DISPUTE RESOLUTION SERVICE

DRS D06133

Decision of Independent ExpertEAS International B.V.

and

Charles Simon Garforth

1.	Parties:

Complainant:		EAS International B.V.
Country:		NL

Respondent:		Charles Simon Garforth
Country:		GB

2.	Domain Name:

myoplex.co.uk

3.	Procedural Background:

The Complaint was entered into the Nominet system on 12 August 2008 and was validated on 13 August 2008.  Also on 13 August 2008, Nominet wrote to the Respondent advising him that the Complainant had invoked Nominet’s Dispute Resolution Service to complain about his registration of myoplex.co.uk and that he had until 4 September 2008 to respond.  No response was received by 4 September 2008, or at all.  The fee to obtain an independent Expert’s decision under Nominet’s Dispute Resolution Service Policy (the ‘Policy’) was paid to Nominet on 16 September 2008 and Jon Lang was appointed as the independent Expert on 23 September 2008.  The Expert confirmed to Nominet that he was independent of the parties and knew of no facts or circumstances that might call into question his independence in the eyes of the parties.

4.	Outstanding Formal/Procedural Issues

The Respondent has not responded to the Complaint within the time period set by paragraph 5 of Nominet’s Dispute Resolution Service Procedure (the ‘Procedure’) or at all, despite the Respondent having been notified of the Complaint.  Paragraph 15.b. of the Procedure enables the Expert, absent exceptional circumstances, to proceed to give a Decision despite the default of a party.  Paragraph 15.c. enables an Expert, again absent exceptional circumstances, to draw such inferences as are appropriate from a party’s non-compliance. 

5.	The Facts

Given the documentary material submitted by the Complainant and in the absence of any contrary (or indeed any) evidence from the Respondent, the Expert accepts as facts those represented as such by the Complainant.  A summary is set out below.

The Complainant is a leading science-based sports nutrition company and a wholly-owned subsidiary of Abbott Laboratories, a global health care company. It offers consumers numerous products for daily nutrition, strength building, training recovery and specific fitness goals.  

The Complainant is the owner of Madrid Trade Mark Reg. No. 752040 (extending to Great Britain), registered on 18 January 2001 for the mark MYOPLEX, in International Classes 29, 30, and 32.  The Complainant’s sister company and parent company also own, respectively, Community Trade Mark Registration No. 1888270, registered on 3 April 2003 for the mark MYOPLEX in International Classes 5, 29, 30, and 32, and Community Trade Mark Registration No. 5404108, registered on 27 March 2008 for the mark MYOPLEX RACE RECOVERY in International Classes 5, 29, and 32.  The Complainant, or its sister or parent companies also own at least 16 other trade mark registrations for MYOPLEX in at least 13 other countries.

The Complainant’s MYOPLEX products were first sold in 1990.  The current MYOPLEX product line includes nutrition bars and nutrition drinks, in both powder and ready-to-drink form.  Packaging for the Complainant’s products prominently features its MYOPLEX trade mark as well as the EAS corporate logo.  The Complainant sells its MYOPLEX products online and in retail locations all over the world.  

The Complainant began selling its MYOPLEX products in the UK in 2003, and has sold its products (in the UK) continuously since this time.  The Complainant’s primary websites at www.myoplex.com and www.eas.com provide online information about MYOPLEX products (and offers them for sale). 

The Complainant registered the <myoplex.com> domain name on October 12, 2003, and it has been in use since this time.  

The Respondent registered the domain name in dispute, <myoplex.co.uk>, (the ‘Domain Name’) on November 10, 2003.  At the time of the Complaint the Domain Name resolved to a website operated by the Respondent as described more fully below.

