[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback]
	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> DR & Herbs v Ormerod [2005] DRS 2750 (12 September 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/2750.html Cite as: [2005] DRS 2750

[New search] [Printable RTF version] [Help]

 


Nominet UK Dispute Resolution Service

DRS 02750

Dr & Herbs -v- Owen Ormerod

Decision of Independent Expert

1. Parties:

Complainant: Dr & Herbs

Respondent: Owen Ormerod

2. Disputed Domain Name:

drandherbs.co.uk

3. Procedural Background

The Complaint was received in full by Nominet on 24 June 2005. The Complaint was validated on 30 June 2005 and was sent by Nominet to the Respondent on that date. Nominet informed the Respondent that it had 15 working days, i.e. until 22 July 2005, to respond to the Complaint.

By 26 July 2005, no formal Response having been received from the Respondent, Nominet wrote to the Complainant confirming that no Response had been filed and invited the Complainant to request an Expert Decision.

The Complainant duly paid the fee within the relevant time limit and the matter was duly referred to me, Simon Chapman, ("the Expert") for an Expert Decision following confirmation to Nominet that I knew of no reason why I could not properly accept the invitation to act in this case and of no matters which ought to be drawn to the attention of the parties, which might appear to call into question my independence and/or impartiality.

4. Outstanding Formal/Procedural Issues

The Respondent has not submitted a formal response to the Complaint. From the papers that have been submitted by Nominet to me it is apparent that they have sent the Complaint to the Respondent by post and e-mail to the contact details held on Nominet's register.

When registering a .uk domain name applicants agree to be bound by Nominet's Terms and Conditions. Clause 4.1 of those terms and conditions states that:-

"4.1               give and keep us notified of your correct name, postal address and any phone, fax or e-mail information and those of your contacts (if you appoint any, see condition 5.2). This duty includes responding quickly and correctly to any request from us to confirm or correct the information on the register"

In addition paragraph 2(e) of the Dispute Resolution Procedure (the "Procedure") states that :-

"e.         Except as otherwise provided in this Procedure or as otherwise decided by us or if appointed, the Expert, all communications provided for under this Procedure shall be deemed to have been received:

i.             if sent by facsimile, on the date transmitted; or

ii.            if sent by first class post, on the second Day after posting; or

iii.          if sent via the Internet, on the date that the communication was transmitted;

iv.          and, unless otherwise provided in this Procedure, the time periods provided for under the Policy and this Procedure shall be calculated accordingly."

In light of the above it is my view that Nominet has done everything that it is obliged to do to bring the Complaint to the attention of the Respondent.

On considering the Complaint I determined that there were a number of matters upon which it would be helpful to have further information. I communicated this request to Nominet on 22 August, together with a timetable for the provision of that information, and a revised deadline for my Decision. This request was communicated by Nominet to the parties on the same day, and resulted in a Further Statement being submitted by the Complainant on 26 August. This was sent under cover of a letter on the notepaper of a company called Tian Tian (wu) Ltd, and was signed by Dr John Wu. This was communicated to the Respondent on 30 August, and to date no response to that Further Statement has been received. I am satisfied that Nominet has done everything that it is obliged to do to bring the Claimant's Further Statement to the attention of the Respondent.

An additional matter that I should mention is that my request for Further Statements, appears to have prompted a letter from a company by the name of Tian Tian (Sun) Ltd. This letter, dated 6 September, was received by Nominet on the same date and was forwarded by Nominet to the Complainant also on the same date. This company does not appear to be directly connected to the parties, and nor does it as far as I can tell have any status in these proceedings. It is also not clear on whose behalf the letter is submitted. For those reasons I do not accept the letter as a valid submission. I do however provide further details below, only for the purposes of greater explanation of this rather curious development.

I now move on to consider the consequences of the Respondent not submitting a response.

The procedure envisages just such a situation and provides in Paragraph 15 that:-

"c. If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure or any request by us or the Expert, the Expert will draw such inferences from the Party's non compliance as he or she considers appropriate."

I am not aware of any exceptional circumstances to explain why the Respondent should not have responded to the Complaint, and as such believe it appropriate to proceed to a Decision.

