – however it appears clear that even if the Complainant is not the owner it is licensed to use the trade mark by the relevant owner.  The Complainant has also filed evidence in its Reply making clear that its parent company Bayer AG, consents to these proceedings being brought.

6.3.	The Domain Name is similar to the name in which the Complainant has rights.  The addition of the further word "fleas" which in any event identifies the pest at which the product is targeted does not remove this similarity. 

6.4.	Accordingly I find that the Complainant does have Rights in respect of a name or mark which is identical or similar to the Domain Name.

6.5.	I do not consider the submissions made by the Respondent as to ownership of the UK trade marks for Advantage are of any relevance. The Policy does not require the Complainant to have rights in UK trade marks and it does not matter that some other party may have such rights (especially where as here that other party is in any case an associated group company).

Abusive Registration

6.6.	Paragraph 1 of the Policy defines “Abusive Registration” as a Domain Name which either:

6.6.1.	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

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

6.7.	It is important to bear in mind that the issue the Policy is concerned with is the use of the Domain Name, incorporating as it does a word in which the Complainant has Rights.  It is necessary to consider whether the use is abusive because (it is alleged) that Domain Name will draw consumers to the site, and when they reach the site (a) they will be offered products which include both Bayer's products and third party products ; and (b) it may not be clear that the site is not associated with or approved by Bayer.  

6.8.	The Policy is not concerned with more general issues about the Respondent's business, where it sources its products from, how the so called "grey market" operates and so on.  If, hypothetically, the Respondent were conducting its business under a domain name such as abbeyvetexport.co.uk there would be no issue under the Policy.  It is important to keep in mind this distinction, particularly as a number of the Respondent's submissions, and the supporting materials it has lodged, are in fact relevant to a general justification of the legitimacy of its business, but ignore the real substance of the complaint – which is not the nature of the business, but the fact that it is carried out under the Domain Name (advantage flea.co.uk).

6.9.	Nowhere has the Respondent offered any direct explanation as to why it has chosen the name advantageflea.co.uk, other than to say it was in substitution for advantageflea.com, which a US Court was about to order to be transferred elsewhere. That of course begs the question of why it chose advantageflea.com as its previous domain name. It seems absolutely clear that it was because it amounts to a direct combination of the Respondent's product name with the name of the pest that product deals with. 

6.10.	The only real suggestion of any other reason is the allegation made by the Respondent that "advantageflea" has become generic. That submission is not supported at all by the evidence.  The Google searches the Respondent has submitted in respect of the words "advantage flea" undoubtedly show a large number of sites which, so far as can be determined from the filed search results, offer flea control products for sale - but these all appear to be sites which are offering for sale the Bayer product itself.  The words Advantage Flea are invariably capitalised in the search results, and indeed in a number of cases they are accompanied by the designation ® or ™.  There is not a single indication in these results of a use which could be described as generic.  The evidence certainly does not support the submission that the term has become generic.

6.11.	Accordingly I conclude that the Respondent has decided to adopt a name which is associated with the Complainant (and/or other Bayer companies) and its products.  The clear and fair inference to be drawn is that it did so in the hope its name would help attract business to its site.  A question worth considering is why did it not use a name based on its own name, such as say, abbeyvetexport.co.uk.  The obvious inference to draw is that it thought the Domain Name would be better for its business.  It is part of its "shop front" on the Internet and it is one (possibly amongst many) factors that attract users to its site.

6.12.	Having done so it offers for sale products made by the Complainant as well as products made by third parties, which compete directly with those products.  Is that Abusive?

6.13.	A non-exhaustive list of factors, which may be evidenced that the Domain Name is an Abusive Registration is set out in paragraph 3 of the policy.  These include 3a(i) C – "circumstances indicating that the Respondent has registered …. the Domain Name primarily for the purpose for unfairly disrupting the business of the Complainant" and 3a(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 otherwise connected with the Complainant".

6.14.	On the evidence the Respondent's business does disrupt the business of the Complainant.  It is parallel importing into the US market products which the Complainant does not wish to be there and which do not meet US regulatory standards.  Is such disruption unfair? I believe that it is –  because it is doing so by using the Complainant's own trade mark as its name, which will inevitably attract users to its site. That is unfair. It is striking that the Google searches the Respondent filed for "advantage flea" show a large number of sites offering the product, with names which seem perfectly unobjectionable (e.g. vetmeddirect.com, bestpharmacy.co, nofleas.com, petshed.com and so on). The Respondent by contrast has chosen to use the Complainant's own trade mark as the basis for its domain name.

6.15.	Such use is also unfair because having attracted consumers to the site, the Respondent then offers not only Bayer products, but also those of third parties. Use of a name based upon one person's trade mark to attract users, and then offering another person's products as an alternative to the first person's products, is likely to be unfair. Whether this is so in any given case may depend upon the exact facts but in the present circumstances I can see no justification for the Respondent having chosen "advantageflea" as its domain name, other than its association with the Complainant and/or Bayer generally, and its subsequent offering of both Bayer and third party products is unfair.

6.16.	For completeness I should say I have considered the material lodged by the Respondent. I am far from clear as to the evidential value of much of this material, given the way it has been redacted, but I am prepared to assume that it establishes that various companies within the Bayer Group have been happy to deal with the Respondent and supply it with products including the Advantage product. It does not however establish that they have consented to the Respondent carrying out the activities now in issue, still less that they consented to, or acquiesced in, such activities being carried out under or by reference to the Domain Name. Accordingly I do not consider this material assists the Respondent

6.17.	There is insufficient evidence for me to determine whether or not the Respondent's web site confuses people or businesses into believing that the Domain Name is registered to, operated or authorised by or otherwise connected with the Complainant. No evidence of actual confusion is given. The material exhibited shows a web site which offers a range of products and where there appears to be very little to indicate the precise identity of the site operator.  However I am not satisfied that would necessarily lead visitors to conclude this was a Bayer site – I have no real evidence on how well known the "Advantage" name in fact is.  I also note that the text describing the Bayer products often contain references to "The manufacturer, Bayer" which would suggest to anyone reading the text that this was not a Bayer site.  On balance I decline to find that the site confuses in the way required.

6.18.	In the circumstances, I consider that the Domain Name has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.  In particular the Domain Name is being used in a way which unfairly disrupts the Complainant's business. The Domain Name, in the hands of the Respondent, is therefore an Abusive Registration.

7.	Decision
Accordingly, I find that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name and that the Domain Name in the hands of the Respondent is an Abusive Registration.  I therefore determine that the Domain Names be transferred to the Complainant.

Nick Gardner

16 August 2006