6.	The Parties’ Contentions

The Complainant

•	The  Domain Name incorporates the Complainant’s trade mark in its entirety.  The mere addition of the generic top-level domain “.co.uk” does not negate the confusing similarity between the Domain Name and the Complainant’s mark.  
•	The MYOPLEX trade mark was in use by the Complainant and registered as a trade mark long before the Respondent registered the Domain Name.  
•	The Respondent’s registration of the Domain Name took place just one month after the Complainant registered its own <myoplex.com> domain name.
•	The Respondent is operating a commercial website at the Domain Name that prominently features the Complainant’s MYOPLEX trade mark and EAS corporate logo and purports to sell the Complainant’s MYOPLEX products. 
•	The Complainant has not licensed, authorised, or otherwise consented to the Respondent’s use of its mark as part of a domain name or on a website, or for any other purpose.  Neither has the Complainant licensed, authorised, or otherwise consented to the use of its EAS corporate logo on the Respondent’s website.  
•	The Complainant and Respondent do not have any relationship or affiliation with one another whatsoever.  
•	To the Complainant’s knowledge, the Respondent has not been commonly known by “Myoplex” and is simply using the Complainant’s MYOPLEX trade mark and EAS corporate logo to pass himself off as the Complainant for his own commercial gain.  
•	The Respondent is abusively using a domain name that is identical to the Complainant’s mark to attract consumers to its own commercial website.  
•	The Respondent has registered <myoplex.co.uk> primarily for the purpose of unfairly disrupting the business of the Complainant.  The Respondent was aware of (and no doubt planned to capitalise upon) the Complainant’s rights in and use of the MYOPLEX mark when he registered and used the Domain Name.  The Respondent has styled the look of his website at <myoplex.co.uk> to resemble that of a corporate website.  This website features the Complainant’s EAS logo, but has done nothing to disclaim any relationship with the Complainant, or to dispel any possible suggestion that it is the Complainant, or that it might be an official website of the Complainant.  
•	The Complainant has not licensed, authorised, or otherwise consented to the sale of MYOPLEX products by the Respondent.  
•	The Respondent’s conduct cannot be considered to amount to a genuine offering of goods or services, and it certainly does not demonstrate a legitimate non-commercial or fair use of the Domain Name.  
•	The Respondent’s failure to indicate a lack of relationship with the Complainant on a commercial website that features the Complainant’s MYOPLEX trade mark and corporate EAS logo, selling MYOPLEX-branded goods that may be counterfeit, at a domain name incorporating the Complainant’s MYPOLEX trade mark, is evidence of the Respondent’s abusive registration and use of the Domain Name.  
•	The Domain Name should also be considered an abusive registration because it is used by the Respondent in a way which has already confused people into thinking that the website at the Domain Name is registered to, operated or authorised by, or otherwise connected with or controlled by the Complainant.  Specifically, persons ordering the Complainant’s product from Respondent’s website have telephoned the Complainant’s parent company, Abbott Laboratories, to complain about the slow speed of delivery of their order.  These persons obviously are confused and have been misled by the Respondent’s website, erroneously believing that it is controlled by, authorised by, or affiliated with the Complainant and/or its parent company.   Such instances of confusion are highly likely to continue if the Respondent is allowed to maintain operation of its website at the Domain Name.
•	Moreover, the Domain Name should also properly be considered an abusive registration because the Respondent registered it with incorrect information.  Specifically, Nominet UK’s WHOIS information for the Domain Name does not include the Registrant’s contact information.  The WHOIS entry states “The registrant is a non-trading individual who has opted to have their address omitted from the WHOIS service.”  This is a patently false statement to the registrar, since the website at the Domain Name is only used for a business purpose, namely to sell purported goods of the Complainant without the Complainant’s authorisation.  The entire website is commercial, and as such, the Respondent made materially incorrect statements in the Domain Name’s registration.  This amounts to an abusive registration under the Policy and Procedure.
•	The evidence submitted by the Complainant establishes that the Complainant has Rights in respect of the trade mark MYOPLEX which is identical to the Domain Name, and that the Domain Name, in the hands of the Respondent, is an abusive registration.  
•	In summary, the Complainant contends that the Domain Name should be transferred.

The Respondent

The Respondent did not respond.

7.	Discussion and Findings

General 

Paragraph 2 of the Policy provides that, to be successful, a Complainant must prove (regardless of any failure of the Respondent to respond to a complaint) on the balance of probabilities that: 
i) it 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 (as defined in paragraph 1 of the Policy).

Complainant’s rights

Having reviewed the documentary material submitted with the Complaint, the Expert is satisfied that the Complainant has rights in the mark MYOPLEX. Disregarding the generic ‘.co.uk’ suffix, as of course an Expert is entitled to do, the MYOPLEX mark is identical to the Domain Name. The Complainant has therefore satisfied the first requirement of paragraph 2 of the Policy.  

Abusive Registration

Paragraph 1 of the Policy defines ‘Abusive Registration’ as a domain name which was either ‘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 Complaint’s Rights or which has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complaint’s Rights;’.

A non-exhaustive list of factors which may indicate that a domain name is an abusive registration is set out in paragraph 3 of the Policy.   A non-exhaustive list of countervailing factors is set out in paragraph 4 of the Policy.

The factors listed in paragraph 3 include where there are ‘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;’.  The Complainant expressly alleges that these circumstances, as well as others pointing to abusive registration, exist.  

Such other factors include circumstances indicating that a respondent has registered or otherwise acquired a domain name primarily for the purposes of unfairly disrupting the business of a complainant, or where it is independently verified that a respondent has given false contact details. 

The non-exhaustive list of countervailing factors set out in paragraph 4 of the Policy includes circumstances indicating that before being aware of a complainant's cause for complaint, a respondent has:
a) used or made demonstrable preparations to use the domain name or one that is similar in connection with a genuine offering of goods or services;
b) been commonly known by the name or legitimately connected with a mark which is identical or similar to the domain name;
c) made legitimate non-commercial or fair use of the domain name. 

