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Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Johnson & Johnson v Compile bvba [2007] DRS 4671 (03 July 2007)
URL: http://www.bailii.org/uk/cases/DRS/2007/4671.html
Cite as: [2007] DRS 4671

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    Johnson & Johnson
    -v-
    Compile bvba
    Nominet UK Dispute Resolution Service
    DRS 04671
    Johnson & Johnson and Compile bvba
    Decision of Independent Expert
  1. PARTIES:

    2. Complainant: Johnson & Johnson

    USA

    Respondent: Compile bvba

    BE

  2. DOMAIN NAME:

    3. ionsys.co.uk ("the Domain Name").

  3. PROCEDURAL BACKGROUND:

    4. 3.1. A hard copy of the Complaint was received in full by Nominet on 3 May 2007. Nominet validated the Complaint and notified the Respondent of the Complaint.
    3.2. No Response was received from the Respondent and therefore informal mediation was not possible.
    3.3. On 13 June 2007 the Complainant paid the fee to obtain the expert decision pursuant to paragraph 21 of the procedure for the conduct of proceedings under the Nominet Dispute Resolution Service ("the Procedure").
    3.4. On 15 June 2007, Nick Phillips, the undersigned ("the Expert"), was selected as the Expert. Nick Phillips 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. OUTSTANDING FORMAL/PROCEDURAL ISSUES

    5. 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.
    4.2 Paragraph 15(b) of the Procedure provides, inter alia, that "if, in the absence of exceptional circumstances, a party does not comply with any time periods laid down in the policy of this procedure, the Expert will proceed to a decision on the Complaint".
    4.3 Nominet appears to have used all of the available contact details to try to bring the Complaint to the Respondent's attention. Consequently, 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.
  5. THE FACTS

    6. 5.1 The Complainant is Johnson & Johnson.

    5.2 The Respondent is Compile bvba.
    5.3 The Respondent registered the Domain Name on 14th June 2006.

    5.4 The Complainant (and its affiliate company Janssen Pharmaceutica N.V.) are the proprietors of several trade mark registrations for IONSYS covering "human pharmaceuticals, namely, analgesics" including:
    5.5 The Complainant owns the following domain name registrations;
    (a) ionsys-pcta.co.uk registered by Archemus on 27 May 2004;
    (b) ionsys.net registered by Network Solutions LLC on 23 December 2004;
    (c) ionsys.org registered by Network Solutions LLC on 19 February 2004.

    These domain names link to the Complainant's website at www.ionsys.net at which it provides details of its IONSYS product which is a prescription only drug for the short terms management of acute post operative pain.
    5.6 Each of the trade marks and domain name registrations listed in paragraphs 5.4 and 5.5 pre-date the date on which the Respondent registered the Domain Name.
    5.7 The Domain Name currently links to a holding page which contains a number of links to other sites including at least one for pain relief products.
    5.8 The Complainant has contacted the Respondent requesting a voluntary transfer of the Domain Name and offering to pay £250 to cover the Respondent's legal and administrative costs. The Respondent replied saying, "one of our businesses is the trade of domain names. If you make me a good offer, I am willing to trade the domain name."
  6. THE PARTIES' CONTENTIONS

    7. The parties' contentions can be summarised as follows:
    Complainant
    6.1 The Complainant's trade marks for IONSYS (as listed in paragraph 5.4) were filed in 2004 and accordingly, pre-date the Respondent's registration of the Domain Name.
    6.2 The Complainant's domain names (as listed in paragraph 5.5) containing the word IONSYS pre-date the Respondent's registration of the Domain Name by approximately two years.
    6.3 Neither the Complainant nor its affiliate company, Janssen Pharmaceutica N.V. have any connection or previous relationship with the Respondent. The Complainant can see no reason why the Respondent should be entitled to the Domain Name registration www.ionsys.co.uk.
    6.4 On discovery of the Domain Name registration the Complainant's representative wrote to the Respondent on 13 December 2006 requesting a voluntary transfer of the Domain Name registration www.ionsys.co.uk to the Complainant. The Complainant also offered the Respondent £250 to cover their legal expenses for the assignment. In an email of the same day from Kris Van Peer of the Respondent company this offer was refused. The Respondent informed the Complainant that one of its businesses is trading in domain names and that it would be willing to transfer the name if the Complainant made a good offer. This was refused by the Complainant on the grounds that the Respondent had no justified reason to possess the Domain Name registration and the rights in the Domain Name belong to the Complainant in view of their prior trade mark registrations for IONSYS as set out above. The Respondent did not accept the Complainant's claim since the Respondent considers that they are the legal owners of the Domain Name.
    6.5 The Complainant has noted the persons accessing the Domain Name were previously redirected to the Respondent's homepage. The Complainant could see no legitimate, or any use whatsoever of the name IONSYS on the website to justify the registration of the Domain Name. The Complainant has noticed that from the time of the correspondence with the Respondent the website now redirects to Network Solutions LLC (Domain Name Registrar) and that the site is currently "under construction".
    6.6 The Complainant considers that the Domain Name registration for IONSYS was made in bad faith and registered deliberately to prevent the Complainant from registering its IONSYS name as a UK domain name.

