DNA Structures Ltd (t/a DNA Bioscience) v DNA Solutions [2004] DRS 1812 (27 July 2004)

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The Complaint was submitted to Nominet on 2 June 2004, and hard copies of the Complaint were received in full by Nominet on 3 June 2004. On 8 June 2004, the Complaint was validated by Nominet. On the same day, the Complaint was sent to the Respondent, by post, to addresses in Australia (the address provided in the whois information) and the UK and by e-mail. The Respondent was informed that it had 15 working days, that is, until 2 July 2004, in which to respond to the Complaint.

No response has been filed by the Respondent and so mediation was not possible. On 8 July 2004, the Complainant paid the fee to obtain an Expert Decision pursuant to paragraph 6 of the Nominet Dispute Resolution Service Policy (“the Policy”).
On 9 July 2004, Antony Gold, the undersigned, (“the Expert”), confirmed to Nominet that he knew of no reason why he could not properly accept Nominet’s invitation to him to act as an Expert in this case.

The Respondent failed to submit a response to Nominet within the time stipulated in paragraph 5 of the Nominet UK Dispute Resolution Service Procedure (“the Procedure”). Paragraph 15 b of the Procedure states that where a party (in the absence of exceptional circumstances) does not comply with any time period laid down in the Policy or the Procedure, the Expert will decide the dispute based upon the Complaint. Paragraph 15 c of the Procedure states, in summary, that if, in the absence of exceptional circumstances, a party does not comply with any provision in the Policy or the Procedure, the Expert will draw such inferences from the party’s non-compliance as he or she considers appropriate. The Expert is not aware of any exceptional circumstances.

The Complainant asserts that it has Rights in the name DNA BIOSCIENCE and that the registration of the Domain Name by the Respondent is an Abusive Registration. However, it has submitted only limited evidence to support its assertions.
The Complainant has made a number of assertions in the Complaint about its registered trade mark and a trade mark application. However, the two documents which were enclosed with the Complaint do not entirely support the Complainant’s assertions (see below). The Complainant also states that it has been trading under the name DNA BIOSCIENCE since about 2001. It claims as well that “the complainant is frequently referred to in the media”. However, no evidence has been provided to support these assertions, such as pages from the Complainant’s website, the volume of sales of goods or services sold under the name, the amount of money it has spent on advertising and promoting the name, samples of press releases or articles which have featured the Complainant and the length of time for which the name has been used.

The Complainant has also provided little evidence to support its claim that the registration of the Domain Name is an Abusive Registration beyond the assertions that the Respondent is a competitor of the Complainant and that the registration of the Domain Name is (i) a blocking registration and/or (ii) has been registered to unfairly disrupt the business of the Complainant and/or (iii) has caused people to be confused into believing that the Domain Name is connected to the Complainant.

In this case, the Expert has considered whether to request further statements or documents from the Complainant in order to give it the opportunity to bolster its case. The decisions in Chivas Brothers Limited v David William Plenderleith (DRS 292) and HIT Entertainment Plc v Tom Loosemore (DRS 1544) both consider the circumstances in which it may be appropriate for the Expert to request further statements or information from the parties. In the Chivas decision, the Expert considered whether the Complaint should be dismissed out of hand on the basis that, on the face of the Complaint, the Complainant did not possess the rights claimed by it, or whether the Expert should conduct an online check at the Trade Marks Registry to verify whether there had been assignments of the trade marks. The check would only take a few minutes. The Expert was not prepared to adopt the third option which was to incur further time going back to the Complainant, inviting it to improve its position. The Expert commented that experts will be “getting tough” in relation to defective complaints. However, acknowledged that, in all other respects, the Complaint was a full and properly prepared document and, on that basis, he undertook an on-line search to ascertain the missing information.

In the HIT Entertainment decision, the Expert distinguished the complaint from Chivas as the Complaint in HIT was not, in the Expert’s view, a properly prepared document. In HIT, the Expert noted that “…some of the trade marks cited appear to have no relevance whatsoever to the name under dispute, others are cited but no copy certificates are produced, the nature of the Complainant’s activities is not specified…”. In the current case, the Complaint is also not properly prepared. The only documentation which the Complainant has enclosed with the Complaint is a copy of a Certificate of Registration for a trade mark and a copy of a filing receipt in respect of a trade mark application.

The Expert agrees with the view of the experts in the Chivas and HIT Entertainment decisions and has concluded that it is not appropriate to invite the Complainant to improve its position by way of using Paragraph 13 of the Procedure to obtain further information from it. In this case, the Expert could conduct further searches to try to assess or verify the Rights of the Complainant in the name, for example, by reviewing the Complainant’s website at dnabioscience.com in order to see the use made by the Complainant (if any) of the name DNA BIOSCIENCE and to obtain further information about the Complainant and the Respondent. However, the inadequacies in the Complaint are not confined to the issue of whether the Complainant has Rights in the Domain Name. Beyond setting out information about the background to the claim and making the assertion that the Domain Name in the hands of the Respondent is an Abusive Registration, the Complainant has not attempted to develop a coherent case as to why the Expert should reach this finding (see below). Accordingly, the Complainant would also need to formulate its case in relation to paragraph 2a(ii) of the Policy if it were to have any prospect of success. In the view of the Expert, the Complainant is expected to prove its case on the balance of probabilities and must put forward the best case which it can in the complaint. It is not the Expert’s role to undertake this exercise for the Complainant.