Other countervailing factors include circumstances where the domain name is generic or descriptive and the respondent is making fair use of it.

Abusive registration often arises from the use of a name of a well known company or trade mark in a domain name, as is the case here.  But it is not always the case that use by a third party of a trade mark owner’s marks will be actionable under the Policy.  An Expert must consider each case on its own merits.  

In the Expert’s opinion, the Complainant has satisfied the burden of proof of showing that the Respondent is using the Domain Name in a way which has confused or is likely to confuse people or businesses into believing that it is registered to, operated or authorised by, or otherwise connected with the Complainant.  The Complainant has in fact described instances of actual confusion where purchasers from the Respondent’s site have called the Complainant’s parent complaining about slow speed of delivery.   Indeed, given the general get up of the Respondent’s site i.e. its use of the Complainant’s MYOPLEX trade mark and corporate EAS logo, and the offering for sale of MYOPLEX-branded goods,it is the Expert’s view that an appreciable number of people visiting the site could be confused into believing it is either operated by, authorised by or connected with the Complainant.  It should also be mentioned that there is no notice disclaiming any relationship with the Complainant, or other notice to dispel any belief that it is the Complainant or that it might be an official website of the Complainant.

In these circumstances it is not difficult to conclude that this is a case of abusive registration.  The Respondent has used the Domain Name in a way that has taken unfair advantage of the Complainant’s rights.  It is likely that of those visiting his website, a significant number would have been searching for the Complainant’s site and, once at his site, would have believed, by its general get up that it was an ‘official’ site or in some way authorised by or affiliated with the Complainant.  Visitors purchasing products may well not have done so had they not held this mistaken belief.  

Moreover, given the possibility of confusion, any negative impression given to visitors by the Respondent’s operation of the site may well be attributed to the Complainant, not the Respondent.  The site is completely outside the control of the Complainant yet, when things go wrong it is possible, in some circumstances at least, that the Complainant would suffer.  Indeed, there are examples of this in the form of complaints being made to the Complainant’s parent company about slow delivery of products ordered from the Respondent’s site.  In the Expert’s opinion this constitutes unfair detriment to the Complainant.  

In the light of the evidence and findings above, the Expert also finds that circumstances exist indicating that the Respondent has registered the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant.  It is perhaps telling, when considering the primary (albeit perhaps not only) purpose of the Respondent in registering the Domain Name, that the Respondent’s registration took place just one month after registration of the <myoplex.com> domain name.  It would have been obvious when the Respondent registered the Domain Name that some consumers looking for Myoplex products would end up at the Respondent’s site when in fact they hoped to find the Complainant’s site and, once there, would have been confused into believing that in fact they were at the Complainant’s site.  Indeed it is difficult to conclude that such a course of events was anything other than the Respondent’s design.  The Expert therefore concludes, on a balance of probabilities, that the primary purpose of the Respondent’s registration was to unfairly disrupt the Complainant’s business.  

Finally, mention should be made of the Complainant’s allegation that the Respondent registered the Domain Name with incorrect information.  As noted earlier, the non-exhaustive list of factors indicating that the Domain Name is an abusive registration include where there is independent verification that the Respondent has given false contact details.  It is not obvious that this is the case here, but the WHOIS database does indicate that the Respondent is a ‘non-trading individual’ which does not appear to be the case.  

As earlier noted, whilst there can be innocent reasons for a third party using a complainant’s name or mark in a domain name, the Respondent has not come forward and advanced any in these proceedings.  He has not explained the entry in the WHOIS database which describes him as a ‘non-trading individual’, which as noted above, appears to be an inaccurate description, or countered the suggestion of the Complainant that goods offered on his website may be counterfeit.  He has not come forward to explain anything at all and in the absence of any evidence from the Respondent challenging the Complaint, the Expert assumes that it is unlikely that there could be any innocent explanation as to why he chose to use the Complainant’s mark in the Domain Name.  Indeed a review of the albeit non-exhaustive list of countervailing factors in paragraph 4 of the Policy, would not appear to cast doubt on a conclusion that there has, in this case, been an abusive registration.  

Accordingly the Expert finds, on a balance of probabilities, that the Respondent registered and/or has used the Domain Name for an abusive purpose and therefore, that myoplex.co.uk constitutes, in the hands of the Respondent, an abusive registration.

8.	Conclusion

Having found that the Complainant has rights in respect of a mark which is identical to the Domain Name and that the Domain Name in the hands of the Respondent is an abusive registration, the Expert determines that the domain name, myoplex.co.uk, should be transferred to the Complainant. 

Signed Jon Lang				Dated 10 October 2008