    6.7 Accordingly, the Respondent has no legitimate interest in the Domain Name for the reasons given, this registration amounts to an abusive registration.
    6.8 The Respondent's registration of the Domain Name causes detriment to the Complainant since the public would be confused as to the origins of the name IONSYS and the Complainant is also disadvantaged by this registration, since the Complainant is clearly prevented from using and registering legitimate websites connected with their business under the IONSYS mark.
    THE RESPONSE
    Respondent

    The Respondent has not provided a Response so there are no submissions to consider.
  7. DISCUSSIONS AND FINDINGS

    8. General
    7.1 Under paragraph 2 of the Dispute Resolution Service Policy ("the Policy") the Complainant is required to show, on the balance of probabilities, that;
    (1) it has rights in respect of a name or mark which is identical or similar to the Domain Name; and
    (2) the Domain Name in the hands of the Respondent is an Abusive Registration.

    Complainant's Rights
    7.2 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.
    7.3 The Policy defines rights as including but not limited to "…rights enforceable under English laws." This has always been treated in decisions under Nominet DRS as a test with a low threshold to overcome and I think that that must be the correct approach.
    7.4 The Complainant has provided evidence of its use of the name IONSYS covering human pharmaceuticals, namely analgesics and owns a number of registered trade marks (including a UK registration) for the word IONSYS. The Complainant has also registered and uses the domain names; www.ionsys-pcta.co.uk, www.ionsys.net, and www.ionsys.org all of which point to the Complainant's website at www.ionsys.net which gives details of the Complainant's IONSYS product.

    7.5 In the circumstances I have no difficulty in finding that the Complainant has Rights in the name IONSYS.
    7.6 I must now decide whether the name in which the Complainant has rights i.e. IONSYS, is identical or similar to the Domain Name, www.ionsys.co.uk while ignoring the first and second level suffixes as I must do. Clearly the words used by the Complainant and Respondent respectively are identical.
    Abusive Registration
    7.7 Having concluded that the Complainant has Rights in a name which is identical or similar to the Domain Name, I must consider whether the Domain Name constitutes an Abusive Registration. Abusive Registration is defined in the Policy as
    "… a domain name which either
    (a) was registered or otherwise acquired in the 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
    (b) has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights."
    7.8 This definition allows me to consider whether the Domain Name constitutes an Abusive Registration at any time and not, for example, just the time of registration/acquisition.
    7.9 Paragraph 3 of the Policy provides a non-exhaustive list of the factors which may evidence that a domain name is an Abusive Registration. It is worthwhile setting out paragraph 3 of the Policy in full:
    "3. Evidence of Abusive Registration
    a. A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is as follows:
    i. Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:
    A 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 for the purpose of unfairly disrupting the business of the Complainant;
    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, or otherwise connected with the Complainant;
    iii. The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern;
    iv. It is independently verified that the Respondent has given false contact details to us; or
    v. The domain name was registered as a result of a relationship between the Complainant and the Respondent, and the Complainant:
    A has been using the domain name registration exclusively; and
    B paid for the registration and / or renewal of the domain name registration.
    b. Failure on the Respondent's part to use the Domain Name for the purposes of e-mail or a website is not in itself evidence that the Domain Name is an Abusive Registration.
    c. There shall be a presumption of Abusive Registration if the complainant proves that Respondent has been found to have made an Abusive Registration in three (3) or more Dispute Resolution Service cases in the two (2) years before the complaint was filed. This presumption can be rebutted."
    7.10 The Complainant does not expressly refer to any of these provisions in its Complaint. It is however relatively clear from the Complaint that the Complainant is attempting to bring its case within either paragraph 3(a)(i)(A), (B) and/or (C) and/or paragraph 3(a)(ii).
    7.11 In any event, paragraph 3(a) of the Policy is a list of non-exhaustive factors which may be evidence that the Domain Name is an Abusive Registration. It is therefore also relevant to consider in broader terms whether the Domain Name constitutes an Abusive Registration within the meaning set out in the Policy (see paragraph 7.7 above).
    7.12 The Domain Name is currently pointed towards a holding page which contains a number of links to other sites including at least one for pain relief products.
    7.13 This website looks to be one of the increasingly popular, "domain name parking" type websites which operate by paying the owner of the domain name a fee every time a link is, "clicked through". As the Complainant says, it is likely that customers or prospective customers of the Complainant will visit this website in error because it contains the Complainant's brand name (IONSYS). It follows that the Domain Name is likely to attract a relatively high volume of traffic and that a number of users who go to this website in error will consequently click on one of the links and this in turn will earn the Respondent an income.
    7.14 I have no doubt that by using the Domain Name in this way i.e. by relying on the Complainant's Rights in a name or mark which is identical to the Domain Name to generate traffic to a site linked to the Domain Name, the Respondent is taking unfair advantage of the Complainant's Rights and that the Domain Name is in the hands of the Respondent an Abusive Registration.
    7.15 Having reached this conclusion I will not go on and consider the other contentions put forward on behalf of the Complainant and I therefore conclude that the Respondent's use of the Domain Name constitutes an Abusive Registration.
  8. DECISION

    9. 8.1 I find that the Complaint has proved, on the balance of probabilities, that it has rights in a name or mark which is identical or similar to the Domain Name and that the Domain Name is an Abusive Registration in the hands of the Respondent. I therefore direct that the Domain Name be transferred to the Complainant.

    ……………………………..

    NICK PHILLIPS

    3rd July 2007

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URL: http://www.bailii.org/uk/cases/DRS/2007/4671.html