In these circumstances, the Expert has not conducted any further searches to assess or verify the Rights of the Complainant in the name (save other than to obtain information about the Complainant’s trade mark, online, at the Trade Marks Registry for the reasons set out below) and the Expert will consider the merits of the Complaint on the basis of the information provided by the Complainant.

In the absence of a Response, the Expert accepts as accurate (save as indicated later in this decision) the Complainant’s account of the background giving rise to its Complaint. The material facts appear to be that:

i. The Complainant has been trading since 2001.   It originally traded under the name “Avi Lasarow “T/A DNA Bioscience””.
ii. The Complainant is a DNA relationship testing organisation which, it asserts, has been recognised by the Department of Constitutional Affairs.
iii. The business of the Complainant was subsequently incorporated under the name DNA Structures Limited, although the Complainant asserts that it trades under the name DNA BIOSCIENCE. However, the Complainant has not filed any evidence to support this assertion, such as copies of pages from its website or other company marketing literature.
iv. The Complainant states that it is the registered proprietor of the domain name, dnabioscience.com, which it registered on 3 November 2001.
v. The Complainant also states that it has incorporated a company, DNA Bioscience Limited, “to protect branding”. However, the Complainant has not provided any further information about this company and it is unclear whether, in fact, this company provides any goods or services and, if so, the name under which any such services are provided.
vi. The Complainant states that it is the registered proprietor of the UK trade mark for the words DNA BIOSCIENCE TODAY and that the mark has been registered in connection with class 40 services. No further information is provided in the Complaint about the use which the Complainant has made of this mark. The Complainant enclosed a (poor) copy of the Certificate of Registration. As the quality of the copy of the Certificate of Registration might have been due to circumstances outside the control of the Complainant, the Expert has reviewed the mark, online, at the Trade Marks Registry.   The application was filed on 1 October 2003 and was registered on 27 February 2004.   It is a device and word mark for DNA BIOSCIENCE TODAY PRESERVING YOUR PRECIOUS RESOURCE. This is different from the information provided in the Complaint.
vii. The Complainant also asserts that it has filed a trade mark application for the name DNA BIOSCIENCE which is currently being advertised. The Complainant has, provided a copy of a filing receipt from the Trade Marks Registry from which it appears that the application for a word and device mark, in class 42, was filed on 25 February 2004. The words comprised within the mark applied for are DNA BIOSCIENCE A GENETICS DISCOVERY COMPANY. Again, this is different to the statement made in the Complaint.
viii. The Complainant states that it has made further applications for registered trade marks. No further information is provided in the Complaint about the applications.
ix. The Complainant also states that it frequently appears in the media. No evidence has been filed to support this assertion.
x. The Domain Name has been registered by the Respondent which, the Complainant states, is a competitor. No further information about the Respondent was provided by the Complainant. However, as with every Complaint, Nominet has provided the Expert with a copy of a screen shot of the home page of to which the Domain Name resolved. As at 8 June 2004, the home page contains a statement: “Welcome to LCG bioscience. Focus on success”.
xi. The Complainant states that the Respondent has registered the Domain Name and diverted traffic to its web site. However, it is stated that “..this has now changed since making this application but investigation with the domain registrar and hosting provider will proove (sic) that the diversion has changed to re-inforce their rights over the domain…”.

The Complainant makes no attempt to establish in any structured way the issues which it is necessary for it to satisfy in order for it to succeed with its Complaint. The Complainant’s case would appear to be that the Domain Name (i) is identical or similar to a name or mark in which the Complainant has Rights, (ii) in the hands of the Respondent is an Abusive Registration as:

(i) it is a blocking registration against the name or mark in which the Complainant has Rights;

(ii) it was registered for the purpose of unfairly disrupting the business of the Complainant; and

(iii) the Respondent has used it 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.

Requirements which must be satisfied in order for the Complaint to succeed
In order to succeed, the Complainant must prove, on the balance of probabilities, that:-
· it has Rights in respect of a name or mark which is identical or similar to the Domain Name (paragraph 2(a)(i) of the Policy); and
· the Domain Name in the hands of the Respondent, constitutes an Abusive Registration (paragraph 2(a)(ii)).
Paragraph 2a(i) - the Complainant’s Rights
The Complainant asserts that the Domain Name is identical or similar to a name or mark in which the Complainant has Rights. The Expert accepts that the Domain Name is similar to, and arguably identical to, the words DNA BIOSCIENCE, it being usual to ignore to “.co.uk” suffix and the absence of a space between “DNA” and “BIOSCIENCE” (inevitable in the context of a domain name) being of negligible, if any, significance.