I will draw such inferences from the Respondent's failure to respond as I think appropriate, but must bare in mind that there may be a number of reasons why a respondent might fail to serve a response, for example that they have nothing useful to say, or that the Complaint has not in fact come to their attention.

5. The Facts

The Complainant, is named as Dr & Herbs. It initially asserted that the Respondent was/is one of its staff and registered the Disputed Domain name without the Complainant's permission. It subsequently changed its position in its Further Statement and said that it had no record that the Respondent was on its staff. The Complainant uses the domain name which is directed to a website operated by it. It also asserts that the content of the site to which the Disputed Domain Name is pointed, is copied from a further website at owned by it. However this site presently does not appear to be active and resolves to a page which indicates that the website is under construction.

The website at states that ""Dr & HERBS" means Dr&HERBS Ltd, Tian Tian (wu) Ltd…". From my own investigations, I have ascertained that Dr & Herbs Ltd was incorporated on 19 July 2000, and its directors are identified as being Grace Wu and John Wu. Tian Tian (wu) Ltd was incorporated on 1 August 2002, and its director is stated as being John Wu.

The Complainant asserts that it has the right to grant permission to use the Dr & Herbs trade mark by virtue of its interest in the UK registered trade mark "Dr & Herbs", No 2191382. The trade mark was registered with effect from 10 March 1999. It was originally registered with the proprietor identified as "Dr & Herbs", but the proprietor details were subsequently rectified to show Mr John Wu as the proprietor. Mr Wu is identified in the Complaint as the Complainant's contact person and it is he that Nominet have corresponded with. He is also the signatory to the Complainant's Further Statement.

The Disputed Domain Name resolves to a website that appears to relate to a shop in Stirling, Scotland that is trading as Dr & Herbs. The website gives the address of the shop as Unit 44c, King's Mall, Thistle Centre, Stirling. The proprietor of the shop is identified as Tian Tian (UK) Ltd. This company was incorporated on 20 August 1997, and its directors are Jian Sun, Min San, Grace Wu and John Wu.

The website (the 'official' website for the Complainant), lists some 50 or more locations where its shops are trading and included amongst them is Stirling, and lists the same address for the shop as appears on the website to which the Disputed Domain Name is pointing.

The Claimant asserts that whilst Tian Tian (UK) Ltd has been granted the right to use the Dr&Herbs name, there is no special arrangement such as to allow it to use the name on the internet.

During the period for exchange of Further Statements, a letter was received by Nominet from Tian Tian (Sun) Ltd. That company was incorporated on 25 July 2002, and its directors are Min Sun and Tian Sun. The letter includes the following paragraph -

"Please note that we give authorisation for the current domain name holder to use Dr & Herbs trademark legally and use the domain name."

In support of the Complainant's submission that the Disputed Domain Name is causing confusion, it provides a letter addressed to John Wu, Dr & Herbs at the Stirling address, which it is suggested was sent via email to the wrong address.

6. The Parties Contentions

Complainant

The Complainant contends that the Domain Name is identical or similar to a name or mark in which it has Rights, namely its registered trade mark DR & HERBS.

The Complainant asserts that the Disputed Domain Name in the hands of the Respondent is an Abusive Registration because they are restricted to using the website; the use of the Disputed Domain Name is without their permission; and further that the use of the Disputed Domain Name is causing confusion.

The Complainant requests that the Disputed Domain Name be transferred.

Respondent

As stated above, the Respondent has not filed a Response.

7. Discussions and Findings

General

To succeed in this Complaint, the Complainant must, in accordance with paragraph 2 of the Dispute Resolution Service Policy ("the Policy"), prove to the Expert on the balance of probabilities that:

(i) it has Rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Disputed Domain Name; and

(ii) the Disputed Domain Name in the hands of the Respondent is an Abusive Registration (as defined in paragraph 1 of the Policy).

Burden

Despite the absence of a response from the Respondent, the Complainant must make out its case to the Expert on the balance of probabilities. It is still incumbent on the Expert to assess the admissibility, relevance, materiality and weight of the evidence as presented in the Complaint (see Paragraph 12b of the Procedure).