The meaning of Rights under the Policy includes rights enforceable under English law. Where a Complainant has relevant registered trade marks, it is usual for it to refer to them as evidence of its Rights in a particular name. In the Complaint, the Complainant asserts that it has a registered trade mark for the words DNA BIOSCIENCE TODAY. In fact, the trade mark is for a device and word mark for DNA BIOSCIENCE TODAY PRESERVING YOUR PRECIOUS RESOURCE. The trade mark is not identical to the words DNA BIOSCIENCE. Accordingly, the Expert considers that the trade mark does not, in itself, support the Complainant’s assertion that it has Rights in the name DNA BIOSCIENCE. Even taking a generous construction of the rights provided by the mark, the Complainant’s rights might be in DNA BIOSCIENCE TODAY rather than DNA BIOSCIENCE. The same point applies to the application. Where the word elements of the mark are essentially descriptive the distinction is not without significance because the Complainant’s rights need to be clearly defined. The Complaint does not help do this. It is possible that the mark and the application point to a desire by the Complainant to trade as DNA BIOSCIENCE but beyond making this inference, no further assumptions can be made in favour of the Complainant about the nature and extent of its Rights in the name DNA BIOSCIENCE.

The Complainant states that it has registered the domain name, dnabioscience.com. However, the Complainant has not provided any copies of pages from the website nor has it provided any other evidence to support its assertion that it trades under the name DNA BIOSCIENCE, such as details of the number of hits to its website or marketing material. No information is provided about the services provided by the company, DNA Bioscience Limited. The only documentation with which the Expert has been provided by the Complainant, beyond the short Complaint itself, is described above. These documents do not establish on a balance of probabilities that the Complainant, DNA Structures Limited (t/as DNA Bioscience) has rights in a name which is identical or similar to the Domain Name.

It is not appropriate for the Expert to make assumptions on behalf of the Complainant in the absence of evidence. It is for the Complainant to make its case, not for the Expert to do so. The Expert is required to decide the Complaint based on the parties’ submissions, the Policy and the Procedure (paragraph 16 a of the Procedure). Having regard, in particular, to the requirements of paragraph 3 b (v) and 3 b (x) of the Procedure (set out above), the Expert does not find that the Complainant has established that, on a balance of probabilities, it has Rights in the name DNA BIOSCIENCE.
Paragraph 2a(ii) - Abusive Registration
Strictly, a determination that the Complainant has not established that it has Rights in a name similar or identical to the Domain Name is determinative of the Complaint. Nonetheless, for the sake of completeness, it is sensible to consider the limited submission made by the Complainant in relation to the issue of Abusive Registration.
As indicated above, the Complaint is defective under paragraph 3 b (v) of the Procedure as it does not adequately explain the grounds on which the Complainant considers the registration to be Abusive in the hands of the Respondent.

(i) was registered or otherwise acquired in a manner which, at the time 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 constitute evidence that the Domain Name is an Abusive Registration are set out at paragraph 3 of the Policy. Whilst the list of factors referred to above is not exhaustive, and the definition of what constitutes an Abusive Registration is not restricted to the matters outlined at paragraph 3 of the Policy, it is nonetheless for the Complainant to seek to explain why the Domain Name in the hands of the Respondent should be regarded as an Abusive Registration.
The Complainant asserts that the registration of the Domain Name is an Abusive Registration on the following grounds:-
Paragraph 3a.i.B: Blocking Registration against a name in which the Complainant has Rights
There is no evidence provided to support this assertion. Accordingly, the Expert does not find that the Domain Name was registered by the Respondent as a blocking registration.

Paragraph 3a.i.C: For the purpose of unfairly disrupting the business of the Complainant
In the Complaint, it is stated that “the respondent has furthermore registered the domain and diverted traffic to their website primarily for the purpose of unfairly disrupting the business of the Complainant”. This has now changed since making this application but investigation with the registrar and hosting provider will proove (sic) that the diversion has changed to re-inforce their rights over the domain”. This assertion is not developed at all. Further, it is not for the Expert to undertake an investigation with the registrar and hosting provider.

The only information which the Complainant has provided about the Respondent is that the “the respondent is a competitor and seeking to gain business as a direct result of our name and branding”. However, no further information or evidence to support this assertion has been provided by the Complainant. A page to which the Domain Name resolved on 8 June was included in the materials provided to the Expert by Nominet but no attempt is made to explain its significance. The Complainant, itself, has not provided any information about the Respondent or its use of the Domain Name. Accordingly, the Expert does not consider that, on the balance of probabilities, the Respondent registered the Domain Name to unfairly disrupt the business of the Complainant.
Paragraph 3a.ii : the Respondent has used it 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.

In the Complaint, it is stated that “the complainant is frequently referenced in the media and the respondent is using our brand name and trademark for the purpose of directing internet traffic to their website”. However, no evidence is provided in support of the assertion that the Respondent is using the Domain Name in a way which has, in fact, confused people or businesses into believing that the Domain Name is, in some way, connected to the Complainant.

The Expert does not find that the Complainant has been able, on the balance of probabilities, to satisfy the requirements of paragraph 2 of the Policy and, as a consequence, the Complainant’s request for transfer of the Domain Name is refused.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> DNA Structures Ltd (t/a DNA Bioscience) v DNA Solutions [2004] DRS 1812 (27 July 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1812.html Cite as: [2004] DRS 1812