Who is the correct Claimant

Getting to the bottom of what the correct factual matrix is in this dispute has been no easy task, and I am far from certain that I have been able to do so with any great degree of certainty. The Claimant is identified in the Complaint as 'Dr & Herbs', although to what legal entity this refers is unclear. On the one hand Dr John Wu is seemingly the proprietor of the registered trade mark and the rights therein, upon which the Complaint is seemingly founded. On another, the Complainant's evidence, or more correctly my investigations arising from that evidence, suggests that the Complainant might be Dr & HERBS Ltd or Tian Tian (wu) Ltd.

In more formal proceedings this lack of precision by the Complainant might be fatal to its claim. However in the present proceedings one is reminded that the dispute resolution procedure is intended to be a simple and costs effective mechanism by which parties can resolve their differences, and in that respect is necessarily less formal than other procedures. In addition to this I am also mindful that Dr Wu is both the recorded proprietor of the registered trade mark, and a director of both Dr & HERBS Ltd and Tian Tian (wu) Ltd, and from the evidence I have seen, would appear to have granted rights to those companies (or at least the latter) to use the trade mark.

For present purposes I am prepared to accept that Dr John Wu, Dr & HERBS Ltd and Tian Tian (wu) Ltd are collectively the Complainant.

Complainant's Rights

The Complainant trades as 'DR & HERBS' and is the proprietor of a registered UK Trade Mark for the same word.

The first (.uk) and second (.co) levels of the Domain Name should be discounted for the purposes of comparison as being of a generic nature. I find that the Complainant has established that it has Rights in respect of a name or mark which is identical to the Domain Name.

Abusive Registration

Paragraph 1 of the Policy defines "Abusive Registration" as a Domain Name which either:

(i) 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

(ii) has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainants Rights.

A non-exhaustive list of factors, which may be evidence that the Disputed Domain Name is an Abusive Registration, is set out in paragraph 3 of the Policy. The Complaint has identified certain conduct reflected in the Policy as follows:

i.              Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

…

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.

In the present dispute, the Complainant has asserted that it has not given the Respondent authority to use the trade mark that is incorporated in the Disputed Domain Name. It is clear that in addition to the registration of the mark, there has been substantial use of the mark in connection with the business conducted by the Complainant. The mark itself is far from being a generic term, and the use that has been made of the Disputed Domain Name is specifically directed to a website that refers to business being conducted by a company that is not the Complainant, although it is clearly linked in some way.

One of the peculiarities of this case is that a link does exist between the Complainant and the proprietor of the shop that is the subject of the website, Tian Tian (UK) Ltd. It seems to me that there is far more to this particular story than has been set out in the Complaint, not least given that two of the directors of Tian Tian (UK) Ltd (Jian Sun and Min San) are also directors of the company (Tian Tian (Sun) Ltd) that submitted a letter to Nominet which purported to authorise the Respondent's registration of the Disputed Domain Name. However I take the view that in the absence of a Response by the Respondent and my decision not to accept the letter from (Tian Tian (Sun) Ltd), the fact remains that the Complainant asserts that the Respondent has no right to register or use the Disputed Domain Name.

I am not persuaded that the evidence submitted by the Complainant is sufficient to show that the Respondent's use of the Disputed Domain Name is leading to confusion, given that the Stirling shop clearly is associated with the Complainant. In addition and in light of the Claimant's use of the domain name, I am also not persuaded that the Claimant is blocked from reflecting its trade mark in a domain name.

However, in circumstances where a person registers a domain name that incorporates another persons trade mark, and the domain name is clearly being used for services directly related to the Complainant, and without the Complainant's authority, then the inability of the Complainant to control the use of that domain name is in my opinion an unfair disruption of the Complainant's business.

8. Decision

For the reasons set out above, I find that the Complainant has Rights in respect of a name or mark which is similar or identical to the Domain Name, and that the Domain Name, in the hands of the Respondent, is an Abusive Registration.

9. Additional Matters

I wish to add a comment to those made above, which is that the lack of clarity and precision in the Complaints and Responses filed by parties does not assist Experts in reaching their decisions, and it should not be taken for granted that Experts will carry out their own research to fill in the gaps left by the parties. Parties would be far better served by ensuring that the information they provide, is clear and unambiguous in the first place, and by failing to do so are prejudicing their prospects of success.

Simon Chapman

12 September 2005